Nokia and Oppo face various outcomes at Paris and London courts

Nokia commenced litigation against Oppo in 2021, after the two companies could not adequately renew the terms of a licensing agreement which expired that same year. Both companies have since launched offensive and defensive attacks against each other in Germany and across Europe. In July, courts in the UK and France rendered two, albeit contrasting, decisions.

Invalid Nokia patents

David Por

Over the course of July, the Judicial Court of Paris invalidated two Nokia implementation patents, after the court found them invalid for lack of novelty. The patents at issue, which are not standard essential, are EP 1 704 731 and EP 1 702 486, which the court heard on 6 July and 21 July respectively.

In both cases, Nokia had counterclaimed for a finding of validity and accused Oppo of infringing the company’s products via a large selection of its mobile phone models.

Despite the favourable decision, press reports suggest that Oppo is exiting the French market, with its distributor anticipating a negative result for the Chinese company. However, JUVE Patent sources have confirmed that Oppo has no intention to stop selling its products in France.

The decision stands in contrast to other decisions on the same patents in Europe. For example, in June 2022 the Regional Court Mannheim found EP 731 valid and infringed by Oppo, a decision which the company appealed. Nokia also asserted EP 2 981 103 (case ID: 2O 36/22) and EP 3 220 562 (case ID: 2O 65/22) against Oppo in four lawsuits (case IDs: 2 O 75/21, 2 O 95/21; 2 O 107/21 and 2 O 113/21), suing for infringement. Both patents belong to the same patent family as EP 731.

No Chongqing rate for Oppo

In January 2023, the UK High Court found that handset maker Oppo infringed valid and essential Nokia patent, EP 2 981 103 B1. As such, the court determined that it had leave to calculate a FRAND licence rate, which it said Oppo must accept or else face being injuncted in the UK. The court will determine the rate in Trial D, which takes place in October.

Stanislas Roux-Vaillard

However, Oppo had pinned its hopes on a global licence in China. The company sought the UK court’s reassurances that, should it accept a FRAND rate determined by the Chongqing court, it would not be injuncted for failing to accept a UK court-determined rate.

Now, in so-called Trial E, the London court found that, because Nokia had agreed to offer the licence settled in the UK, it had no obligation to accept the Chinese court’s FRAND determination. The decision is a continuation of the case law laid out by then-first instance judge Colin Birss, upheld by the Supreme Court, in Unwired Planet vs. Huawei.

Presiding judge Richard Meade also clarified that Oppo is not licensed pursuant to the ETSI IPR policy, despite its arguments that it is licensed under French law; thus, Oppo is not an ETSI Clause 6.1 beneficiary and is not entitled to any of the declarations the company sought.

Meade also concluded that Oppo failed in its argument that Nokia abused a dominant position.

Updates for the future

Given the above, the UK court determined that Oppo must enter a UK court-determined FRAND licence or risk being subject to an injunction for infringing Nokia’s patents. Interestingly, the judgment also considers the necessity of the multiple number of technical trials which parties tend to conduct prior to the resulting FRAND hearing.

According to Meade, the courts could streamline this process and thus deter patentees from continuing with multiple FRAND trials: he notes that the “sequencing… incentivises an implementer to fight the technical trials for tactical and timing reasons even when it knows it needs a licence. The amounts at stake can make the delay worth it even if the implementer has to pay the costs of the technical trials.”

Thus, Meade concludes by citing the need for a new approach to case sequencing and management in SEP and FRAND trials. In recent months, some quarters have criticised the time taken for parties to reach FRAND declarations – now, with the UK courts seeking to remain a viable option to parties filing SEP cases at the UPC, case cost and efficiency is paramount.

Richard Vary

Not just SEPs

While the current UK proceedings concern SEPs, an implementation patent is also at issue. In November 2022, the High Court also ruled that Oppo infringed a valid Nokia patent EP 3 716 560 (case ID: HP-2021-000023) which covers the processing of transmission signals in a radio transmitter.

The court came to the decision based on the software originally installed on the devices, which Oppo later updated to remove the infringing code. Now, if Oppo does not undertake to take a licence, then it will also face an injunction related to EP 560.

The same patent is also subject to an infringement claim by Nokia against Oppo in Germany; the Regional Court Düsseldorf heard the case on 17 November 2022 (case ID: 4c O 34/21). The setback for Oppo comes following injunctions granted in Munich and Mannheim on five patents that led to sales bans across Germany.

Echoes of Optis vs. Apple

The latest decision from the UK High Court in Nokia vs. Oppo is similar to a judgment, handed down by Richard Meade in the first instance and upheld on appeal, in the case between Apple and Optis. At the end of September 2021, the court determined that Apple must take a licence on as-yet-undecided FRAND terms or face an injunction. This marked a continuation of the Supreme Court’s case law as handed down in the Unwired Planet vs. Huawei judgment of 2020.

