Short Summary
This procedural order concerns a request by the Defendant (HMD Global Oy) for the disclosure of licensing agreements cited by the Claimant (Fraunhofer-Gesellschaft) in its Statement of Claim and pre-trial negotiations, in two related infringement actions concerning European Patents EP 2 380 167 and EP 2 609 590. The Defendant argued that EU antitrust law requires the Claimant to behave transparently in license negotiations and to disclose relevant MPEG-4/AAC standard license agreements, including a bilateral agreement with a third party that allegedly gives rise to patent exhaustion. The Claimant partially agreed to submit its only currently in-force bilateral AAC patent license agreement, subject to confidentiality constraints, while challenging the broader request for disclosure of five historical license agreements with third parties.
Detailed Summary
This procedural order was issued by the Local Division of the Court of First Instance in Hamburg on 19 December 2025, in two consolidated proceedings (UPC_CFI_494/2025 and UPC_CFI_495/2025). The Claimant is Fraunhofer-Gesellschaft zur Förderung der angewandten Forschung e.V., a German research organization based in Munich, represented by Dr. Volkmar Henke. The Defendant is HMD Global Oy, a Finnish company based in Espoo, represented by Oliver Bäcker. The patents in suit are European Patent Nos. EP 2 380 167 and EP 2 609 590, both owned by the Claimant. The proceedings are conducted in English, and the deciding judge is Judge-rapporteur Dr. Schilling. The subject of the application is a request to produce evidence under Rule 190 of the Rules of Procedure.
The Defendant requested the disclosure of licensing agreements cited by the Claimant in its Statement of Claim or in pre-trial negotiations. The Defendant contended that the Claimant has an obligation under EU antitrust law to behave transparently in license negotiations, including the obligation to present at least the relevant license agreements relating to the MPEG-4/AAC standard currently in place. The Defendant specifically pointed to a bilateral license agreement with a third party (whose identity is redacted in the text), which the Claimant referenced in its letter dated 22 October 2018. The Defendant argued that because this third party had already obtained a license under the Claimant's patent portfolio—including the patents-in-suit—this would result in exhaustion of the asserted claims, as it would constitute consent for mobile devices equipped with that third party's operating system (including the allegedly infringing embodiments in the present case) to be placed on the market. The Defendant further noted that the Claimant had stated in its initial letter dated 22 December 2017 that it had concluded five bilateral license agreements, all allegedly conforming to a sample license agreement attached to that letter (exhibit BP 6a, p. 3, para. 15), which the Defendant disputed. The Claimant had relied on these agreements with the Defendant's competitors as the benchmark for assessing discrimination. The Defendant argued that disclosure was necessary to determine whether the license conditions invoked by the Claimant could be regarded as FRAND or were evidently unFRAND and discriminatory. Additionally, since the Claimant demanded royalties from 2017 onwards—a period during which the five bilateral license agreements were undisputedly in force—the Defendant argued that those agreements must serve as the primary FRAND benchmark, as it would be unFRAND for the Claimant to demand higher royalty rates for past years than it was permitted to demand while those agreements were still in force.
& Analysis: The Claimant agreed to submit the AAC Patent License Agreement concluded between the redacted third party and the Claimant—which the Claimant described as its only bilateral AAC patent license agreement currently in force—to the present proceedings. However, because that third party rejected the Claimant's request to disclose the agreement and pointed to a contractual confidentiality provision, the Claimant argued that a court order was necessary to overcome the contractual confidentiality obligation. The Claimant challenged the broader request for production of copies of the five license agreements concluded with third parties. The full reasoning and final ruling of the Court are not contained in the provided text, which appears to be truncated before the conclusion of the order.
Final Order & Ruling: The provided text of the procedural order is incomplete and ends mid-sentence during the description of the Claimant's challenge to the disclosure request. The final disposition and operative part of the order are not available in the provided excerpt.
Practitioner Note
This case demonstrates the evidentiary and procedural standards applied in patent matters before Hamburg (DE) Local Division. Understanding the court's reasoning in Frauenhofer-Gesellschaft zur Förderung der angewandten Forschung e.V. vs HMD Global Oy is valuable context for structuring arguments or assessing risk in similar proceedings.
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