Disposed

Nokia Technologies Oy v. Vivo Mobile Communication Co., Ltd. & Ors.

Delhi HC13 Feb 2024CS(COMM)/162/2022

Case brief

AI extract

What is this about?

Patent infringement suit over three standard essential patents for mobile telecommunications technology was resolved by a global Patent License Agreement and Litigation Settlement Agreement between the parties. The suit was dismissed as withdrawn, the defendant's counterclaim withdrawn, pending applications dismissed as infructuous, and confidential documents returned.

What the court decided

AI extract

Nokia Technologies Oy Vs Vivo Mobile Communication Co… — Intellectual Property | Delhi HC (2024)

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$~41

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IN THE HIGH COURT OF DELHI AT NEW DELHI

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Date of decision: 13^th February, 2024

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- CS(COMM) 162/2022 and I.A. 3473/2024 NOKIA TECHNOLOGIES OY ..... Plaintiff Through: Mr. Pravin Anand, Ms. Vaishali R Mittal, Mr. Siddhant Chamola & Ms. Pallavi Bhatnagar, Advs. (M: 9871736336)

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versus VIVO MOBILE COMMUNICATION CO., LTD & ORS. ..... Defendants Through: Mr. Saikrishna Rajagopal, Ms. Julien George, Ms. Anu Paarcha, Mr. Arjun Gadhoke, Mr. Aniruddh Bhatia, Mr. Avijit Kumar, Ms. N. Parvati, Advs. for D-1 to 3.

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CORAM:

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JUSTICE PRATHIBA M. SINGH

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Prathiba M. Singh, J. (Oral)

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This hearing has been done through hybrid mode.

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In the present patent infringement suit, the Plaintiff- Nokia Technologies OY has asserted that three of its patents which are claimed to be Standard Essential Patents ( hereinafter ‘SEPs’ ) in the field of mobile telecommunications, are being infringed upon by the Defendants. The details of the suit patents asserted in the present suit are set out below:

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S. No.	Patent No.	Grant Title
1	IN 269929	Method Providing Multiplexing for Data Non-
		Associated Control Channel
2	IN 300066	Additional Modulation Information Signaling for High-
		Speed Downlink Packet Access
3	IN 321300	Method and Apparatusfor Conveying Antenna

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Signature Not Verified

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Digitally Signed CS(COMM) 162/2022 By:DHIRENDER KUMAR Signing Dat e:2 1.02.2024 17:52:25

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Page 1 of 8

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Configuration Information

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According to Nokia, the above suit patents are essential for implementing technology that ensures mobile phones and cellular systems are compliant with 2G, 3G, 4G, and 5G standards. Nokia further claims that the Defendants, in the mobile phones they manufacture, assemble, or import, utilize 2G, 3G, 4G, and 5G technology. Accordingly, Nokia claims that the Defendants are unauthorised users of the suit patents and therefore infringing the suit patents. Additionally, Nokia contends that the Defendants are ex-licensees for their portfolio of SEPs and were delaying the renewal of the license agreement and have failed to present any reasonable counteroffers.

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The present suit has been filed against four Defendants, the list of all the Defendants is set out below in a tabular form:

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S. No.	Name of the Defendant	Defendant No. (Asper Memo of Parties)
1	Vivo Mobile Communication Co., Ltd	Defendant No. 1
2	Vivo Mobiles India Private Limited	Defendant No. 2
3	Iqoo Mobile India Private Limited	Defendant No. 3
4	Haicheng Mobile (India) Private Limited	Defendant No. 4

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Initially, the present suit was list before a Coordinate Bench of this Court and applications seeking pro-tem arrangement and interim injunction. Thereafter, vide order dated 25^th May, 2022 it was recorded that ld. Counsel for the Plaintiff requested that the matter be consolidated with CS(COMM) 303/2021 on the ground that two patents were common in both the suits. Accordingly, the present suit was transferred to this Court.

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Signature Not Verified

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CS(COMM) 162/2022

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Page 2 of 8

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Digitally Signed By:DHIRENDER KUMAR Signing Dat e:2 1.02.2024 17:52:25

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Similar applications seeking injunction in CS (COMM) 303/2021 , CS (COMM) 304/2021 and CS (COMM) 171/2022 were consolidated and submissions from all parties on the injunction applications were heard at length, in camera. A separate link was used for hearing of all Vivo suits for all the hearings, to maintain confidentiality between the parties. Considering that issues of infringement, invalidity, essentiality, FRAND compliance, etc. were all raised, the Court had heard submissions of the parties over the course of nine hearings from 18^th May, 2022 to 11^th November, 2022.

