In-depth reporting and analytical commentary on intellectual property disputes and debates. No legal advice.

UPC CoA ruling leaves glass half-empty (at best) for FRAND determination claims as its theory amounts merely to ancillary jurisdiction

Florian Mueller

It is uncertain whether patentees — and rather unlikely that implementers — will really want to put the UPC at the center of their FRAND determination strategies. Major uncertainty remains. The permissive approach to anticipatory ancillary1 claims contrasts with the narrow holding on FRAND claims per se. It could find future application even in non-SEP cases.

Context:

  • Last fall, the Unified Patent Court’s (UPC) Paris Local Division (LD) denied (Section 1.2 of our November 24, 2025 UPC Roundup) a preliminary objection (PO) by vivo, a high-volume mobile device maker, against a standard-essential patent (SEP) infringement complaint by licensing firm Sun Patent Trust (SPT):
    • The simplest part was territorial jurisdiction (a sample had been purchased online) and was decided straight away (i.e., with prejudice2).
    • The more difficult question of a FRAND (fair, reasonable and non-discriminatory licensing) determination sought by SPT was relegated (i.e., denied without prejudice) (Section 1.4 of our November 9, 2025 UPC Roundup) to the final ruling.
  • The unusual part is that a SEP holder (here, SPT) brought FRAND claims. FRAND defenses by implementers are common in the UPC and sometimes upgraded to FRAND counterclaims (see, e.g., ZTE v. Samsung: March 19, 2026 ip fray article).
  • Last week, we reported on two Court of Appeal (CoA) hearings of appeals — both from the Paris LD with a focus on jurisdiction — that were held during the first third of this month (March 10, 2026 ip fray article). One was decided a week ago: OpenAI, Adobe, and their co-defendants foreseeably succeeded in getting certain long-arm claims thrown out (March 10, 2026 ip fray article). The other was vivo’s appeal, and the panel kept the cards closer to its chest.

Claims at issue:

A. As the principal claim,

I. [INFRINGEMENT] to hold that the Claimant has demonstrated that the Defendants infringe [the specific claims of the patent at issue] by offering, importing, exporting, using, placing on the market, in France and Germany, 4G+ compatible mobile phones and devices including but not limited to […];

II. [FRAND TERMS] To find that the terms on which the Claimant is willing to license [the patent at issue], as set out in HRM Exhibit No. 9.4 are FRAND. Alternatively, where the Court determines that adjustments are required to the terms on which the Claimant proposes to license [the patent at issue], in order to bring these terms into the FRAND range, to find those (adjusted) terms to be FRAND.

III. In the event that the Defendants and each of them do not enter into a licence on such terms as the Court determines to be FRAND within a specified time period to be directed by the Court:

  1. [INJUNCTION] subject to a penalty to be determined by the Court for each case of infringement, an injunction to restrain the Defendants and each of them (whether acting by their directors, officers, employees, agents or otherwise howsoever) from infringing [the patent at issue] (Article 63 UPCA) in the Contracting Member State in which European Patent No. […] has effect […].
  2. [DESTRUCTION] […].

What’s new: The CoA has affirmed the Paris LD’s decision. In the headnotes (which you can find further below), the CoA focuses on a purely procedural question: the judge-rapporteur does not have to decide single-handedly on whether to leave a PO matter to the later proceedings, but is free to involve the entire panel at the PO stage. The decision then goes on to review the panel decision and finds no abuse of discretion. It gets there on a pragmatic, case management-centric basis, but sidesteps the question of whether the UPC can ever grant an Unwired-like3 conditional injunction.

Direct impact:

  • The first part (panel or single-judge decision) could have led to delays if vivo had prevailed on it. Its best bet for a delay over this would have been an extension of the deadline for its Statement of Defense, which was denied last year.
  • The second part (FRAND jurisdiction) could still be resolved in vivo’s favor by the panel, particularly the prayer for an Unwired injunction. The UK Supreme Court (UKSC) was formally bound by Huawei v. ZTE when it decided Unwired, but four months before Brexit took full effect,4 it didn’t care anymore. Reasonable people can disagree on whether Unwired is consistent with Huawei v. ZTE.

