standard essential patent/SEP Archives

standard essential patent/SEP

German Federal Court of Justice reinforces strict willing licensee standard in SEP litigation

by Dr. Henrik Holzapfel and Dr. Laura Katharina Woll, LL.M. | Mar 19, 2026 | EU Update, Patents

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 [...]

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USPTO launches SEP Working Group aimed at strengthening patent enforcement

by Amol Parikh | Jan 15, 2026 | Patents

The United States Patent and Trademark Office (USPTO) announced the formation of the Standard-Essential Patent (SEP) Working Group, which will report directly to USPTO Director John A. Squires. The initiative aims to examine policy issues related to patents incorporated into technical standards and provide guidance on enforcement and licensing practices.

Background

Technical standards underpin many modern technologies, including telecommunications, automotive systems, and artificial intelligence. These standards often include patented technologies, which represent significant investment by inventors. Concerns have emerged about the predictability of remedies and the treatment of patent holders within the SEP ecosystem.

Historically, injunctions in SEP disputes have been difficult to obtain in the United States because SEP patents are typically subject to fair, reasonable, and non-discriminatory (FRAND) commitments. FRAND obligations are intended to ensure broad access to standardized technologies, but they often create uncertainty around enforcement and limit the availability of injunctive relief. This tension has led to debates over whether SEP holders can effectively prevent infringement when licensing negotiations fail.

Recent USPTO actions

The USPTO’s announcement follows its recent involvement in cases addressing patent remedies, in which the USPTO argued that injunctions should be available for SEP patents. In Radian Memory Systems v. Samsung Electronics, the USPTO filed a statement emphasizing the role of injunctions in protecting patent rights. Similarly, in an International Trade Commission investigation involving dynamic random-access memory (DRAM) devices, the USPTO commented on the public interest in enforcing valid patents. Both of these cases involved the assertion of SEP patents.

Objectives of the SEP Working Group

The working group will focus on three areas:

Clarifying enforcement standards: Reviewing approaches to ensure strong and predictable remedies for SEP holders.
Encouraging broader participation: Exploring ways to enable small and medium-sized enterprises to engage in standards development.
Stakeholder engagement and transparency: Creating dialogue with patent holders, implementers, and standards organizations to identify challenges and develop resources for licensing predictability.

USPTO Deputy General Counsel Nicholas Matich and Senior Legal Advisor Austin Mayron will co-chair the working group. The group will seek input from stakeholders across the innovation ecosystem.

Next steps

The USPTO intends for this initiative to formalize its recent policy efforts and provide a structured approach to SEP-related issues. Stakeholders are encouraged to participate in discussions as the group begins its work.

Can’t Stop the FRAND: Navigating SEP Licensing Disputes

by Lois D. Mermelstein | Nov 7, 2024 | Patents

The US Court of Appeals for the Federal Circuit vacated a district court’s decision to deny an antisuit injunction prohibiting a patent owner from enforcing injunctions that it obtained in Columbia and Brazil on standard essential patents (SEPs). Telefonaktiebolaget LM Ericsson, et al. v. Lenovo (United States), Inc., Case No. 24-1515 (Fed. Cir. Oct. 24, 2024) (Prost, Lourie, Reyna, JJ.)

Lenovo and Ericsson entered into negotiations to cross-license their SEPs to each other. SEPs are patents declared essential to complying with a technical standard. Because SEPs by definition must be practiced to comply with a given standard, SEP holders wield significant power over standard implementers during licensing negotiations. Standard setting organizations therefore typically have an intellectual property policy under which SEP holders agree to license their SEPs on fair, reasonable, and nondiscriminatory (FRAND) terms. Here, the parties agreed that the FRAND commitment was a contract, governed by French law, that each party could enforce against the other, and that the FRAND commitment included an obligation to negotiate in good faith over licenses to SEPs.

After the parties were unsuccessful in reaching agreement, Ericsson sued Lenovo in US district court alleging that Lenovo infringed four of Ericsson’s US SEPs related to the 5G wireless communication standard. Ericsson also alleged that Lenovo breached its FRAND commitment by failing to negotiate in good faith and asked the district court to determine a FRAND rate for a global cross-license between the parties. Lenovo counterclaimed, alleging that Ericsson infringed four of Lenovo’s 5G US SEPs and asking for a similar outcome. Lenovo also asked the district court to enter an antisuit injunction prohibiting Ericsson from enforcing the preliminary injunctions Ericsson obtained in Colombia and Brazil that prohibited Lenovo from infringing Ericsson’s Columbian and Brazilian 5G SEPs. The district court denied Lenovo’s motion, following the antisuit injunction framework in the Ninth Circuit’s 2012 decision in Microsoft v. Motorola. The district court concluded that the instant suit was not dispositive of the foreign action, which was a threshold requirement to enter such an injunction. Lenovo appealed.

The Federal Circuit disagreed with the district court’s determination, finding that a party with a FRAND commitment must negotiate in good faith over a license to its SEPs before it pursues injunctive relief based on those SEPs. Interpreting the “dispositive” requirement, the Court concluded that the “requirement can be met even though a foreign antisuit injunction would resolve only a foreign injunction (and not the entire foreign proceeding), and even though the relevant resolution depends on the potential that one party’s view of the facts or law prevails in the domestic suit.” Here, the Court found that the requirement was met because the “FRAND commitment precludes Ericsson from pursuing SEP-based injunctive relief unless it has first complied with the commitment’s obligation to negotiate in good faith over a license to those SEPs.” If the district court were to determine that Ericsson had not complied with that obligation, that determination would dictate the impropriety of Ericsson pursuing SEP-based injunctive relief. Accordingly, the [...]

