UPC Hamburg finds HMD unwilling after rejecting pool route for bilateral licensing

Context: Fraunhofer sued HMD Global in two parallel actions before the Hamburg Local Division (LD), each concerning a standard-essential patent (SEP) relating to Advanced Audio Coding (AAC) and implemented in smartphones and tablets using Android 9 or later.

What’s new: The Hamburg LD granted Fraunhofer injunctions against HMD and held that a SEP holder generally needs to provide only one fair, reasonable and non-discriminatory (FRAND) compliant licensing route, which may be a pool license. HMD was nevertheless found unwilling after insisting on bilateral licensing without sufficient justification or progress and without providing security.

Direct impact: The ruling strengthens SEP holders’ ability to rely on patent-pool licensing at the UPC. Implementers that reject a FRAND-compliant pool offer in favor of bilateral deals will need to justify that choice and show through their subsequent conduct that they are genuinely pursuing licenses rather than delaying them.

Wider ramifications: The decision adds to the UPC’s developing case law on implementer willingness under Huawei v. ZTE. While Hamburg accepts that an implementer may in some circumstances insist on bilateral licensing despite an available pool offer, it makes clear that this choice will be tested against the implementer’s conduct over time. The ruling also highlights a potential divergence within the UPC on security: Hamburg treated the absence of security as one factor in the overall willingness assessment rather than as an automatic bar to a FRAND defence.