Nokia and China’s Vivo settle international patent dispute with 5G cross-licensing deal

Finnish telecoms equipment maker secures sixth 5G deal in 13 months as smartphone licence renewal cycle draws to a close

Nokia signs another 5G cross licensing deal with Chinese player 360b

Nokia has signed a patent cross-licensing deal with Chinese smartphone maker Vivo, marking the Finnish company’s sixth major smartphone licensing agreement in the past 13 months.

The agreement, which was announced on 5 February, follows on from similar deals with Oppo, Apple, Samsung, Honor and Huawei, signalling that the telecoms equipment maker’s smartphone licence renewal cycle is “now almost completed”, Nokia said in a statement.

Nokia said the agreement resolves all pending patent litigation between the parties, in all jurisdictions. The terms of the agreement remain confidential as agreed between the parties. Vivo will make royalty payments to Nokia, along with catch-up payments to cover the dispute period.

The Vivo deal comes hot on the heals of another major cross-licensing deal Nokia signed with Chinese smartphone company Oppo at the end of January; it too related to licensing of 5G patents and signalled the end of global patent litigation.

Matt Jones, a partner and patent specialist at RPC, highlighted the fact that both deals had been forged against a background of patent litigation and licensing on terms that are considered fair, reasonable and non discriminatory (FRAND), a developing area of the law, with courts, particularly in China, England and the US, determining some significant global FRAND rates. 

Jones noted that other Nokia deals, including its agreement with Honor, did not feature background of litigation. “So, in at least some cases one must ask whether deals are an alternative to litigation or a consequence of it,” he said.

However, he argued it was too early to determine the burden which will be placed on the courts to determine FRAND licence terms in future standard essential patent (SEP) litigation.

Commenting on Nokia’s latest agreement, Nokia Technologies president Jenni Lukander said: “This is the sixth major smartphone patent licence agreement we have signed in the past 13 months, and we have now almost completed our smartphone licence renewal cycle. Together these licensing agreements demonstrate Nokia’s significant contribution to developing key technologies relied upon by the entire smartphone industry and they will provide long-term stability to our licensing business for years to come.”  

Nokia will begin recognising net sales from this agreement, including catch up payments covering the periods of non-payment, in the first quarter of 2024. It added that it was progressing towards the conclusion of the smartphone licensing renewal cycle. It remains confident that its annual net sales run-rate will return to €1.4bn to €1.5bn in the mid-term.

The ink has dried on a spate of cross-licensing deals over the past year. In January, Philips signed a 3G, 4G and 5G licensing agreement with Oppo ending global litigation in multiple jurisdictions, including the UK, Germany and India. In November, Huawei and Sharp signed a patent cross-licensing deal of 4G and 5G technology.

However, fresh litigation involving SEPs, including 5G patents, continues to emerge. Last December, Tesla started an action against Avanci and Interdigital in the UK claiming, among other things, patent revocation, non-essentiality to the 5G standards and a FRAND licence determination.

Jones, who is based in London, said “some people have commented (privately as well as publicly)” that the English courts might be an increasingly attractive venue for SEP implementers in view of “recent favourable High Court FRAND judgments… although of course the results of appeals in our courts might change that landscape”.

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