by Curt Dodd and Christian Dubuc
Not only is the readiness of foreign courts to rule on patents from outside of their jurisdiction notable, so too is the willingness of other foreign courts to reign in such practices, at least with respect to patents subject to their respective jurisdiction.
While the focus of this annual summary of fair, reasonable and non-discriminatory (FRAND) / reasonable and non-discriminatory (RAND) licensing developments is on those impacting United States’ patents, increasingly many of the most significant developments are coming from abroad. 2025 set a new highwater mark in this regard and was accompanied by a significant uptick in court-shopping behavior by would-be net licensees. As is often the case, many of the disputes centered on the appropriateness of injunctive relief as a remedy for patent infringement in the absence of a license.
Let Me Tell You How It Will Be: Rate-Settings Activities
United Kingdom (UK) courts continued their path of determining FRAND / RAND rates for global patent portfolios, expanding the practice to include situations where no injunction is being sought in the UK, the patent owner does not agree to the proposed rate-setting, and the UK represents only a small portion of the would-be net licensee’s total exposure. For example, Taiwanese chipmaker MediaTek sought to have a UK court determine the rates for a license to Huawei’s portfolio, and not only did Huawei’s jurisdiction challenge fail but so too did its subsequent attempt to stay the case by, among other things, offering to expand the scope of its first filed Chinese rate-setting claim to include non-Chinese patents and offering to not enforce its standards essential UK portfolio against MediaTek. With respect to the latter, the undertaking was limited to MediaTek and did not extend to third parties such as MediaTek’s customers.
Consistent with the UK courts’ belief that UK law is best suited for resolving global SEP disputes, the UKIPO published a Consultation on Standard Essential Patents (SEPs) seeking feedback with respect to, among other things, a proposed “Rate Determination Track” that was not limited to UK patents. Most concerning to us were the unsupported positions set forth by the UKIPO regarding the causes of inefficiencies in the SEP licensing domain. Experts from the United States, including former judges and government officials, also voiced their concerns about the UKIPO’s proposals.
Ironically, at the same time as the UK sought more involvement in global SEP disputes, the European Union requested consultations at the World Trade Organization (WTO) based on China “empower[ing] its courts to set worldwide royalty rates for EU standard essential patents, without the consent of the patent owner.” Perhaps recognizing the tension resulting from simultaneously criticizing China while proposing its own rate-setting regime, the European Commission officially withdrew its proposed regulation on SEPs. Media reports indicate, however, that the European Parliament voted in favor of suing the European Commission for doing do. Recently, to alleviate concerns that Small and Medium Enterprises (SMEs) are disadvantaged in SEP licensing negotiations, a narrative advanced in support of government intervention in Europe, the United States and the UK, Ericsson, Huawei, Nokia, Qualcomm, and Sisvel have committed to making IoT SMEs an offer to mediate prior to initiating litigation or any “ judicial, regulatory, or administrative actions or procedures that relate to the infringement, validity, enforceability, or essentiality of a relevant SEP, as well as competition-related actions and actions to determine the rate or other terms of the license.” Finally, with respect to Europe, an IAM report (paywalled) from earlier this year indicates that the Unified Patent Court (UPC), Local Division Mannheim, has “‘left open’ the question of whether the UPC would determine a global FRAND rate…”. A more recent media report indicates that the UPC is set to consider this issue in the near future in conjunction with cases brought by Sun Patent Trust and Ericsson. One notable distinction between the rate setting activities in China and those being undertaken / proposed by the UK and Europe, is that the latter have yet to award licenses at the determined rates as a remedy.
Regarding the United States’ perspective on such matters, Deputy Assistant Attorney General of the Department of Justice’s (DOJ) Antitrust Division, Dinal Kallay, was recently quoted by IP commentator Florian Mueller as saying that courts “should just issue judgments for patents within their borders” as “[t]o do it differently could lead to situations where you have non-tariff trade barriers” which, according to Ms. Kallay, are “something that would not be tolerated”.
