Panasonic Holdings v Guangdong OPPO Mobile Telecommunications (CFI, 22 November 2024)

Dhenne Avocats · 10 October 2026

Our analysis

Summary

In a decision of 22 November 2024 (UPC_CFI_210/2023), the Mannheim Local Division ruled on Panasonic Holdings Corporation’s infringement action against Guangdong OPPO Mobile Telecommunications and OROPE Germany, based on EP 2 568 724 (allocation of sounding reference signals, SRS, in the LTE uplink), on the counterclaim for revocation and on OPPO’s counterclaim for the determination of FRAND licence terms. Applying for the first time the Huawei v ZTE negotiation framework to a standard essential patent, the Division dismissed the counterclaim for revocation, found direct infringement of claim 1 and indirect infringement of claim 13 by the 4G devices, rejected the defence based on Article 102 TFEU and dismissed the FRAND counterclaim, which it held admissible. It granted an injunction for Germany, France, Italy, the Netherlands and Sweden, recall, removal and destruction, information with accounting documents and an interim award of EUR 250,000, enforcement of the injunctive measures being conditional on security.

Facts and procedure

Panasonic alleged that OPPO’s 4G devices (including the Find X5 Pro) directly infringed claim 1 and indirectly infringed claim 13. It sought, among other things, an injunction for Germany, France, Italy, the Netherlands and Sweden, recall and destruction, information, publication of the decision and provisional damages of EUR 250,000 (paragraph 7). With their statement of defence of 21 December 2023, the defendants filed a counterclaim for revocation and a FRAND counterclaim, whose amended version primarily sought an order that Panasonic accept OPPO’s offer or make a matching offer (paragraphs 9, 11 and 48). Panasonic accepted that a willing licensee is in principle entitled to a FRAND licence, but denied that OPPO was willing (paragraph 66). The oral hearing took place on 7 and 8 October 2024.

The applicable law

Jurisdiction rested on Articles 31, 32(1)(a) and (e) and 33(1)(a) UPCA, read with Article 71b(1) of Regulation 1215/2012 (paragraph 80). Validity was assessed under Articles 54(3), 56, 76(1) and 138(1) EPC (paragraphs 94 to 149). Remedies fall under Articles 25, 26, 63, 64, 67 and 68 UPCA and Rule 119 RoP. The FRAND defence was examined under Article 102 TFEU and the negotiation framework laid down by the Court of Justice in Huawei v ZTE (C-170/13), which the UPC applies under Articles 20, 21 and 24(1)(a) UPCA (paragraphs 188 and 189).

Question

Do LTE-compliant devices infringe claim 1, construed with regard to the « transmission bandwidth », and can the holder of a standard essential patent obtain an injunction against an implementer who relies on Article 102 TFEU and asks the UPC to set FRAND licence terms?

Decision

The defendants withdrew their jurisdictional objection at the hearing, under protest (paragraph 80). « Transmission bandwidth » means the system bandwidth less the PUCCH bandwidth, not the range actually covered by the SRS signals (paragraph 88), narrow-band SRS signals must be of fixed size, with no tolerance of one or two resource blocks (paragraph 89), and even distribution allows for small gaps (paragraph 90). The counterclaim for revocation was dismissed: admissibility of late prior art was left open (paragraphs 93 and 94), there was no added matter, the priorities were valid, neither D15, earlier art under Article 54(3) EPC, nor D1, D1a, D3 and D3a disclose fixed-size signals distributed across a variable bandwidth, and the insufficiency and inventive step attacks rested on the rejected construction (paragraphs 95 to 149).

