FRAND objection fails: BGH on willingness to license | IT-Medienrecht

BGH Ruling on FRAND Objection in SEP Cases: No Injunction Without Serious Licensing Willingness

In its ruling of January 27, 2026 (KZR 10/25), the Cartel Senate of the Federal Court of Justice upheld a patent infringement action arising from standard-essential patents (SEP).

The court rejected the defendant’s antitrust compulsory license objection / FRAND objection. The pivotal point was no longer the patent infringement, which was not disputed in the appeal proceedings. Instead, the sole question was whether the assertion of injunctive relief is barred due to an abuse of a dominant market position within the meaning of Art. 102 TFEU.

Background: SEP, FRAND Declaration, and Failed Negotiations

The plaintiff is the patent holder of several patents for the coding of audio signals. The teachings of these patents have been incorporated into mobile radio standards (SEP).

The plaintiff had declared to the standardization organization that it was willing to license the patents on FRAND terms (fair, reasonable, and non-discriminatory). The defendant sold standard-compliant mobile telephones.

Despite years of license negotiations, no agreement was reached between the parties. The plaintiff consequently sued for injunctive relief, among other claims.

The defendant countered that the plaintiff was abusing its market power, mediated by the SEP, and therefore should not be allowed to enforce the injunctive relief under Art. 102 TFEU.

Decisions by Lower Courts

Both the Munich Regional Court I (25.05.2022 – 7 O 14091/19) and the Munich Higher Regional Court (20.03.2025 – 6 U 3824/22 Kart) ruled in favor of the plaintiff.

Key Statement of the BGH: Injunction Possible Without Serious Willingness to License

The BGH continues to follow the line developed from the ECJ decision Huawei/ZTE (C-170/13) and its own case law on FRAND Objection I / II.

According to this, Art. 102 TFEU does not prevent an SEP holder from judicial enforcement merely because a license dispute exists. Instead, the decisive factor is whether the conduct of the party against whom a claim is made indicates a serious willingness to license.

Lack of Willingness to License in the Specific Case

In this particular case, the BGH found a lack of willingness to license on the defendant's part. This was evidenced by several factors:

• The defendant responded to the plaintiff’s license offer only after a considerable delay.
• There was also a delay in responding to the offer of a confidentiality agreement, which is a prerequisite for disclosing already concluded license agreements.
• During the long negotiations, the defendant provided a security that was significantly lower than what would have resulted even from its own license offers.

Consequently, the antitrust compulsory license objection was unsuccessful, and the appeal was dismissed.

No ECJ Referral: Flexibility in Procedural Steps

The procedural statement from the BGH is also noteworthy: The court did not consider a referral pursuant to Art. 267 (3) TFEU to be necessary.

The reasoning behind this was that, according to Huawei/ZTE, the circumstances of the individual case should always be taken into account. Union law does not prescribe a fixed sequence of procedural steps that must be strictly adhered to in every case.

Practical Implications for FRAND Negotiations

This decision is consistently in line with the recent approach of the Cartel Senate. It emphasizes that the "FRAND defense" must not be reduced to formal lip service. Instead, it requires consistent, swift, and resilient negotiation behavior.

Since FRAND Objection I (KZR 36/17) and FRAND Objection II (KZR 35/17), the central dogmatic guardrail has been clear: the alleged infringer must prove its willingness to license through actual conduct. In practice, this means:

1. Timing is Substance, Not Formality: Delays in responding to offers, including non-disclosure agreements (NDAs) or confidentiality agreements, can be interpreted as an indication of unwillingness to license.
2. Security and Performance Obligations Are Taken Seriously: If you propose figures yourself, you will be measured against them. Providing security below your own offer typically has a negative impact during a dispute.
3. The FRAND Objection Remains a High-Risk Instrument: Especially in the SEP context, blocking an injunction claim based on antitrust grounds is not easily achieved. This aligns with court rulings that often focus heavily on the overall conduct of the license seeker.

Conclusion

In the complex SEP/FRAND landscape, negotiating discipline is often more decisive than abstract FRAND dogma. While an antitrust compulsory license objection remains possible, it will fail if the license seeker's conduct does not demonstrate a serious and consistent willingness to license.