Patent Infringement Battle Between Nokia and Oppo Ends in Global Settlement, Delhi High Court Dismisses Suit

New Delhi: A significant patent infringement lawsuit filed by Nokia Technologies OY against various Oppo group companies, including Oppo Mobiles India, Realme, and Oneplus entities, has been dismissed by the Delhi High Court following a global settlement reached between the parties. The suit involved claims of infringement of Nokia 's Standard Essential Patents (SEPs) related to mobile telecommunications technology.

The judgment, delivered by Justice Prathiba M. Singh , noted that the parties had amicably resolved their disputes and filed an application under Order XXIII Rule 1 and 3 of the Code of Civil Procedure, 1908, seeking disposal of the case based on a global patent license and litigation settlement agreement.

Case Background

Nokia had asserted that three of its patents – IN 269929 (Method Providing Multiplexing), IN 286352 ( System and Method for Providing AMR-WB DTX Synchronization), and IN 300066 (Additional Modulation Information Signaling) – which it claimed were essential for implementing 2G, 3G, 4G, and 5G standards, were being infringed by the Defendants' mobile phones. Nokia contended that the Defendants were unauthorized users of these SEPs and were ex-licensees who had failed to renew their license agreement or present reasonable counter-offers.

The Defendants named in the suit included Guangdong Oppo Mobile Telecommunications Corp., Ltd., Oppo Mobiles India Private Limited, Realme Mobile Telecommunication (India) Private Limited, Oneplus Technology (Shenzhen) Co. Ltd., and Oneplus Technology India Pvt. Ltd.

Procedural Journey Marked by Interim Battles

The litigation saw extensive interlocutory proceedings. Nokia initially sought pro-tem deposits from the Defendants under Order XXXIX Rule 10 CPC. While a Single Judge initially did not find sufficient basis for this order, a Division Bench later overturned this decision in July 2023, directing Oppo to deposit 23% of the last paid license amount, taking into account their status as ex-licensees, admitted use of patents, and parallel proceedings in China. The Division Bench's order was subsequently challenged by Oppo in the Supreme Court, which dismissed the challenge in August 2023, upholding the deposit direction.

Simultaneously, the court heard extensive arguments over eleven hearings between May and November 2022 and further in April and May 2023 on Nokia 's applications for interim injunctions under Order XXXIX Rules 1 and 2. Issues of infringement, invalidity, essentiality, and FRAND (Fair, Reasonable, and Non-Discriminatory) compliance were hotly contested.

Following the Division Bench and Supreme Court orders on the pro-tem deposit, the court explored the possibility of an expedited trial, but parties could not reach consensus on whether a FRAND rate determination would be global or India-specific.

A further development arose when the Chongqing No. 1 Intermediate People's Court in China delivered a judgment on November 28, 2023, determining a Global FRAND rate in a parallel proceeding. This judgment was directed to be placed on the Delhi High Court's record as it was deemed to have a material bearing on the pending interim injunction applications.

Global Settlement Reached

Amidst these complex proceedings, including the reservation of judgment on the interim injunction applications, the parties informed the court on January 24, 2024, that a settlement had been reached.

The settlement application, filed under Order XXIII Rule 1 and 3 CPC, confirmed a global resolution of SEP and implementation patent disputes between Nokia and Oppo through a patent license and litigation settlement agreement.

Key terms of the settlement outlined in the application included: - Nokia agreeing to withdraw all its claims and prayers in the suit, including for infringement, injunctions, damages, and FRAND compliance declarations. - The Defendants agreeing to withdraw their counterclaims related to the invalidity or non-essentiality of Nokia 's suit patents. - The settlement agreement not being construed as an admission of any claims by either party. - Nokia having no objection to the refund of the pro-tem security deposit made by Defendant No. 1 (Guangdong Oppo Mobile Telecommunications Corp., Ltd.) to the court.

Court's Decision

In view of the settlement, the Delhi High Court dismissed the suit and the counterclaim as withdrawn, in terms of the Litigation Settlement Agreement. The court directed that the parties shall be bound by the terms and conditions of the said agreement.

The court specifically ordered the refund of the pro-tem security amount deposited by the Defendants, along with accrued interest, within a period of two weeks. The details of the Defendant's bank account for the refund were provided in the settlement application and reiterated in the judgment.

While dismissing the suit based on the settlement, the court declined the Plaintiff's prayer for a refund of court fees, noting the "substantial number of hearings and the detailed nature of the hearings" that had taken place.

Directions were also issued for the return of hard copies of confidential documents filed by the parties and permission was granted to jointly approach the Dealing Assistant for the deletion of electronic records relating to confidential documents.

All pending applications in the suit were dismissed as infructuous following the withdrawal of the suit. The judgment effectively brings an end to this phase of the patent dispute between the two technology giants in India.