Settlement season continues as Nokia and Oppo end global patent battle

Since 2021, Nokia and Oppo have sued each other in patent courts around the world. Now they have signed a global cross-licence agreement which brings an end to all patent lawsuits that the two companies had recently brought against each other in Germany, France, the Netherlands, India, China and the UK, as well as five other countries.

Nokia states in its press release that, “OPPO will make royalty payments, along with catch-up payments to cover the periods of non-payment”. This arrangement is not mentioned in Oppo’s press release. Nokia and Oppo did not disclose any further financial details.

However, it is clear from the press releases of both companies that the agreement concerns cross-licences relating to all mobile communication patents, including 5G patents. JUVE Patent has no information on whether the agreement includes the disputes with Vivo.

Nokia and Oppo come to agreement

The dispute attracted particular attention, not only because it was one of the most extensive, if not the largest, mobile communication battles of the last three years with around 100 global lawsuits. In the summer of 2022, Oppo also withdrew from the German market after the Munich Regional Court ordered a sales freeze.

While the agreement reopens the German market for the Chinese company, Oppo devices are not yet available via its website in Germany.

In the summer of 2021, Nokia initiated legal action in France, Germany, India, Indonesia, Spain and the UK. The suits centred on a mix of cellular standard-essential patents (SEPs) and implementation patents covering connectivity, user interface and security technologies and are some of the first major global 5G battles.

Oppo later struck back and initiated revocation claims against the Nokia patents. At the same time, Oppo also sued over its own patents.

China and UK key forums

Most recently, the Chongqing First Intermediate People’s Court in China ordered Oppo to pay Nokia a FRAND rate. However, the rates per unit were well below what Nokia had demanded. The Finnish company therefore did not accept the decision and appealed.

Nokia had also previously made it clear that it was relying on the UK High Court to set the FRAND rate. In July 2023, the UK High Court determined that Oppo could not rely on an undertaking to accept a global FRAND licence set by China’s Chongqing court. It gave Oppo a choice between committing to a UK-determined global FRAND rate, or an injunction which would halt the sale of their devices in the UK.

Later that year, Oppo informed the court that it did not accept the UK’s jurisdiction to set a global FRAND rate and instead chose the injunction. Now the UK High Court will not have the opportunity to rule on a FRAND rate in the dispute.

Internal pressure grows

In January 2024, Oppo gained a slight advantage in Germany when the German Federal Patent Court upheld an important patent held by Oppo. The Munich Regional Court had recently suspended the infringement proceedings, which would have been reopened. In India, on the other hand, Nokia has reportedly recently secured positive rulings in its favour.

It is not clear whether these recent events prompted an agreement. The companies did not comment on the background to the agreement.

Nokia has now signed five licence agreements in the last 13 months: Huawei in December 2022, Samsung and Apple in 2023, and now in January 2024 with Honor and Oppo. Oppo had signed licence agreements with Sisvel, Sharp and NTT Docomo in 2021. A cross-licence agreement with Via Licensing followed in 2023. Earlier this mounth oppoa also signed a licence agreement with Philips.

However, the Chinese mobile phone manufacturer is currently still facing a mass lawsuit from Panasonic in the UK, Germany, China and at the UPC. According to sources, there is growing internal pressure within the companies to reach quick and acceptable licence agreements. The uncertain economic situation is said to be one reason for this.

Last year, for example, Huawei concluded licence agreements with Ericsson, Xiaomi and Sharp.

Many firms involved on both sides

Nokia started the lawsuits in Europe primarily with Bird & Bird teams in Germany and the UK. In Germany, lawyers from Arnold & Ruess and patent attorneys from Cohausz & Florack, df-mp and Samson & Partner were also involved. In France, Nokia relied on a team from Allen & Overy.

International firm Hogan Lovells represented Oppo in the UK, France, Germany and Spain, as well as working with other firms in China, India, Sweden, Finland and the Netherlands. For example, Dutch boutique Brinkhof is leading proceedings before the District Court of The Hague. In Germany, Hogan Lovells was primarily responsible for defending Oppo against the Nokia lawsuits. Bardehle Pagenberg, on the other hand, was responsible for the infringement claims against Nokia. Patent attorneys from Maikowski & Ninnemann were also present for Oppo.

Source:https://www.juve-patent.com/cases/settlement-season-continues-as-nokia-and-oppo-end-global-patent-battle/ - Mathieu Klos

Editor: Peter