Nokia Technologies OY v Oneplus Technology (Shenzhen) Company, Ltd
| Jurisdiction | England & Wales |
| Judge | Mr Justice Meade |
| Judgment Date | 26 July 2023 |
| Neutral Citation | [2023] EWHC 1912 (Pat) |
| Court | Chancery Division (Patents Court) |
| Docket Number | Case No. HP-2021-000022 |
[2023] EWHC 1912 (Pat)
Mr Justice Meade
Case No. HP-2021-000022
IN THE HIGH COURT OF JUSTICE
BUSINESS AND PROPERTY COURTS OF ENGLAND AND WALES
INTELLECTUAL PROPERTY LIST (ChD)
PATENTS COURT
Rolls Building
Fetter Lane
London, EC4A 1NL
Sarah Ford KC and Thomas Jones (instructed by Bird & Bird LLP) for the Claimants
Andrew Lykiardopoulos KC, Kassie Smith KC and Ravi Mehta (instructed by Hogan Lovells International LLP) for the Defendants
Hearing dates: 24–27 April, 3–4 May 2023
APPROVED JUDGMENT
Remote hand-down: This judgment will be handed down remotely by circulation to the parties or their representatives by email and release to The National Archives. A copy of the judgment in final form as handed down should be available on The National Archives website shortly thereafter but can otherwise be obtained on request by email to the Judicial Office ( press.enquiries@judiciary.uk).
| Introduction | 4 |
| Confidentiality | 8 |
| Procedural history in more detail | 8 |
| German litigation | 13 |
| Undertakings given and proposed | 13 |
| The patent and commercial landscape | 14 |
| Standstills | 14 |
| The new licence and the arguments over its price | 15 |
| Was it an issue for this trial whether a standstill was FRAND? | 16 |
| Effect on Trial D of the Chongqing proceedings | 18 |
| Witnesses | 19 |
| Oppo's Factual Witnesses | 19 |
| Oppo's Foreign Law Witnesses | 19 |
| Nokia's Factual Witnesses | 19 |
| Nokia's Foreign Law Witnesses | 20 |
| Assessment of the foreign law experts | 20 |
| The key domestic case law | 21 |
| UPHC | 21 |
| UPCA | 25 |
| UPSC | 28 |
| Optis F (HC) | 35 |
| Optis F (CA) | 39 |
| Jurisdiction CA | 42 |
| Conversant | 46 |
| Kigen | 47 |
| Foreign law | 47 |
| Agreed principles of French law | 48 |
| General Principles of French contract law | 48 |
| Disputed propositions of French law | 53 |
| Article 1163 – determinable on an objective basis | 53 |
| Agreed principles of Chinese law | 56 |
| The court and legal system | 56 |
| Jurisdiction over global FRAND disputes | 56 |
| The Approach to FRAND | 56 |
| Disputed propositions of Chinese law | 57 |
| Application of Chinese law | 57 |
| The hard-edged non-discrimination IDC v Huawei dispute | 58 |
| Approach to previous cases | 59 |
| Is Oppo already licensed? | 59 |
| ETSI beneficiary; undertaking to take the Chongqing terms | 63 |
| Nokia's second point – patentee can choose between FRAND options | 64 |
| Devices covered: | 65 |
| Cross-licence: | 65 |
| Running royalty versus lump sum: | 66 |
| Standstill | 66 |
| Summary on the differences | 67 |
| Nokia's first point — responsibility that cannot be derogated | 67 |
| Will the Chongqing court set FRAND terms at all? | 67 |
| The point in general | 68 |
| Practicality | 69 |
| Conclusion on the ETSI Clause 6.1 Beneficiary issue | 70 |
| Willingness | 70 |
| Abuse of Dominance | 70 |
| Points of prejudice | 74 |
| EP 560 | 75 |
| Conclusions | 75 |
| Reflections | 76 |
| Form of order hearing and Oppo's election | 78 |
INTRODUCTION
This is Trial E in these proceedings. A fuller procedural history appears below, but for the purposes of this Introduction to my judgment only outline details are necessary.
These are international telecoms patent infringement and FRAND proceedings of a kind now generally familiar in the Patents Court. Nokia (there is no need to distinguish between the claimant corporate entities) has a large patent portfolio which includes many standard-essential patents (“SEPs” – explained below in the authorities to which I refer) and implementation patents (patents which are not standard-essential, also referred to as “NEPs”). It says that Oppo needs a licence.
