UPC Analytics
ENDE
Overview · Filed: —

ACT_459771/2023

InfringementMain Infringement ActionMunich LDInfringement Action—
OverviewDecisionsReasoningCitationsDocumentsTimeline
Coverage: Partial.Reasoning extracted with partial coverage — some sections may be incomplete.
Plain-English summary

Huawei sued Netgear entities for infringement of its SEP portfolio across six UPC member states (Belgium, Germany, Italy, Finland, France, Sweden). The Munich Local Division issued a 161-page judgment finding infringement and granting injunction, recall, destruction and damages liability, while partially accepting a Qualcomm-modem exhaustion defence. The court held that Huawei satisfied its FRAND obligations by offering at least one compliant licensing path (bilateral or pool), and that Netgear's FRAND/competition law defence failed because Netgear had not made a concrete, timely counter-offer with adequate security as required by the Huawei v. ZTE framework.

Accepted arguments
What the court agreed with — by party.

  • Patent proprietor satisfies FRAND obligations by offering at least one licensing path (bilateral or pool license) that meets competition law requirements

    ClaimantLegal basis: Art. 102 TFEU; Huawei v. ZTE (CJEU)

    Note: The court held that where the patent holder has made at least one still-acceptable offer (bilateral or pool), the infringement action cannot be dismissed on FRAND grounds even if one offer is disputed.

  • FRAND competition law defence is only available to an implementer who has made a concrete counter-offer without delay and provided adequate security

    ClaimantLegal basis: Art. 102 TFEU; Huawei v. ZTE paras. 66-67 (CJEU)

    Note: The court held that a defendant can invoke the Huawei v. ZTE defence against injunction/recall/destruction only if it has itself made a concrete FRAND counter-offer without delay, provided adequate security, and given information on the extent of use.

  • Exhaustion defence applies only to Qualcomm-modem equipped products placed on market in EU during specified period

    RespondentLegal basis: exhaustion doctrine

    Note: The court accepted a partial exhaustion defence for Qualcomm-modem equipped products, carving them out from the injunction/recall/destruction orders.

Rejected arguments
What the court did not agree with — and why.

  • Huawei's claims are barred by IEEE Bylaws / Letter of Assurance commitments (prohibition on suit)

    RespondentLegal basis: IEEE Bylaws 2007

    Reason: The court rejected the argument that the IEEE Bylaws / LOA barred Huawei from bringing the infringement action; offering a pool license satisfies contractual LOA commitments.

  • Exhaustion defence applies to all accused product variants

    RespondentLegal basis: exhaustion doctrine

    Reason: The exhaustion defence was accepted only for Qualcomm-modem products proved to have been first placed on market in the EU during the specified period; it did not cover all accused embodiments.

Key legal principles
Doctrines and rules cited in the reasoning.
FRAND defence in SEP infringement actionsHuawei v. ZTE framework (CJEU) for SEP injunctionsexhaustion of patent rightspool license as a permissible FRAND licensing pathwayimplementer must make concrete counter-offer and provide security to raise FRAND defencefront-loaded procedure / withdrawal from opt-out via CMS workflow

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