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


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

While courts have traditionally been mindfulof the territorial nature of patent rights and thus reluctant to exceed the scope of their jurisdiction, this second installment of the yearlong series, inter alia will try to examine certain global scenarios and conditions that courts consider while granting ASI and A2SI and their application in disputes concerning SEPs, further certain measures would be suggested which the authors think might come handy to stop this global race for jurisdiction and how inculcating the same in practice would give the due respect to the national courts of concerned jurisdiction along with incentivizing the parties to focus on key concern issues behind every SEP dispute i.e. the suitable FRAND licensing terms. The present research will also try to convince that such ‘Anti-Anti-Anti-Anti……….Suits Injunction’ saga benefits none, as the same incentivizes a global race to find a courtin favorable jurisdiction rather than focusing over the Licensing Negotiations.

Keywords

SEPs, Anti-Suit Injunctions, Anti-Anti-Suit Injunctions, Comity, FRANDS.
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  • Airbus Industrie GIE vPatel [1999] 1 AC 119, As per Section 37 of the Senior Courts Act 1981, a court may grant an ASI “in all cases in which it appears to the court to be just and convenient to do so”.

  • Airbus Industrie GIE vPatel [1999] 1 AC 119, per Lord Goff. Be aware that English national law makes it extremely simple to invoke jurisdiction in foreign conflicts. The adjudicatory discretion acknowledged by English law serves as a counterweight to this.

  • Be aware that English national law makes it extremely simple to invoke jurisdiction in foreign conflicts. The adjudicatory discretion acknowledged by English law serves as a counterweight to this. Donohue vArmco Inc and Others [2001] UKHL 64.

  • Ust-Kamenogorsk Hydropower Plant JSC vAES Ust-Kamenogorsk Hydropower Plant LLP [2013] UKSC 35.

  • Furthermore, the English courts have in rare circumstances granted an ASI to shield the applicant from overseas prosecutions that would otherwise be "oppressive" and where it would be unfair to expect the applicant to defend itself before the foreign court. This might be the situation when the petitioner is denied access to justice due to the foreign court's procedure as in, Societe Nationale Industrielle Aerospatiale v (1)Lee Kui Jak (2)Yong Joon Kim and (3)Lee Kui Jak [1987] UKPC 12.

  • Masri vConsolidated Contractors International Company Sal & Anor [2008] EWCA Civ 625.

  • Bank of Tokyo Ltd vKaroon [1985] AC 45.

  • Star Reefers Pool Inc. vJFC Group Co. Ltd. [2012] EWCA Civ 14, Paragraph 27, referring to Toulson L J in Deutsche Bank AG vHighland Crusader Offshore Partners LP [2010] 1 WLR 1023, paragraph 50. If it is "clear" that the case before the foreign court is "bound to fail," it may also be possible in some (exceptional) instances to prove the parallel proceedings' illegality.

  • Airbus Industrie GIE vPatel [1999] 1 AC 119.

  • The concept of comity, for instance, is less important in matters involving violation of contract (jurisdiction or arbitration agreement).

  • Fingas J, India is now a larger smart phone market than the US, 26 January 2020, Engadget, https://www.engadget.com/ 2020-01-25-india-now-second-largest-smartphone-market.html (accessed on1 September 2022).

  • Refer, Laker Airways, Ltd. vSabena, Belgian World Airlines, 731 F.2d 909, 926-27 (D.C. Cir. 1984) (holding that “parallel proceedings on the same in personam claim should ordinarily be allowed to proceed simultaneously, at least until judgment is reached in one which can be pled as res judicata in the other”).

  • E. & J. Gallo Winery vAndina Licores S.A., 446 F.3d 984, 989 (9th Cir. 2006).

  • Microsoft Corp. vMotorola, Inc., 696 F.3d 872 (9th Cir. 2012) at 882.

  • Microsoft Corp. vMotorola, Inc., 696 F.3d 872 (9th Cir. 2012) holding that the issues in (1) a patent infringement action in Germany and (2) an action before the US court for breach of contract with respect to the SEP holder’s FRAND commitment were identical. The Ninth Circuit stated that the US litigation would determine the outcome of the German action since the SEP holder would be unable to seek an injunction against the implementer if the license offer was not deemed RAND.