Wider ramifications:

  • While this standard of review limits the precedential impact of the decision and none of the more substantive questions was dignified with a headnote, certain holdings make it a much more important ruling than it seems.
  • It is too early to tell, but the view voiced by the Mannheim LD this week that it can go ahead with a FRAND determination even in the absence of a finding of an infringement of a valid SEP is unsupported by the logic of the CoA ruling.
  • If the CoA declined in the future to go far beyond the logic applied in vivo v. SPT, it would (as explained further below)
    • categorically close the door to UK-style proactive FRAND claims by implementers in the UPC and
    • make the UPC a FRAND determination forum that SEP holders cannot really rely on to deliver results to use in proceedings in other jurisdictions or to dissuade other jurisdictions from going forward with their FRAND cases.
  • While conservative and narrow on FRAND itself, the ruling is rather bold on the concept of anticipatory ancillary claims (the verb “to anticipate” occurs three times in the decision; for the avoidance of doubt, the adjective “ancillary” does not).
  • Ericsson is another SEP holder to have brought FRAND claims in the UPC, even in two different LDs (against Transsion in the Hague LD: November 14, 2025 ip fray article; against Verifone: February 20, 2026 ip fray article).

1. Likelihood of success of different types of claims

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If the UPC adopted such an approach, it should, like the English courts, expect an implementer to make an absolutely firm commitment before embarking on a multi-day or multi-week rate-setting trial at a later date.

7. Headnotes

(i) The decision to deal with the Preliminary objection in the main proceedings may be taken either by the judge-rapporteur, as laid down in R. 20.2 RoP, or by the panel if the judge-rapporteur has decided to refer the matter to the panel to decide.

(ii) This follows from the first part of R. 102.1 RoP, according to which the judge-rapporteur may refer any matter to the panel for decision. Although this provision is provided for under Chapter 2 (R. 101 to 110 RoP) of the Rules of Procedure on the interim procedure, it shall apply mutatis mutandis to the written procedure where the judge-rapporteur, after his assignment to the case by the presiding judge pursuant to R. 18 RoP, is likewise tasked with the management of the case, including case management decisions or orders relating to a Preliminary objection.

(iii) This is further confirmed by R. 331 RoP on the responsibility for case management which provides that (R. 331.1 RoP) during the written procedure and the interim procedure, case management shall be the responsibility of the judge-rapporteur subject to Rules 102 and 333 and that (R. 331.2 RoP) the judgerapporteur may refer a proposed order to the panel. Case management includes, inter alia, deciding the order in which issues are to be decided and ordering that issues or matters are to be heard together (R. 334(e) and (i) RoP).

8. Panel and counsel

Panel 1a: President Dr. Klaus Grabinski, Judge-rapporteur Emmanuel Gougé, and Judge Peter Blok.

Sun Patent Trust is represented by Hoyng Rokh Monegier’s (ip fray firm profile) Caroline Levesque and Sabine Agé.

vivo is represented by Vossius’s Dr. Georg Andreas Rauh.

  1. The decision does not use the word “ancillary”, a term that is common in U.S. law, but that is what the FRAND part of the decision is about. ↩︎
  2. Many of our readers are particularly familiar with U.S. litigation, which is why we often use U.S. terminology — in this case, just as an analogy. ↩︎
  3. Unwired Planet International Ltd and another (Respondents) v Huawei Technologies (UK) Co Ltd and another (Appellants), UKSC/2018/0214, decided on August 26, 2020. ↩︎
  4. ECJ case law remains binding on the lower courts in the UK until the higher courts deviate from it. The UKSC is the top UK court. So when it decided Unwired, it was formally bound, but they knew that a few months later they were going to be free to deviate as much as they want. ↩︎
  5. The word “dependent” is used in many contexts, also for patent claims. Indeed, para. 20 refers to the infringement claim as an “independent claim” (which then counterintuitively does not mean a patent claim). But those reading the decision will know it is about FRAND, not patent claims. ↩︎
  6. To be very precise, it is at least debatable whether FRAND is a defense to infringement or, more likely, merely to a prayer for injunctive relief. ↩︎
  7. This EU antitrust case was decided in 2023. The decision identified, and the ECJ’s press release emphasized, a violation of EU competition rules by soccer body UEFA. But the decision was based on a 2021 preliminary reference at a time when UEFA did not have a “pre-authorization” system for competing European soccer tournaments in place, and that deficiency was the primary issue addressed by the ruling. Such a system was put in place just in time before the 2022 ECJ hearing, however. Whether it would have withstood the ECJ’s scrutiny is not (and probably will never be) known, but the 2023 judgment and (which was a major failure by the ECJ) press release referred to 2021 facts that had changed in 2022. ↩︎