Across the Universe: Rate Setting for Pools
Last year we wrote about how Tesla sought to take rate-setting claims to the next level by asking a UK court to determine the FRAND terms and conditions for a global license to all patents covered by Avanci’s 5G Vehicles program, which includes many United States’ patents. Tesla lost its appeal in March of this year but the case is being appealed to the UK Supreme Court.
Stateside, the District Court for the District of Massachusetts dismissed claims brought by Roku against Access Advance for “a declaration of the FRAND terms and conditions for Roku to license any patents in the HEVC [High Efficiency Video Coding] Advance pool that Roku does not already have a license to”. According to Judge Richard G. Stearns’ Electronic Order of July 22, 2025, “The court lacks jurisdiction to determine the FRAND rate as requested in Count IX. The U.S. patents constitute only a fraction of the larger portfolio which includes hundreds of foreign patents. [sic] and the court’s opinion on the appropriate royalty rate would merely be advisory. …”. This ruling has been appealed by Roku.
Finally, recall from last year’s summary that the Shenzhen Intermediate People’s Court found that Chinese courts have jurisdiction to set rates for overseas patent pools / joint licensing programs in a case involving TCL and pool operator Access Advance. While the case was settled before a rate-setting occurred, the decision is still out there as they say.
You Can’t Do That: Interim Licenses and Anti-Suit Injunctions
Another significant development potentially impacting SEPs in the United States is the practice of UK courts declaring patent owners “unwilling” for refusing to grant interim licenses pending a rate setting being conducted by such courts. While not the same as an anti-suit injunction, if agreed to by a patent owner an interim license achieves the same result, i.e. prevents the patent owner from seeking injunctive relief during the pendency of the license. Notably, the UK Court of Appeal expanded the practice of making such declarations this year by declaring that if Ericsson were a willing licensor it would agree to an interim license and cease seeking injunctive relief (including from the United States International Trade Commission (USITC)), despite the fact that Ericsson did not agree to the proposed UK rate-setting. The big question this decision raises is what would happen if Ericsson chose not to grant the interim license? Would the declaration merely limit Ericsson’s ability to get an injunction for patent infringement in the UK, or could such a determination be used as the basis for seeking specific performance (i.e. requiring Ericsson to grant a license at the rates determined by the UK court)? Echoing the views of the United States Court of Appeals for the Federal Circuit the UK Court of Appeal also found that Ericsson breached its obligation to the European Telecommunications Standards Institute (ETSI) by seeking injunctive relief notwithstanding Lenovo’s commitment to accepting a rate-setting conducted by a UK court. Although Ericsson did not provide Lenovo with an interim license, the parties settled their dispute(s) before any ramifications for not doing so became known. More recently, as was reported by IAM (paywalled), the English High Court made an interim licensing declaration in a case involving Nokia, notwithstanding Nokia offering binding arbitration and an adjustable license tied to the outcome of the proposed arbitration. The High Court also rejected Nokia’s arguments that the ITU-T RAND undertaking regarding video codec standards did not require the granting of licenses but merely set forth an obligation to negotiate in good faith.
Much like the rate-setting situation, the granting of interim licenses by UK courts is occurring against the backdrop of another WTO dispute initiated by the European Union, this one with respect to China’s practice of granting anti-suit injunctions. Earlier this year the EU appealed a WTO panel report which, according to an EU NEWS ARTICLE, acknowledged that China has “developed a policy of limiting intellectual property rights…” and “must be more transparent by transmitting to the EU and other WTO members information on intellectual property matters, including court judgments” but came up short of finding that China had violated the Trade-Related Aspects of Intellectual Property Rights (TRIPS) Agreement. A WTO appeal Arbitrator, however, reversed several findings of the WTO panel and, according to the European Commission, found that “China’s anti-suit injunction policy frustrates the exercise of the exclusive rights conferred to holders of standard essential patents (SEP) by other WTO Members under the TRIPS Agreement” and that “the availability of anti-suit injunctions to Chinese SEP implementers under China’s anti-suit injunction policy alters the negotiating position of SEP holders in a fundamental way.” The decision of the WTO appeal Arbitrator can be found here.