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In the interregnum , vide judgement dated 3^rd July, 2024, the ld. Division Bench in Nokia Technologies OY v. Guangdong Oppo 2023:DHC:4465-DB , directed pro-tem deposit in respect of the connected suit CS (COMM) 303/2021 . The said judgement was challenged before the Supreme Court by means of a Special Leave Petition. However, the said SLP was dismissed vide order dated 4^th August, 2023 in SLP(C) No. 15938/2023 titled Guangdong Oppo Mobile Telecommunications v. Nokia Technologies OY by the Supreme Court.

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After the decisions of the ld. Division Bench and the Supreme Court, vide order dated 6^th September, 2023 detailed submissions were heard in respect of all the four connected suits. After hearing the parties, and considering the thorough and technical nature of the interim injunction hearings and submissions, as well as the pro-tem security provided for the Plaintiff in terms of the judgement of the ld. Division Bench, this Court queried ld. Counsels for parties, to seek instructions if they would agree to proceed to an expedited trial in all the four connected suits. The Court also clarified in the expedited trial proposed by the Court, the evidence would be

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Signature Not Verified

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CS(COMM) 162/2022

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Page 3 of 8

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Digitally Signed By:DHIRENDER KUMAR Signing Dat e:2 1.02.2024 17:52:25

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recorded before the Court itself using live transcription technology, which would result in speedier recording of cross-examination. Accordingly, on the said date i.e., 6^th September, 2023, the judgement in the interim injunction applications in all the four connected suits was de-reserved.

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After the judgement in the injunction applications was de-reserved, the present suit as also all the connected suits were listed before this Court on 6^th October, 2023, 31^st October, 2023 and 28^th November, 2023 to seek clarity with respect to the position of all parties for proceeding to an expedited trial. However, when the present suit and also all connected suits were taken up for hearing on 29^th November, 2023, on the issue of ‘whether the trial would be for fixing a global FRAND rate or a FRAND rate only for India’ there was a dispute between both the parties and no consensus could be arrived at between the parties. Consequently, judgement in all the interim injunction applications was reserved and the Plaintiffs were directed to place on record an updated Form-3 in respect of all the suit patents.

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After the judgement was reserved in the interim injunction applications, there was another development in the suit, which resulted in a piquant situation. Vide judgement dated 28^th November, 2023 the Chongqing No. 1 Intermediate People’s Court, China delivered a judgement in a separate proceeding and determined a Global FRAND rate for Nokia’s portfolio. Consequently, an application bearing I.A. 25355/2023 was moved by the Plaintiff seeking the issuance of directions for placing on record the fully unredacted version of the decision dated 28^th November, 2023 passed by the Chongqing No. 1 Intermediate People’s Court, China. The said application was listed before this Court on 18^th December, 2023 and

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Signature Not Verified

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CS(COMM) 162/2022

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Page 4 of 8

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Digitally Signed By:DHIRENDER KUMAR Signing Dat e:2 1.02.2024 17:52:25

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directions were issued to both Nokia and Oppo to obtain unredacted copies of the decision dated 28^th November, 2023 passed by the Chongqing No. 1 Intermediate People’s Court, China from their Chinese lawyers and place the same on record as the same would have a material bearing on the decision to be rendered in the applications where judgement is reserved. Thereafter, vide order dated 21^st December, 2023, this Court recorded that both parties had submitted the unredacted copy of the judgement of the Chinese Court, which had determined a Global FRAND rate.

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Subsequently, on 24^th January, 2024, the matter was mentioned before the Court by the ld. Counsels for both parties that a settlement has been arrived at between the parties in the present suit. After being informed of this development the Court listed the present matters for directions on 30^th January, 2024. On the said date, the following order was passed:

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7. Today, both parties agree that the disputes in CS(COMM) 303/2021 & 304/2021 have been amicably resolved. The terms of settlement have been exchanged between the parties, but the settlement agreement is yet to be executed between the parties. However, the parties wish to move an application in this regard. 8. Regarding CS(COMM) 162/2022 & 171/2022, the position is that no settlement has been reached as on date. On a specific query from the Court whether it should proceed to pass judgment, Mr. Pravin Anand, ld. Counsel for the Plaintiffs clarifies that as far as the Plaintiffs are concerned, the instructions are that since there is no settlement as on date, the judgment may be pronounced by the Court in CS(COMM) 162/2022 & 171/2022. On the other hand, Mr. Saikrishna requested that the matter may be deferred for a short period to allow him time to receive final instructions.

