Acer Incorporated & Ors v Nokia Technologies Oy [2026] EWHC 1939 (Pat)

[2026] EWHC 1939 (Pat)Case Nos: HP-2025-000030 & 000039
IN THE HIGH COURT OF JUSTICE
BUSINESS AND PROPERTY COURTS OF ENGLAND AND WALES
INTELLECTUAL PROPERTY LIST (CHD)
PATENTS COURT
Venue Royal Courts of Justice, Rolls Building, Fetter Lane, London, EC4A 1NLDate 28 July 2026
Before
THE HON MR JUSTICE MELLOR
Between
NOKIA TECHNOLOGIES OYDefendant
Morgan, Lewis & Bockius UK LLP for Acer & ASUS ClaimantsBird & Bird LLP for Defendant
APPROVED JUDGMENT on the papersThis judgment was handed down remotely at 10.30am on 28 July 2026 by circulation to the parties or their representatives by e-mail and by release to the National Archives..............................THE HON MR JUSTICE MELLOR
[1]By an application notice dated 14 July 2026 (which enclosed a detailed draft Order), Acer and ASUS applied to amend the existing confidentiality regime in these actions ‘to permit the use of documents produced in these proceedings in the upcoming arbitration between the parties, so as to give effect to the Order of the Court of Appeal of 11 June 2026’.[2]One might have thought this was a straightforward application to which Nokia would have readily consented. However, Nokia have not consented and have raised a series of arguments. For this reason, I have read and considered: i) The 8th Witness Statement of Hiroshi Sheraton in support of the application, dated 14 July 2026. ii) The 1st Witness Statement of Thomas Darvill in response, dated 21 July 2026 iii) The 9th Witness Statement of Hiroshi Sheraton in reply, along with the 1st Witness Statement of Sarah Walker of King & Spalding International LLP, the firm recently instructed by ASUS in connection with the arbitration, both dated 24 July 2026.[3]As one would expect, the application was only issued after the matter was raised in correspondence. Morgan Lewis’ letter of 1 July 2026 resulted in no response. Further letters on 8 and 10 July, along with a telephone call on 13 July yielded no response, albeit that a letter was received on 14 July from Nokia’s solicitors saying they would respond by close of business ‘tomorrow’ i.e. 15 July 2026.[4]I am dealing with this application (on the papers) at about the time when the RAND trial between these parties, which, prior to the case management stay ordered by the Court of Appeal, was scheduled to take place in the Patents Court over this month, was due to end, in circumstances where Mr Darvill says that Nokia intends to file its Request for Arbitration ‘shortly’ with the ICC.[5]In his 8th statement, Mr Sheraton put forward, to my mind, an entirely sensible proposal and mechanism: temporarily lifting the case management stay imposed by the Court of Appeal for the limited purpose of amending the confidentiality regime and amending the regime to allow the parties’ respective legal representatives (whether English qualified or not) access to the key materials for the arbitration. As he said, the parties may need to put in place an arbitration-specific regime in due course.[6]Mr Sheraton also observed that he did not see how Nokia could reasonably object to what is proposed, because it is already a term of the adjustable licences which Nokia has already signed.[7]Nokia’s response is conveniently summarised in this paragraph of Mr Darvill’s witness statement:
‘8. Nokia does not object in principle to the relevant confidential materials being provided to arbitration counsel in the context of the arbitration as required by Section E bullet points 10 – 12 of the Adjustable Licences. However, Nokia’s position is that the appropriate mechanism to achieve this is via Orders of the Arbitral Tribunal in the arbitration for the following reasons, which are addressed in more detail below: a) These proceedings have been stayed to permit the parties to arbitrate their dispute which they have agreed to do. That arbitration is about to commence. The arbitral tribunal will, once constituted issue a protective order dealing with documents submitted to the arbitration. b) Amending the confidentiality order now will mean all third parties whose confidential information is affected will need to be notified and given the chance to object and all documents will have to be re-labelled with details of the new order. c) The notification exercise will have to be repeated as soon as the arbitral panel issues its protective and production orders dealing with disclosure into the arbitration (including to provide the counterparties with copies of the protective order and order for document production made by the Arbitral Tribunal). d) Duplicating this process in quick succession is a waste of time and resources. In addition, the Claimants’ proposed amendment to the confidentiality order would apply to all confidential documents in the action rather than limiting it to those which are relevant to the issues in the Arbitration (and required to be admitted into the Arbitration pursuant to the Adjustable Licences).’
