(SpicyIP Tidbit)Nokia- Oppo SEP Litigation: The Dust (Dispute) Finally Settles!

Template from Nokia’s timeless “hands” commercial (see here)

In a major development, all the patent disputes (including the 5G SEP dispute) between Oppo and Nokia stand settled as both parties enter into a cross-licensing agreement. Though the terms of the agreement have not been made public, as reported by Sukanya Sarkar here (paywalled) the agreement brings an end to the patent disputes between the parties in Germany, France, the Netherlands, India, China, the UK and five other jurisdictions!

Interestingly, as pointed out by Mathieu Klos, Nokia’s press release mentions that Oppo will be paying up the royalty amount along with the “catch up” payments to cover the periods of non payment, but Oppo’s press release is silent on this detail and rather simply states that “the specific terms of the agreement are confidential as per mutual agreement.”

In India, the dispute saw two important orders from the Delhi High Court, the first in 2022, where a single judge bench refused to pass an interim order in favor of Nokia and insisted it to first satisfy the following four- factor test- (i) the asserted suit patent is in fact a SEP, (ii) the technology used by the defendant infringes the SEP, (iii) the royalty rate at which the plaintiff is willing to license its SEP is FRAND, and (iv) the defendant is unwilling to take the license at the said FRAND rate (see here for a tidbit on this order) (Also, the requirement of fulfilling the four-factor test in SEP disputes was later set aside by a division bench in Intex Technologies (India) Ltd. v. Telefonaktiebolaget L M Ericsson). While hearing Nokia’s appeal against the single judge order, a division bench of the High Court passed an important order clarifying that the Court can issue “Pro-tem security” orders in cases directing an implementer to pay a security amount to safeguard the interest of the SEP holder. This division bench order was then challenged before the Supreme Court in form of a Special Leave Petition, however the same was rejected by the apex court. (Sidenote: The second DB order had a major role to play in another high stakes SEP dispute between Phillips and One Plus, where the Court directed One Plus to deposit INR 53.25 crores as pro-tem security).

Apart from their patent dispute in India, as discussed by Mathieu Klos here, the parties are embroiled in more than 100 global lawsuits and the dispute was the reason for Oppo’s exit from Germany after a Munich Court’s 2022 order for a sales freeze. The dispute also raised a substantive question of law concerning SEP litigation- can a court determine a global FRAND rate, regardless of ongoing trials in other jurisdictions? This controversy arose when a UK Court disregarded Oppo’s commitment to be bound by a Chinese Court’s order and insisted it be bound by the global FRAND rates set by it or face an injunction. This issue has been discussed by Dr. Vaibhav Victor Tandon and Prof. Ashwini Siwal here.

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