Unpacking Dolby v. Roku: The First HEVC SEP-Based European Preliminary Injunction

1. SEP-based preliminary injunctions in Germany are rare—but now clearly attainable: The Munich Regional Court granted the first European preliminary injunction based on an HEVC standard‑essential patent, demonstrating that interim relief is available where infringement is clear, the validity of the patent is sufficiently secured, and the FRAND defence is clearly without merit.

2. Urgency may be triggered by a validity confirmation, even where urgency based on infringement discovery no longer exists: The court held that the Federal Court of Justice’s reinstatement of the patent constituted a new validity event that reset the urgency clock. Accordingly, in SEP-based preliminary injunction proceedings, urgency may run from the point at which validity is sufficiently secured—even if initial knowledge of the infringement no longer supports urgency—provided that swift action is taken thereafter.

On 19 November 2025, the Regional Court Munich I issued the first preliminary injunction in Germany - and indeed in Europe - based on a standard-essential patent (SEP) regarding the High Efficiency Video Coding standard (HEVC or H.265).

Relying on the reinstated German part of EP 2777 270, the court granted Dolby interim relief after finding a unique combination of factors: a recent validity confirmation by the German Federal Court of Justice, a substantiated FRAND negotiation record, and an implementer behavior - most notably foreign ASI (anti-suit injunction) and AEI (anti-enforcement injunction) applications as well as the refusal to provide security - from the court's perspective all being fundamentally inconsistent with genuine licensing willingness.

The decision demonstrates that preliminary injunctions in SEP cases remain exceptional but are attainable where the evidentiary constellation aligns with the legal standards of German law.

Against this backdrop, the following analysis examines the Dolby v. Roku ruling in detail and, building on it, outlines the requirements that govern the availability of interim relief in Germany in the SEP/FRAND context - particularly the standards for secured validity and infringement, urgency, balancing of interests and the decisive impact of FRAND willingness. 

Background of Dolby v. Roku

The Dolby v. Roku dispute evolved from unsuccessful HEVC licensing efforts over several years into a cross-border dispute. When Dolby initiated infringement proceedings before the UPC in May 2024, Roku responded in December 2024 by filing declaratory actions in the United States seeking findings of non-infringement and non-FRAND conduct. Roku also pursued anti-suit and anti-enforcement injunctions aimed at restricting Dolby's ability to obtain injunctive relief in Europe. Roku simultaneously asked the US court to set global FRAND terms.

A pivotal turn followed in May 2025 when the Federal Court of Justice reinstated the German part of EP 2 777 270. According to established German case law, such a second-instance validity confirmation constitutes a "new fact" resetting the urgency period.

Dolby filed for a preliminary injunction in June 2025, exactly one month after the reinstatement of the patent in suit, relying on its strengthened validity position, infringement evidence and its documented willingness to grant a FRAND licence.

Roku's ASI/AEI applications and the refusal to provide security formed part of the broader procedural and behavioral context examined by the court.

Preliminary Injunctions in Germany

German practice in preliminary injunction proceedings pivots on two pillars: injunction claim (Verfügungsanspruch) and ground for an injunction (Verfügungsgrund). The substantive limb requires a high likelihood of infringement together with secured validity and urgency. Urgency requires prompt action once a decisive validity indication emerges, meaning the moment at which the patent's legal position becomes sufficiently substantiated to make interim relief procedurally viable.

From that point onwards, Munich courts expect the applicant to proceed without delay. This timeliness is measured against a strict period of one month.

Injunction Claim

The injunction claim requires the applicant to demonstrate a high likelihood of infringement of the asserted patent. German courts do not apply a higher substantive threshold solely because a patent is standard essential; the same principles apply as in non-SEP cases. The FRAND framework does not modify the substantive entitlement itself, as FRAND considerations typically arise as defence against the injunction claim.

On the infringement side, the applicant must provide a technically coherent and substantiated claim-feature mapping, aligning the accused products or processes with the asserted claim features.

In Dolby v. Roku, the court found that claims 3 and 4 of the patent in suit were infringed and that Roku's FRAND objection was not convincing. 

The court also dealt with the question whether a SEP case is in principle suitable for a preliminary injunction. Roku had argued that FRAND disputes are inherently too complex for interim proceedings, asserting that a meaningful FRAND assessment would require full expert evidence and economic analysis.

