It's been more than 19 months since Nokia sued OPPO, and almost as long since OPPO filed its first countersuits. It's already an "epic" dispute. Most other patent spats in this industry are settled within about a year, as a result of which there are normally--at best--some infringement decisions, but nothing significant happens on the post-grant review front before it's already over.
OPPO has managed to get seven Nokia lawsuits stayed over validity doubts, most recently a Munich case. But Nokia is also working hard to poke some holes into OPPO's patent portfolio, and has received preliminary opinions supporting its invalidity theories in several cases.
Late last week, the European Patent Office (EPO) rendered preliminary opinions on two more OPPO patents-in-suit challenged by Nokia:
EP3624524 on "wireless communication methods, network device, and terminal device"; and
EP3557938 on a "method and device for random access."
As my Nokia-OPPO battlemap shows, EP'524 is being asserted in Mannheim (Second Civil Chamber; Presiding Judge: Dr. Holger Kircher) and EP'938 in Hamburg.
The preliminary opinions reflect that the Opposition Division deems either of those patents invalid in its granted form. But there is still time for auxiliary requests as the related opposition hearings have been scheduled for (different days in) September. Preliminary opinions are "newsworthy", but the longer I watch those EPO post-grant reviews, the more I focus on actual decisions such as this one in January.
No auxiliary requests have been filed for EP'938 so far, and on the ones for EP'524, the EPO did not take a position on the existence of an inventive step:
"Claim 1 of Auxiliary Request 1 differs from claim 1 of the patent in that the alternative feature 1.3B has been deleted. Feature 1.3A, which is still present in the claim[,] is not disclosed in D3. For this reason, the subject matter [...] is new [...]."
The Opposition Division leaves it to the parties to argue for or against the presence of an inventive step, and "note[s] that feature 1.3A is disclosed as such in D1, D2 and D5 [...]."
A disclosure "as such" is just the starting point of an inventiveness debate. The question is then whether there is a teaching, suggestion, or motivation to combine.
"Claim 1 of Auxiliary Request 2 differs from claim 1 of Auxiliary Request 1 in that the features of dependent claims 2 and 3 have been added. So, the 'first time domain unit' has been replaced with the more specific feature 'time slot' and the 'second time domain unit' has been replaced with the more specific feature 'symbol'. So, claim 1 of Auxiliary Request 2 is more restricted than claim 1 of Auxiliary Request 1. Since[] the latter claim is new [...], this also applies [to] claim 1 of Auxiliary Request 2. This applies mutatis mutandis to the other independent claims 5, 8 and 9."
Here, again, the Opposition Division does not take a position on the inventive step, and "note[s] that 'slot/subframe' and 'symbols' as such are disclosed in D1, D2, D3 and D5 [...]."
Auxiliary Request 3 further narrows the scope by specifying that the first research is a search space. Novelty is not an issue, but "a 'search space' as such is disclosed in D1, D2, D3 and D5." This means there will again have to be a discussion of whether there is a teaching, suggestion, or motivation to combine certain prior art references.
The preliminary opinion on EP'524 stresses that Nokia cannot "freely develop as many inventive step attacks as [it] wishes in the hope that one of said attacks has the chance of succeeding." Instead, Nokia will have to present a single theory starting from what it considers to be the closest prior art, unless there are specific reasons for which several starting points are "equally valid."
The Mannheim Regional Court will hold the EP'524 infringement trial on May 23. That court--especially its Second Civil Chamber--is known to be difficult to persuade of invalidity contentions based on an alleged lack of an inventive step. In Mannheim you ideally want to rely on non-novelty as an obviousness theory will not persuade the court to stay the case unless there really is no reasonable argument that can be made for the presence of an inventive step.
Defendants routinely argue in Mannheim and other German courts that an amended claim should not enjoy a strong presumption of validity as it has not been examined. Here, however, OPPO can now point to a preliminary opinion by the EPO's Opposition Division (i.e., by a panel of three patent examiners) that acknowledges novelty and leaves open the question of the inventive step at this procedural juncture. Plus there still is time to file additional auxiliary requests.
There is an asymmetry here: OPPO has left the German market, and there are no signs of it coming back anytime soon. As a result, Nokia's German injunctions do not put OPPO under any particular pressure to settle, but Nokia presumably does want to retain its ability to ship mobile base stations to its German customers. Right now, Nokia has more at stake in Germany than OPPO. If several OPPO patents get invalidated, but one or two are upheld even if in an amended form (so long as they are still infringed), a situation can arise in which Nokia will deem it prudent to settle the global dispute.
Meanwhile, proceedings are ongoing in a Chinese court (Chongqing) to set a global FRAND rate for an OPPO license to Nokia's standard-essential patents.
Should this dispute not be settled in the coming months, then both parties may file complaints with the Unified Patent Court (UPC)...
