UPC’s first-ever successful FRAND defense: Milan LD sides with ASUS against Ericsson

Context: Ericsson and ASUS have been embroiled in a standard-essential patent (SEP) dispute for several years. In June 2024, Ericsson sued ASUS in the UPC’s Milan Local Division (LD) over two High Efficiency Video Coding (HEVC) SEPs. After the proceedings were repeatedly delayed, Ericsson sought provisional measures (i.e., preliminary injunctions), which were denied (June 17, 2026 ip fray article).

What’s new: Today the Milan LD entered its rulings in the two main proceedings. In one case, the patent-in-suit (EP3076673 on “Decoding and encoding of pictures of a video sequence”) was deemed invalid for added matter or, alternatively, lack of novelty after modifying the priority date. In another case, the patent-in-suit (EP2727342 on “Reference picture signaling”) was held valid and infringed, but the Milan LD limited Ericsson’s remedies to a declaration of infringement and an entitlement to damages as well as an accounting enabling the calculation of a damages claim. Injunctive relief was denied because, in the Milan LD’s opinion, Ericsson had not met its obligation to provide notice of infringement prior to filing suit. The Milan LD also declined to declare the patent standard-essential.

Direct impact: Ericsson can and presumably will appeal the EP’673 decision and the denial of injunctive relief over EP’342, while ASUS can and presumably will appeal the liability holding over EP’342. That patent still has more than five years left.

Wider ramifications:

• This the first-ever successful FRAND defense in the UPC. This would be an achievement for any firm, but what makes it particularly noteworthy is that Wildanger is far more often seen enforcing (than defending against) SEPs. Few firms have obtained as many SEP injunctions as Wildanger.
• Given that Ericsson has never before lost over FRAND, many third parties will likely be discouraged by this outcome from asserting SEPs in the Milan LD.