Huawei brought an action in the Munich local division against Netgear for infringement of EP3611989 in relation to various of its WiFi access point products. Huawei had declared EP’989 to be essential to the IEEE 802.11ax (“WiFi 6”) standard and so was obliged to offer a licence on Fair, Reasonable and Non-Discriminatory (FRAND) terms. However, no licence could be agreed. [1]
Netgear made a preliminary objection challenging the jurisdiction of the UPC to hear the case, counterclaimed for revocation of EP’989 and raised several infringement defences: that EP’989 was not in fact essential to WiFi 6 (i.e. non-infringement), that Huawei’s rights had been exhausted by prior EU supply of the allegedly-infringing products, and that Huawei had failed to offer a FRAND licence as it was obliged.
Huawei prevailed on almost all issues. With the added motivation for Netgear of an impending injunction, the parties reached a settlement in early 2025, so we will not see the various issues tested at appeal.
As with most SEPs, the patent in question relates to a very specific element of the relevant standard. In this case, how time and frequency resource allocation is communicated by an access point (AP) to user devices (STAs) within WiFi 6.
The WiFi 6 protocol divides the available frequency spectrum into 20 MHz sub-channels. A given WiFi channel can be made up of one, two, four or eight sub-channels (i.e. with widths of 20 MHz, 40 MHz, 80 MHz or 160 MHz). Each user device is assigned to a particular WiFi channel.
WiFi 6 contains two mechanisms that enable simultaneous communication with multiple devices using the same channel. The first is orthogonal frequency-division multiple access (OFDMA), in which available frequency resources within a given channel are allocated between different devices. The other is MU-MIMO, in which multiple antennas are used to produce spatially-separated data streams. With both of these techniques, it is critical that the allocation of resources to use is communicated reliably to the user devices.
WiFi 6 thus defines some additional “preamble” fields that are broadcast to all devices in a given sub-channel, to indicate which time and frequency resources within this sub-channel they are to use. The standard specifies that all resource allocations for devices operating in “odd” sub-channels (i.e. #1, #3, #5, etc.) are grouped into a first channel resource allocation field (to use the terminology of the patent, a “first HE-SIG-B field”), and all resource allocations for devices operating in “even” sub-channels (i.e. #2, #4, #6) are grouped into a second channel resource allocation field (a “second HE-SIG-B field”). The standard also specifies that every 20 MHz sub-channel must have at least one device allocated to it, even if it is part of a wider (40 MHz, 80 MHz, 160 MHz) channel.
The patent notes that, if the number of devices allocated to even sub-channels is not the same as those allocated to odd sub-channels, the two resource allocation fields may have different lengths. However, because the fields are transmitted at the same time, this can lead to wasted resources. The patent addresses this problem by allowing zero devices to be allocated to a sub-channel that is part of a wider channel, to enable a device to be reassigned from an odd sub-channel to an even sub-channel within the same wider channel, to reduce a disparity in the field length and thus signalling overhead.
It was not disputed that Huawei had opted EP’989 out of the jurisdiction of the UPC and then taken action to withdraw the opt out. However, Netgear argued that the withdrawal was not effective because it had been made in the wrong form, in which the owner of EP’989 for every EPC state had not been listed individually (instead, Huawei had listed the sole owner next to a list of all of the countries).
The Court disagreed, finding that the withdrawal was effective and that the UPC thus had jurisdiction because, whilst it did not utilise the officially-provided template, it contained exactly the same information and it would be contrary to the requirements of a proportionate, fair and equitable procedure for the use of a different form to render the withdrawal invalid.
As has become usual in UPC proceedings, the Court interpreted the claims with reference to the description and drawings and from the perspective of the person skilled in the art, referencing UPC_CoA_355/2024. [2]
Netgear argued that the granted claims were not adequately supported by the application as filed because of various differences in terminology. However, the Court considered that the substance of the granted claims was adequately disclosed in the application and none of these objections was upheld. For instance, Netgear argued that the claimed “first/second RA” was an impermissible generalisation of the originally-disclosed “special RA”, but the Court’s interpretation of claim 1 included the first/second RA having special characteristics and so no generalisation was found. For corresponding reasons, the priority claim of the patent was also found to be valid.
Netgear also attacked the novelty and inventiveness of claim 1.
Several of the novelty attacks were rendered moot by the upholding of the priority claim, and the others were quickly dismissed too.
Most of Netgear’s inventive step attacks were based on technical submissions to the IEEE that do relate to resource allocation in WiFi 6. However, as will be appreciated from the explanation above, the subject of the patent is a highly specific refinement to a particular area of the WiFi 6 specification and none of the cited documents really addressed the circumstances with which the patent is concerned.
