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

An implementer found to infringe a standard-essential patent, and without a licence, will ordinarily be required to elect between accepting future FRAND terms and an injunction, even if the terms are not yet known. The court may depart from that approach in an exceptional case, but the mere imminence of a FRAND trial is insufficient.

An injunction may be stayed pending appeal where the evidence shows significant, unquantifiable and difficult-to-reverse commercial harm, particularly where it would disturb an established market position. A closely scheduled FRAND trial may nevertheless be adjourned where it has little forward-looking utility and risks wasting substantial resources.

The judgment concerned the form of final relief and related case-management directions following an earlier trial in which two Nokia patents had been held valid and infringed. One patent was a standard-essential patent and the other was a non-essential patent.

The principal dispute was whether the defendants had to elect between accepting the FRAND terms to be determined at a further trial and an injunction. The court also considered whether any injunction should be stayed pending appeal, whether the further FRAND trial should proceed, the appropriate form of the injunction, and whether relief concerning the non-essential patent should be stayed or accompanied by onerous recall obligations.

1. The Court of Appeal’s decision in Optis F (CA) was binding. In circumstances of this kind, an implementer that had been found to infringe a standard-essential patent and did not have a licence had to elect between committing to the FRAND terms to be determined at Trial D and accepting an injunction. The possibility of exceptional departure did not justify departure here, since the period before determination of the terms remained significant.

2. The defendants elected for an injunction. The argument that damages were an adequate remedy was rejected in light of the Supreme Court decision referred to as UPSC and the approach upheld in Optis F.

3. The injunction was stayed pending appeal. Applying the principles associated with 3M, and the treatment of the status quo in Neurim v Generics and Novartis v Hospira, the evidence established substantial and unquantifiable damage to commercial relationships, market position and customer confidence. Compensation after a successful appeal would be extremely difficult to quantify. The established market position was an important consideration.

4. Trial D was adjourned. In the exceptional circumstances, it had very limited forward-looking utility, the prospects of the defendants accepting its terms were very low, and proceeding risked wasting effort while impairing the practical effect of the appellate process. The trial would not, in any event, resolve the distinct question of damages for past unlicensed use.

5. The injunction concerning the standard-essential patent was framed so that it ceased on entry into a licence, with liberty to apply for its discharge upon an undertaking to enter into a FRAND licence. An automatic discharge on an undertaking alone could be inappropriate where substantial sums remained payable.

6. No stay was granted in relation to the non-essential patent. There was no evidence of irreparable harm from designing around it, and the possibility of a future UK standstill was conditional on accepting FRAND terms. A specific requirement to issue recall notices was preferred to an obligation to take all reasonable steps within the defendants’ power.

The judgment followed an earlier judgment of 26 July 2023 in the same proceedings. The present judgment dealt with final relief, the stay pending appeal, and the adjournment of a related FRAND trial. No citation for the earlier judgment was stated.