Acer v Nokia (EWCA, [2026] EWCA Civ 564, 2026)

Dhenne Avocats · 11 October 2026

Our analysis

Summary

The Court of Appeal (England and Wales) upheld the English court’s jurisdiction over Acer’s and ASUS’s RAND claims against Nokia, but granted Nokia a case management stay and discharged the interim licence declarations. Arnold LJ held that Nokia’s offer, an immediate licence whose terms will be adjusted by an ICC arbitral award determining RAND terms, is an offer of a licence on RAND terms capable of acceptance (paras 84 and 91). An implementer that refuses it can no longer rely on its willingness to take a licence to have the English court determine those terms (para 85). The judgment decides what the Court described as a novel and important question: the impact of an offer of an interim licence adjustable by arbitration (para 2).

Facts and procedure

Nokia holds a portfolio of patents declared essential to the ITU-T H.264/AVC and H.265/HEVC Recommendations (para 4). From 28 March 2025 it brought injunction proceedings against Acer and ASUS in Germany, before the UPC, in the USA, Brazil and India, without seeking any determination of RAND terms (para 7). Acer and ASUS sued in the Patents Court on three European Patents (UK), seeking determination of the terms of a global licence and interim licence declarations, and undertook to enter into any licence found to be RAND (para 8). Nokia challenged jurisdiction and offered a licence adjustable by arbitration (paras 10 and 11). Mellor J upheld jurisdiction, refused a stay and made some of the interim licence declarations sought (para 17).

The applicable law

Under the Swiss law governing the ITU-T Declaration, Nokia must make RAND offers capable of acceptance, and the case law developed under the ETSI regime applies (paras 22 and 24). Service out requires, among other things, a good arguable case that the claim falls within one of the gateways in Practice Direction 6B (para 30). The Court recalled, citing paragraph 68 of Huawei v ZTE, that FRAND terms may by common agreement be determined by an independent third party, and that there is no settled industry practice of arbitration (paras 63 to 66).

Question

Does the English court have jurisdiction over an implementer’s RAND claims and, if so, does the SEP owner’s offer of an interim licence adjustable by an arbitral award deprive those claims of any real prospect of success?

Decision

On jurisdiction, gateway 11 is satisfied because the claims concern the contractual obligations attaching to patents situated in the UK, even though the licence sought is global (paras 33 to 41); gateways 16A and 4A are not, for want of any threat to sue in the UK and of any connection with the invalidity, non-essentiality and non-infringement claims (paras 46 to 55). On the merits, there being no objection to the proposed ICC arbitration, determination by that tribunal is RAND and Nokia offers an immediate licence on whatever terms the tribunal determines (para 84). The implementers are not compelled to arbitrate, but refusing the offer means refusing a RAND offer, the choice between RAND terms belonging to the SEP owner (para 85). The asymmetry between SEP owner and implementer means Nokia may accept English court determination elsewhere (paras 86 to 88). The stay was granted on condition that the pleadings, disclosure and evidence be reused in the arbitration (para 92), and the interim licence declarations were discharged (para 93).

Key points for practice

• The UK connection of RAND claims concerning UK patents is confirmed, even where a global licence is sought (paras 37 and 41).
• An offer of an immediate licence, adjustable by independent arbitration, discharges the SEP owner’s RAND obligation (paras 84 and 91).
• The Court encouraged arbitral tribunals to publish RAND awards, subject to redaction of confidential information (para 79).
• Practical point: an implementer that refuses such an offer without a legitimate objection to the proposed arbitration loses access to English court determination; the Court left open the case of a legitimate and substantiated objection (paras 80 and 85).

Relevance before the UPC

The reasoning, grounded in paragraph 68 of Huawei v ZTE (para 63), concerns the implementer’s willingness to take a licence, whereas Nokia had brought injunction proceedings before, among others, the UPC (para 7).

Provisions applied

Common Patent Policy for ITU-T/ITU-R/ISO/IEC

RAND licensing declarations (Swiss law)

National law

Civil Procedure Rules, Practice Direction 6B, para 3.1, gateways 4A, 11 and 16A; Patents Act 1977, s 71

Other instruments

New York Convention 1958; ICC Arbitration Rules

Case law cited

CJEU, Huawei v ZTE, C-170/13; Lenovo v Ericsson [2025] EWCA Civ 182; Samsung v ZTE [2025] EWCA Civ 1383; Alcatel v Amazon [2025] EWCA Civ 43; Tesla v InterDigital [2025] EWCA Civ 192 (citation as given); Vestel v Access Advance [2021] EWCA Civ 440; Unwired Planet v Huawei [2020] UKSC 37; Nokia v OnePlus [2022] EWCA Civ 947; Altimo v Kyrgyz Mobil [2011] UKPC 7; Brownlie v Four Seasons [2017] UKSC 80; Amazon v InterDigital [2025] EWHC 3334 (Pat)

Related decisions

• Samsung v ZTE, Court of Appeal, 31 October 2025, cited on the SEP owner’s freedom to choose its forum.
• Tesla v InterDigital, Court of Appeal, 6 March 2025, whose gateway 11 reasoning was followed and confirmed.
• Vestel v Access Advance, Court of Appeal, 26 March 2021, cited on gateways 9 and 11, with disagreement expressed on an obiter dictum.
• Alcatel Lucent v Amazon, Court of Appeal, 28 January 2025, cited on the limited nature of the interim licence.

Prepared by Dhenne Avocats from the text of the decision (National Archives), consulted on 11 October 2026. Only the official text is authoritative.