  • Refer Quaak vKlynveld Peat Marwick Goerdeler, 361 F.3d 11, 17 (1st Cir. 2004).

  • This can be the situation if the foreign action violates an arbitration or jurisdictional agreement, Refer, E. J. Gallo Winery vAndina Licores S.A, 446 F.3d 984, 993 (9th Cir. 2006); Paramedics Electromedicina Comercial, Ltda. vGE Medical Systems Information Technologies, Inc., 369 F.3d 645 (2d Cir. 2004) at 653-655.

  • Compare e.g., Kaepa, Inc. vAchilles Corp., 76 F.3d 624, 627 (5th Cir. 1996) (“We decline […] to require a district court to genuflect before a vague and omnipotent notion of comity every time that it must decide whether to enjoin a foreign action”) with Laker Airways, 731 F.2d at 927 (Comity dictates that foreign antisuit injunctions be issued sparingly and only in the rarest of cases).

  • Refer, Kaepa, Inc. vAchilles Corp., 76 F.3d 624, 627 (5th Cir. 1996) (noting that an international anti-suit injunction does not “actually threaten relations” between the two involved nations).

  • Raphael T, The Anti-Suit Injunction, (2nd edition, Oxford University Press 2019) 1, 2 (“An anti-suit injunction is an order of the court requiring the injunction defendant not to commence, or to cease to pursue, or not to advance particular claims within, or take steps to terminate or suspend, court or arbitration proceedings in a foreign country…”); Bermann G, The use of Anti-Suit injunctions in international litigation, Columbia Journal of Transnational Law, 28 (1990) 589; Fisher G, Anti-Suit injunctions to restrain foreign proceedings in Breach of an Arbitration Agreement, Bond Law Review22 (2010) 1.

  • Raphael T, The Anti-Suit Injunction (2nd edition, Oxford University Press 2019) 37.

  • Ojigbe C, From West Tankers to Gazprom: Anti-Suit Injunctions, Arbitral Anti-Suit Order and the Brussels I Recast, Journal of Private International Law, 11 (2015) 267.

  • Strong S I, Anti-Suit Injunctions in Judicial and Arbitral Procedures in the United States, American Journal of Comparative Law, 66 (2018) 153, 165,166.

  • UK Senior Courts Act 1981, Article 37(1).

  • Raphael T, The Anti-Suit Injunction (2nd edition, Oxford University Press 2019) 3; Gee S, Lord Bigham, Anti-Suit Injunctions and Arbitration, (Oxford University Press 2009).

  • Refer Agbaje vAkkinoye-Agbaje [2010] UKSC 13, 51-54.

  • Highland Crusader Partners vDeutsche Bank [2009] EWCA Civ 725, para 50.

  • Strong S I, Anti-Suit Injunctions in Judicial and Arbitral Procedures in the United States, American Journal of Comparative Law, 66 (2018) 153, 159-161; Contreras J & Eixenberger M, The Anti-Suit Injunction – A Transnational Remedy for Multi-Jurisdictional SEP Litigation in Jorge Contreras (ed), The Cambridge Handbook of Technical Standardization Law: Competition, Antitrust and Patents (Cambridge University Press 2018) 453-454; Fry T, Injunction junction, What’s your function – Resolving the split over Antisuit injunction deference in favor of international comity, Catholic University Law Review, 58 (2009) 1071; Tan D, Anti-Suit Injunctions and the vexing problem of Comity, Virginia Journal of International Law 45 (2004) 283.

  • Strong S I, Anti-Suit Injunctions in Judicial and Arbitral Procedures in the United States, American Journal of Comparative Law, 66 (2018) 153, 159.

  • The US Supreme Court described the comity concept as “the recognition which one nation allows within its territory to the legislative, executive, or judicial acts of another nation, having due regard both to international duty and convenience, and to the rights of its own citizens, or of other persons who are under the protection of its laws”; Hilton vGuyot, 159 U.S. 113, 164 (1895); Societe Nationale Industrielle Aerospatiale vUS Dist Ct SD Iowa, 482 US 522, 543 (1987) (“the spirit of cooperation in which a domestic tribunal approaches the resolution of cases touching the laws and interests of other sovereign states”).

