Huawei v Netgear (CFI, 2024-12-18)

Holding

In this decision in the infringement action concerning EP 3 611 989 B1, declared essential to WiFi 6 (IEEE 802.11ax), the Munich Local Division rejected Netgear's procedural objection based on an allegedly defective withdrawal of the opt-out, holding the CMS workflow entry to be the formally effective route, and rejected the defence that Huawei's IEEE Letter of Assurance barred injunction claims, since the LOA referred to the 2007 IEEE Bylaws, which contained no litigation prohibition, and later Bylaws do not apply retroactively. On the FRAND defence, the division held that where the patent holder has made several offers still open to acceptance, the claim for injunction, recall and destruction cannot be dismissed if at least one offer is assumed to meet the antitrust requirements, and that the implementer may rely on the defence only if it has itself, without delaying tactics, made a concrete FRAND-compliant counteroffer and, upon rejection, provided appropriate security and information on the scope of use.

Why it matters

This is the Munich division's detailed engagement with the Huawei v ZTE framework in a WiFi 6 dispute and it sets out three positions of general reach: the patent holder can discharge its FRAND obligations through alternative routes including a pool licence; the burden-shifting steps of Huawei v ZTE are applied strictly against an implementer that has not made a counteroffer with security and accounting; and an exhaustion defence covering all attacked embodiments must be examined in the merits proceedings rather than deferred, but requires device-specific proof of a first marketing in the EU under a licence. For SEP holders, the decision supports parallel bilateral and pool offers; for implementers, it confirms that passivity after rejection of a counteroffer forfeits the defence.

Practical point

Implementers relying on a chipset-level licence (here Qualcomm) must be prepared to prove exhaustion device by device and period by period; a general reference to the chipset supply chain is insufficient.

Official headnote

Das einzige online verfügbare amtliche Formular für die Einreichung eines Rücktritts von der Ausnahmeregelung gem. Regel 5.7 VerfO ist der entsprechende Workflow im Fallbearbeitungssystem (CMS). (headnote 1 of 4)

Official decision (PDF) · UPC registry entry

Dhenne Avocats represents claimants and defendants in European patent disputes before the Unified Patent Court, including the Paris divisions.