UPC_CFI_850/2024 – ZTE v Samsung
- Court
- Local Division Mannheim
- Date
- Outcome
- Denied
- Sector
- Other
- Decision Type
- PROCEDURAL
Expert Commentary
Value of the litigation Facts On 20 June 2025, the Court stated that the value of the counterclaim in the SEP case should be set. The JR 1. The JR disagrees with Samsung that the FRAND counterclaim is only a defence against the invoked patent and should have the same value as the infringement action. 2. The case is not about a license under the patent invoked. The counterclaim seeks a much wider license, as is usual in FRAND cases. 3. The fact that the FRAND counterclaim is not mentioned in the fee basis does not mean that it is free from court fees. 4. The fee limitation for a counterclaim for revocation is not applicable. That fee limitation is there for a different reason (i.e. not to deter the defendant in infringement proceedings from filing a counterclaim). 5. The order of 20 June 2025 is confirmed. Comment It seems to be a no-brainer that if a counterclaim seeks a FRAND license under standard essential patents reading onto a certain standard, the value is considerably higher than that for the one patent which is invoked. So the JR is right to stick to his guns!
Full Decision Text
1 Mannheim Local Division UPC_CFI_850/2024 Order of the Court of First Instance of the Unified Patent Court issued on 24 July 2025 concerning EP 3 905 730 value in dispute in the case of a FRAND counterclaim CLAIMANT: ZTE Corporation ZTE Plaza, Keji Road South, Hi-Tech Industrial Park, Nanshan District - 518057 - Shenzhen, Guangdong - CN Represented by Dr Thomas Lynker DEFENDANTS 1) Samsung Electronics Co., Ltd. (FRAND Counter-Claimant) 129 Samsung-Ro, Yeongtong-Gu, - 16677 - Suwon City, Gyeonggi- Do - KR Representend by Dr Jan Ebersohl 2) Samsung Electronics GmbH Frankfurter Straße 2 - 65760 - Eschborn - DE Represented by Dr Jan Ebersohl 3) Samsung Electronics France 6 Rue Fructidor, CS 2003 - 93484 - Saint-Ouen Cedex - FR Represented by Dr Jan Ebersohl 2 4) Samsung Electronics Italia S.p.A Via Mike Bongiorno 9 - 20124 - Milano - IT Represented by Dr Jan Ebersohl 5) Samsung Electronics Benelux B.V. Evert Van De Beekstraat 310 - 1118 CX - Schiphol - NL Represented by Dr Jan Ebersohl 6) Samsung Electronics Romania S.R.L. Platinum Business and Convention Center, sos. București-Ploiești, nr. 172-176, Clădirea A, etaj 5, sector 1 - 013686 - Bucharest - RO Represented by Dr Jan Ebersohl PATENT AT ISSUE: European patent EP 3 905 730 PANEL/DIVISION: Panel of the Local Division in Mannheim DECIDING JUDGES: This order was issued by the legally qualified judge Böttcher acting as judge-rapporteur. LANGUAGE OF THE PROCEEDINGS: English SUBJECT OF THE PROCEEDINGS: Patent infringement action with FRAND counterclaim – value in dis- pute REASONS FOR THE ORDER: Reference is made to the order of 20 June 2025. After having been heard, the Defendants did not bring forward any argument which justifies a deviating result at this stage. First, contrary to Defendants, a FRAND counterclaim is not a mere defence to the infringement action and its value in dispute therefore is not limited to the value in dispute of the infringement action. Rather, a FRAND counterclaim – at least if it is not restricted to a license for the patent-in- suit only - expands the subject-matter and thus the value in dispute of the court proceedings beyond the infringement action. The fact that the Regional Court of Munich may require a defendant to file a FRAND counterclaim in order not to be regarded as unwilling licensee is not decisive in proceedings before the UPC. Moreover, even if a defendant were obliged to file a FRAND counterclaim in order not to risk being considered to be unwilling to obtain a FRAND 3 license, this would not change the fact that a FRAND counterclaim – at least before the UPC – expands the subject matter of the court proceedings to a subject matter previously not contained in the infringement action. Similarly, the objective interest of the counterclaimant – especially if the counterclaim is not restricted to a license for the patent-in-suit only – goes beyond fending-off the infringement action. The fact that a FRAND counterclaim is not expressly listed in the fee basis does not justify the conclusion that a FRAND counterclaim is free of court fees. There is no indication that any type of action or counterclaim is intended to be exempt from court fees. At the very least, an additional action or counterclaim in pending court proceedings increases the value in dispute of those proceedings. Second, the fee limit for a counterclaim of revocation is not applicable mutatis mutantis to a FRAND counterclaim. The reason for limiting the fees for a counterclaim for revocation, which only relates to court fees, is not to avoid that, without the limitation of the court fees, a defendant might be deterred from filing a counterclaim for revocation, which is required to assert the invalidity of the patent-in-suit, just because of the court fees. If this were the case, representatives' costs, or at least reimbursable representatives' costs, which significantly exceed the amount of court fees, would also have been limited. Rather, the reason for limiting the restriction to court fees alone seems to be that not all UPC Member States impose fees on (counter)claims for revocation and, possibly, that the defendant also pursues the public interest in the revocation of an invalid patent by filing a counterclaim for revocation, which might justify granting him preferential treatment with regard to court fees. In any case, the situation with regard to a counterclaim for revocation is not comparable to a FRAND counterclaim because the defendant can instead rely on the pure FRAND objection within the infringement proceedings. Moreover, even if a SEP implementer had to file an action for the grant of a FRAND licence in order to be considered an implementer willing to obtain a licence if the patent proprietor refuses to grant him a FRAND license, this would still have to apply regardless of whether or not the implementer was sued by the patent proprietor for infringement. Against this backdrop, a FRAND counterclaim in order to demonstrate a willingness to obtain a FRAND license is not prompted by the defence against a patent infringement action. Moreover, taking the scope of the license sought and the parties’ different views on the licence fee into account does not conflict with a valuation method that is “as simple as practically possible” (cf. section I.1 of the guidelines of the Administrative Committee for the determination of the court fees and the recoverable costs of the successful party). Rather, the value is usually determined without difficulty from the different licence fees that the parties consider to be FRAND. Since the Defendant 1, by filing a FRAND counterclaim that is not limited to the patent-in-suit, is seeking a licence agreement that goes beyond the patent-in-suit and that corresponds to its understanding of FRAND, it is not disadvantaged by having to pay fees that exceed the fees for the infringement action. Rather, if successful, Defendant 1 will receive more than if it merely defended itself against the infringement action. For the same reason, higher fees than those for an infringement action are not disproportionate and not unfair. ORDER: The order of 20 June 2025 is confirmed and remains in force. 4 ORDER DETAILS Order no. ORD_33617/2025 in ACTION NUMBER: ACT_68656/2024 UPC number: UPC_CFI_850/2024 Action type: Infringement Action Related proceeding no. Application No.: 29513/2025 Application Type: Procedural Order Related to: Order no. ORD_29513/2025 in ACTION NUMBER: ACT_68656/2024 UPC number: UPC_CFI_850/2024 Action type: Infringement Action Issued in Mannheim on 24 July 2025 NAME AND SIGNATURE Böttcher Judge-rapporteur
Key Holdings
- Value of FRAND counterclaim set higher than infringement claim.
- FRAND counterclaim seeks wider license than just invoked patent.
- Counterclaim not exempt from fees despite fee limitation for revocation.
Tags
- Counterclaim
- Court Fees
- FRAND
- Litigation Value
- Standard Essential Patents