  • Raphael T, The Anti-Suit Injunction (2nd edition, Oxford University Press 2019) 142-144.

  • Bermann G, The use of Anti-Suit injunctions in international litigation, Columbia Journal of Transnational Law, 28 (1990) 589.

  • Strong S I, Anti-Suit Injunctions in Judicial and Arbitral Procedures in the United States, American Journal of Comparative Law, 66 (2018) 153, 169.

  • Contreras J & Eixenberger M, The Anti-Suit Injunction – A Transnational Remedy for Multi-Jurisdictional SEP Litigation in Jorge Contreras (ed), The Cambridge Handbook of Technical Standardization Law: Competition, Antitrust and Patents (Cambridge University Press 2018) 452.

  • Raphael T, The Anti-Suit Injunction (2nd edition, Oxford University Press 2019) 139-141.

  • Marfé M, The future of standard essential patent licensing, pinsentmasons, (9 March 2021) https://www.pinsentmasons. com/out-law/analysis/the-future-of-standard-essential-patent-licensing (accessed on 1 September 2022).

  • Highland Crusader Partners vDeutsche Bank v [2009] EWCA Civ 725, para 50.

  • IP Bridge vHuawei, Munich Regional Court, Case No. 7 0 36/21 (24th June 2021) para 43 (arguing that because AEIs are aimed against court rulings that have found both violation and the viability of a claim for injunctive relief, they have an even greater negative impact on comity and the SEP owner's ability to access justice than ASIs).

  • Huawei vZTE ECLI:EU:C:2015:477, The Huawei vZTE, following actions are included in the framework: 1) Prior to asking for an injunction, the SEP holder must notify the implementer, inform them of the infringement, and specify which specific SEPs are being violated and how, 2) the infringer should indicate that it is ready to sign the license agreement, 3) The SEP holder should next submit a precise, written offer for a licence under FRAND terms, indicating in particular the quantum of the royalty and how it is to be calculated. The infringer must then diligently and in good faith react to the offer, without using any delay strategies. 4) If the infringer declines, it must submit its FRAND counter- offer promptly and in writing; 5) if the SEP holder refuses to accept the counter-offer, the infringer will have to provide adequate protection (for instance, by offering a bank guarantee or putting the required sums on deposit) and render accounts; 6) at that point, the parties may mutually agree to request that the FRAND royalty be scertained by an independent third party (presumably court or arbitration).

  • Commission ‘Setting Out the EU Approach to Standard Essential Patents’ COM (2017) 712 final 11; Japan Patent Office, Guide to Licensing Negotiations Involving Standard Essential Patents, (2018) 19-20.

  • Contreras J & D Newman, Developing a framework for arbitrating Standard-Essential Patent disputes, Journal of Dispute Resolution, 23 (1) (2014).

  • Lemley M & Shapiro C, A simple approach to setting reasonable royalties for Standard-Essential Patents, Berkeley Technology Law Journal, 28 (2013) 1135.

  • WIPO, Guidance on WIPO FRAND Alternative Dispute Resolution, 2017.

  • Geradin D, FRAND arbitration: The determination of fair, reasonable and non-discriminatory rates for SEPs by Arbitral Tribunals, CPI Antitrust Chronicle,2016.


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

Abstract Views: 97  |  PDF Views: 91

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


While courts have traditionally been mindfulof the territorial nature of patent rights and thus reluctant to exceed the scope of their jurisdiction, this second installment of the yearlong series, inter alia will try to examine certain global scenarios and conditions that courts consider while granting ASI and A2SI and their application in disputes concerning SEPs, further certain measures would be suggested which the authors think might come handy to stop this global race for jurisdiction and how inculcating the same in practice would give the due respect to the national courts of concerned jurisdiction along with incentivizing the parties to focus on key concern issues behind every SEP dispute i.e. the suitable FRAND licensing terms. The present research will also try to convince that such ‘Anti-Anti-Anti-Anti……….Suits Injunction’ saga benefits none, as the same incentivizes a global race to find a courtin favorable jurisdiction rather than focusing over the Licensing Negotiations.

Keywords


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

References