Journal of Intellectual Property Rights

Open Access Open Access  Restricted Access Subscription Access

From ‘Anti Suit Injunction’ to ‘Anti Anti Suit Injunction’, Where would this Journey End? Part-I


Affiliations
1 Faculty of Law, University of Delhi, Delhi — 110 007, India., India
 

Right to seek justice is the most basic tenet of human life, but what if this right to seek justice is desisted by courts of justice itself? Yes, this crudestatement with other paraphernalia insinuates a concept known as‘Anti Suit Injunction’, (ASI) by virtue of which a court restrains a party from prosecuting and/or instituting a suit between same parties, in any other court of law. But certainly that’s not where things terminate! To cease the conflicting judgments emanating from various jurisdictions and for amicable resolution of disputes by one court only, a relatively novel concept of ‘Anti-Anti-Suit Injunction’(A2SI), with a primary intent ofreversing the efficacy of ASI by preventing the other party to take shed under ASI, has took the centre stage. As the functioning of both ASI and A2SI is not in coherence with the basic notions of international law along with some coordinative rules, so the appropriateness of them as a remedy is vastly questionable.

These remedies have recently surfaced into the domain of ‘Standard Essential Patents’ (SEP), leaving the parties to the dispute concerning SEP licensing (which are global in effect, aslegal actions centering on identical patents or related issues are often taken in parallel and multiple jurisdictions 1 ) in legal chaos as to which court of law will hear them.

What motivated the authors to usher into this domain is the topical, contemporaneous nature along with increase in its relevance in its confrontation with the SEPs, the same itself being a highly contemporary and ever evolving domain of patenting landscape. With the ever advancement of technology, this field is highly debated and is being pondered over in various sectors including academics! The present paper is a part of the ongoing research, to give a thorough discourse through a series of articles spanning across the year in upcoming volumes of this journal. The current and first installment of this yearlong series would try to apprise the readers towards this multidimensional issue of A2SI with its confrontation with SEPs with the subsequent issue briefing the global scenarios and way forward concerning this issue of A2SI. The latter part of this yearlong series would then try to provide a fundamentaloverview of SEPs from the very scratch itself to satiate the questions so raised by the former issues amongst the mind of readers.


Keywords

SEPs, Anti-Suit Injunctions, Anti- Anti-Suit Injunctions, Comity, FRANDS.
User
Notifications
Font Size

  • Bonadio E & McDonagh L, Paris court grants an SEP anti-anti-suit injunction in IPComv Lenovo:A worrying decision in uncertain times? JoIPL & P, 15 (2020) 149.

  • Baron J & Spulber D, Technology Standards and Standard Setting Organisations: Introduction to the Searle Center Database, Journal of Economics & Management Strategy, 27 (2018) 462. (Discovering that 32 of the 37 examined SDOs provide FRAND license).

  • ETSI, ‘Intellectual Property Rights Policy’ (14 April 2021), Clause 3 (“The ETSI IPR Policy aims to strike a compromise between the owners' rights and the requirements of standardization for public usage in the sector of telecommunications).

  • For understanding licensing of SEPs refer, Nikolic I, ‘Licensing Standard Essential Patents: FRAND and the Internet of Things’, Bloomsbury Publishing2021; Chryssoula Pentheroudakis, Baron J, Licensing Terms of Standard Essential Patents: A Comprehensive Analysis of Cases, Publication Office of the European Union,2017.

  • Spulber D, Licensing StandardEssential Patents with FRAND Commitments: Preparing for 5G Mobile Telecommunications, Colorado Technology Law Journal,18 (2020) 79.

  • Igor N, Global Standard Essential Patent Litigation: Anti-Suit and Anti-Anti-Suit Injunctions, Robert Schuman Centre for Advanced Studies Research Paper No. 2022/10, https://ssrn.com/abstract=4071708 (28 November 2022).

  • Klos M, Ericsson sues Samsung for patent infringement in Europe, Juve Patent,(8 January 2021), https://www.juve-patent.com/news-and-stories/cases/ericsson-sues-samsung-for-patent-infringement-in-europe/ (20 October 2022).

  • HTC vEricsson 12 F.4th 476 (5th Cir 2021); Optis v Huawei WL 1244707 (E.D. Tex. 2019).

