Insights High Court declines to set aside service out of jurisdiction or to grant a stay of proceedings in global FRAND licence terms case involving Standard Essential Patents in mobile telecoms sector


Nokia Technologies Oy are proprietors of three mobile telecoms European Patents with a UK designation that have been declared as essential to certain standards by the European Telecommunications Standards Institute (ETSI), i.e., they are Standard Essential Patents (SEPs).

Nokia is seeking a declaration that the SEPs are indeed essential and that they are valid and infringed by the defendants, Oneplus Technology (Shenzhen) Co Ltd and others, all of whom are manufacturers and suppliers of mobile devices. Nokia is also seeking a declaration that the terms of a global licence it has offered to the defendants are FRAND. It is also seeking an injunction and other relief if the defendants fail to take a FRAND licence. Nokia has also issued proceedings for infringement of its SEPs in Germany, India and Indonesia.

The third defendant, Guangdong Oppo Mobile Telecommunications Corp Ltd (Oppo China), has also issued proceedings, this time in the Chinese courts against Nokia, asking the Chinese court, inter alia, to set the terms of a global FRAND licence of Nokia’s SEPs, following the ruling by the Chinese Supreme Court, which found that the People’s Republic of China has jurisdiction to settle global terms of a FRAND licence even in the absence of agreement between the parties as to the forum for such determination.

The two UK defendants to the English proceedings (OnePlus UK and Oppo UK) applied for a stay of Nokia’s claims pending final determination of the proceedings in China on the ground that England is not the proper forum for determination of Nokia’s claims.

The five non-UK defendants to the English proceedings (OnePlus China, Oppo China and Realme China) applied to have the Order granting permission to serve out of the jurisdiction set aside, again on the ground that England is not the proper forum for determination of the claims.

In the alternative, all the defendants sought a stay of settlement of FRAND terms in the English court pending the outcome of the proceedings to settle global terms in the Chinese court, as a matter of case management.


Forum conveniens

The defendants argued that, as a result of Brexit, the Recast Brussels Regulation (1215/2012/EU) no longer applied, meaning that the English court did not have jurisdiction over the non-UK defendants. They argued that the English court was now free to find the true forum conveniens, rather than reaching a result artificially distorted by the Recast Brussels Regulation regime.

However, HHJ Hacon noted that the doctrine of forum conveniens had continued to have application in English law outside the ambit of the Brussels Convention and its successors while they were in force. The question was, therefore, how to characterise the current dispute, and the fact was that the dispute, as a matter of substance, concerned UK patents. Resolution of the dispute as a whole involved determining infringement, essentiality and validity of UK patents. Therefore, a UK forum was clearly most appropriate. HHJ Hacon rejected the defendants’ argument that the correct characterisation of the dispute was that it was a dispute about FRAND terms. Accordingly, England was the appropriate forum to hear the dispute as far as the law of forum conveniens was concerned.

Stay of proceedings

HHJ Hacon noted that the issues relevant to the grant of a stay on case management grounds differed from those relevant to assessing forum conveniens. Under forum conveniens, the court must consider which forum the issues in the action have the most real and substantial connection with, whereas when considering a stay as part of case management, the court must decide on the balance of justice, with particular reference to the saving of costs and the convenience of the parties. The balance of justice in such cases largely or entirely turns on the balance of prejudice to the parties likely to be caused by, respectively, a stay or no stay on the facts of this case, i.e., the court must balance the factors that are of practical relevance to the parties.

The overriding objective of CPR 1 must also be considered, HHJ Hacon said. The only aspect that was raised was the saving of the court’s time if there were a stay. Self-evidently, the court’s time would be saved, HHJ Hacon said, but the logic of such an approach would be that the mere existence of another available forum would always point in favour of the English court granting a stay.

Overall, HHJ Hacon was not persuaded by any of the factors raised by the parties: none of them tipped the balance of justice in favour of a stay or no stay. However, he did not consider that the circumstances of the case were of such a rare and compelling nature that the balance of justice favoured a stay of the FRAND issues before this court. Therefore, HHJ Hacon refused to grant a stay. (Nokia Technologies Oy v Oneplus Technology (Shenzhen) Co Ltd [2021] EWHC 2952 (Pat) (4 November 2021) — to read the judgment in full, click here).