Nokia wraps up yet more SEP litigation with Vivo settlement

As announced today, the licensing deal signed by Nokia and Chinese smartphone vendor Vivo covers both companies’ 5G SEPs and other cellular technology. The terms of the deal mean Vivo will make royalty payments, as well as payments to cover the dispute period from 2021, to Nokia. It is the third such licensing deal concluded by the Finnish company in 2024, and its sixth major agreement since 2022.

While the terms remain confidential, the cross-licensing deal ends all litigation between the parties. According to Nokia, the agreement with Vivo almost completes the company’s smartphone licence renewal cycle. The press release states that Nokia “remains confident that its annual net sales run-rate will return to EUR 1.4 to 1.5 billion in the mid-term”.

A Vivo press release states that, as of 31 December 2023, its patent portfolio contains over 6,000 families of 5G SEPs and over 2,500 families declared to ETSI.

SEP litigation in Germany

According to JUVE Patent sources, litigation between Nokia and Vivo originally arose when they could not decide on a new licence agreement regarding 5G technologies. A previous agreement, where Vivo paid Nokia for use of its patented 2G and 3G technologies, had expired in December 2021.

In April 2023, the Regional Court Mannheim found that Vivo infringed three Nokia standard essential patents, EP 2 981 103 (case ID: 2O 36/22), EP 3 220 562 (case ID: 2O 65/22) and EP 2 087 626 (case ID: 2O 37/22), resulting in the court granting the latter an injunction against Vivo. While the Chinese company appealed, Nokia then enforced the injunction in June 2023. Vivo later removed its products from the market.

Nokia also sued 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). Vivo responded with a counterclaim in Düsseldorf with EP 3 618 530 at issue (case ID: 4b O 25/22), although the EPO revoked the patent at first instance. However, Vivo was one of several opponents who succeeded in revoking Nokia patent EP 2 087 626 at the EPO in July 2023.

Parallel proceedings were also ongoing in India, China, Malaysia and the Philippines. The latest deal has ended any pending litigation.

Nokia primed for settlements

Last month, Nokia also announced licensing deals with another Chinese smartphone vendor, Honor, as well as the end of the extensive and high-profile litigation with Oppo. Since 2021, Nokia and Oppo had sued each other in patent courts globally, with the global cross-licence agreement ending all patent lawsuits. This included actions in Germany, France, the Netherlands, India, China and the UK, as well as five other countries.

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.

In January 2024, an agreement between Nokia and Apple also came into force. The company has also concluded deals with Samsung and Huawei.

Germany’s legal talent

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. Thus, the international firm led for Nokia against Vivo regarding FRAND in Mannheim, and also led proceedings in Munich. Bird & Bird also led all litigation against Oppo.

The international team works closely with Arnold Ruess, which often represents the Finnish company in other proceedings. Against Vivo, partner Cordula Schumacher took the lead regarding the patent and technical side of proceedings. Patent attorneys from Samson & Partner were also involved in the EPO proceedings.

IP boutique Cohausz & Florack also represented Nokia in the two sets of Munich proceedings regarding SEPs and associated nullity proceedings, as well as in the infringement case based on EP 1 671 505 (case ID: 7 O 2830/22). The firm also represented Nokia in its revocation of EP 530 at the EPO.

A large team from IP boutique Vossius & Partner represented Vivo in both Mannheim and Munich, with the firm engaging both its patent litigators and patent attorneys in proceedings. Partner Georg Andreas Rauh led 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 acted for Vivo.