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IN THE HIGH COURT OF DELHI
C. Hari Shankar, J.
Nokia Technologies Oy - Appellant
Versus
Guangdong Oppo Mobile Telecommunications Corp. Ltd. - Respondent
CS (COMM) 303 of 2021, I.A. 7700 of 2021
Decided On : 17-11-2022
Important Points
Subject
Intellectual Property - Patent Law
Headnote
(B) Injunction - SEPs litigation - Legal obligations of SEP holders to license on FRAND terms and issues surrounding the concept of 'willingness' to pay such terms were discussed throughout the judgment, especially regarding the nature and extent of any implied admissions in negotiations. (Paras 6-9, 84-89)
| Table of Content |
|---|
| 1. nokia is holder of essential patents. (Para 1 , 2) |
| 2. seps must be licensed fairly (frand). (Para 3 , 4 , 5) |
| 3. essential standards must be complied to avoid infringement. (Para 6 , 7 , 8) |
| 4. interim measures are sought by nokia against oppo. (Para 10 , 11 , 12 , 13) |
| 5. nokia claims past licensing arrangements entitle it to royalties. (Para 14 , 15 , 16 , 17) |
| 6. oppo contests the claims on multiple grounds. (Para 18 , 19 , 20) |
| 7. oppo’s contentions revolve around contract and essentiality disputes. (Para 21 , 22 , 23) |
| 8. negotiations highlight uncertainties in agreement terms. (Para 24 , 25 , 26) |
| 9. jurisdictional considerations on patent law apply. (Para 27 , 28) |
| 10. court should focus on existing agreements and disputes. (Para 29 , 30) |
| 11. financial aspects are critical in sep negotiations. (Para 31 , 32 , 33) |
| 12. judicial practice recognizes the need for clarity in admissions. (Para 34 , 36 , 37) |
| 13. oppo's stance on negotiations influences the case trajectory. (Para 38 , 39 , 40) |
| 14. court decisions on interim payments are constrained. (Para 41 , 42 , 43) |
| 15. court dismisses nokia's application under order xxxix rule 10. (Para 44 , 45) |
JUDGMENT
C. Hari Shankar, J.
I.A. 7700/2021 in CS (COMM) 303/2021
[This judgement redacts all figures and details over which confidentiality has been claimed by the parties. They are, therefore shown by way of asterisks (*****)].
1. This judgement adjudicates I.A. 7700/2021, filed by the plaintiff Nokia Technologies ('Nokia', hereinafter) against the defendant Guangdong Oppo Mobile Telecommunications Corp Ltd ('Oppo', hereinafter) in CS (Comm) 303/2021.
2. Nokia is the holder of various patents, of which the present dispute primarily concerns itself with three. These are (i) Indian Patent No. 286352 (IN `352) titled 'System and Method for Providing AMR-WB DTX Synchronization', (ii) Indian Patent No. 269929 (IN `929) titled 'Method Providing Multiplexing for Data Non Associated Control Channel' and (iii) Indian Patent No. 300066 (IN `066) titled "Additional Modulation Information Signaling for High-Speed Downlink Packet Access". According to Nokia, the three suit patents are Standard Essential Patents (SEPs), which are necessary to work the technology for making cellular systems 2G, 3G, 4G and 5G compliant. Inasmuch as the defendant Oppo, in its cellular handsets, employs 2G, 3G, 4G and 5G technology, Nokia contends, in its plaint, that Oppo must necessarily be using the technology contained in the three SEPs forming subject matter of the present dispute. To support the contention that Oppo is indeed using the suit patents, held by the plaintiff, Nokia has filed, with the plaint, 'Claim Mapping Charts', which purportedly maps each element of the claim to sections of the third generation partnership project (3GPP) technical specifications which form the basis of wireless telecommunications standards developed within the framework of the European Telecommunications Standard Institute (ETSI). As is well-known, a patent, to qualify as a SEP, has to map onto a standard set by the ETSI (or the relevant Standard Setting Organization/SSO). If the technology used by Oppo and the suit patents both map onto the same standard in the ETSI, it could lead to a legitimate inference that the defendants` technology infringes the plaintiff`s patents.
3. SEPs form a category of patent sui generis, as has been noted by this Court in its judgment in Interdigital Technology Corporation v. Xiaomi Corporation, (2021) 277 DLT 396, though SEP litigation, at least in this country, is governed by the same fundamental substantive and procedural principles that govern any other litigation. Unlike normal patents, the use, by another of a patent held by one party, does not, ipso facto, entitle the party, as a right, to an injunction restraining the other party from using the patent. This is because SEPs, by their very nature, constitute standards for operation of technologies which are required worldwide and form
