Nokia continues SEP campaign with injunction win against Vivo

The Regional Court Mannheim has again found in favour of Finnish company Nokia in its wide-ranging battle against various mobile phone manufacturers over smartphone technology. Last week, the court confirmed that Chinese smartphone vendor Vivo infringed three standard essential patents, two of which cover the 4G standard. However, while the court also handed down an injunction against Vivo, the Finnish company has not yet confirmed whether it will enforce this against its opponent.

EP 2 981 103 (case ID: 2O 36/22) and EP 3 220 562 (case ID: 2O 65/22), which belong to the same family, disclose efficient assignments of preambles when initiating random access to an LTE network, while EP 2 087 626 (case ID: 2O 37/22) relates to adaptive modulation in a 3G network. In particular, it discloses additional modulation information signalling for high-speed downlink packet access.

Parallel proceedings are also running in other countries, including Malaysia and Indonesia.

Nokia and Vivo at odds

According to JUVE Patent sources, current litigation came about due to the parties being unable to decide on a new licence agreement regarding 5G technologies. A previous agreement, where Vivo paid Nokia for use of its patented technologies, expired in December 2021. This had covered 2G and 3G technology.

In a statement to JUVE Patent, a Nokia spokesperson said, “The Regional Court in Mannheim has ruled that Vivo is using Nokia’s patented technologies in its smartphones and is selling them illegally without a licence. The court also found that Nokia has acted fairly. We welcome the judgment which confirms, once again, the strength of Nokia’s patent portfolio, and call upon Vivo to accept its obligations and agree a license on fair terms.”

While Counterpoint Research reports that Vivo is one of the highest-selling smartphone manufacturers in China, its sales in Germany remain small. This is unlike Oppo, which had retained a fairly sizeable market share until its sales ban in 2022. Its European headquarters are also located in the country. Vivo has also released a lengthy statement on its press site, in which it confirms its decision to appeal. However, it also hints that it is preparing to withdraw its products from Germany.

Part of the statement, published by Vivo in German, reads, “We have noted the decision of the Mannheim Regional Court with disappointment and have made preparations to suspend the sale and marketing of the products concerned via Vivo Germany’s official channels if necessary. We are preparing an appeal against the decision and will consider further options. In the meantime, we will continue negotiations with Nokia to bring the matter to a conclusion in accordance with the “FRAND” conditions.”

Christian Harmsen

A case of déjà vu

While this is the first judgment in the case between Nokia and Vivo, all three patents had previously been involved in litigation in Germany.

In August 2021, the Regional Court Mannheim found that Daimler infringed EP 103, ordering Daimler to stop using and selling connectivity modules using this technology in Germany. The court also ordered Daimler to pay damages, provide information and render accounts (case ID: 2 O 34/19), although the Higher Regional Court Karlsruhe later prohibited Nokia from enforcing the automatic injunction.

In June 2022, the same court found that Oppo infringed EP 1 704 731, a decision which the company appealed. Nokia has also asserted EP 103 and EP 562 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 belong to the same patent family as EP 731.

In July 2022, the 2nd Civil Chamber at the Regional Court Mannheim found that Oppo had infringed the two patents. It also rejected the defendant’s FRAND objection and judged Oppo to be an unwilling licensee. The decision led to a sales ban against Oppo in Germany, which remains in place at the current time of writing. Nokia also asserted EP 626 against Oppo and OnePlus, in a hearing held on 3 March at the Regional Court Mannheim 7th Civil Chamber before Thomas Schmidt. Parties expect a judgment in early June.

Away from Mannheim

Georg Rauh

In Germany, Nokia is also suing Vivo at the Regional Court Munich over two more SEPS, EP 3 396 868 (case ID: 21 O 2816/22) and EP 3 457 586 (case ID: 21 O 3172/22), although the court has not yet scheduled the oral hearings. Nokia is also asserting EP 868 against Oppo and OnePlus.

Vivo has responded with a counterclaim in Düsseldorf, with EP 3 618 530 at issue (case ID: 4b O 25/22).

Furthermore, in January 2023, the UK High Court also found that Oppo infringed EP 103. As a result, the court has leave to determine a FRAND licence rate, which Oppo must accept or else face being injuncted in the UK. However, the Chinese Supreme People’s Court has recently confirmed that the Chinese courts have jurisdiction to hear the case. Now Oppo is once again looking to China to set a global FRAND rate.

It also seeks a declaration of injunctive relief, which the company hopes will prevent Nokia from obtaining an injunction should the London court find an SEP valid and infringed.

Return of the pack

Cordula Schumacher

Bird & Bird is Nokia’s regular advisor in Germany, with the firm maintaining excellent relations with the company via lead Düsseldorf-based partner, Christian Harmsen. In the current dispute, the international firm led for Nokia regarding FRAND, and is also leading proceedings in Munich.

The team works closely with Arnold Ruess, which often represents the Finnish company in other proceedings, for example against Lenovo. Against Vivo, however, partner Cordula Schumacher took the lead regarding the patent and technical side of proceedings. The Düsseldorf IP boutique had previously successfully enforced EP 103 in the case against Daimler.

A large team from IP boutique Vossius & Partner represented Vivo, with the firm engaging both its patent litigators and patent attorneys in proceedings. Partner Georg Andreas Rauh leads for the firm, with support from a large team; for example, Ju Min Kim is the Vossius patent attorney leading on the technical side.

However, in the parallel proceedings in Düsseldorf, Bardehle Pagenberg is acting for Vivo.

For Nokia
Bird & Bird (Düsseldorf): Christian Harmsen, Stephan Waldheim (partners); associate: Tamy Tietze
Arnold Ruess (Düsseldorf): Cordula Schumacher, Arno Riße (partners); associates: Jan Wergin (counsel), Tim Smentkowski
Samson & Partner (Munich): Alexander Münster (partner); associate: Matthias Göpfert (both patent attorneys)
df-mp (Munich): David Molnia (partner); associate: Matthias Duda
In-house (London, Munich): Taliah Walklett, Armin Schwitulla (global litigation team)

For Vivo
Vossius & Partner (Munich): Georg Andreas Rauh (partner, lead); associates: Frederic Mühlenbruch, Verena Kerscher, Zhuomin Wu; patent attorneys: Ju Min Kim (lead), Thomas Schwarze (both partners); associate: Andreas Ditler

Regional Court Mannheim, 2nd Civil Chamber
Holger Kircher (presiding judge), Sebastian Elter (reporting judge), Dirk Böttcher (assistant judge)