UPC_CFI_301/2025 – Orange v HMD

Expert Commentary

FRAND case, further submissions Facts 1. Orange sued HMD. 2. After receiving HMD’s rejoinder, Orange asked the Court to declare certain facts and arguments brought by HMD inadmissible on the ground that they were not raised in response to its reply but introduce new facts and arguments. Alternatively, Orange asked to be allowed to file further written submissions. 3. HMD states that there was nothing truly new (and that “front-loaded” should be interpreted largely). If the Court were to allow the alternative request, it wants the possibility to answer. The JR 1. The disputed facts and arguments concern non-technical issues relating to the FRAND defence. There is no provision that such FRAND defence should be raised in specific submissions such as a Counterclaim for revocation. Under the general principle of fairness, Orange should be able to react (whether or not the facts and arguments presented by HMD are new). 2. There is no justification for HMD to react (as HMD is the one who raised the FRAND defence in the first place). Their final response (rejoinder with respect to Orange’s application for amending the patent) is still due. 3. The JR allowed Orange’s request and dismissed HMD’s. Comment 1. Although this seems a practical solution which does not interfere with the progress of the proceedings and which may lead to a better instruction of the Court, I am somewhat puzzled by the decision. 2. Like each defence, the FRAND defence is a defence to defend against the claim of the claimant. So why is this fundamentally different from another defence? If HMD did not bring all their arguments in their Statement of defence, why should they be allowed to do that in their Rejoinder when Orange cannot react anymore and why are these new elements admitted? 3. I see no special reason for that just because it is a FRAND defence. 4. I agree that if there are good reasons for new facts and submissions, then it is fair to give Orange the possibility to react. But, in such a case, it is also fair to give the defendant the possibility to react or in this case to say explicitly (what the JR meant to say is implicitly) that HMD could react in their last rejoinder with respect to Orange’s Application to amend its patent. 5. I say this because the rejoinder to the application to amend the patent can in principle not be used to bring facts and arguments which have nothing to do with this application (but with the FRAND defence). 6. Ultimately, nothing prevented HMD from filing a Counterclaim, asking the Court to rule that its offer is FRAND and that Orange is not entitled to an injunction, should the Court hold that the invoked patent is valid and has been infringed. 7. I do not know the case but I assume that, in order to avoid an injunction on the ground of unwillingness to agree to a FRAND license, HMD has made a (conditional) FRAND offer and paid license fees in escrow while giving information about their use of the patent (if that information is sensitive, under a confidentiality obligation). These, in my opinion, should be the conditions for a successful FRAND defence.

Full Decision Text

1 Paris Local Division UPC CFI 301/2025 Procedural Order of the Court of First Instance of the Unified Patent Court delivered on 10/04/2026 concerning Rules 9.2 and 36 RoP APPLICANT – CLAIMANT Orange SA Represented by 111, quai du Président Roosevelt, Volkmar Henke CS 70222 - 92449 ISSY LES MOULINEAUX CEDEX - FR RESPONDENT - DEFENDANT HMD Global Oy Bertel Jungin aukio 9 02600 Espoo - FI Represented by Oliver Bäcker PATENT AT ISSUE Patent no. Proprietor EP2345029 Orange SA DECIDING JUDGE Presiding judge & Camille Lignières Judge-rapporteur LANGUAGE OF PROCEEDINGS: English 2 ORDER Summary of facts and procedure In the context of an infringement action brought by ORANGE against HMD, ORANGE filed an application under Rules 9.2 and 36 of the Rules of Procedure (RoP) dated 17 March 2026, seeking to have certain facts and arguments put forward by HMD in its latest submission (Rejoinder Part II) declared inadmissible as late filed, or alternatively to be permitted to respond to them by means of supplementary written submissions, as proposed and included in the concerned application. In written comments of 8 April 2026, filed as requested by the judge-rapporteur via CMS communication on 27 March 2026, HMD opposes this application, arguing that the facts and arguments in its Rejoinder Part II are, in its view, such that these elements “do not introduce new matter that substantially departs from the SoD, or merely factual or legal additions in reaction to the opposing party’s prior submission”, which is consistent with the UPC’s case law. HMD adds that the ‘front-loaded’ nature of the procedure should not be interpreted too narrowly. They conclude that the ORANGE’s request must be dismissed. In the alternative, HMD requests that, should the judge permit further submissions on FRAND, it be allowed to respond to them. Legal framework Point 2 of the RoP’s preamble R 9.2 RoP R 36 RoP Grounds for the order The Court notes that ORANGE’s application, based on Rule 9.2 and Rule 36 of the Rules of Procedure, relates solely to the non-technical aspect, namely the FRAND defence raised by HMD. With regard to this specific defence, the Rules of Procedure provide no provision for it, unlike in the case of a counterclaim for revocation or an application to amend the patent, where the number and content of the pleadings are precisely set out (see Rule 29 et seq. of the Rules of Procedure, or Rule 30 et seq. of the Rules of Procedure). Concerning the FRAND defence, the Judge-Rapporteur must therefore apply the general principles of ‘fairness’ and of adversarial proceedings set out in the preamble to the RoP (point 2). As this is a defence raised by HMD against ORANGE, it is justified that the counter-defendant in this FRAND defence (i.e., ORANGE) should have the final say on this point in order to ensure a ‘fair trial’. Consequently, without having to verify whether the arguments put forward by HMD in Part II (FRAND defence section) of its ‘Rejoinder’ were new or not, it is appropriate, in the interests of ‘fairness’, to allow ORANGE to respond last on the FRAND defence and thus to allow ORANGE to submit its written response on this point, as included in its application of 17 March 2026, Part II: pages 14 to 86. 3 At this stage of the proceedings, there is no justification for allowing HMD to respond further to the FRAND defence; the next submission will be HMD’s final response to ORANGE’s application for patent amendment (Rejoinder to the reply under R.32.3 RoP). For these reasons, the Judge-rapporteur: -Allows the submission from ORANGE, included in its procedural application of 17 March 2026, regarding the FRAND defence -Part II: pages 14 to 86; -Denies the subsidiary request from HMD; -The present order may be reviewed under R. 333 RoP. C. LIGNIERES, Judge-rapporteur. ORDER DETAILS UPC number: UPC CFI 301/2025 Application type: R. 9.2 RoP AND R. 36 RoP Action type: Infringement Action Date of issue: 10 April 2026

Key Holdings

• The Court may allow further submissions to ensure fairness, particularly when new FRAND defense arguments are introduced.
• Under the general principle of fairness, a claimant should be able to react to new facts and arguments related to a FRAND defense, regardless of whether they are truly 'new'.
• The Court found no justification for the defendant to react further if they were the party initially raising the FRAND defense.
• The commentator questions the differential treatment of FRAND defenses regarding the timing of introducing new arguments in rejoinders.
• A successful FRAND defense typically requires a conditional FRAND offer, escrow payments, and disclosure of use information.

Tags

• FRAND
• Procedural
• Submissions
• Fairness
• Defence