Context: InterDigital sued TCL before the UPC’s Munich Local Division (LD) over EP2452498, a patent relating to partition coding and region-based filtering in High Efficiency Video Coding (HEVC). As part of its fair, reasonable, and non-discriminatory (FRAND) liccensing defense, TCL asked the court to order InterDigital to produce comparable portfolio license agreements so that TCL could assess whether InterDigital’s offer was FRAND-compliant.
What’s new: The Munich LD rejected TCL’s request for InterDigital’s comparable license agreements as premature because TCL’s willingness to take a FRAND license is itself disputed. The court held that a standard-essential patent (SEP) holder’s obligation to submit comparable agreements applies only toward a willing license seeker, leaving the willingness issue for the full panel’s final decision.
Direct impact: The order allows InterDigital to avoid producing comparable license agreements for now, despite TCL’s argument that they are needed to test whether its offer is FRAND. By treating TCL’s willingness as a threshold issue, the Munich LD may be able to resolve the FRAND defense without ever reaching a detailed comparison of InterDigital’s third-party licenses.
Wider ramifications: The order suggests that the Munich LD may place implementer willingness ahead of detailed scrutiny of the SEP holder’s licensing comparables. If that approach is followed more broadly, German UPC divisions could resolve some FRAND defenses on willingness grounds without requiring SEP holders to disclose potentially sensitive third-party license agreements, reinforcing a disclosure model that is comparatively favorable to patentees and known from German national court practice.
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Court and counsel
Munich LD – Judge-rapporteur Georg Werner.
InterDigital was represented by Bardehle Pagenberg’s Dr. Tilman Müller.
TCL was represented by Hoffmann Eitle’s Dr. Thomas Gniadek.