UK High Court confirms global RAND jurisdiction and makes interim licence declarations requested by implementers in Acer v Nokia

Mellor J in the English High Court has confirmed that the English court is able to determine global RAND terms over standard essential patents (SEPs) upon request by implementers. The judge went on to make interim licence declarations in favour of implementers Acer, Hisense, and ASUS, setting an interim royalty rate for such licences, pending final determination by the court.

The decision reinforces the English court's role as a key forum for resolving global SEP/RAND licensing disputes and provides important clarity on the legal effect of RAND commitments under Swiss law made to the International Telecommunication Union (ITU-T).

Background

The parties (Nokia as SEP Licensor and Acer, Hisense and ASUS as Implementers) had been attempting to negotiate RAND terms for SEPs for video coding standards (H.264/H.265) for some years without success. Nokia initiated several infringement proceedings around the world seeking injunctions. Meanwhile Implementers responded by bringing a claim before the English Patents Court, asking it to determine the terms of a global RAND licence and committing to taking a licence on terms the English court ultimately determined. After the Implementers served their claims out on Nokia, Nokia made offers to arbitrate. 

Alongside the main RAND action, the Implementers sought interim licence declarations aimed at allowing device sales to continue pending a final determination. Nokia challenged both the English court’s jurisdiction and the appropriateness of any interim licensing relief. 

Jurisdiction Challenge

The Implementers were granted permission to serve out under CPR 6.36 in June 2025, after which Nokia indicated its intention to challenge the jurisdiction of the English court. Nokia did not challenge the jurisdiction of the court in respect of the patent claims (i.e. claims relating to validity, non-essentiality and declarations of non-infringement). However, Nokia challenged the court’s jurisdiction in respect of the RAND claim (whether the Implementers were entitled to a licence in respect of Nokia’s UK video codec SEPs on RAND terms). 

For service out of the jurisdiction on a foreign defendant, three-steps must be complied with (see Mapesbury JSC in Altimo v Kyrgyz [2011] UKPC 7). Claimants must show that (i) there is a serious issue to be tried on the merits (i.e. a real prospect of success of summary judgment standard) ; (ii) there is a good arguable case that the claim falls within one of the Gateways for service out (i.e. that the claim falls within classes of cases in which permission to serve out may be given); and (iii) England and Wales is clearly or distinctly the appropriate forum for the trial of the dispute.

Mellor J found those three conditions satisfied. The judge drew on recent decisions to conclude that Gateway 11 (which allows service out where the subject matter of the claim relates wholly or principally to property within the jurisdiction) applied, even though the licence sought was global in scope and covered many more patents than the UK patents. The judge’s view was that, however large the foreign element of the licence might be, it remains a claim that relates wholly or principally to property within the English jurisdiction.

The court considered whether there was another Court of competent jurisdiction that could deal with the dispute – none was identified. The judge noted that arbitration is not an available forum and that a mere offer to arbitrate, absent agreement by the other side, certainly could not provide an alternative forum. As such, the jurisdiction challenge failed.

What is the nature of the ITU-T RAND Commitment? 

One of the central questions in the case was the meaning of SEP holders’ commitment to the ITU-T under Swiss law, specifically the commitment that they are "prepared to grant" a licence on a worldwide RAND basis. The commitment reads as follows: “The Patent Holder is prepared to grant - on the basis of reciprocity for the relevant ITU-T Recommendation(s) - a license to an unrestricted number of applicants on a worldwide, non-discriminatory basis and on reasonable terms and conditions.”

Did the undertaking merely amount to an obligation to "negotiate in good faith", meaning that there was no enforceable contract under Swiss law beyond the obligation to negotiate? The judge rejected that argument, explaining that on that construction, the ITU-T system would be wholly unfit for purpose – “experience shows that both parties can negotiate in good faith but fail to reach agreement”. The judge added that this interpretation was “contrary to the wording of the Declaration, contrary to its purpose, inconsistent with the policies of other international standardisation bodies like ETSI”. 

Mellor J also held that SEP holders offering arbitration to determine the RAND licence wasn’t sufficient, as this would effectively mean that SEP owners could terminate any implementer-led action by offering arbitration and, more generally, that SEP owners always have the choice of jurisdiction.

Instead, the court found that the signed declaration required a patent holder to make a RAND offer that is capable of acceptance and then to grant the resulting licence.

The ITU-T Declarations do not themselves specify the terms that are RAND and so the question was whether such terms were "determinable”, a requirement under Swiss law for a contract to be enforceable. Relying on expert evidence, the judge held that RAND terms are objectively determinable since courts and tribunals regularly and frequently assess offers to see if they are (F)RAND and determine (F)RAND terms, based on overall circumstances, comparable licences, other methods of objective valuation such as the top-down analysis and expert valuation assistance in order to reach RAND terms. 

Consequently, the commitment was held to enforceable under Swiss law.

Interim licence declarations

The court found Nokia to be in breach of their ITU-T Commitment, as Nokia’s arbitration offer was not an offer of RAND terms capable of acceptance. The judge made a declaration that in light of the contractual ITU-T Commitment, a willing licensee and a willing licensor in the circumstances of the parties would agree to enter into and actually enter into an interim licence, pending final determination and a declaration of the terms an interim licence. The judge set an interim royalty rate at the mid-point of the parties' respective offers, to be paid pending the full trial.

What next?

Following the decision, Hisense and Nokia entered into a licence agreement, bringing patent-related litigation between them in all jurisdictions to a close (see Nokia’s press release here). Nevertheless the dispute brought by the remaining Implementers carries on and the judge noted Nokia’s clear intention to appeal the findings. 

Judgment: Acer, Hisense & ASUS v Nokia  [2025] EWHC 3331 (Pat)