The 4G devices, including the Find X5 Pro, directly infringe claim 1 and indirectly infringe claim 13: it is enough that the device can be configured by the network as claimed, even if the SRS parameters cannot follow every change in the PUCCH (paragraphs 150 to 164). Both defendants, which jointly run the European headquarters in Düsseldorf and support distribution, are liable, their general denial being insufficient (Rule 171.2 RoP, paragraphs 165 to 167). The injunction was granted without restriction: proportionality (Art. 42 UPCA) is already reflected in the assessment of the FRAND defence and, contrary to the Court of Appeal of England and Wales, a standard essential patent does not have a purely monetary value (paragraphs 170 to 174). Recall, removal and destruction were ordered without a fixed time limit. Information is due from 17 December 2014 with invoices and cost evidence checked by an accountant, the proprietor not being limited to the licence analogy to calculate its damages. The interim award of EUR 250,000 was made, court fees alone exceeding that amount. Publication was refused (paragraphs 177 to 183). Enforcement of the injunction, recall, removal and destruction is conditional on security, given the risk of lasting loss of smartphone distribution channels (paragraph 186).

The FRAND defence failed. The Division applied the Huawei v ZTE framework without a reference to the Court of Justice, despite the European Commission’s amicus curiae letter (paragraphs 188 to 193). The notice of infringement was sufficient, a claim chart on the Chinese family member referring to the patent (paragraphs 194, 195 and 206). OPPO’s initial declaration of willingness was enough to open negotiations, but the later conduct of both parties must be assessed as a whole and the proprietor’s offer must always be examined (paragraphs 196 to 201 and 207). Panasonic’s offer, presented in meetings and supported by a top-down analysis and comparable licences, did not need to be a ready-to-sign contract and lies within the FRAND « corridor » (paragraphs 208 to 224). OPPO, which never disclosed its actual sales and relied on IDC data, offered security that was inadequate in the event of insolvency and brought competing regional rate-setting proceedings, did not behave as a good-faith licensee (paragraphs 202 and 230 to 235).

The FRAND counterclaim is admissible: Article 32(1)(a) UPCA covers counterclaims concerning licences, including claims for the grant of a licence based on the ETSI declaration or Article 102 TFEU (paragraphs 236 to 241). It was dismissed, since OPPO’s offer was not based on its actual sales, a licence limited to some territories is not FRAND where both parties accept that only a global licence would settle the dispute, and the other requests were indeterminate or merely declaratory (paragraphs 242 to 250). The defendants bear the costs (paragraph 185).

Key points for practice

• The UPC has jurisdiction over a counterclaim for the determination of a FRAND licence under Article 32(1)(a) UPCA (paragraphs 237 to 241).
• The Huawei v ZTE framework requires the proprietor’s offer to be examined, but the implementer’s conduct throughout the negotiations counts, in particular a refusal to disclose actual sales (paragraphs 201 and 202).
• A FRAND offer need not be a ready-to-sign contract: it is enough that it shows the essential economic terms (paragraph 213).
• Practical point: the implementer must raise its objections and provide its data during the negotiations, expert reports produced only in court do not replace that cooperation (paragraph 223).

Provisions applied

Agreement on a Unified Patent Court

Arts. 20, 21, 24(1)(a), 25(a), 26, 31, 32(1)(a) and (e), 33(1)(a), 42, 63, 64, 67, 68, 69(2) and 82

Rules of Procedure

Rules 9.2, 25.1, 30.2, 32.2, 44, 118.5, 118.8, 119, 171.2, 191, 333 and 354.3

European Patent Convention

Art. 54(3), Art. 56, Art. 76(1) and Art. 138(1)

Regulation (EU) No 1215/2012

Art. 71b(1)

Other provisions

Treaty on the Functioning of the European Union, Art. 102, Directive 2004/48/EC, Arts. 3(2) and 11

Case law cited

VusionGroup v Hanshow, Court of Appeal, 13 May 2024 (UPC_CoA_1/2024), Kaldewei v Bette, Düsseldorf Local Division, 3 July 2024 (UPC_CFI_7/2023), Mannheim Local Division, UPC_CFI_219/2023 (parallel action against Xiaomi on the same patent)

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.