Oppo and its subsidiary OnePlus have stopped selling smartphones and smartwatches through their German online stores. The product withdrawal follows defeats in two SEP cases at the Regional Court Munich.
8 August 2022 by Mathieu Klos
Over the weekend, two patent rulings from Munich made a quick impact. Currently, customers are unable to buy smartphones and smartwatches from the OnePlus Germany store. Furthermore, the German Oppo website has not featured any product information since the decision.
Oppo and its subsidiaries are relatively new players in the European mobile phone market. Experts estimate their market share in Germany is still relatively small at around ten percent. Oppo, for example, sells only two million devices in Germany, according to the business press, but 200 million globally. The current patent dispute with Nokia concerns a global licence. However, the German courts will not hear Oppo’s lawsuits against Nokia until later.
Previously, Nokia scored two victories against Oppo at the Munich Regional Court. On 5 August, the 21st Civil Chamber of the Regional Court Munich, under presiding judge Georg Werner, ruled that Oppo infringed two Nokia standard essential patents (case IDs: 21 O 8879/21 and 21 O 8891/21). Nokia had sued for infringement of the two SEPs EP 35 57 917 and EP 20 80 193.
EP 193 protects an improved pitch lag estimation in audio signals for audio coding. EP 917 discloses flexible allocation of resources with UE “keep awake messages” in discontinuous communications.
The court also ordered two Oppo subsidiaries, Reflection Investment and OnePlus, to cease and desist (case IDs: 21 O 8890/21 and 21 O 11152/21). According to Nokia, the court found Oppo unwilling to grant a licence while ruling that Nokia had behaved fairly. Appeals are possible in all four lawsuits.
It seems Oppo voluntarily pre-empted Nokia’s enforcement of the injunction with the measure. It is likely that Nokia will enforce it, although it is not possible to enforce a judgment a few hours after it has been pronounced – especially on a Friday afternoon. For example, Nokia must deposit a security deposit with the court.
An Oppo spokesman told JUVE Patent, “As the owner of many 5G patents, Oppo respects the value of intellectual property in innovation to a particularly high degree. We have entered into cross-licensing agreements with many leading companies in the past and are committed to fostering a healthy intellectual property ecosystem. The day after the 4G agreement between Oppo and Nokia expired, Nokia immediately went to court. They had previously demanded an unreasonably high contract renewal fee.
Our long-term commitment to the German market remains unchanged and we are proactively working with the relevant parties to resolve the ongoing matter. Apart from suspending the sale and marketing of certain products through Oppo Germany’s official channels, Oppo will continue to operate in Germany.”
In 2018, another Chinese mobile manufacturer met a similar fate. ZTE stopped selling its mobile devices in Germany as a result of injunctions. Patent pool MPEG LA had enforced judgments from the Düsseldorf Regional Court, thus ruining the Chinese company’s Christmas business.
After a recent injunction from the Munich Regional Court in a lawsuit filed by IP Bridge, the car manufacturer Ford also agreed to a licence with the Avanci patent pool a few days after the ruling.
The verdicts against Oppo and OnePlus do not come as a complete surprise, as the court had announced a new approach to FRAND rules during the oral proceedings at the end of March.
Presiding judge Georg Werner emphasised that both parties must demonstrate willingness to conclude a licence over a long period of time. Here, he drew guidance from the Federal Court of Justice’s decision in Sisvel vs. Haier I and II. Previously, the Munich Regional Court had primarily held implementers accountable.
This continues Nokia’s winning streak. Nokia already won against Oppo in the first two judgments handed down in the global dispute. In June, Mannheim Regional Court ruled against Oppo for infringing an implementation patent, and in July the same court followed with a ruling on two SEPs.
According to JUVE Patent information, both parties are already expecting the next development on Tuesday 9 August. The Regional Court Düsseldorf will announce its first two judgments in the dispute.
Hogan Lovells and Bardehle Pagenberg represented Oppo, while Bird & Bird, Samson & Partner and Cohausz & Florack had filed the lawsuits for regular client Nokia.
For more information on the dispute and the parties’ representatives, read JUVE Patent’s recent articles here and here.
Update 09.08.2022: After a major win for Nokia in Munich and the stopping of Oppo and OnePlus sales in Germany, the Düsseldorf Regional Court has put a dampener on things.
The court confirmed to JUVE Patent that it stayed the two proceedings concerning implementation patents EP 17 41 183 and EP 17 28 352 (case IDs: 4c O 35/21 and 4C O 40/21), while it waits for the Federal Patent Court to rule on their validity.
The two decisions are the first by the Düsseldorf Regional Court in the global dispute between Nokia and Oppo. Previously, Mannheim Regional Court ruled in favour of Nokia on an implementation patent and two SEPs. Last Friday, the Munich Regional Court then ruled against Oppo for infringement of two SEPs.
Bird & Bird and Cohausz & Florack handled the two cases in Düsseldorf. Hogan Lovells and Maikowski & Ninnemann lead the defence for Oppo.
JUVE Patent updated this article on 09.08.2022 to reflect the latest developments in the dispute between Nokia and Oppo.