Oppo Counteroffensive Against Nokia Suffers Another EPO Setback

An Oppo patent being asserted against Nokia in German litigation has suffered an adverse preliminary decision at the European Patent Office, whose Opposition Division this week issued a provisional decision that the IP right lacks an inventive step and is invalid.

All eight of Oppo’s ‘homegrown’ patents asserted against the Finnish company have now suffered a negative decision – or preliminary decision – at the EPO or in the German courts. But its counteroffensive cannot be written off yet. In fact, three other asserted patents, which it has in-licensed from Huawei, are posing more problems for Nokia.

Oppo’s German lawsuits are the main prong of its counteroffensive against Nokia, which is suing the Chinese company in pursuit of a 5G-era SEP licensing deal on what it considers to be FRAND terms. In 2021, following unsuccessful talks towards the end of the parties’ previous, 4G licensing agreement, Nokia initiated a wave of legal actions in Germany, the Netherlands, the United Kingdom, France, Sweden, Finland, China, India, Indonesia and Brazil.

As well as filing its own FRAND action in China and a revocation suit in the Netherlands, Oppo launched several infringement suits in Germany, primarily targeting Nokia’s base station business. It asserted eight patents from its own portfolio in late-2021. Then, following a patent deal with Huawei in December 2022, Oppo was able to assert three more in-licensed patents early this year. Nokia is defending itself in the German litigation and has also challenged Oppo’s patents in EPO oppositions.

This week’s decision relates to one of the eight ‘homegrown’ patents: EP 3 697 146. Following the preliminary decision to revoke the patent – which is not binding but is strongly indicative of the court’s thinking – oral proceedings have been scheduled for 13 February 2024, after which a final opinion will be handed down.

It is not the first time that one of the ‘homegrown’ patents has had a setback at the EPO. Of the eight patents, two have been revoked by the Opposition Division – EP 3 563 600 and EP 3 598 819 – and a further five have now been held invalid in preliminary decisions: EP 3 557 938, EP 3 624 524, EP 3 547 772, EP 3 445 093 and now EP 3 697 146.

The eighth patent – EP 3 672 346 – was upheld by the Opposition Division with limited claim amendments. However, the assertion of this patent fell flat at the Mannheim Regional Court in June 2023. As IAM reported, the court handed down rare bench judgment immediately dismissing Oppo’s case against Nokia for the German segment of patent ‘346 for lack of infringement.

However, worryingly for Nokia, the same pattern has not emerged with Oppo’s Huawei-licensed patents: EP 3 386 131, EP 2 863 570 and EP 3 582 567. Two of these are being asserted in Munich, with the other being litigated in Mannheim.

As IAM reported, the Munich Regional Court expressed a provisional view in June that, contrary to Nokia’s arguments, Oppo does have right of action to sue Nokia in one of the three cases. It also took the provisional view that the patent in question is likely to have been infringed.

The court did not address Nokia’s view that Oppo’s conduct has not been FRAND and its assertion of in-licensed patents in these circumstances violates the cartel prohibition under Article 101 (1) TFEU. Nor did it address the argument that a cross-licence between Nokia and Huawei gives the Finnish company the right to use the patented technology.

The Munich Regional Court stated that it would not issue an injunction against Nokia prior to the Federal Patent Court’s preliminary validity decision, expected towards the end of this year. The full infringement hearing is scheduled for 7 March 2024. No significant developments have been reported in the other two Huawei-licensed-patent assertions.

Nokia’s own patent enforcement campaign has not been without its hiccups. The EPO has invalidated several of its asserted patents, and the Paris Court of Justice has declared two asserted patents invalid for lack of novelty.

It has enjoyed several notable successes, however. In addition to winning a string of injunctions in Germany and the Netherlands, Nokia has won a finding of validity, infringement and standard-essentiality from the High Court of England and Wales, which recently also ruled that the company has acted as a willing licensor while Oppo has been unwilling to license on FRAND terms.

Nokia has, furthermore, secured a preliminary injunction in Brazil. And earlier this month, the Indian Supreme Court ordered Oppo to stump up a significant security deposit while the dispute is being resolved.