Injunction Denied in First Successful FRAND Defense in Ericsson v Asustek; An Important Decision Whose Full Impact Remains to Be Seen

For licensees facing royalty demands involving SEPs, the UPC has been a challenging environment. Until recently, no party found to infringe a valid, declared SEP had prevailed on a FRAND defense in that court. But, in a recent decision delivered on November 6, 2026, the Milan Local Division (LD Milan) denied Ericsson's request for an injunction based on a European patent that had been declared essential to the HEVC video coding standard. 

The basis for the denial was Ericsson's failure to comply with threshold infringement notice requirements under the Court of Justice for the European Union's framework set forth in Huawei v ZTE.  As IAM Media reports, “SEP owners occupying a dominant position have a strict obligation to ‘identify the patent concerned and specify how it is allegedly infringed, providing sufficient information to enable the implementer to assess the allegation and an opportunity to engage in licensing negotiations.’” The court rejected Ericsson's argument that the licensee's alleged bad faith could override the licensor's notification obligations under the Huawei v ZTE framework. Rather, as the court found, “the five procedural steps laid down by the Court of Justice in Huawei v ZTE must be followed in their strict chronological sequence.” The court also rejected Ericsson's argument that because of the availability of alternative video coding standards, Ericsson lacked the dominant position necessary to support a FRAND defense.

This decision is significant given that it marks the first successful FRAND defense in the UPC. It also puts the UPC approach, as implemented, into at least somewhat closer alignment with US injunction practice in US federal courts. Indeed, under the Supreme Court's eBay decision, availability of injunctive relief must be assessed on a case-by-case basis and requires that the patentee satisfy the traditional four-part equitable test for injunctive relief. 

But while significant, several aspects of the LD Milan decision are fact-specific and may limit its ultimate impact. For example, the decision stressed the fact that Asus is a hardware-maker, which means that its devices must be compatible with the HEVC standard even if other, alternative standards are available. It is not clear how the court would have addressed the question of dominance if a video streaming provider had been at issue. Moreover, while LD Milan arguably took a more rigid approach for what constitutes sufficient notice under Huawei v ZTE (i.e., as compared to other UPC local divisions such as LD Manheim), licensors now have additional guidance for the level of specificity needed to ensure compliance with pre-suit notice requirements. Thus, where sophisticated licensors are involved, it is not clear how much this specific situation will arise going forward. But it could, of course, potentially alter the nature and timing of claim charts exchanged during pre-suit negotiations. 

This decision also reconfirms that the SEP/FRAND space remains fast-moving and subject to many ongoing developments. Our SEP/FRAND team at Faegre Drinker actively monitors this space to ensure our clients get the benefit of the latest legal, policy, and regulatory developments as they navigate their negotiations and disputes involving SEPs and SEP assertions.

The material contained in this communication is informational, general in nature and does not constitute legal advice. The material contained in this communication should not be relied upon or used without consulting a lawyer to consider your specific circumstances. This communication was published on the date specified and may not include any changes in the topics, laws, rules or regulations covered. Receipt of this communication does not establish an attorney-client relationship. In some jurisdictions, this communication may be considered attorney advertising.