Oppo has agreed that it needs a licence, and indeed from 1 July 2018 to 30 June 2021 a licence agreement (“the 2018 Licence”) was in place between the parties, but they could not agree the terms of a new licence and litigation ensued in multiple jurisdictions.
There is in general no need to distinguish between the defendant corporate entities, which are all related to each other and would be covered by a Licence settled by this court, so I will just refer to “Oppo” but there is a minor point about the treatment of Oppo, Realme and OnePlus companies/devices in the Chinese proceedings to which I refer below. Often but by no means always OPPO is written all in upper case, including in its own skeleton arguments. I have chosen “Oppo”, simply for consistency with my earlier judgments.
Trials A to C were to be technical trials (i.e. concerning validity, infringement and essentiality) of selected Nokia SEPs. Trial A took place before me and Nokia won: the patent has been referred to as “EP 103”. In a parallel action, likewise tried by me, HP-2021-000023 or “'023” for short, Nokia also won on an implementation patent, referred to as “EP 560”. The Court of Appeal refused permission to appeal on EP 560.
Trials B and C, and the appeal from Trial A, for which I gave permission, have all been stayed by agreement in circumstances described in more detail below.
Trial D is the non-technical trial whose main function will be to set FRAND terms on a worldwide basis, and it is to be tried in October this year. It will certainly cover Nokia's SEPs; whether and on what basis it may cover Nokia's implementation patents has been a matter of dispute.
This, Trial E, is also referred to as the “HOTEOTU”, which stands for “Hearing on the Effect of the Undertakings”. The undertakings in question are undertakings offered by Oppo that it will take a licence on FRAND terms to be set by the First Intermediate People's Court of Chongqing (“the Chongqing court”) in what is referred to as “the 1232 Action”. I will refer to the proceedings in the 1232 Action, including appeals, as “the Chongqing proceedings”.
The sequence of trials in terms of their being heard was thus initially to be A, B, C and then D. Trial E is coming out of alphabetical order because it was inserted into the schedule at Oppo's request.
The essential issue is this: having lost on infringement of a SEP, the position following my decision and the decision of the Court of Appeal in relation to Trial F in the Optis v Apple litigation would be that Oppo would have to choose either to undertake to take a licence on the terms decided at Trial D, or to submit to an injunction on the UK SEP it infringes (references are given below to the Optis v Apple Trial F judgments; the Supreme Court has given permission to appeal but that does not affect my task in this judgment). Oppo says that that does not apply in the light of the undertakings it has offered to take a licence on terms decided in the Chongqing proceedings. It says that the undertakings change the position and either mean that it is already licensed under the ETSI IPR Policy (explained below) or at least is a “Clause 6.1 Beneficiary” pursuant to that Policy and therefore entitled to get a licence in due course and not liable to be injuncted.
At the form of order hearing following the trial over EP 560, Oppo said that its contentions relating to a FRAND licence for Nokia's SEPs also applied to EP 560. I directed that the question of injunctive relief for EP 560 should be deferred to this trial. The scope of the issues at this trial over EP 560 later became a matter of dispute, and I cover that below.
Oppo stresses that this trial concerns a different situation from that which pertained in Optis v Apple and other similar cases that have come before the Patents Court, because it agrees that it will take a licence, and indeed has, it says, initiated proceedings, in Chongqing, to have licence terms determined, to which it has committed. This is not just a presentational difference, it emphasises: it says that it is a legally important distinction compared with Unwired Planet and Optis v Apple such that the decisions of the Supreme Court and Court of Appeal in those cases do not apply directly.
Oppo also stresses that this is not a case where it, as implementer, is not being serious about the level of licence fees that are appropriate. I will not include figures in the light of confidentiality issues and the precise figures do not matter to this point anyway, but suffice it to say that very large sums were paid under the 2018 Licence and that Oppo agrees that an increase for a new licence, which the parties agree should run until 2024, will be appropriate. The parties are still far apart, by a factor of very roughly two, but this is much closer than in other similar recent litigations. So I accept Oppo's point, but it is not of direct legal relevance. I also note that the parties have taken part in a recent mediation — regrettably without success – although naturally its contents remain confidential and the subject of privilege.
Post-script: after seeing my judgment in draft, Oppo asked me to correct this paragraph (and paragraph [70] below). It said that although the new licence will cover additional technology in the form of pure 5G patents, although there are additional sales to take into account (though now declining, it says), although there were references at trial to an “uplift” (I used the word and Counsel for Oppo made no objection to it), and although Oppo's counter-offers for a new licence have exceeded the consideration paid under the 2018 Licence, it did not concede that it was necessarily true that the new licence will command a...
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