Delhi HC warns Oppo: Pay pending royalties or face potential sales ban

The Delhi High Court has directed Oppo to deposit all pending royalties to InterDigital running into millions of dollars. And, if it does not do so, the sale of Oppo devices in India could be restrained.

The court also imposed a penalty of Rs 500,000 ($6,000) on Oppo for delaying the proceedings.
 

The plea was filed by InterDigital, which is a company that provides wireless and video technologies for mobile devices, networks, and services worldwide. It said that the Chinese handset maker had infringed upon its 3G, 4G, and 5G Standard Essential Patents (SEPs).

“The defendants shall deposit a sum covering all past sales for the years 2021-22, 2022-23, 2023-24 (not disclosed), with the worthy registrar general of this court, within a period of three months. The said amount shall be kept in an interest-bearing fixed deposit on auto-renewal mode,” Justice Prathiba Singh said.
 

The court said that failure to do so would entitle InterDigital to move an application before the court seeking an injunction/restraint on the sale of further devices by Oppo in India, due to non-compliance of court orders. The court ordered that the trial should be completed by the end of this year or else Oppo will be liable to pay an additional sum.

“The trial in the suits shall now be concluded in 2024 itself.

Should the trial not conclude for any reason, by December, 2024, the defendants shall deposit an additional sum (not disclosed) with the worthy registrar general by 31st March 2025,” said Justice Singh.

The court has also set up a confidentiality club, which will comprise designated experts, internal representatives of both the parties, and their lawyers.

Only members of this club will have access to the documents exchanged during the trial.
 

This judgment comes in a litigation relating to cellular technology (3G, 4G and 5G) as well as video coding technology (HEVC) that is implemented in handsets under the Oppo, RealMe and OnePlus brands.

InterDigital was negotiating with the Oppo group for a number of years for a licence agreement on Fair, Reasonable and Non-Discriminatory (FRAND) terms.

When the parties could not find common ground, InterDigital initiated a multi-jurisdictional campaign against the Oppo Group in the UK, Germany and India in December 2021.

Before the Delhi High Court, InterDigital was represented by Team Anand and Anand comprising Pravin Anand, Vaishali Mittal, Siddhant Chamola and Pallavi Bhatnagar.

The exact sum that Oppo must deposit is not to be made public according to the order of the high court.

The court had reserved it for judgment on December 13, 2023, after extensive hearings.

Both InterDigital and Oppo have been embroiled in long-running disputes globally over the amount of royalty to be paid to InterDigital for its SEPs. This is for a range of technology, including cellular, HEVC.
 

Last year, Oppo had been directed to pay up interim security in its dispute with Nokia. That case, however, was settled as part of a cross-licensing agreement reached between Nokia and Oppo last month. Nokia withdrew the case from the Delhi High Court.
 

In this case, Justice Prathiba Singh relied upon Oppo’s last counteroffer to InterDigital as the benchmark for determining the interim security amount.
 

This is different from the suit that was between Nokia and Oppo since in that case, the two parties had a previous licensing agreement, which was used as the benchmark by the high court for calculating the interim security deposit.
 

According to InterDigital, Oppo’s market share is almost 60 per cent in the premium smartphone market in India.

The market share of Oppo in the smartphone market till Q2 of 2021 is:

Oppo: 10%, Realme: 15% and OnePlus: 34%.