Juve Patent reported on an A4SI (for the notation, see this October 2020 post) that the Munich I Regional Court granted patent assertion entity InterDigital against smartphone maker Xiaomi. Dr. Arno Risse ("Riße" in German) did it again: in 2019, he had the innovative and brilliant idea to obtain an A2SI in Munich (in that case, as counsel of record to Nokia) and to my surprise defended that one on appeal.
What I absolutely dislike about the German approach to A2SIs (and, by extension, A4SIs) is that there's no analysis--much less a multifactorial analysis--of the question of whether a German court should defer to a foreign court. The simplistic thinking is this: patents are good, patent lawsuits are even better, and the best patent suits are the ones filed in Germany; therefore, any foreign antisuit injunction would restrict the enforcement those sacrosanct German patent rights and must be prohibited, even though German law doesn't allow antisuit injunctions. The argument is that the foreign antisuit activity unlawfully puts a patent plaintiff into a straightjacket with respect to intellectal property that would otherwise be enforceable in Germany. (In the U.S. and China, the analysis underlying an antisuit injunction is far more sophisticated.)
The counterintuitive bottom line is that a jurisdiction that can't grant antisuit injunctions nevertheless issues A2SIs and, by now, A4SIs.
But, to be fair, the recent global escalation is the result of an ill-conceived ruling by the UK Supreme Court in Unwired Planet v. Huawei. British judges opened Pandora's Box, not even in the form an antisuit injunction, but by effectively forcing other jurisdictions to respond in that way. The antisuit escalation will likely continue, not necessarily in the form of A5SIs and A6SIs, but more likely by means of rigid enforcement and ever more draconian sanctions. The end game? A new international treaty, but that may take time.
On pages 42 and 43 of the InterDigital v. Xiaomi ruling, the Munich I Regional Court's 7th Civil Chamber under Presiding Judge Dr. Matthias Zigann lists multiple scenarios in any given one of which the world's most popular patent injunction venue is now prepared to enter an A4SI:
The alleged infringer threatened the patent holder with the pursuit of an ASI.
The alleged infringer has filed a motion for an ASI against the patent holder.
The alleged infringer has started, in a jurisdiction that makes ASIs available in principle, a main proceeding aiming at the court-ordered grant of a license or the determination of a reasonable worldwide royalty for such license, or has threatened to do so.
The alleged infringer has previously
threatened other patent holders with the pursuit of an ASI or
has previously sought one against another patent holder and the patent holder has no clear indication that the alleged infringer has abandoned that practice, at least with respect to the relevant patent holder.
The alleged infringer has not declared in writing, after the patent holder (such as at the time of the initial infringement notice) set a deadline, that it (the alleged infringer) will refrain from filing for an ASI.
That's a wide range of scenarios. The court ruling clarifies that affiliate entities of patent holder and/or the alleged infringer will generally be viewed, for the purposes of applying the above criteria, as the relevant party to the Munich case.
Not only do German injunctions serve to stop an ongoing violation but also to prevent an imminent action from occurring in the first place. The decision acknowledges that it has a rather expansive view on what constitutes an imminent action, but in the Munich court's opinion, the alternative would be to completely depart from the CJEU's Huawei v. ZTE case law and to simply require implementers of industry standards to take the first step and seek a license.
With its InterDigital v. Xiaomi A4SI framework, building on the Nokia v. Continental doctrine (zero deference to foreign court proceedings), the Munich court is going to become even more popular among SEP holders. I've asked the court's press office whether they have other antisuit cases pending, which would validate this assumption of a further increase in popularity of this venue.
What remains to be seen is whether the Munich appeals court (Munich Higher Regional Court) will affirm that expansive list of criteria for the availability of an A4SI in its entirety or limit the use of A4SIs to a subset of those scenarios.
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