Referring to the approach to inventive step taken in several UPC cases,[3] the Court considered numerous combinations of prior art documents that were said to lead the skilled person to the subject matter of the granted claims. However, each of these was combinations was dismissed in
turn and the claims were found to be valid in their granted form. Even applying the EPO’s problem-solution approach to assessing inventive step, the Court found that the same conclusion would be reached.
Netgear also raised a sufficiency attack, but the Court rejected it as late-filed, because it was not raised in the counterclaim. Nevertheless, the Court considered the patent to be sufficient over the entire range of the claims.
Netgear did not contest that various of its WiFi products made use of the WiFi 6 standard. The argument for non-infringement instead centred on whether the patented method was indeed performed by products when implementing the standard.
The discussion centred on Sections 27.3.11.8.3 and 27.3.11.8.4 of the standard, which discusses the HE-SIG-B fields. These sections describe a special signalling behaviour in which zero user fields are assigned to a subchannel of a wider channel with the explicit aim of avoiding “disparity in the number of user fields between content channels”, and the Court was satisfied that this met the requirements of claim 1.
Narrow non-infringement arguments focused on differences in nomenclature between the standard and the patent failed for similar reasons to those dismissing the terminology differences between the original disclosure of the application as filed and the granted claims discussed above (e.g. the interpretation of “first/second RA”) .
Test data of Netgear products provided by Huawei was also found to demonstrate the implementation of the patented method.
Netgear argued that Huawei was precluded from enforcing its patent because it was in breach of European competition law and contractual terms of the IEEE. However, applying principles from Huawei vs ZTE, [4] the Court found that Huawei had approached licence negotiations appropriately, and that it had offered FRAND licence terms (including an offer of a pool licence). The decision emphasises that FRAND is a range and not a single rate or set of terms.
Netgear did not prove that the non-pool licence offered by Huawei was unfairly discriminatory, and did not offer any arguments in this regard with respect to the pool licence. Netgear also failed to justify that Huawei’s patent put them in a dominant market position that would engage the relevant EU competition law anyway.
This decision follows the recent FRAND decision in Panasonic v OPPO, [5] and the Court refers to and aligns with the approach taken in that decision.
Netgear did succeed on one point. The Court found that certain Netgear products incorporated modems made by Qualcomm that were previously placed on the EU market. Huawei’s rights in these products were thus exhausted and these products excluded from the finding of infringement.
In making this assessment, the Court set out a detailed approach to assessing exhaustion of rights under Art. 29 UPCA, including the evidence that may be required and shifts in the burden of proof involved. The Court also interpreted Art. 29 UPCA to extend to process claims relating to the handling of a protected product and to products incorporating the protected product.
This is the most detailed approach to exhaustion of rights from the UPC to date, following on from the lighter assessment in HP v Lama. [6]
As a bonus extra, and ahead of this decision, an anti-anti-suit injunction was handed down by Munich LD[2] against Netgear. Netgear had started an antitrust action in the US on 30 January 2024. On 4 December 2024, Huawei became aware of an anti-suit injunction (ASI) application by Netgear in the US in connection with the antitrust action, which, if granted, would prevent Huawei from continuing proceedings outside the US. Huawei applied for interim measures to prevent Netgear from pursuing the ASI on 11 December 2024 (following attempts on 9 and 10 December that faced technical difficulties).
Judge Matthias Zigann, presiding judge of the Munich LD, considered the matter sufficiently urgent for him to rule on the request as a single judge and ex parte. Such was the urgency that he issued the order on the same day the application was made.
Judge Zigann considered the admissibility of the application and assessed the likelihood that Huawei’s rights would be infringed. He then weighed the balance of interests between the parties, finding that Huawei was at risk of significant damage outweighing any damage Netgear would suffer from having to withdraw its ASI application.
Thus, the Judge ordered Netgear to withdraw its ASI application within 24 hours as far as it covers the UPC’s jurisdiction.
Since Netgear was not heard, security was ordered (pursuant to Rule 211.5 RoP) in the amount of EUR 3m, which is the amount in dispute. In view of the large amount, the Judge gave Huawei 20 days to provide the security.
[1] https://www.unified-patent-court.org/en/node/1345
[2] UPC_CoA_355/2023 (Nanostring/10x Genomics) Order of February 26, 2024 in conjunction with Order of March 11, 2024
[3] CoA_UPC_CoA_335/2023; UPC_CFI_1/2023, UPC_CFI_14/2023, UPC_CFI_252/2023; and UPC_CFI_201/2024
[4] CJEU July 16 2015, ECLI:EU:C:2015:477 (Huawei v. ZTE) C-170/13
[5] UPC_CFI_210/2023, Mannheim LD, decision of 22 November 2024
[6] UPC_CFI_358/2023, Paris LD, 13 November 2024
[7] UPC_CFI_791/2024, Munich LD, 11 December 2024