Thursday 30 June 2022
By Appellant’s Notice filed on 22 November 2021, OnePlus Technologies (and 6 other Defendants, collectively (“Ds”)), appeals the Order of HHJ Hacon (High Court, Chancery Division) dated 9 November 2021 by which he dismissed the Defendants’ Jurisdiction Applications.
Factual Background: From 1 July 2018 Ds were licensed under certain of Nokia’s standard essential patents (SEPs) and Nokia was granted a cross-licence under patents owned by some of the defendants (“the Original Licence”). The Original Licence expired on 30 June 2021. Nokia and D3 acting on behalf of all the defendants attempted to negotiate a renewed licence and cross-licence, expanded to include 5G patents, without success. Nokia submit that the terms of a worldwide licence which they have offered to the defendants are FRAND. The defendants have declined to accept a licence on those terms and deny that they are FRAND, although they have said that they would like to take a global licence provided that the terms are settled by a court in China. Nokia’s position is that, since the expiry of the Original Licence Ds have been carrying out acts protected by the UK Patents and have failed to accept a licence under Nokia’s FRAND terms. Nokia hence brought an action for infringement on 1 July 2021. By an order dated 20 July 2021 Master Pester granted permission to serve the non-UK defendants out of the jurisdiction. On 13 July 2021 the third defendant and related members of the OPPO group of companies filed two actions (“the Chongqing Proceedings”) against the first claimant and other members of the Nokia group in the No. 1 Intermediate People’s Court of Chongqing Municipality of the People’s Republic of China (“the Chongqing Court”). In the first claim, the Chongqing Court has been asked to set the terms of a global FRAND licence of Nokia’s SEPs(“the Rate Setting Claim”). In the second claim the third defendant seeks a declaration that Nokia’s actions in licensing negotiations were done in a non-FRAND manner and in breach of principles of good faith applicable under Chinese law (“the Non-FRAND Claim”. Ds challenged the jurisdiction of the court, having requested a case management stay, by application notices dated 3 August 2021 and 8 September 2021 (“the Jurisdiction Applications”). Ds sought a stay of the claims in the present action pending final determination of the Rate Setting Claim and the Non-FRAND Claim in Chongqing on the ground that England is not the proper forum for determination of the claims. On 8 September 2021 the non-UK defendants filed an application notice seeking to set aside the Order of Master Pester granting permission to serve out of the jurisdiction, again on the ground that England is not the proper forum for determination of the claims.