On January 24, 2024, OPPO announced a global patent cross-license agreement with Nokia, covering standard-essential patents (SEP) in 5G and other cellular communication technologies. For details, please refer to OPPO’s official statement, “OPPO and Nokia sign 5G patent cross-license agreement”.

The Fangda team represented OPPO throughout the entire legal process, handling the first-instance proceedings in the Chongqing First Intermediate People’s Court and the subsequent appeal to the Supreme People’s Court. Following the global cross-license agreement, the legal procedures for the appeal were recently resolved through mediation. We are pleased to assit OPPO achieving a global patent cross-license agreement shortly after the Chongqing court’s first-instance judgment.

The Legal Journey between OPPO and Nokia in Chinese Courts over SEP royalty rates

The Chongqing Case

In July 2021, OPPO engaged Fangda to file a lawsuit in the Chongqing First Intermediate Court in July 2021, seeking a Chinese court decision to determine Nokia as the right holder for its FRAND (Fair, Reasonable, and Non-Discriminatory) licensing conditions, including global licensing rates, for 5G SEPs. In late November 2023, the Chongqing First Intermediate Court issued a first-instance judgment (“Chongqing Case”). The judgment is a landmark decision made by a Chinese court on global licensing rate-setting for 5G SEPs.

Notably, the Chongqing First Intermediate Court’s first-instance judgment also clarified the industry cumulative fee rate for 5G SEP, specifically for smart terminal products such as mobile phones. This judicial determination was a global-first for establishing industry cumulative fees for 5G SEP through legal judgment. The determination holds significant and far-reaching implications for guiding industry stakeholders and patent implementers in correctly and reasonably assessing the value and corresponding license fees of 5G SEP.

For specific details on the Chongqing Case, refer to our previous briefing “Fangda represents OPPO in obtaining Chinese court’s landmark judgment setting SEP global licensing rates” and the public first-instance judgment.

The Beijing case

Apart from the Chongqing Case, OPPO filed a SEP infringement lawsuit against Nokia in the Beijing Intellectual Property Court (“Beijing Case”). OPPO asserted that Nokia’s communication network base station products infringed OPPO’s 5G SEP. During the determination of infringement compensation, OPPO requested the Beijing Intellectual Property Court to rule on a FRAND license fee rate for OPPO’s 5G SEP applicable to Nokia’s communication network base station products. The infringement compensation amount was to be calculated based on the court-determined license fee rate.

The Fangda team represented OPPO in the Beijing Case, handling the determination of license fees for OPPO’s 5G SEP and asserting claims for infringement compensation. Following the first-instance judgment in the Chongqing Case, the Fangda team remained fully-engaged in the proceedings of the Beijing Case. As of January 24, 2024, before the global patent cross-license agreement was reached, the Beijing Intellectual Property Court had organized multiple hearings on the determination of license fees. Throughout the trial, the Fangda team collaborated with economic experts and OPPO’s team, completing and submitting comprehensive economic analysis reports and substantial evidence to the court. The team also assisted economic experts in presenting their opinions during the hearings.

If the Beijing Case receives a judgment, it will be the first time a Chinese court determines and rules on the license fee rate for SEP of core products in communication network facilities, specifically base stations. Similar to the Chongqing Case, the Beijing Case is a key focus of OPPO’s counteractions in the ongoing global litigation with Nokia over two and a half years. Although the Beijing Case did not reach a judgment due to the parties reaching a licensing agreement, the progress and proceedings of the case played a crucial and positive role in facilitating the eventual global cross-license agreement between the two parties.

The Fangda team was led by partner James HU, and key members included partner Tingting Liao, partner Muran Sun and associate Kaimai Pan.