In Apple vs. Optis, both court instances confirmed that Apple, as an implementer, must commit to enter into a court-determined FRAND licence to avoid an injunction. The judges also dismissed Apple’s threat to leave the UK market altogether to avoid the implications of a potential global FRAND licence. However, it was clear that if Apple did not commit to a court-determined FRAND licence, it could face a sales ban in the UK. As such, in June 2023, the High Court cemented the terms of a FRAND licence between the two companies. Apple is appealing the decision.

Back to Nokia vs. Oppo,  however, and the court is set to host another FRAND trial before the end of the year. The so-called Trial D will take place in October 2023 and, according to Richard Meade, will “certainly cover Nokia’s SEPs; whether and on what basis it may cover Nokia’s implementation patents has been a matter of dispute.”

Hogan Lovells spans Europe

International firm Hogan Lovells is representing Oppo in the UK, Germany and Spain, as well as working with other firms in China, India, Sweden, Finland and the Netherlands. For example, Dutch boutique Brinkhof is leading proceedings before the District Court of The Hague.

As in other jurisdictions, a team from Hogan Lovells acts for Oppo in France. Partner Stanislas Roux-Vaillard leads for the client, which was a new instruction for the firm upon commencement of proceedings against Nokia.

From London, the Hogan Lovells team is coordinating the international FRAND aspects of the case, led variously by partners Paul Brown and Katie McConnell. The firm is also working for Oppo regarding the technical trials.

Mixed firms for Nokia

Bird & Bird is Nokia’s regular advisor in Europe, with the firm acting for Nokia in the UK, German and Dutch proceedings. In the European proceedings, partner Richard Vary is co-ordinating the case. He has strong links with the Finnish company, where he used to work in-house before moving to Bird & Bird in 2016 as partner. Toby Bond is also involved in leading UK proceedings.

In France, Allen & Overy acts for Nokia, with the case led by David Por. New partner Charles Tuffreau acts alongside Por in the procedings. In 2022, JUVE Patent identified Tuffreau as one of its ‘Ones to Watch’ in the French patent market.

For Nokia (France)
Allen & Overy (Paris): David Por, Charles Tuffreau (partners); associates: Cyril Riffaud, Naomi Martin

For Oppo (France)
Hogan Lovells (Paris): Stanislas Roux-Vaillard (partner); associates: Adrien Bonnet, Etienne Barjol

For Nokia (UK)
Brick Court Chambers (London): Sarah Ford
8 New Square (London): Thomas Jones
Bird & Bird (London): Richard Vary, Toby Bond (partners); consultant: Anna Duffus; associates: Matthew Noble, Zoe Fuller (legal directors), Rebekah Sellars, Louise Sargeant, Tom Darvill, Sophie Vo, Lucy Wiles, Mark Livsey William Warne, Louise O’Hara, Bryony Gold, Francesca Budd

Judicial Court of Paris, Paris
Nathalie Sabotier (president)

For Oppo (UK)
8 New Square (London): Andrew Lykiardopoulos
Monckton Chambers (London): Kassie Smith
Blackstone Chambers (London): Ravi Mehta
Hogan Lovells (London): Katie McConnell, Paul Brown (partners): associate: Ian Moss

UK High Court, London
Richard Meade (presiding judge)

Update 12.09.2023: The story between Nokia and Oppo has seen another development. In July, the UK High Court determined that Oppo could not rely on an undertaking to accept a global FRAND licence set by China’s Chongqing court. It gave Oppo a choice between committing to a UK-determined global FRAND rate, or an injunction which would halt the sale of their devices in the UK.

On 7 September, in a form of order hearing, Oppo informed the High Court that it did not accept the UK’s jurisdiction to set a global FRAND rate and instead chose the injunction.

Oppo maintains its position that its undertaking to the Chongqing court should be sufficient, as well as airing its concerns that giving an undertaking to the UK High Court at this time could impact ongoing parallel proceedings in Chongqing.

However, the injunction is stayed until the outcome of the appeal process, which is likely to take six to nine months. Furthermore, the presiding judge granted a certificate in respect of Oppo’s Grounds of Appeal, which allows Oppo to appeal straight to the UK Supreme Court. For now, Oppo can remain on the UK market.

Nokia also succeeded in its application for the UK court to adjourn the upcoming FRAND hearing between the parties, which was due to take place in October. As such, the court has so far set no terms in the dispute.

JUVE Patent updated this article on 12.09.2023 to reflect the latest injunction decision, handed down by the UK High Court.