With a Little Help from My Friends: Preserving the Right to Enjoin
Not only is the readiness of foreign courts to rule on patents from outside of their jurisdiction notable, so too is the willingness of other foreign courts to reign in such practices, at least with respect to patents subject to their respective jurisdiction. For example, an IAM report (paywalled) from earlier this year indicates that Nokia obtained anti-anti-suit injunctions from both the UPC’s Munich Local Division and a German Regional Court in Munich preventing Sunmi from interfering with infringement cases filed in those courts. Notably, such injunctions were granted before the Yunnan Kunming Intermediate Court, from which Sunmi sought a rate determination, had issued an anti-suit injunction. While such anti-anti-suit injunctions do not impact patents outside of Europe and Germany, they do reflect how courts in the United States would likely react in a similar situation (see, for example, the section on Ericsson v. Samsung in our 2021 summary).
More recently, in addition to anti-anti-suit injunctions, a UPC and Munich court granted injunctions, ex parte, prohibiting Amazon from seeking, from the UK High Court, interim-license declarations and/or declarations that InterDigital breached its contractual RAND obligations by refusing to provide such licenses, which interfere with InterDigital’s infringement actions before the UPC and Munich court respectively. In response, Amazon secured its own anti-anti-suit injunction from the High Court of Justice for England and Wales, ex parte, ordering InterDigital not to interfere with Amazon’s request for a UK rate-setting and for an order requiring InterDigital to offer the determined rates, failing which, a declaration that InterDigital is an unwilling licensor. Notably, InterDigital had not asserted any patents against Amazon at the time the UK anti-anti-suit injunction was granted. As was also reported by Florian Mueller, these dueling injunctions culminated with the UPC issuing a formal notification to the European Commission on Christmas Eve. Shortly before publication of this article, a recent IAM report (paywalled) indicates that a UK High Court removed an anti-anti-suit injunction granted against Nokia, ex parte, in view of Nokia’s commitment to provide notice before seeking to have a foreign court enjoin the UK rate-setting and interim licensing claims.
InterDigital also secured an anti-anti suit injunction, ex parte, from the UPC in light of Disney seeking an anti-suit injunction from the U.S. District Court for the Central District of California to prevent InterDigital from enforcing “any injunction awarded to it in the Brazilian action until this Court resolves Defendants’ RAND licensing counterclaims and the parties exhaust all appeals of that resolution.” According to the Order of the California Court, Disney’s request for an anti-suit injunction was denied because Disney did not “currently face the likelihood of irreparable harm” as “[n]o Brazilian court has issued a preliminary injunction, the terms of a hypothetical preliminary injunction are unknown and Disney has not shown that it is likely that a preliminary injunction will issue.”
The Long and Winding Road: Samsung v. ZTE
One FRAND licensing dispute worthy of specific mention is the one between Samsung’s and ZTE that involved several different courts from around the world as well as ETSI itself. Among other things, Samsung filed breach of contract and antitrust claims in the U.S. District Court for the Northern District of California, sued for infringement and sought a global rate-setting determination in the UK, and asked a German court to require ZTE to accept a license. ZTE, for its part, sued for infringement in various places and sought to have the Chongqing Intermediate People’s Court conduct a global rate-setting for the parties. Interestingly, unlike its prior dust-up with Ericsson circa 2020-2021 (which we touched on here), Samsung sought to avoid a rate-setting being conducted by the Chinese courts.
Capturing the most headlines in this conflict was the High Court of England and Wales granting Samsung’s request for declaration that a willing licensor in the position of ZTE would grant an interim license pending the UK rate-setting and a declaration that ZTE’s refusal to grant such an interim license constitutes breach of its obligations to ETSI, despite ZTE’s willingness to have a rate setting be conducted by the Chinese court. Pushing back on Samsung’s request ZTE argued that “[t]here is no proper basis for the English Court to cast doubt on the legitimacy of the Chinese proceedings” and that Samsung was “inviting the English Court to engage in an act of jurisdictional imperialism.” In response, Justice Mellor wrote as follows:
If ZTE were right in their opposition to this application and the position they have adopted, it would add a powerful weapon to the SEP licensor’s armoury, in this sense. Any action for FRAND terms commenced by an implementer or net payer under a cross-licence, could be derailed in short order by the SEP licensor offering an interim licence on condition that the other party must accept the SEP licensor’s choice of forum, the offer being backed with injunctive relief in other jurisdictions, most likely targeted to cause the maximum damage to the SEP licensee’s business. I do not think the Court should encourage, assist or contemplate such naked forum shopping.
