Monday, January 16, 2023

Nokia wins entitlement to UK FRAND trial against OPPO as High Court of Justice joins Mannheim and The Hague courts in deeming EP2981103 standard-essential

Nokia announced today that the London-based High Court of Justice (formerly England & Wales High Court (EWHC)) has found for Nokia in a patent enforcement action over EP2981103 on an "allocation of preamble sequences". It is a 4G standard-essential patent, and that part of the 4G standard is also found in 5G.

As a result, the High Court will hold a FRAND hearing. A SEP holder needs to prove at least one patent essential in order for a conditional FRAND injunction to be discussed at a dedicated hearing. Typically there is a remedies hearing first, and a large FRAND trial ahead of a court determination of a FRAND rate. Nokia is suing over multiple patents, but regardless of how the other patents fare, the question of whether the parties have discharged their FRAND licensing obligations will have to be analyzed.

In July, Nokia prevailed on the same patent-in-suit in Mannheim, and a declaratory judgment action brought by OPPO in the Netherlands (which provoked offensive counterclaims from Nokia) had the same result, though no FRAND determination was made as OPPO had waived that defense for the time being. In August 2020, the Mannheim Regional Court enjoined Daimler (now named Mercedes-Benz) over the same patent, though the injunction was never enforced before the parties settled. Nokia did start enforcement against OPPO, including a contempt proceeding, but OPPO left the German market (apparently after the first contempt order).

Nokia released an official statement, according to which "OPPO has been unwilling to renew its license on fair and reasonable terms and made no royalty payments to Nokia for eighteen months." In connection with OPPO's exit from the German market, I believe I heard something about a deposit, so the question is not whether Nokia will get paid, but how much and when. Whether Nokia's demand and OPPO's counterproposal are FRAND (they obviously won't be FRAND at the same time) is up to the courts to decide. Nokia prevailed in Germany, but German courts don't engage in rate-setting: they base their FRAND decisions on non-numerical considerations in order to be able to rule on many cases without spending much time on any one of them. That is different in the UK, and it will be interesting to see what rate the High Court will ultimately deem FRAND.

It is unlikely that European jurisdictions will give Nokia decisive leverage over OPPO. The key decisions will have to be made on other continents, absent a settlement. However, OPPO has multiple countersuits pending against Nokia in Germany. For Nokia, leaving the German market is presumably not an option.

Nokia also challenging OPPO patents

As I said last month when I published a Nokia v. OPPO/OPPO v. Nokia battlemap, this is a monumental earth-spanning dispute, and there have been wins and losses on both sides. On Friday I reported on the latest revocation of a Nokia patent-in-suit (by the European Patent Office). But this is a clash of titans, and Nokia has also taken aim at various OPPO patents:

  • Based on the Opposition Division's preliminary opinions, EP3563600 on a "separate configuration of numerology-associated resources", EP3547772 on a "data transmission method and apparatus", EP3624549 on "methods and devices for controlling rrc state", and EP3598819 on a "method, apparatus and system for transmitting periodic uplink information/signals" are invalid as granted.

  • EP'549 is not being litigated against Nokia. OPPO has similarly challenged patents beyond the ones Nokia is asserting.

  • I reported on last year's EP'819 infringement hearing. As far as I can see on the EPO Register, no amended claims have been proposed. That happens, but the EPO hearing is still several months off, so it's procedurally conceivable that there may still be amendments.

  • EP3672346 on an "information transmission method, terminal and network device" is valid according to the EPO's preliminary opinion. OPPO is asserting that one against Nokia in Mannheim, and I'm trying to find out the trial date. That case could become the first one in which OPPO wins a German patent injunction against Nokia.