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

An ETSI FRAND undertaking does not make an implementer immediately licensed merely because it elects to take terms set by a court of its choice. Clause 6.1 requires the patentee to make a FRAND offer capable of acceptance. It does not allow the implementer unilaterally to create a licence with unknown terms. Where two genuinely FRAND outcomes are available, including outcomes from different courts, the patentee may choose which to offer. An implementer insisting on foreign terms is not an unqualified willing licensee. A patentee committed to offer the English court’s FRAND terms may seek an injunction without thereby abusing dominance, subject to the circumstances and the court’s duty to provide an effective remedy.

This was Trial E in international standard-essential patent and FRAND proceedings. Nokia alleged infringement of valid Nokia patents, including an implementation patent. Oppo accepted that it required a licence, but undertook to take a global licence on terms determined in proceedings before the Chongqing court.

Oppo sought declarations that it was already licensed under the ETSI IPR Policy, was a Clause 6.1 beneficiary, or could avoid an injunction by undertaking to accept the Chongqing terms. It also alleged abuse of dominance. A jurisdiction challenge had previously failed at first instance, [2021] EWHC 2952 (Pat), and on appeal, [2022] EWCA Civ 947; [2023] FSR 11. The central issues were whether the undertaking created an immediate licence or beneficiary status, and whether an injunction would be abusive.

Outcome. Oppo was not licensed under the ETSI IPR Policy, was not a Clause 6.1 beneficiary, and was not entitled to any of the declarations sought. Its abuse of dominance arguments failed. It had to elect between accepting the FRAND licence determined in Trial D and submitting to an injunction.

1. Construction of Clause 6.1. The undertaking creates an SPA or SCPA under French law, but the patentee–ETSI relationship must be distinguished from the prospective patentee–implementer relationship. Clause 6.1 requires the patentee to make a FRAND offer which is capable of acceptance and is actually FRAND. It does not grant an immediate licence at the implementer’s unilateral election on terms which remain unknown. An interpretation allowing all material terms to be at large would undermine negotiation and the uniform operation of the policy. The court applied the reasoning in Unwired Planet v Huawei ([2020] UKSC 37) and explained the distinction between references to offering and granting a licence in earlier decisions.
2. Choice between FRAND outcomes. The patentee may choose between two genuinely FRAND alternatives, even where the alternatives are determined by different courts. The Chongqing proceedings would not determine the value of a reciprocal cross-licence, whereas Trial D would. That was a real difference between the options. Nokia was therefore entitled to elect for the terms determined in England. Oppo’s undertaking to accept the Chongqing result did not make it a Clause 6.1 beneficiary.
3. Effective remedy and willingness. The English court must approach the case on the basis that an infringer has been found to infringe a valid monopoly right and must ensure an effective remedy. The court was not, however, required in every case to set the FRAND terms itself. Oppo was not a willing licensee because its commitment was qualified by insisting on the Chongqing terms. Nokia was a willing licensor because it had unconditionally committed to offer a licence on whatever terms this court determined to be FRAND.
4. Competition law. Under Article 102 TFEU and the Chapter II Prohibition in the Competition Act 1998, abuse is assessed objectively by reference to the conduct alleged and its circumstances. A SEP injunction is not automatically abusive. Nokia’s commitment to offer a court-determined FRAND licence, the procedural safeguards of Trial D, and the absence of continuing effect from alleged past negotiation conduct meant that none of Oppo’s allegations succeeded.
5. Standstill and EP 560. Whether a standstill covering implementation patents was FRAND was outside the scope of Trial E, particularly while pleadings on that issue remained incomplete. In practical terms, Nokia accepted that a standstill would be included and valued at Trial D. If Oppo accepted the Trial D licence there would be no injunction concerning EP 560; otherwise an injunction would follow.

Obiter. The court observed that technical trials need not necessarily precede FRAND determination. In suitable cases, technical and FRAND issues might be tried simultaneously or close together, although no general case-management rule was imposed.

The judgment was a first-instance decision in Trial E. The judgment described the following prior procedural steps:

• High Court. HHJ Hacon refused Oppo’s application for a stay on forum non conveniens and case-management grounds: [2021] EWHC 2952 (Pat).
• Court of Appeal. Oppo’s appeal against the refusal of a stay was dismissed: [2022] EWCA Civ 947; [2023] FSR 11.
• Patents Court. In related technical proceedings, EP 103 was held valid and infringed: [2023] EWHC 23 (Pat). Trials B and C and the appeal in Trial A were later stayed by consent.