The Regional Court Munich I rejected these arguments. It held that FRAND issues - including the parties' negotiation conduct, responsiveness, and the plausibility of their licensing positions - are to be examined "as usual" within the Huawei/ZTE framework, even in the context of preliminary injunction proceedings. On the available record, Dolby's latest offer fell within a plausible FRAND corridor, whereas Roku's attempts to secure ASI/AEI relief in the US and its refusal to offer any form of security were inconsistent with the behavior expected of a willing licensee.

This reasoning reflects the FRAND jurisprudence of the Munich national courts. Under the Higher Regional Court's so-called Sprachsignalkodierer doctrine, an implementer may only obtain a merits-level FRAND review if it first fulfils concrete cooperation duties - above all, the provision of qualified, portfolio-aligned security tied to the SEP holder's latest offer, accompanied by a binding undertaking enabling immediate access to that security should the offer ultimately be found FRAND.

Therefore, the Regional Court Munich I concluded that the requirement of an injunction claim was met.

Ground for an Injunction

The ground for an injunction addresses whether interim relief is procedurally justified and necessary. Under established German case law, a ground for an injunction requires, first, a showing of temporal urgency and, second, a balancing of interests that favours the applicant.

Rather than tying urgency rigidly to the moment infringement is first discovered, the courts also look at the point in time at which the validity position of the patent in suit becomes sufficiently secured. Only when a patentee can rely on a sufficiently concrete validity indication does the obligation arise to pursue interim relief without undue delay. In this context, Munich courts apply a strict one-month deadline.

A key element is that secured validity is treated as a procedural component of urgency. Under VEGF-Antagonisten, the court examines whether a stability signal - such as confirmation of validity by the German Federal Patent Court or by the Federal Court of Justice (2nd instance in nullity proceedings) has emerged. These signals serve as new facts capable of activating or resetting the urgency period because they change the procedural feasibility of seeking interim relief.

In Dolby v. Roku, the Munich Court found that the urgency requirement was met. The reinstatement of the patent in suit by the Federal Court of Justice in the case on 27 May 2025 was considered as a materially new validity event capable of restarting the urgency period and allowing Dolby to file the application within one month after the Federal Court of Justice decision had been issued.

Once the urgency requirement is met, German courts undertake an assessment of the mutual interests of the parties. This balancing generally favours the applicant when the facts relating to the infringement are clear, the validity of the patent appears to be sufficiently secured and when there is no hesitancy by the applicant in pursuing its claims.

On the validity side, courts require that the patent's legal position is sufficiently secured for interim relief. This does not require the patent to have survived all validity proceedings, but it must be supported by objective and legally relevant indicia showing that validity is not seriously doubtful. German courts regularly rely on reasoned decisions or indications from the German Federal Patent Court, German Federal Court of Justice, the German PTO or the EPO to satisfy this requirement.

After the CJEU's judgment in Phoenix Contact/Harting, German courts may not categorically refuse a preliminary injunction simply because the patent has not yet been upheld in opposition or nullity proceedings. Instead, they must conduct a context-specific reliability assessment that considers both the enforcement needs of the patentee and the procedural safeguards of interim relief. The Regional Court Munich I and the Higher Regional Court Munich have since applied this framework by giving decisive relevance to first- and second-instance validity outcomes, including reasoned validity opinions.

The situation in Dolby v. Roku illustrates this approach. For some time, the patent in suit had been invalidated by the German Federal Patent Court (first instance), which would typically weigh against granting interim relief.

This changed in May 2025, when the German Federal Court of Justice overturned the 1st instance invalidation decision, thereby reinstating the patent's legal force. The Munich court treated this as a significant new validity indication - not a final merits determination, but a sufficiently weighty procedural signal to regard validity as secured for the purposes of interim relief.

The court rejected the contention that Dolby could have moved earlier, emphasising that urgency turns on when a case becomes procedurally viable for interim relief, not when infringement was first suspected.

Since the Munich court found that the validity of the patent in suit was sufficiently secured, the facts relating to infringement were clear and Dolby had pursued its claims without undue delay, the Munich court favored the interest of Dolby affirming the ground for an injunction.

Outlook

For SEP holders, the case underscores that preliminary injunctions based on SEPs in Germany, while still being exceptional, are attainable in narrowly defined constellations.

A recent and authoritative validity confirmation combined with clear indicators of implementer unwillingness may shift the balance in favor of granting interim relief.