Introduction

The case of Nokia Technologies OY & Anor v Oneplus Technology (Shenzhen) Co Ltd & Ors ([2022] EWCA Civ 947) tackled a significant jurisdictional dispute concerning Standard-Essential Patents (SEPs) and Fair, Reasonable, and Non-Discriminatory (FRAND) licensing terms. The plaintiff, Nokia, a Finnish company possessing a global SEP portfolio essential to telecommunications standards like UMTS, LTE, and 5G, sued OPPO, a Chinese multinational, along with its subsidiaries, alleging infringement of the UK Patent portfolio. The crux of the dispute centered on whether English courts retained jurisdiction to adjudicate SEP and FRAND licensing issues in the post-Brexit landscape, especially considering OPPO's concurrent litigation in Chinese courts aiming to set global FRAND terms.

Summary of the Judgment

The England and Wales Court of Appeal upheld the High Court's decision that affirmed the jurisdiction of UK courts over the dispute. The court rejected OPPO's contention that the Chongqing court in China was a more appropriate forum for determining global FRAND licensing terms due to recent precedents and changes post-Brexit. The Appeal was dismissed, maintaining that the UK court remained the proper venue for enforcement of UK SEPs and related FRAND obligations.

Analysis

Precedents Cited

The judgment extensively referenced key precedents that shaped the court's reasoning:

• Unwired Planet International Ltd v Huawei Technologies (2020) UKSC 37: Established that UK courts have jurisdiction over SEP and FRAND disputes, even when involving global licensing obligations.
• Conversant Wireless Licensing SARL v Huawei Technologies (UK) Co Ltd: Affirmed UK jurisdiction over patent disputes despite the existence of parallel foreign proceedings.
• Spiliada Maritime Corp v Cansulex Ltd (1987) 1 AC 54: Provided foundational principles for determining the appropriate forum under the forum non conveniens doctrine.
• Re Harrods (Buenos Aires) Ltd [1992] Ch 72: Highlighted the importance of correctly characterizing the dispute to avoid prejudicing forum selection.
• Guangdong OPPO Mobile Telecommunications Corp Ltd v Sharp Corp (2020): Demonstrated Chinese courts' jurisdiction over global FRAND licensing terms.

Legal Reasoning

The court's legal reasoning focused on the territorial nature of patents and the fundamental principles governing jurisdiction in SEP/FRAND disputes:

• Territoriality of Patents: Patents are inherently territorial, limiting their enforcement to the jurisdiction where they are granted. Thus, UK patents required UK courts' jurisdiction for disputes related to their infringement and validity.
• Characterization of the Dispute: Accurately defining the dispute's nature was pivotal. The court agreed with the High Court that the dispute encompassed issues of validity, essentiality, and infringement of UK patents, intertwined with FRAND licensing obligations.
• Forum Non Conveniens: Applying established principles, the court evaluated whether the UK was the appropriate forum over China. Factors like the nature of the patents, the territorial enforcement of patent rights, and the absence of a global tribunal for FRAND disputes were crucial.
• Impact of Brexit: With the Brussels I Regulation no longer applicable, the court reassessed jurisdictional challenges without relying on previous EU frameworks.
• Chinese Jurisdiction: While recognizing the SPC of China's authority to set FRAND terms, the court concluded that it did not negate the UK's jurisdiction over UK-specific patent issues.

Impact

This judgment has profound implications for international SEP and FRAND licensing disputes:

• Reaffirmation of UK Jurisdiction: Post-Brexit, UK courts retain jurisdiction over SEP disputes pertaining to UK patents, ensuring continued legal recourse for patentee enforcement in the UK.
• Global FRAND Licensing: The decision underscores the complexity of reconciling global licensing terms with the territorial enforcement of patents, highlighting the challenges in achieving consistent FRAND outcomes across jurisdictions.
• Litigation Strategies: Patent holders and implementers may need to strategically choose jurisdictions for litigation, considering the implications of parallel proceedings and varying national approaches to FRAND obligations.
• Encouragement for Arbitration: The absence of a global arbitration mechanism for FRAND disputes suggests a potential area for development to mitigate jurisdictional conflicts and streamline dispute resolution.

Complex Concepts Simplified

Conclusion

The Court of Appeal's decision in Nokia Technologies OY & Anor v Oneplus Technology (Shenzhen) Co Ltd & Ors solidifies the stance that UK courts maintain jurisdiction over SEP and FRAND licensing disputes related to UK patents, even amidst challenges posed by concurrent foreign proceedings and evolving international legal landscapes post-Brexit. This affirmation provides clarity and stability for patent holders and implementers operating within the UK, while also highlighting the persistent complexities in global SEP licensing frameworks. Moving forward, the legal community may need to explore more harmonized or supranational mechanisms, such as arbitration, to effectively manage and resolve cross-border SEP and FRAND disputes.