The German Federal Court of Justice (FCJ) established requirements for a fair, reasonable, and nondiscriminatory (FRAND) defense against injunction claims based on standard-essential patents (SEPs). VoiceAge v. HMD, Case No. KZR 10/25 (FCJ Jan. 27, 2026) (Rol-off, Deichfuß, Tolkmitt, Vogt-Beheim, Kochendörfer, JJ.)
Consistent with its earlier decisions, the FCJ adopted an approach that imposes strict procedural and substantive obligations on implementers in FRAND licensing negotiations. This approach reinforces a demanding framework for implementers. The FCJ rejected the implementer’s FRAND defense in this case.
The case attracted considerable attention because the European Commission, acting as the EU competition law authority, intervened by submitting an amicus curiae brief and presenting oral argument before the FCJ. The Commission’s participation underscored the ongoing de-bate over the proper interpretation of FRAND obligations under Article 102 TFEU and, more particularly, the framework established by the Court of Justice of the European Union (CJEU) in Huawei v. ZTE.
Willing licensee standard and the obligation to provide security
The FCJ found the implementer to be an unwilling licensee since it unduly delayed its responses to the SEP owner’s license offers and failed to provide adequate security in a timely manner. According to the FCJ, the implementer must promptly enter into negotiations with the SEP owner regarding licensing terms and submit a counteroffer, even if the SEP owner’s initial license offer was not FRAND-compliant. During licensing negotiations, the implementer should actively and constructively engage in efforts to conclude a FRAND-compliant license agreement.
Similar to the recent Statement of Interest by the US Department of Justice and the United States Patent and Trademark Office in US patent litigation between Collision Communications and Samsung, the FCJ underscored the importance of injunctive relief, including for nonpracticing entities (NPEs) and with respect to SEPs. According to the FCJ, only exclusive rights allow an invention to be subject to market processes, and the availability of damages claims does not alter this fundamental principle.
The FCJ cited case law from the Unified Patent Court (UPC) and from national courts in the Netherlands and the United Kingdom to support its reasoning. Taken together, these authorities demonstrate a growing consensus within the European judiciary toward interpreting FRAND obligations as establishing a high threshold for a successful FRAND defense. Consequently, FRAND jurisprudence is developing across Europe in a direction that is increasingly strict for implementers.
The FCJ emphasized that if the SEP owner rejects the counteroffer, the implementer must promptly provide adequate security. In this case, the implementer did not adequately do so because it did not even provide security corresponding to the royalties under its own relatively low counteroffer. However, the FCJ did not provide specific guidance on how to determine the required amount of security. The lower court relied on the amount of the SEP owner’s last offer, but the FCJ did not comment on this offer because the security that the implementer provided was too low.
Unlike lower instance courts, however, the FCJ emphasized in an obiter dictum that providing security is sufficient and that the implementer is not required to pay undisputed royalty amounts directly to the SEP owner at that stage. In this regard, the FCJ’s decision may be considered implementer friendly.
No sequential approach to negotiations and no referral to the CJEU
As noted, the FCJ did not adhere to the Commission’s interpretation of a strictly sequential approach to FRAND negotiations. Instead, the FCJ adhered to its earlier case law that reject-ed a strictly sequential FRAND negotiation framework. The FCJ’s framework requires both parties to engage in good faith negotiations about a FRAND license and work constructively toward a FRAND license agreement. The core idea is that, through discussion during negotia-tions, the parties are the best entities to determine what licensing terms are FRAND. At the same time, FRAND is a corridor, and alternative sets of licensing terms can be FRAND, so it is difficult to determine ex ante whether an SEP owner’s initial license offer is FRAND.
Based on the “acte éclairé” doctrine (the assumption that the CJEU had already ruled on the relevant matter in the Huawei v. ZTE case) and the competence of national courts to interpret and apply the law in individual cases, the FCJ rejected the motion for a further referral to the CJEU under Article 267 TFEU. The FCJ justified this decision by stating that the CJEU assumes national courts must consider the specific circumstances and factual background of each case, and held that the CJEU’s decision is similarly understood by courts in other EU member states and the UPC. In reaching this holding, the FCJ compared the case law of national courts and analyzed how they understood and applied the CJEU’s decision. According to the FCJ, there were no doubts regarding the interpretation of Article 102 TFEU and the consequences of a dominant position within the SEP licensing market.
Core holding
The decision relies on the assessment of an implementer acting as a willing licensee. FRAND negotiations are depicted as a dynamic process in which both parties play essential roles, alt-hough the process is not necessarily sequential. What constitutes FRAND in a specific case may depend on the circumstances and use cases. In particular, the question of whether royal-ties are discriminatory often depends on the implementer’s circumstances, including the mar-ket in which it operates, its products’ price level compared to licensees’ and competitors’ ex-isting products, and its market share. An abuse of market dominance can be assumed only if the SEP owner is unwilling to conclude a fully FRAND-compliant license agreement after considering the implementer’s arguments and if the implementer reasonably engaged in ne-gotiations until the very end.
Notably, the FCJ also held that an unwilling licensee generally has no disproportionate defense (under § 139 sentence 3 German Patent Act) against SEP-based injunction claims.
Practice note: Against the background of a sequential approach that might be inferred from the CJEU’s Huawei v. ZTE decision, given differences in how European courts apply the decision and considering the Commission’s expertise in European competition law, there can be differing views on the clarity of the case law and thus on the applicability of the acte éclairé doctrine. It is certainly possible that the UPC or an EU national court will refer similar FRAND-related questions to the CJEU, as the Commission suggested.
The decision strengthens the position of SEP owners and imposes strict requirements on implementers to be responsive and constructive in FRAND licensing negotiations. A FRAND defense will only be available if an implementer has duly and consistently sought to advance license negotiations and provided adequate security.
