Nokia Technologies v OnePlus Technology

UK Patents Court: Overseas Defendants no exception to commitment to 12 month trial timetable

In ongoing patent infringement proceedings between Nokia and the phone manufacturer Oppo the Patents Court has demonstrated that it remains serious about achieving its trial time estimates, even for overseas defendants.

The Patents Court first committed to a 12 month timetable to trial when Lord Justice Arnold was the presiding Judge, and recorded this ambition in a 2015 Practice Statement (link). Both Mellor J and Meade J, the current Patents Court Judges, have indicated a continuing desire to meet this target, which is expected to be embodied in a forthcoming revised edition of the Patents Court Guide.

The Patents Court has since indicated that it is willing to list trials even where overseas defendants are not yet served, and will order alternative service, circumventing the Hague Convention, where that is necessary to allow such trial listings to be met.

Nokia v OnePlus [2021] EWHC 2746 (Pat) – Bailii

In a judgment by Mr Justice Mellor on 13 October 2021 the Patents’ Court reaffirmed its commitment to meeting that target. In proceedings between Nokia and Oppo/OnePlus Mellor J ordered a trial in the court holidays, in September 2022, in order to allow trial to be listed as close as possible to the 12 month target. This was done despite the China-based Oppo and OnePlus entities still awaiting service under the Hague Convention.

Nokia v OnePlus [2022] EWHC 293 (Pat) – Bailii

By February 2022 proceedings had still not been served on the China-based Oppo and OnePlus Defendants due to problems with the Hague Convention process. An application came before Marcus Smith J for the service of proceedings on the China-based Defendants by email, in order to allow service on those Defendants before the disclosure deadline and to the trial timetable was not disrupted.

Marcus Smith J held that there were exceptional circumstances that justified an order for service by email on the Chinese Defendants, satisfying the test in Cecil v Bayat [2011] 1 WLR 3086. He held as follows:

37. I  turn then to the question of prejudice to the due administration of justice in these proceedings, that is very considerable. This is a claim regarding commission of a tort in this jurisdiction, it is based on a UK-specific intellectual property right and so the claim cannot be litigated elsewhere. The patent is not essential to any standard. There is no global FRAND licence raised in the defence of these proceedings. The question is solely litigated by reference to the usual rules of infringement and so on.

38. In the present case, the trial has been listed for September 2022, around 15 months after the issue of the claim form. At the CMC, directions were set out on the assumption that Hague Convention service would be successful by the first quarter of 2022. Put another way, and going back to the point I made earlier in this ruling, what is clear is that the proceedings have been so structured so as to take account of the usual length of process in effecting proper service under the Hague Convention, and that to my mind is a very significant factor in illustrating the prejudice to the due administration of justice here. The fact is that a trial set down taking into account that service needs to be effected on D1 and D3 via the Hague Convention is going to be disrupted unless this order is made. There are, because of the way the trial timetable has been structured and the directions to trial set, a number of directions applicable to D1 and D3 in respect of which the day for compliance is now and certainly is going to be before the date at which Hague Convention service could be effected. In particular, D1 and D3 will only be able to meet the existing disclosure deadline if permission for alternative service is granted

39. It seems to me that the risks to the due administration of justice and prejudice to that are in this case considerable indeed. I am therefore going to make an order in the terms sought

The court has therefore made clear that once a trial listing has been made it will take that commitment seriously, and will be loathe to interfere with it.