ZTE v Samsung (UPC_CFI_850/2024)
Decision date:
24 July 2025
Osborne Clarke summary
- This is a decision of the panel in the Mannheim LD, considering the judge-rapporteur's decision on the value in dispute in the case of an infringement action with a FRAND counterclaim. The panel upheld the judge-rapporteur's decision.
- The Mannheim LD confirmed, contrary to Samsung's arguments, that a FRAND counterclaim is not a "mere defence to the infringement action" and therefore its value in dispute is not limited to the value in the dispute in the infringement action. Provided that the FRAND counterclaim is not restricted to a licence for the patent in suit only, it expands the subject matter and therefore the value of the dispute beyond the infringement action. The objective interest of the counterclaim "goes beyond fending-off the infringement action".
- The panel also noted that just because a FRAND counterclaim is not listed in the fee basis does not justify the conclusion that the FRAND counterclaim does not attract court fees. The fee limit for a counterclaim for revocation does not apply by analogy to a FRAND counterclaim. There are reasons for limiting the fees in respect of a revocation counterclaim that do not apply to a FRAND counterclaim. By filing a FRAND counterclaim, the defendant is seeking a licence agreement that goes beyond the patent in suit and, therefore, is not disadvantaged by having to pay fees that exceed the fees for the infringement action. If the defendant is successful, it will receive more than if it merely defended itself against the infringement action. As such, higher fees than those for an infringement action are not disproportionate or unfair.
Issue
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