The Milan local division has handed down two parallel decisions in the long-running dispute between Ericsson and AsusTek, with one patent being revoked and the other upheld but shielded by a successful FRAND defence. The court found that EP 3 076 673 was revoked in its entirety due to added matter and lack of novelty, while EP 2 727 342 was found to be indirectly infringed but the judges accepted AsusTek’s FRAND defence.
Ericsson had sued AsusTek over patents protecting the HEVC/H.265 video decoding standard used in laptops, desktops, and related hardware equipped with Intel and AMD processors. The Swedish company contended that both patents were essential to the standard, but the court found that Ericsson holds a dominant position on the relevant market for licensing the HEVC-essential technology.
FRAND Defence
In their ruling, Milan’s judges determined that Ericsson did not follow the required procedural steps outlined in the Huawei v ZTE case before filing its lawsuit. The company failed to name the specific patent it accused AsusTek of violating or explain the alleged infringement before submitting its claim on 14 June 2024. Ericsson’s later attempt to attach a conditional injunction to a licensing offer did not satisfy the court’s pre-action notice requirement.
The court ruled that Ericsson’s conditional injunction request could not replace the mandatory prior notice needed before seeking such relief. As a result, Milan’s judges rejected Ericsson’s demands for a permanent injunction, product recalls from retailers, destruction of allegedly infringing goods, and publication of the court’s decision.
The judges panel also rejected Ericsson’s principal claim for a declaration of essentiality. They found that the UPC lacks jurisdiction to issue such declarations with erga omnes effect, though it may assess essentiality as an incidental issue. However, the UPC granted a declaration of infringement, found AsusTek liable for damages in principle and ordered both defendants to provide information covering the period from the grant of the patent on 29 June 2016.
These two Milan rulings conclude a two-year legal battle initiated by Ericsson against AsusTek at the UPC, involving three primary lawsuits and three separate motions for interim measures. All three preliminary injunction requests were denied: one by Lisbon in autumn 2024 and two by Milan in June 2026.
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With EP 673 now revoked and EP 342 shielded by a successful FRAND defence, Ericsson has obtained no injunction against AsusTek in any of the six proceedings. The outcome marks a key moment in the companies’ long-standing dispute, though neither side has yet confirmed whether they will challenge the decisions.
Ericsson’s legal team was assembled by Winston Taylor, with Amsterdam partner Wim Maas leading the effort. The German firm has a history of handling European patent disputes for the tech manufacturer, making this victory a notable achievement.
The amount of damages and the relevant compensable period are reserved for subsequent proceedings. The Milan division’s ruling on the FRAND defence is a significant aspect of the case, and it will be interesting to see how this develops in the future. The case IDs for the decisions are UPC_CFI_318/2024, UPC_CFI_319/2024, UPC_CFI_728/2024, and UPC_CFI_730/2024.
AsusTek was represented by a team from Wildanger, led by partner Alexander Wiese, who worked together with Eva Geschke. The German firm has experience in European patent disputes, having represented AsusTek in various cases.
Next Steps
In the main proceedings before the Lisbon local division, Ericsson prevailed on EP 2 819 131, though the patent had already expired. In its decision of May 2026, the Portuguese division found the patent valid and infringed. Since it had expired the judges granted only information and a declaration of liability for damages, but no injunction.
Related Litigation and Representation
Ericsson pursued a litigation campaign against AsusTek before the UPC for over two years. The campaign comprises three main actions and three applications for preliminary measures.
