Panasonic v Guangdong OPPO Mobile Telecomm (CFI, UPC_CFI_210/2023, 6 February 2025)

Dhenne Avocats · 10 October 2026

Our analysis

Summary

The published document is the redacted version, authorised by order of 6 February 2025 under Rule 262A RoP, of the decision given on 22 November 2024 by the Mannheim Local Division (UPC_CFI_210/2023) between Panasonic Holdings Corporation and Guangdong OPPO Mobile Telecommunications and OROPE Germany. The division holds EP 2 568 724, essential to the LTE standard, valid and infringed by OPPO’s 4G devices, rejects the FRAND objection and dismisses the counterclaim seeking the determination of a FRAND licence, which it holds admissible. As the UPC’s first ruling on the merits of a FRAND dispute, it applies the Huawei v ZTE framework by examining the conduct of both parties, finds Panasonic’s offer FRAND-compliant and grants an injunction for five States, subject to security of EUR 10 million.

Facts and procedure

Panasonic accuses the defendants of marketing 4G devices, including the OPPO Find X5 Pro and a smartwatch, in Germany, France, Italy, the Netherlands and Sweden. The parties had been negotiating since 2019, Panasonic made offers from 4 August 2020 onwards, and OPPO made counteroffers in 2021, 2022 and on 17 July 2024 (paragraphs 30 to 39). The defendants counterclaimed for revocation and, on 21 December 2023, filed a FRAND counterclaim, which became a request for a worldwide licence during the proceedings (paragraphs 48 to 53 and 235). The oral hearing took place on 7 and 8 October 2024.

The applicable law

Validity is governed by Arts 54, 76 and 138 EPC, infringement by Arts 25(a) and 26 UPCA, and remedies by Arts 63, 64, 67 and 68 UPCA. The FRAND objection rests on Art. 102 TFEU and Huawei v ZTE, which the UPC applies under Arts 20, 21 and 24 UPCA (paragraphs 188 to 191), the FRAND counterclaim falls within Art. 32(1)(a) UPCA (paragraph 237).

Question

Is the patent valid and used by the LTE standard, does the Art. 102 TFEU objection bar an injunction, and can the UPC set the terms of a FRAND licence on the defendant’s counterclaim?

Decision

The « transmission bandwidth » is the band between the control channels, and the narrowband reference signals must be invariable (paragraphs 86 to 91). The patent contains no added matter, keeps its priority and is novel over D15, D1, D1a, D3 and D3a, the division notes that prior art must be raised in the counterclaim unless a later filing is justified (paragraphs 92 to 149). A device « configurable » by the network is enough: since the standard allows the claimed configurations, the devices directly infringe claim 1 and indirectly infringe claim 13 (paragraphs 150 to 164).

The injunction is not disproportionate, proportionality being already built into the Huawei v ZTE framework, and a SEP is not reduced to a right to remuneration (paragraphs 170 to 174). On FRAND, the notice was sufficient and OPPO had expressed an initial willingness to take a licence (paragraphs 206 and 207). But Panasonic made and explained an offer as early as August 2020, then lowered it several times. The comparable licences produced confirm that it lies within the FRAND range, whereas OPPO’s counteroffers, based on market data without disclosure of its own sales and not covering all past use, are far removed from it, and the security offered was inadequate (paragraphs 208 to 235). The FRAND counterclaim is admissible but dismissed: OPPO’s offer is not FRAND, nor is a determination limited to certain territories (paragraphs 236 to 250). Recall, removal, destruction, information with copies of invoices from 17 December 2014, damages and an interim award of EUR 250,000 are ordered, publication is refused and the penalty is set at EUR 1,000 per device (paragraphs 175 to 184). The defendants bear the costs. The value of the dispute is set at over EUR 50 million (paragraphs 185 and 252).

Key points for practice

• A SEP holder must explain its offer in a manner suited to the stage of negotiations, without having to disclose comparable licences at the outset (paragraphs 203 and 204).
• An implementer that refuses to disclose its sales cannot demand an offer tailored to its situation and must, once its counteroffer is rejected, provide information and adequate security (paragraphs 202, 233 and 234).
• The UPC has jurisdiction over a counterclaim for the determination of a FRAND licence, but only a worldwide licence meets FRAND requirements on these facts (paragraphs 237 to 246).
• Practical point: objections to the patentee’s offer must be raised during negotiations, not supplied afterwards through expert reports filed in court (paragraph 223).

Provisions applied

Agreement on a Unified Patent Court

Arts 1, 20, 21, 24(1)(a), 25(a), 26, 31, 32(1)(a) and (e), 33(1)(a), 42, 63, 64, 67, 68, 69 and 82

Rules of Procedure

Rules 9.2, 25.1, 30.2, 118.8, 119, 171.2, 191, 262A, 333 and 354.3

Regulation (EU) No 1215/2012

Art. 71b(1)

European Patent Convention

Art. 54, 76 and 138

Directive 2004/48/EC

Arts 3 and 11

Other provisions

Treaty on the Functioning of the European Union, Arts 102 and 267

Case law cited

Court of Appeal, 13 May 2024 (UPC_CoA_1/2024), Düsseldorf Local Division, 3 July 2024 (UPC_CFI_7/2023), CJEU, Huawei v ZTE, 16 July 2015, C-170/13

Related decisions

• Panasonic v Guangdong OPPO Mobile Telecomm, 22 November 2024, the decision as pronounced, of which this document is the redacted version.

Prepared by Dhenne Avocats from the official decision, consulted on 10 October 2026. The database is updated every week, on Friday. Only the official text is authoritative.