It’s not going well for Oppo in the dispute with Nokia over SEPs in Europe. After setbacks in Germany and the Netherlands, the UK Supreme Court has now rejected permission for Oppo to further appeal in a jurisdictional challenge. As a result, the infringement and nullity proceedings in the UK are picking up speed.
9 November 2022 by Konstanze Richter
Prior to the latest decision by the Supreme Court, both the High Court and the Court of Appeal had previously ruled that UK courts have jurisdiction in the current case between Nokia and Oppo.
The two parties are battling over various patents for the 3G, 4G and 5G mobile standards in a pan-European dispute. In the UK proceedings, the jurisdictional dispute pertains to the English parts of the three European patents EP 20 70 217, EP 20 87 626 and EP 29 81 103. The latter patent is also part of disputes in Germany.
From 1 July 2018 to 30 June 2021, Oppo were licensed by Nokia. The former also granted the Finish company a cross-licence in respect of Oppo’s own portfolio of SEPs. However, negotiations for a further licence have so far not borne fruit.
In the absence of a new licensing deal, Nokia is now accusing the Chinese mobile phone manufacturer of infringing its patents – both SEPs and non-SEPs – with its mobile devices under the Oppo and OnePlus brands. On 1 July 2021, Nokia filed a lawsuit at the UK High Court.
In response, Oppo filed a request with the People’s Court of Chongqing, China, that the court determine a global FRAND licence for Nokia’s portfolio. In the UK, Oppo then asked for a stay of the proceedings pending the decision of the Chinese court.
The High Court dismissed the application in November 2021 (case ID: HP-2021-000022), a decision which was upheld by the Court of Appeal (case ID: CA-2021-003304). According to the reasoning, at the centre of this dispute was the question of infringement, rather than the setting of a global FRAND rate.
Court of Appeal judge Peter Jackson referred to the Supreme Court’s decision in Unwired Planet against Huawei, which states that a court has jurisdiction over claims concerning the infringement and validity of UK SEPs.
The judge also said that Brexit, after which the Brussels I Regulation no longer applies in the UK, has no impact. Furthermore, the ruling of the Supreme People’s Court in China in the case of Oppo against Sharp, whereby the court claimed jurisdiction to settle the global terms of a FRAND licence of SEPs, also did not impact the case.
Oppo applied to the Supreme Court to appeal this ruling, which it has now dismissed. As such, the infringement and validity proceedings in the UK should pick up speed. A technical trial in the dispute over EP 103 is scheduled for November, with more to follow in 2023.
The lawsuits are part of a pan-European dispute in which judgments have already been handed down in other European countries.
Only recently, the District Court of The Hague rejected Oppo’s invalidity claims and found the company had committed patent infringement. In Germany the Mannheim and Munich Regional Courts found that Oppo infringed the disputed patents. The Munich decisions led to a sales ban in Germany.
Oppo relied on international law firm Hogan Lovells. In the UK proceedings, a team led by London partner Paul Brown represented the Chinese client and its companies. The relationship between Hogan Lovells and Oppo began with a dispute between Oppo and Sharp last year. The IP practice is also in action for Oppo in other countries, including Germany, Spain and France, with the London team coordinating the proceedings.
In the Netherlands, however, Oppo hired a team from Brinkhof.
Nokia is relying on a pan-European team from Bird & Bird. In the UK, London partner Richard Vary took the lead.
In Germany, Düsseldorf partner Christian Harmsen works closely with IP boutique Arnold Ruess, while in the Netherlands Wouter Pors is conducting the proceedings for the Finnish telecommunications company.
For Oppo/One Plus
Twenty Essex (London): Alexander Layton, Josephine Davies
8 New Square (London): Daniel Alexander, Andrew Lykiardopoulos
Hogan Lovells (London): Paul Brown, Daniel Brook, Katie McConnell (all partners); counsel: Emma Fulton, Dominic Hoar; associates: Jemma Trainor, Eibhlin Vardy, Ian Moss, James Gray, Greig Shuter, Hannah Schofield
Brick Court Chambers (London): Nick Saunders
Bird & Bird (London): Richard Vary, Toby Bond (both partners); associate: William Warne
In-house (Munich, London): Clemens-August Heusch (IPR litigation, Munich), Taliah Walklett (Director Litigation, London)
Supreme Court of the United Kingdom (London)
Robert Reed (presiding judge), David Kitchin, David Richards
Update 10.11.2022: The UK High Court has ruled that Oppo infringed one of Nokia’s valid implementation patents (case ID: HP-2021-000023). Presiding judge Richard Meade found that, not only was Nokia’s patent EP 37 16 560 valid, but also that Oppo’s and OnePlus’ mobile phones infringed the patent. EP 560 covers the processing of transmissions signals in a radio transmitter.
The court came to the decision based on the software originally installed on the devices, which was later updated to remove the infringing code. The patent is also subject to an infringement claim by Nokia against Oppo in Germany. The Regional Court Düsseldorf will hear the case at 17 November (Case ID: 4c O 34/21).
This set back comes following injunctions granted in Munich and Mannheim on five patents that led to sales bans across Germany, as well as injunctions in the Netherlands on two patents.
On the other hand, Oppo/OnePlus celebrated two successes after the Düsseldorf and the Munich Regional Court each suspended two lawsuits until the Federal Patent Court decides on the validity of Nokia’s patents.
It remains to be seen whether Oppo will appeal the judgment. The next stage is hearings over costs, and the court deciding whether or not to grant an injunction.
JUVE Patent updated this article on 10.11.2022 to reflect the latest developments in the case between Nokia and Oppo/OnePlus in the UK.