Acer, Asus and Hisense Granted Interim Licence Declarations in Nokia Dispute

Yesterday, Mr Justice Mellor handed down his judgment in the Acer, ASUS & Hisense v Nokia action which concerned a jurisdictional challenge from Nokia and an application for interim licence declarations from the claimants. While the claimants are arguing that there is an obligation of specific performance under Swiss law, they did not pursue an order for specific performance in relation to any interim licence and only sought declarations. 

Nokia’s position in the dispute generally is that national courts should not determine global terms of licences without consent, arguing that international arbitration is the appropriate forum. Nokia had made interim licence offers which were adjustable via international arbitration.

The Court held that:

1. The ITU-T declaration, governed by Swiss law, was a valid contract to grant a RAND licence. It is a contract formed between the ITU-T and Nokia which means that Nokia must grant licences on RAND terms and there is an obligation on Nokia to make RAND offers capable of acceptance.
2. The Court had jurisdiction. Nokia argued that an implementer-led declaratory claim, such as this one, could not be considered the reverse of a patentee-led (F)RAND claim and thus couldn’t fall within Gateway 11 which requires the claim to relate to UK property. The Court, analysing the case law in detail, held that the current law in England means that, although a resulting licence would be global in scope, it would cover UK patents and this meets the Gateway 11 requirements. Additionally, a challenge on forum conveniens grounds was rejected as arbitration (proposed by Nokia) was not considered “an available forum” and, even if it were, it was not more suitable than England.  
3. The declarations that a willing licensor and licensee would enter into an interim licence pending final determination of a RAND rate and the terms of such a licence were granted by the Court. However, a declaration that Nokia would be an unwilling licensor if it did not enter into such an interim licence within 7 days was refused on the grounds that it would not serve a useful purpose.
4. Mr Justice Mellor expressed his desire for de-escalation between the Patents Court and the UPC Mannheim and Munich 1 courts. He made clear that the English court can de-escalate by only granting interim declarations “that have a proper useful purpose in the UK”. He also noted that, if a global interim licence was entered into, it would be up to each local court to decide whether such a licence represented a valid contractual defence to infringement, so there was no issue of comity.
5. While the terms of the interim licence declaration itself are confidential, the Court found that each interim licence should be payable on a mid-point rate of $0.365 per device sold over the term. This term is from 1 January 2021 for Hisense and Acer and from March 2022 for ASUS until 1 October 2026 (when the RAND trial results will be available). The interim licence would have a non-refundable amount (based on $0.03 per device) and a refundable amount comprising the difference between the interim amount and final determined amount.