Acer Incorporated & Anor v Nokia Technologies Oy

For an implementer’s contractual RAND claim concerning standard-essential patents, the claim may relate wholly to property within the jurisdiction even where the licence sought is global. A negative declaration under gateway 16A requires a pleaded threat to sue in the United Kingdom; a hypothetical claim to immunity from an injunction is insufficient. Patent validity, essentiality and non-infringement claims are not based on the same or closely connected facts as RAND claims merely because their outcome may affect a later royalty.

A SEP owner may offer an interim licence whose final terms are set by independent ICC arbitration, and the offer may be objectively RAND. The implementer is not compelled to arbitrate, but refusal means unwillingness to accept those terms and prevents implementer-led English declaratory jurisdiction. A case management stay may therefore be granted where the claims have no real prospect of success.

Nokia owned or controlled a portfolio of standard-essential patents concerning ITU-T video standards. Acer and ASUS accepted that licences were required but claimed declarations, final RAND licence terms and interim licence declarations in the Patents Court.

Nokia challenged jurisdiction and offered adjustable interim licences, with final terms to be determined by ICC arbitration. The High Court rejected the jurisdiction challenges, refused a case management stay and made some interim licence declarations in [2025] EWHC 3331 (Pat). The appeal concerned the service-out gateways, the effect of Nokia’s offers, and whether the claims should be stayed.

Disposition. Arnold LJ gave the leading judgment, with Zacaroli LJ and Peter Jackson LJ agreeing. The appeal was dismissed on jurisdiction but allowed on the case management stay. The interim licence declarations were consequently discharged.

1. Permission to serve out required a serious issue to be tried, a good arguable case that a service gateway applied, and England and Wales to be the clearly or distinctly appropriate forum. Gateway 11 applied. The RAND claims were contractual disputes concerning the obligations attached to UK patents. The global scope of the licence and the possible availability of specific performance did not alter that characterisation.
2. Gateway 16A did not apply. The claimants had not pleaded any threat by Nokia to sue for infringement of UK patents. Fear of proceedings was not itself such a threat. A hypothetical declaration that Nokia would lack entitlement to an injunction could not circumvent that requirement, and gateway 16A also excluded claims relating to gateway 2.
3. Gateway 4A did not apply. Claims concerning patent validity, essentiality and non-infringement based on a pass-through licence or technical workarounds did not arise from the same or closely connected facts as RAND claims. Any later effect on the royalty rate was insufficient.
4. Although Nokia described its application as a case management stay, its substance was that the RAND claims had no real prospect of success. Treating it in that way was procedurally fair because the claimants suffered no prejudice.
5. The adjustable interim licences were capable of acceptance and objectively RAND. The proposed ICC arbitration would determine final terms through an independent and impartial tribunal. Arbitration remained consensual because the claimants could refuse the offer, although refusal meant that they were unwilling to accept the offered RAND terms and could not invoke the English declaratory jurisdiction to obtain different terms.
6. The inherent asymmetry of the RAND system was not for the court to correct. Nokia could choose arbitration in these cases while accepting court determination in other litigation. The stay was to be subject to conditions preserving pleadings, disclosure, evidence and costs for any arbitration.

• Court of Appeal (Civil Division) allowed the appeal on the case management stay, dismissed it on jurisdiction and discharged the interim licence declarations.
• High Court of Justice, Business and Property Courts, Patents Court in [2025] EWHC 3331 (Pat) rejected Nokia’s jurisdictional challenges, refused a case management stay and made some interim licence declarations.