  • Cremers K et. al., Patent Litigation in Europe, European Journal of Law and Economics, 44 (2017) 1; European Patent Academy, Declarations of Non-Infringement and Compulsory Licences, https://e-courses.epo.org/wbts_int/litigation/Non Infringement.pdf; European Patent Academy, ‘Proceedings for Invalidity’ available athttps://e-courses.epo.org/wbts_int/ litigation/ProcInvalidity.pdf (20 October 2022).

  • In both the US and the UK, this seems to be the generally held view, Refer Unwired Planet vHuawei [2017] EWHC 2988 (Pat); Microsoft vMotorola, 854 F.Supp.2d 993 (W.D. Wash. 2012). On the other hand, it appears that German courts only view FRAND commitments as declarative in nature and are yet to acknowledge them as establishing a legally enforceable agreement for the benefit of other parties. IP Com vDeutsche Telekom & Vodafone, Regional Court of Dusseldorf, 4b O 274/10 (24 April 2012).

  • Shurn P, Using declaratory judgments offensively in patent cases, John Marshall Review of Intellectual Property La,3 (2003) 1.

  • Or enforcing a judgment obtained in foreign proceedings.

  • Raack D W, A history of injunctions in England before 1700, Indiana Law Journal, 61 539 (1986) 545-56.

  • Toulson L J, Deutsche Bank AG vHighland Crusader Offshore Partners LP [2010] 1 WLR 1023, Paragraph 50 (An anti-suit injunction always requires caution because by definition it involves interference with the process or potential process of a foreign court).

  • For identical provisions under US law, Laker Airways, Ltd. v Sabena, Belgian World Airlines, 731 F.2d 909, 927 (D.C. Cir. 1984).

  • Interditial Technology vXiaomi Corporation & Ors (2021) SCC (Del).


Abstract Views: 89

PDF Views: 88




  • From ‘Anti Suit Injunction’ to ‘Anti Anti Suit Injunction’, Where would this Journey End? Part-I

Abstract Views: 89  |  PDF Views: 88

Authors

Ashwini Siwal
Faculty of Law, University of Delhi, Delhi — 110 007, India., India
Prashant
Faculty of Law, University of Delhi, Delhi — 110 007, India., India

Abstract


Right to seek justice is the most basic tenet of human life, but what if this right to seek justice is desisted by courts of justice itself? Yes, this crudestatement with other paraphernalia insinuates a concept known as‘Anti Suit Injunction’, (ASI) by virtue of which a court restrains a party from prosecuting and/or instituting a suit between same parties, in any other court of law. But certainly that’s not where things terminate! To cease the conflicting judgments emanating from various jurisdictions and for amicable resolution of disputes by one court only, a relatively novel concept of ‘Anti-Anti-Suit Injunction’(A2SI), with a primary intent ofreversing the efficacy of ASI by preventing the other party to take shed under ASI, has took the centre stage. As the functioning of both ASI and A2SI is not in coherence with the basic notions of international law along with some coordinative rules, so the appropriateness of them as a remedy is vastly questionable.

These remedies have recently surfaced into the domain of ‘Standard Essential Patents’ (SEP), leaving the parties to the dispute concerning SEP licensing (which are global in effect, aslegal actions centering on identical patents or related issues are often taken in parallel and multiple jurisdictions 1 ) in legal chaos as to which court of law will hear them.

What motivated the authors to usher into this domain is the topical, contemporaneous nature along with increase in its relevance in its confrontation with the SEPs, the same itself being a highly contemporary and ever evolving domain of patenting landscape. With the ever advancement of technology, this field is highly debated and is being pondered over in various sectors including academics! The present paper is a part of the ongoing research, to give a thorough discourse through a series of articles spanning across the year in upcoming volumes of this journal. The current and first installment of this yearlong series would try to apprise the readers towards this multidimensional issue of A2SI with its confrontation with SEPs with the subsequent issue briefing the global scenarios and way forward concerning this issue of A2SI. The latter part of this yearlong series would then try to provide a fundamentaloverview of SEPs from the very scratch itself to satiate the questions so raised by the former issues amongst the mind of readers.


Keywords


SEPs, Anti-Suit Injunctions, Anti- Anti-Suit Injunctions, Comity, FRANDS.

References