Following the High Court’s decision, and ZTE’s refusal to offer an interim license, Samsung took the unprecedented step of writing to ETSI seeking “prompt commencement of the procedure in accordance with clause 8.2 of the ETSI IPR Policy to remove ZTE’s IPRs from any given standards and technical specifications relating to 2G, 3G, 4G and 5G.” While the ruling of the High Court itself did not provoke an anti-anti suit injunction, a media report indicates that the Munich Regional Court granted an order, ex parte, enjoining Samsung from pursuing its complaint with ETSI based on the UK declarations. Subsequent thereto, and notwithstanding the UK court being first seized, the English Court of Appeal granted ZTE’s appeal concluding that “unless there is a legitimate and substantiated objection to the forum in question, it does not constitute bad faith for a SEP owner to seek to force an implementer to accept determination of FRAND terms by the SEP holder’s preferred court rather than the implementer’s preferred court.”
Before moving on, two orders from the Northern District of California court are worth mentioning. Likely signaling skepticism about the appropriateness of Samsung’s claims in the United States, Judge Araceli Martinez-Olguin first granted ZTE’s motion to stay discovery and, thereafter, refused to set a case management conference. These orders were made in view of ZTE’s motions to dismiss for lack of Subject Matter Jurisdiction, lack of Personal Jurisdiction and, with respect to Samsung’s antitrust claims, for failure to state a claim. Notably, China based ZTE has not sold its products in the United States since 2018.
We (The Parties) Can Work It Out: Antitrust Developments
Recently, the DOJ Antitrust Division filed a Statement of Interest with respect to antitrust claims brought by Disney in the District of Delaware alleging InterDigital’s enforcement activities constituted an anticompetitive scheme to obtain supra-RAND royalties and non-RAND conditions. As we discussed in previous year end summaries (here and here for example) such Statements of Interest were a defining feature of the DOJ during the first Trump administration. Specifically, but without taking a position on InterDigital’s motion to dismiss, the DOJ “urge[d] the Court to hold that ‘a patent does not necessarily confer market power upon the patentee’… including a patent declared as ‘essential’ to a technology standard, that seeking higher prices is not, by itself, harm to the competitive process, and that InterDigital’s litigation efforts to bring patent infringement claims are exempt from antitrust liability under the Noerr-Pennington doctrine given that InterDigital’s ‘First Amendment right ‘to petition the Government for a redress of grievances’ is at stake’”. With respect to the latter the Statement of Interest further notes that “exercising the right to seek judicial redress cannot serve as the basis for an antitrust claim absent application of a ‘sham’ litigation exception or, in the patent context, an assertion that a patent has been obtained by fraud (a Walker Process claim)—neither of which has plaintiff alleged here.” Echoing a Statement of Interest submitted by the U.S. Patent and Trademark Office (USPTO) and DOJ regarding irreparable harm (in the matter of Radian Memory Systems LLC, v. Samsung Electronics Co., Ltd., and Samsung Electronics America, Inc. (E.D. Texas, 2024), which we wrote about here) the DOJ once again appears to signal its support for injunctive relief for SEPs by stating that “Patent holders, including SEP holders that have made a FRAND commitment, should not face antitrust liability and treble damages for seeking judicial redress—including injunctive relief—for infringement of such patents.” A footnote adds that “The Supreme Court has held that injunctions to remedy patent infringement are governed by equitable principles and courts should not depart from these principles in favor of categorical standards. …”
More generally speaking, Deputy Assistant Attorney General of the Department of Justice’s Antitrust Division, Dinal Kallay, made the following comments about hold-up and hold-out behavior in a keynote address at the Concurrences Dinner in New York (citations omitted):
For many years, antitrust enforcers focused on unilateral conduct related to F/RAND assurances, like hold-up and hold-out. For a time, there was a skewed focus on hold-up — a theory endorsed by Big Tech incumbents — under which a patent holder leverages a technology’s inclusion in a standard to demand supracompetitive royalties. That skewed approach was corrected during the first Trump administration, when the Antitrust Division was led by AAG Makan Delrahim, who correctly recognized that “implementer hold-out poses a more serious threat to innovation than innovator hold-up” and advocated acting to prevent hold-out. More recently, the Division’s leadership under the last administration highlighted that anticompetitive conduct can be undertaken by any party, implementer or patent holder, and that a case-by-case approach to scenarios involving standards essential patents is the right approach. I agree with both propositions. Implementer hold-out indeed poses a greater threat to innovation than innovator hold-up, especially since patents are not self-executing rights, so a neutral court determination is always required in order for injunctions to issue. And a case-by-case assessment is indeed the right approach.
