5G SEP legal issues between Oppo and Nokia

Finnish telco company Nokia and Chinese smartphone maker Oppo have taken legal action against each other over 5G patents and other patents in about 10 jurisdictions worldwide, including China, Germany, France, and Indonesia, since July 2021. Nokia signed a patent license agreement with Oppo in November 2018, which expired in June 2021, and had been seeking to renew the agreement for prices that Oppo believed breached the fair, reasonable, and non-discriminatory (FRAND) terms.


Nokia registered stunning revenue of $1.6 billion from IP licensing in 2021. Moreover, Nokia is the world’s biggest holder of standard-essential patents (SEPs) covering 5G technologies, with around 3,500 patents under its belt.


The asserted patents by Nokia and Oppo include SEPs and non-SEPs, which relate to connectivity, user interface, and security features.



In Germany, 26 lawsuits have been filed by Nokia and 7 by Oppo, with the regional courts of three cities Mannheim, Munich, and Dusseldorf. Besides, the two companies seek to invalidate each other’s asserted patents over there.


In the Mannheim Regional Court, two of the seven cases filed by Nokia were heard on March 3 and March 29 and one of them will be heard on May 31. The four asserted patents in the discrete lawsuits are EP1700183 covering a method for secure operation of a computing device, EP1704731 covering a method and apparatus for indicating service set identifiers to probe for, and EP2981103 and EP3220562 covering an allocation of preamble sequences. Three of the asserted patents are SEPs.


Three cases filed by Nokia against Oppo were heard in the 21st Civil Chamber of the Munich Regional Court I, two on March 16 and one on March 23. The three asserted patents in the discrete lawsuits are EP3557917 covering a method and apparatus for providing efficient discontinuous communication, EP3396868 covering a method and apparatus for conveying antenna configuration information, and EP2080193 covering a pitch lag estimation.


A case filed by Oppo against Nokia on May 19 will be heard in the Court’s 7th Civil Chamber over the asserted patent EP3598819 related to a method, apparatus and system for transmitting periodic uplink information/signals.


Those are first hearings, and judgments will be handed down after second hearings, which are actual trials. Munich first hearings are remotely comparable to Markman hearings in the United States. A Markman hearing is a pretrial hearing in a U.S. District Court during which a judge examines evidence from all parties on the appropriate meanings of relevant key words used in a patent claim, when patent infringement is alleged by a plaintiff. It is also known as a "Claim Construction Hearing".


The 21st Civil Chamber of Munich Regional Court made this clear in the first FRAND proceedings between Nokia and Oppo on March 23 that SEP owners and implementers are to go through proceedings at the Munich Regional Court while working towards a licence agreement. It seems the court has modified its previous 2020 guidelines on FRAND.


Other European countries

In the UK, Nokia filed four claims, three of which concerned SEPs. In France and Spain, Nokia asserted two implementation patents each. Oppo filed invalidation requests against Nokia’s patents in the Netherlands, which Nokia countered with infringement complaints.



In Indonesia, Nokia filed several lawsuits against Bright Mobile Telecommunication and PT Selalu Bahagia Bersama regarding Oppo and Realme phones in 2021. The first two lawsuits alleged that Oppo had infringed on the patent for additional modulation information signaling for high-speed descent-linked packet access, and others for methods and equipment for conveying antenna configuration information through masking. $42 million in damages was sought in each of the lawsuits.



In China, Oppo filed a lawsuit against Nokia with the Chongqing Municipality No. 1 Intermediate People’s Court, seeking a global portfolio license on terms to be set by the court, in July 2021. Oppo also filed invalidation requests against Nokia’s six patents with the China National Intellectual Property Administration as of November 2021.


United States

So far, no records of the litigation on 5G SEPs have surfaced between the parties in the United States. Despite this, Oppo filed a petition for an inter partes review to challenge the validity of Nokia’s US Patent No. 10,701,588 with the Patent Trial and Appeal Board of the United States Patent and Trademark Office on March 9. The disputed patent covers methods, apparatuses and computer program product for PDU formatting according to SDU segmentation.