Context: Samsung set an industry record by filing effectively overlapping FRAND (fair, reasonable and non-discriminatory licensing) claims relating to ZTE’s standard-essential patents (SEPs) in three jurisdictions (UK, Germany, U.S.). It is an unprecedented brute-force strategy that we wrote could backfire (March 3, 2025 ip fray article), and indeed, Judge Araceli MartĂnez-OlguĂn has already deprioritized the case before the United States District Court for the Northern District of California (June 18, 2025 ip fray article). And there is a FRAND determination action pending in China, which was brought by ZTE.
What’s new: It now turns out that Samsung’s appetite for judicial FRAND determinations is as strong as ever. An order published today by the Unified Patent Court’s (UPC) Mannheim Local Division (LD) shows that Samsung has brought a FRAND counterclaim in the UPC.
Direct impact: Today’s order (PDF) merely holds that the value in dispute was set too law by Samsung when it proposed €4M, without specifying the specifics of the FRAND determination Samsung is seeking. Given that a FRAND license would involve more patents than the patent-in-suit in that particular action, the court deemed a substantially higher value in dispute (based on which court fees and the caps for fee-shifting are calculated) warranted, but the exact number is redacted. It is only a preliminary determination. Adjustments may be made at the interim conference somewhere between now and the oral hearing (i.e., trial).
Wider ramifications: That means Samsung wants four different courts (actually, even five if one includes the Chinese court where ZTE brought a case) to deal with SEP-specific issues relating to the same commercial negotiation, regardless of whether any of those courts may have something else to do.
It is already known from publicly accessible U.S. court filings and a UK hearing in open court (on Samsung’s request for an interim license) that Samsung wants a global FRAND determination in the UK and a forcible global license offer as its desired result of the proceedings in Frankfurt, Germany. Moreover, ZTE wants a global agreement as well.
Therefore, the FRAND counterclaim in the UPC must substantively overlap with a couple of other cases.
Such a counterclaim is optional, unlike a revocation claim that is mandatory for those seeking to raise an invalidity defense in the UPC as the UPC’s Court of Appeal (CoA) noted in a decision we discussed earlier today. It is not a given that the UPC will fully adjudicate the FRAND counterclaim prior to potentially ordering an injunction should an infringement of a valid ZTE patent be found. So far, the UPC has not made a FRAND determination. A couple of other FRAND defenses were addressed simultaneously with the technical merits.
By asking virtually every court where it has (or, preferably, starts) a dispute with ZTE for FRAND-related decisions, Samsung creates a situation in which no single court can really know what its role is. And even if it knew what that role is today, things could change tomorrow.
Presumably the primary purpose of the counterclaim in the UPC is to slow down the infringement proceedings, but the UPC as a whole is very committed to its goal of deciding cases within a year of filing and the Mannheim LD has had to deal with such tactics before. It will be interesting to watch the Mannheim LD’s case management, and eventually the substantive scope of the FRAND counterclaim will come to light.
Court and counsel
The procedural order was entered by Judge-rapporteur Dirk Boettcher (“Böttcher” in German).
Counsel for plaintiff ZTE: Taliens’s Dr. Thomas Lynker.
Counsel for defendant-counterclaimant Samsung: A&O Shearman’s Dr. Jan Ebersohl.