Ms. Kallay also expressed concern regarding “collaborative industry standards that are not F/RAND assured”, such as the Wi-Fi standards subject to the IEEE’s 2015 policy (which we discussed here), and “organizations that develop closed, proprietary standards that integrate patented technologies and encourage infringement”, such as the NVM Express consortium at the heart of the Radian and Samsung dispute.
Get Back: SEP Patents and the USITC
Last year we wrote about two USITC investigations involving Ericsson and Lenovo which saw the Office of Unfair Import Investigations (OUII) recommend limited exclusion orders with respect to SEPs. As is often the case, the parties settled before any exclusion orders came into effect.
An exclusion order was similarly recommended in the Matter of CERTAIN VIDEO CAPABLE ELECTRONIC DEVICES, INCLUDING COMPUTERS, STREAMING DEVICES, TELEVISIONS, AND COMPONENTS AND MODULES THEREOF, which investigation involved video coding SEPs asserted by Nokia against Amazon. According to an INITIAL DETERMINATION ON VIOLATION OF SECTION 337 AND RECOMMENDED DETERMINATION ON REMEDY AND BOND, Amazon failed to establish Nokia’s offer was discriminatory or unreasonable, or that Nokia had violated its duty to bargain in good faith. Although the details are largely redacted, one thing that was not was Administrative Law Judge Cameron Elliot’s finding that “Amazon’s case for a lack of good faith negotiations recites a large number of nitpicky, tit-for-tat details…”. Amazon also failed to make out any standards related defenses in a parallel investigation in which Administrative Law Judge, Doris Hines, found that “[w]hile breach of a RAND obligation has been considered in evaluating public interest, Amazon has not demonstrated such a breach here, and section 337 does not specifically preclude a remedy when standard essential patents are asserted.” Further, ALJ Hines concluded that encoding claims asserted by Nokia were not essential to the H.264 standard, given encoding processes were not specified by the standard. In view of this finding Amazon sought to delay the exclusion order and have a UK court make an interim license related declaration regarding not only Nokia’s SEP, but Nokia’s non-SEPs as well, based on the theory that the two are typically licensed together. Similar to the situation with the Ericsson and Lenovo investigations, Nokia and Amazon settled their disputes before any exclusion orders took effect.
Recently, In the Matter of CERTAIN DYNAMIC RANDOM ACCESS MEMORY (DRAM) DEVICES, PRODUCTS CONTAINING THE SAME, AND COMPONENTS THEREOF, a JOINT COMMENT ON THE PUBLIC INTEREST OF THE UNITED STATES PATENT AND TRADEMARK OFFICE AND THE UNITED STATES DEPARMENT OF JUSTICE (“Comment”) was submitted to the USITC. Though this investigation did not involve SEPs, the Comment nonetheless reflects the agencies’ views regarding the appropriateness of exclusion orders (i.e. injunctive relief) as a remedy for patent infringement:
Attempts to weaponize the public interest factors as procedural obstacles to meritorious complaints threaten to undermine the USITC’s effectiveness as a forum for patent enforcement. This approach inverts Congress’s carefully designed statutory scheme by treating public interest considerations as threshold barriers rather than as narrowly tailored exceptions applicable only after findings of violation. The Commission should reject attempts to convert the public interest factors into preliminary obstacles to enforcement. In particular, the Commission should reaffirm that the general importance of an infringer’s company or technology is not the same as the public interest. Such arguments are often private commercial interests masquerading as public concerns.