[8]Ms Walker made her witness statement to respond to a particular assertion made by Mr Darvill that ASUS would suffer no prejudice if this Application were to be dismissed. Specifically, she addressed Mr Darvill’s contention that amendments to the Confidentiality Protocol are not necessary and will cause ASUS to suffer no prejudice because(i) Morgan Lewis has access to all of the Restricted Materials; and(ii) her firm King & Spalding will be provided with access to the Restricted Materials ‘in short order’ i.e. ‘once the Arbitral Tribunal has been constituted’. She explains why she considers neither justification is sustainable.[9]On the first point, Ms Walker points out that ASUS are entitled to the counsel of their own choosing and they have chosen King & Spalding to represent them in the arbitration, not Morgan Lewis.[10]On the second point, she points out that Nokia/Mr Darvill failed to explain to the Court that, pursuant to the ICC Arbitration Rules, constitution of the Tribunal takes place only after(i) a claimant has filed its Request for Arbitration; and(ii) a respondent has submitted its Answer to the Request. She says that Nokia’s suggestion means that ASUS would have to (i) consider Nokia’s Request for Arbitration, (ii) prepare its Answer, and(iii) nominate its arbitrator, all without access to ‘the most material parts of the existing pleadings’ (Sheraton 8, ¶ 8).[11]She also points out that, by its application, ASUS proposes to expand the pool of individuals who may review the Restricted Materials to include a limited number of experienced external lawyers who are very familiar with being party to and complying with confidentiality arrangements, and she names five people, including herself.[12]Mr Sheraton, in his 9th witness statement, echoes these points and says, even in the best-case scenario, it will still take several months to obtain an order in the arbitration (so the risk that Nokia will end up duplicating the notification process in quick succession, as Mr Darvill contends, is overstated).[13]Mr Sheraton suggests the Order sought simply serves to facilitate and give effect to the intentions of the Court of Appeal, and the Adjustable Licences which have now been entered into. The alternative approach from Nokia is to wait until months into the arbitration before key documents which all parties know will be in the arbitration are released for that use.[14]Mr Sheraton presented a careful analysis of the prejudice likely to be suffered by the various parties affected if the Order sought is not made now and the existing status quo is maintained. He suggested prejudice would be caused to the following parties: i) Acer – as it maintains uncertainty as to the current status of the materials, and unnecessarily and unreasonably ties their hands in preparing its responses to the Request for Arbitration (once made). ii) ASUS and King & Spalding – as they will be severely restricted in their ability to prepare for the arbitration and will be placed in a position of being unable to see the key materials available to Bird & Bird and Morgan Lewis even after the arbitration has been commenced. iii) Morgan Lewis – as the discrepancies between the Court of Appeal’s Order and signed Adjustable Licences on the one hand, and existing confidentiality regime on the other, will remain. The overwhelming majority of materials designated as confidential were so designated by Nokia and so this disproportionately affects Morgan Lewis compared to Bird & Bird. iv) The experts – as, in a similar way to the solicitors, there is a benefit and fairness to providing clarity now. v) The Tribunal – as its members will be needlessly deprived of material information concerning the very arbitration they will be asked to adjudicate.[15]By contrast, Mr Sheraton suggested the only prejudice to Nokia appears to be in the time and effort in sending out notifications to counterparties. For the reasons explained above this is a far less significant burden than Mr Darvill’s evidence might suggest (and in any event one which Nokia has brought upon itself).[16]Mr Darvill indicated that Nokia is currently preparing a draft protective order and a draft order for production, so that they can be agreed and provided to the Arbitral tribunal as soon as it is constituted. It is clear that such orders will need to be made by the tribunal in any event. However, those orders can only be made once the tribunal has been constituted and this might well take some time, for the reasons explained by Ms Walker. This suggestion does not really meet the points made by Mr Sheraton.[17]I can only agree with Mr Sheraton’s prejudice analysis. In addition, I register my surprise that at least the principle of this obviously necessary step was not agreed to by Nokia. In all the circumstances I propose to make an Order.[18]Finally, Mr Sheraton addressed some drafting points in the Order raised by Mr Darvill: i) The clarification in paragraph 1 of the draft Order to the extent of the lifting of the stay was agreed. ii) I decline to add the additional wording in paragraphs 4(a)-(d). I do not see why it is necessary to give third parties advance notice to allow for objections to the confidentiality regime, when all relevant third parties have already had notice of the confidentiality protections in the order and these are not being altered. Furthermore, the inclusion of those sub-paragraphs would only delay disclosure. iii) So far as paragraph 4(e) is concerned, Mr Darvill complains about the burden of relabelling documents ‘Subject to the provisions of the Confidentiality Order dated 30 January 2026 as amended ….’ I consider this relabelling exercise can be avoided on the basis that everyone understands that the existing labels apply to that Order as amended. All the recipients of the materials have extensive experience of dealing with confidentiality regimes and will be provided with a copy of my Order once made.[19]In the confidentiality protocol in schedule 1 to the Order, Bird & Bird for Nokia suggested numerous amendments. Beyond certain suggestions to which he agreed, Mr Sheraton responded to these suggestions by grouping them as follows: i) Disclosure to the arbitral tribunal: I reject the proposed amendments. As Mr Sheraton observed, they would result in a strange limbo where confidential materials can be used for the arbitration but cannot be used in the arbitration. ii) Powers of the arbitral tribunal: I understand that Nokia objects to the Tribunal being empowered to resolve issues such as disputes over confidentiality designations, extent of redactions etc.. Acer and ASUS consider it sensible to make such an order at this stage, to simplify the initial steps in the arbitration and provide the parties with a mechanism to resolve disputes without having to return to Court to do so if any disputes arise. I agree. Furthermore, bearing in mind Nokia were the party demanding arbitration, it is difficult to understand why they seek to limit the powers of the tribunal in this way. iii) Application to non-RAND confidential materials: Mr Sheraton said that ‘almost all’ of the documents designated confidential in the UK proceedings arose in the context of the final RAND licence issue and that far less material was designated confidential as part of the interim licence trial. For this reason, Acer and ASUS made the pragmatic proposal that confidential materials as a whole should be permitted to be disclosed and used in the arbitration. As Mr Sheraton said, the arbitrators will have the power to exclude evidence or materials from their proceedings. The alternative is for the confidentiality restrictions to be broadened only in respect of the documents referred to in the Court of Appeal’s Order, but this would give rise to a two-tier regime where, in case of dispute, this Court would have to determine if a document related to the final RAND licence, but the tribunal would determine admissibility in the arbitration. I welcome and will adopt the pragmatic proposal, since there is no risk regarding the materials which related only to the interim licence trial.[20]Whilst the protection of confidential material is important, I suspect that the Court of Appeal envisaged that the parties would cooperate to commence the arbitration very promptly and it would be resolved quickly. Furthermore, I doubt that the Court of Appeal envisaged that disputes of this nature would arise to cause further delay.[21]I ask the parties to prepare a draft Order giving effect to the decisions made in this Judgment, so that the Order can be made and matters can progress without any further delay.