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Signature Not Verified

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Digitally Signed CS(COMM) 162/2022 By:DHIRENDER KUMAR Signing Dat e:2 1.02.2024 17:52:25

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Page 5 of 8

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9. Ld. Counsel for the Plaintiff submits that there is no objection to the matter being deferred by a couple of weeks.

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10. Accordingly, list the matters on 26th February, 2024 for receiving settlement application in CS(COMM) 303/2021 & 304/2021 and for receiving final instructions in CS(COMM) 162/2022 & 171/2022.

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However, today ld. Counsels for all the parties submit that all the connected suits between the parties have been settled and a settlement application has also been filed.

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I.A. 3473/2024 (u/O XXIII Rule 1 and 3 CPC)

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This is an application under Order XXIII Rule 1 and 3 CPC seeking to place on record the fact that the disputes between the parties have been resolved vide a Patent License Agreement and Litigation Settlement Agreement ( hereinafter ‘settlement agreement’ ) which is a global settlement of disputes between the Nokia and Vivo in respect of SEP as well as implementation patent disputes. The terms of the settlement are set out in paragraph 6 of the present application which is extracted herein below:

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6. The parties, without prejudice to their rights available under law, are filing the present application, seeking disposal of the following proceedings:

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(i) The Plaintiff agrees to give up its prayer for permanent injunction, damages, rendition of accounts, declaration of compliance with FRAND obligations, declaration that Defendants are unwilling licensees etc., as prayed for in paragraph 100 of the plaint in the present proceedings in light of the Litigation Settlement Agreement between the parties. Parties agree that

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Signature Not Verified

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Digitally Signed CS(COMM) 162/2022 By:DHIRENDER KUMAR Signing Dat e:2 1.02.2024 17:52:25

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the suit may be disposed of accordingly.

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(ii) The Defendants agree to withdraw the counterclaim No. CC(Comm) 10 / 2023 that was filed in the present proceedings for IN 321300; IN 269929; IN 300066 and all claims made in the suit with respect to the invalidity or nonessentiality of the Plaintiff’s suit patents.

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(iii) Both parties agree that the Litigation Settlement Agreement entered into between the parties shall not be construed as an admission of any claims made by one party against the other party, which term includes the said parties’ affiliates, subsidiaries, group companies etc.

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(iv) Parties agree that in view of the settlement arrived between them, the Plaintiff is not pressing for interim relief, as requested in the application under Order 39 Rule 1 and 2 read with section 151 of the Code of Civil Procedure, 1908 being IA 4158/2022, orders on which were reserved finally on 29th November 2023.

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The present application is signed by the authorised signatories of the Plaintiff as also by the authorised signatories of Defendant Nos. 1 to 3. Ld. Counsel for the parties have also signed the present settlement application. The application is supported by affidavits of the respective parties.

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In view of the settlement being arrived at between the parties, the suit as also the counterclaim is dismissed as withdrawn in terms of the Litigation Settlement Agreement. The parties shall be bound by the terms and conditions of the said Litigation Settlement Agreement.

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Ld. Counsel for the Plaintiff has prayed for the refund of Court Fee, considering the present suit has been resolved. However, considering the number of hearings and the detailed nature of the hearings, the prayer for

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Signature Not Verified

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CS(COMM) 162/2022

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Page 7 of 8

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Digitally Signed By:DHIRENDER KUMAR Signing Dat e:2 1.02.2024 17:52:25

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refund of Court Fee is not acceded to.

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In these matters, a substantial number of confidential documents have been filed either in sealed covers or otherwise. The same may also have been scanned with the electronic record. Considering the fact that the suit is now being withdrawn, the parties are permitted to jointly approach the Dealing Assistant through Counsel for deletion of electronic record relating to confidential documents. Further, all the hard copies of the confidential documents be returned to the respective parties through Counsel and undertaking be recorded that the said documents have been returned to the parties.

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