Further, according to the agencies, “[w]hen the Commission issues exclusion orders to protect patent rights, it does not act against the public interest—it vindicates it.” In conclusion, the agencies urge the USITC to “reaffirm the paramount public interest in enforcing valid patent rights, particularly through exclusion orders that block the importation of infringing products.”
Tomorrow Never Knows: SEPs at the Pleadings Stage
Last but not least, a REPORT AND RECOMMENDATION OF THE UNITED SATES MAGISTRATE JUDGE in a case involving Pantech and OnePlus (later adopted by the District Court) denied OnePlus’ motion to dismiss Pantech’s claims for direct and willful infringement, breach of FRAND, and unjust enrichment.
With respect to willful infringement United States Magistrate Judge J. Boone Baxter found that Pantech’s complaint “sets forth numerous allegations regarding the negotiations between the parties, starting with a June 12, 2020 letter from Pantech Corp. offering to license patents including those that are essential to cellular standards including LTE and LTE-Advanced” and that “[t]hereafter, Pantech Corp. engaged in additional communication with OnePlus through emails, letters, and meetings regarding licensing patents owned by Pantech Corp, including those that are essential to cellular standards including LTE and 5G.” Also noted was the fact that “OnePlus has refused to accept a license on FRAND terms or even offer a reasonable counteroffer.” With respect to OnePlus’ argument that it could not willfully infringe because it did not manufacture the wireless chipsets implementing the technology at issue, the Report and Recommendation states that “courts have allowed willful infringement claims directed to the implementation of wireless standards to proceed past the pleading stage in cases involving manufacturers that do not manufacture wireless chipsets.”
Regarding Pantech’s breach of FRAND claims, OnePlus’ main objection was that the alleged breach was not by the patent owner, but rather by the prospective licensee. In denying OnePlus’ motion United States Magistrate Judge J. Boone Baxter cited the following determination of French law made by Judge Rodney Gilstrap’s in G+ Communications, LLC v. Samsung Electronics Co., Samsung Electronics America, Inc., Case No: 2:22-CV-00078-JRG (E.D. Texas), which we wrote about here:
In a negotiation for a license to a patent where the patent has been contributed to an adopted standard (which patent is known as a standard essential patent), if either negotiating party (being either the patent holder or the implementer of the adopted standard) fails to negotiate in good faith and thereby prevents a license from being granted on fair reasonable and non-discriminatory terms, then the party who fails to act in good faith is liable to the other party for any reasonable damages which arise from such breach, including but not limited to attorney’s fees and the cost of litigation.
Finally, Pantech’s unjust enrichment claims were found to be “a legally sound basis of recovery against a party that has not negotiate with good faith within the FRAND framework as an alternative theory to [Pantech’s breach of FRAND claim]” and not preempted by federal patent law. Regarding the latter, United States Magistrate Judge J. Boone Baxter explained that the Patent Act allows compensation for infringement, not for OnePlus’ holdout conduct as alleged by Pantech:
While Pantech does note OnePlus’s failure to pay licensing royalties in alleging OnePlus failed to negotiate in good faith and engaged in holdout behavior, Pantech actually seeks an award of restitution to compensate for OnePlus’s unjust enrichment. … The relationship between and possible overlap of restitution and damages for infringement is best explored at summary judgment or in Daubert motions, after discovery, not the pleading stage. … Because the allegations of harm alleged by Pantech in Count X (“holdout conduct”) differ from those recoverable under the Patent Act, the unjust enrichment claim is not preempted.
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