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UK High Court Issues Landmark Global FRAND Rate Decision

by Amol Parikh | Apr 6, 2023 | EU Update, Patents

The UK High Court of Justice issued its long-anticipated decision establishing a global Fair, Reasonable and Non-Discriminatory (FRAND) royalty rate for a patent portfolio essential to 3G, 4G and 5G cellular technologies. InterDigital Tech. Corp. et al. v. Lenovo Group Limited, Case No. HP-2019-000032, [2023] EWHC 529 (Pat) (Mar. 16, 2023) (Mellor, J.)

InterDigital owns a portfolio of standard essential patents (SEPs) that have been declared essential to the European Telecommunications Standard Institute’s (ETSI) 3G, 4G and 5G cellular technology standards. InterDigital sought to license the SEPs to Lenovo, which implements these cellular standards in its mobile phones, tablets and PCs. After the parties could not agree on the terms under which Lenovo should take a license, InterDigital filed a lawsuit. The High Court held several technical trials in which it found that Lenovo infringed certain of the patents.

Based on the result of the technical trials, the High Court determined that InterDigital had established the right to a FRAND determination of its portfolio. The parties presented two issues regarding FRAND. The first issue was whether the InterDigital license offer was FRAND, and if not, what terms would be FRAND for a license to Lenovo of the InterDigital patent portfolio. The second issue was whether InterDigital was entitled to an injunction based on the parties’ negotiation conduct, including whether InterDigital acted as a willing licensor and whether Lenovo acted as a willing licensee.

The High Court concluded that Lenovo should pay InterDigital a FRAND rate of $0.175 per cellular unit for a worldwide license to InterDigital’s portfolio. The $0.175 rate yields a lump sum payment of $138.7 million for sales from 2007 to the end of 2023. The Court’s FRAND rate determination was closer to Lenovo’s offered rate of $0.16/unit than to InterDigital’s demand of $0.498/unit.

In determining the appropriate FRAND rate, the High Court analyzed whether InterDigital’s proposed rate was comparable to the rate in InterDigital’s other license agreements for SEPs. InterDigital argued that its license offer to Lenovo was consistent with “program rates” under which it had already licensed its SEPs to other companies. The Court, however, rejected InterDigital’s program rates as comparable because the other licenses included volume discounts ranging from 60% to 80% of InterDigital’s program rate. InterDigital argued that Lenovo was not entitled to the same type of steep volume discount and, therefore, those licenses with discounts applied were not comparable licenses for Lenovo. The Court disagreed, finding that the volume discounts applied to those licenses “do not have any economic or other justification” and that their primary purpose was to “shore up InterDigital’s chosen program rates.” The Court further observed that the primary effect of the volume discount in the other licenses was to discriminate against smaller licensees, which is exactly what FRAND is supposed to avoid.

InterDigital tried to bolster its argument that its program rate was FRAND by applying a top-down cross-check. The top-down approach starts with the cumulative value of all royalties that should be paid on FRAND [...]

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Fifth Circuit Takes U-Turn, But Still Concludes Automotive Supplier Can’t Force SEP Holder to Issue License

by Amol Parikh | Jun 30, 2022 | Antitrust, Patents

In response to a petition for panel rehearing, the US Court of Appeals for the Fifth Circuit withdrew its prior decision finding that an automotive parts supplier did not have constitutional standing to pursue an antitrust lawsuit against owners of standard essential patents (SEPs). The Court issued a new opinion summarily affirming the district court’s original decision finding constitutional standing but dismissed the case based on lack of antitrust standing. Continental Automotive Systems, Inc. v. Avanci, LLC et al., Case No. 20-11032 (5th Cir. June 21, 2022) (Stewart, Ho, Engelhardt, JJ.) (per curiam).

Continental sued several SEP holders and their licensing agent, Avanci, for violation of Sections 1 and 2 of the Sherman Antitrust Act based on Avanci’s refusal to license the SEPs on fair, reasonable and nondiscriminatory (FRAND) terms. Avanci moved to dismiss, arguing that Continental lacked both constitutional standing and antitrust standing. The district court found that Continental had constitutional standing because its lack of success obtaining licenses on FRAND terms was an injury. However, the district court found that Continental lacked antitrust standing and therefore dismissed the lawsuit. Continental appealed.

The Fifth Circuit issued its original opinion in March 2022, finding that Continental’s theory of injury was insufficient to confer constitutional standing. The Court explained that Avanci’s refusal to sell licenses did not result in a cognizable injury to Continental, and that Continental had no rights to enforce FRAND contracts between the individual patent holders and the standard setting organization (SSO) since Continental was not part of the SSO to which the SEP holders belonged. The Court also found that even if Continental was contractually entitled to a license on FRAND terms, the SSO contract had not been breached because the individual patent holders fulfilled their obligations to the SSO by actively licensing Continental’s customer, which meant that the SEP licenses were (derivatively) available to Continental on FRAND terms. Finding that Continental lacked constitutional standing, the Court did not reach the issue of whether Continental lacked antitrust standing.

Continental filed a petition for panel rehearing and rehearing en banc. Numerous third parties, including legal and economic scholars, industry associations and tech companies, also filed amici briefs supporting Continental, arguing that the Fifth Circuit wrongly found that Continental was not an intended beneficiary of the FRAND obligations that the SEP owners made to the relevant SSO.

On June 14, 2022, the Fifth Circuit issued an order withdrawing its March 2022 opinion. A week later, the Court issued a new opinion summarily stating that “[h]aving reviewed the district court’s detailed order, and considered the oral arguments and briefs filed by the parties and amicus curiae, we AFFIRM the judgment of the district court that Continental failed to state claims under Sections 1 and 2 of the Sherman Act.”

Practice Note: Although the ultimate outcome did not change, the Fifth Circuit withdrew its previous finding that third-party beneficiaries to SSOs did not have constitutional standing to file a lawsuit.