Patent pools shape SEP licensing choices in court disputes

August 28, 2026, 11:45 GMT | Comment

German applied research organization Fraunhofer has secured injunctions against Finnish mobile phone manufacturer HMD Global in two Unified Patent Court cases, strengthening the role of patent pools in Standard Essential Patent licensing disputes. HMD is considering an appeal, while a separate case involving French telecoms group Orange shows that pool members must still prove infringement patent-by-patent.

Patent pools, which allow multiple patent holders to license their patents together, are gaining greater weight in the Unified Patent Court’s developing approach to SEP licensing, as judges begin to define when implementers can still insist on negotiating bilateral licenses.

In the Aug. 24 rulings in a case brought by German applied research organization Fraunhofer against Finnish phone maker HMD Global, the Hamburg Local Division granted Fraunhofer injunctions against HMD. It also rejected HMD’s fair, reasonable and non-discriminatory, or FRAND, defenses.

The court found that HMD had infringed Fraunhofer’s audio-coding patents — EP 2,380,167 and EP 2,609,590 — through smartphones and tablets using Android 9 or later. It upheld EP ’167 as granted, while EP ’590 was maintained in amended form.

In both cases, judges rejected HMD’s revocation counterclaims, exhaustion and FRAND defenses, and granted injunctions covering Germany, France, Italy, Belgium and The Netherlands.

The rulings develop the UPC’s approach to when a patent owner can rely on a pool license as a FRAND licensing route, and when an implementer can legitimately choose to negotiate separately with individual patent owners instead.

“HMD respectfully disagrees with the decisions rendered by the Hamburg Local Division,” the company told MLex. “HMD is in the process carefully analyzing the decisions, and considers requesting a review by the Court of Appeal.”

For Fraunhofer, the rulings show that one FRAND offer is “enough for the patent owner to comply with its FRAND obligations,” according to Volkmar Henke, a lawyer at Bardehle Pagenberg representing the institute.

“This FRAND offer may be the offer of a patent pool,” he told MLex.

The Hamburg decision came five days after HMD defeated a separate Advanced Audio Coding patent infringement action brought by French telecoms group Orange before the UPC Paris Local Division.

Orange and Fraunhofer are both members of the audio-coding pool operated by Via Licensing Alliance. But Paris judges dismissed Orange’s case on infringement grounds, and therefore never reached HMD’s FRAND defense.

— FRAND route —

The Hamburg judges followed the UPC’s 2024 Huawei v Netgear ruling, which said an SEP holder can generally satisfy its competition-law obligations by offering one FRAND-compliant licensing route.

“For competition-law reasons, the patent holder is only required to indicate to the patent user one licensing route that satisfies the FRAND requirements,” the court said.

But Hamburg went further by defining when an implementer could still insist on bilateral licensing. Judges said that may be justified where the implementer wants a multi-standard license, it seeks a cross-license, or it has already made significant progress concluding bilateral licenses with other pool members.

In those circumstances, the SEP holder may have to negotiate directly, rather than simply point to the pool. But the implementer must have “comprehensible reasons for this choice” and remain genuinely willing to take a license throughout negotiations.

— Bilateral licensing —

Choosing bilateral licensing does not reduce an implementer’s duty to show that it's genuinely willing to take a license. Hamburg said the implementer’s conduct must be assessed “throughout the course of the negotiations,” and said that insisting on bilateral deals can indicate unwillingness if the implementer lacks “comprehensible reasons” for that choice.

HMD failed that test. Via first offered it an AAC pool license in 2017, but HMD pursued bilateral deals instead.

The court found that over almost nine years, HMD had secured bilateral licenses covering only a fraction of the pool portfolio, and had not provided security for Fraunhofer’s potential license claims.

“Even in exceptional circumstances, in which an implementer would be entitled to ask for a bilateral FRAND offer, the implementer is not relieved from actively engaging with the pool and the patent owner,” Henke told MLex. He added that the judges confirmed that a genuinely willing licensee must be actively negotiating.

Hamburg expressly rejected an “automatic trigger” approach, under which the absence of security alone defeats a FRAND defense. But in these circumstances, the court said HMD’s failure to provide security was “yet another sign of unwillingness.”

That leaves security as part of the overall willingness assessment, rather than an automatic precondition.

— Pool objections —

The court treated Via’s offer as FRAND, because HMD had not raised substantiated objections to its FRAND nature during the negotiations.

Judges said objections that are raised only once litigation is underway are not enough where they “could have been raised in the negotiations in the first place.”

That makes the negotiation record more important. Implementers challenging a pool’s rates, patent coverage, discounts or other terms may need to raise those concerns clearly and early, rather than wait for an infringement case.

For SEP holders, the ruling may strengthen reliance on a pool offer where an implementer negotiated for years without clearly contesting its FRAND nature, making negotiating conduct an important part of the FRAND assessment alongside the eventual license terms.

— Orange vs HMD —

The Paris Local Division ruling in Orange’s case against HMD from the previous week shows that a court may dispose of an SEP dispute on infringement grounds without reaching the licensing question.

Orange argued that HMD devices running Android 9 or later infringed its AAC-related EP 2,345,029 through technology used to decode compressed audio. But Paris found that Orange hadn't proved that the relevant audio standard necessarily used the patented method.

The dispute turned on how the standard handles transitions between different types of audio decoding. The court found that the standard used a different technical approach from the one taught by Orange’s patent.

Because Orange had failed to establish infringement, Paris judges did not decide validity, exhaustion, FRAND or proportionality.

For HMD, that shows the Hamburg rulings do not resolve its wider exposure to Via pool members, as individual licensors must still prove infringement patent-by-patent before FRAND arguments become decisive.

For SEP holders, Hamburg nevertheless provides a potentially important roadmap once infringement is established.

— Potential appeal —

Future cases may test how strong an implementer’s reasons for pursuing bilateral licensing must be, how much progress with individual licensors is enough, and when a failure to provide security weighs against willingness.

If Hamburg’s approach is followed elsewhere, pool licensing could become a stronger reference point in UPC FRAND disputes without becoming mandatory.

The rulings “foster pool licensing as [an] effective and transparent method,” Henke said. “The decisions will be important reference points in future litigations and — hopefully — negotiations.”

HMD has two months to lodge an appeal. If it does, the UPC Court of Appeal could be asked to review when a FRAND-compliant pool offer is enough, when an implementer can insist on a bilateral license, and how the absence of security should weigh in assessing willingness.

That could determine how much freedom SEP holders and implementers ultimately have to choose their preferred licensing route at the UPC.

Please e-mail editors@mlex.com to contact the editorial staff regarding this story, or to submit the names of lawyers and advisers.

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