Nokia Technologies OY & Anor. v OnePlus Technology (Shenzhen) Co, Ltd & Ors.

A claim to enforce UK standard-essential patents remains a dispute about their validity, essentiality and infringement, together with any defence based on the patentee’s FRAND obligation. An implementer cannot characterise it solely as a dispute about the terms of a global licence by undertaking to accept only the terms fixed by its preferred foreign court.

Even if characterised as a global FRAND rate-setting dispute, it may have no natural territorial forum. England is clearly an appropriate forum where UK patents are invoked to compel the implementer to take a FRAND licence.

A case-management stay for related foreign proceedings requires rare or compelling circumstances. Later duplicative proceedings and uncertainty whether their outcome will resolve the English issues do not suffice.

Nokia owned a global portfolio of standard-essential telecommunications patents, including three UK patents. After its previous cross-licence with the OPPO group expired, Nokia brought English proceedings alleging that the UK patents were valid, essential and infringed. It sought FRAND declarations and an injunction unless OPPO took a licence on FRAND terms.

OPPO subsequently began proceedings in Chongqing seeking determination of the terms of a global FRAND licence. It undertook to accept the terms fixed by that court, but gave no equivalent undertaking concerning terms fixed by the English court.

The High Court dismissed applications challenging jurisdiction and seeking a case-management stay: [2021] EWHC 2952 (Pat). The central questions on appeal were whether England was the appropriate forum and whether the English proceedings should be stayed pending the Chongqing proceedings.

1. Appeal dismissed. The judge correctly characterised the dispute as a claim to enforce UK patents. It raised issues concerning their validity, essentiality and infringement, together with a defence based on Nokia’s FRAND obligation. The court must consider the totality of the dispute without defining it at a level which predetermines the choice of forum.

2. OPPO’s willingness to take a global licence did not transform the dispute into a pure rate-setting claim. OPPO maintained its challenges to validity, essentiality and infringement and offered to accept only the licence fixed by the Chongqing court. Nokia could prevent hold-out only by enforcing territorial patent rights through an injunction. The patent-enforcement element was therefore substantive, not merely a jurisdictional hook. Only a UK court could determine all the issues relating to the UK patents.

3. Alternatively, even if the dispute were characterised as concerning only the terms of a global FRAND licence, Chongqing was no more appropriate than England. Valuation of a global portfolio depended principally on technical and valuation evidence, portfolio strength, contribution to the standards and comparable licences. Such a dispute had no natural territorial forum. Manufacturing, sales and revenue figures did not create a sufficient territorial connection. England was clearly an appropriate forum because Nokia sought to enforce UK patents to compel OPPO to take a FRAND licence.

4. The different law and approach likely to be used in Chongqing did not make England the more appropriate forum for forum non conveniens purposes merely because they might affect the royalty. It did, however, confirm that both parties’ forum arguments reflected their preference for a perceived favourable forum.

5. A temporary case-management stay for parallel foreign proceedings may be ordered under the Civil Procedure Rules 1998, but only in rare or compelling circumstances. The judge’s refusal was a discretionary case-management decision entitled to particularly strong appellate deference. The later Chongqing proceedings would save time and cost only if their result proved determinative, which was uncertain. OPPO’s desire to secure determination in its chosen forum was not a sufficient reason for a stay. The legitimate juridical advantage of applying French rather than Chinese law could also weigh against a stay.

1. Court of Appeal (Civil Division): By [2022] EWCA Civ 947, unanimously dismissed OPPO’s appeal against the jurisdictional and case-management rulings.
2. High Court, Patents Court: By [2021] EWHC 2952 (Pat), dismissed the Chinese defendants’ application to set aside permission for service out and dismissed the applications for a stay.