2022 has resumed where 2021 left off with respect to Access Advance's patent enforcement attempts in Germany. Between Christmas and New Year's, Turkish TV maker Vestel prevailed on a FRAND counterclaim--and an affirmative FRAND defense to injunctive relief--over the Access Advance pool and some of its licensors. The patent pool firm--which was founded by Philips, General Electric, Dolby, and Mitsubishi--has so far failed to address the serious issue of duplicative royalties.
The first court ruling in 2022 to involve Access Advance's enforcement efforts has also favored a defendant: in this case, Xiaomi, one of the world's largest smartphone makers. Yesterday, the Oberlandesgericht Düsseldorf (Dusseldorf Higher Regional Court) lifted a set of anti-antisuit injunctions granted by the lower Dusseldorf court to Philips, GE, and Mitsubishi last summer (Juve Patent reported).
The Dusseldorf appeals court's 2nd Civil Senate under Presiding Judge Dr. Thomas Kuehnen ("Kühnen" in German) reversed the Dusseldorf Regional Court's 4c Civil Chamber on the question of whether the moving parties had a Rechtsschutzbedürfnis--"need for protection under the law" (against an imminent violation)--in this particular case. The three-judge appellate panel concurred with the Munich Higher Regional Court's 2019 decision affirming a Nokia v. Continental anti-antisuit injunction, but begged to differ slightly from the Munich I Regional Court's more expansive framework as laid out in InterDigital v. Xiaomi last year by the Munich court's 7th Civil Chamber under Presiding Judge Dr. Matthias Zigann.
Just like the courts in Munich, the Dusseldorf courts believe that the pursuit of a foreign antisuit injunction against the enforcement of German patents is an illegal attack on property rights protected by Germany's de facto constitution. Even more importantly, just like the Munich I Regional Court, the Dusseldorf Higher Regional Court is of the opinion that an implementer seeking an antisuit injunction may be deemed an unwilling licensee, resulting in a sales ban once a SEP infringement has been identified.
What decided the case for Xiaomi against those HEVC Advance licensors is that there was no specific threat of Xiaomi seeking a Chinese antisuit injunction that would have prevented the patentees from enforcing their German patent rights. The mere fact that Xiaomi had obtained a Chinese antisuit injunction against InterDigital under fundamentally different circumstances was not deemed sufficient by the Dusseldorf appeals court to suspect that the same might happen in the HEVC Advance cases. (By the way, InterDigital and Xiaomi settled last summer.)
The Dusseldorf appeals court did not even see a basis for those HEVC Advance licensors to obligate Xiaomi to inform them beforehand of a motion for an antisuit injunction.
Whether the Munich I Regional Court and/or the Munich Higher Regional Court would have granted an anti-antisuit injunction when faced with the same fact pattern is hard to tell because each case is different and the lower Munich court's criteria for pre-emptive anti-antisuit injunctions are applied to the entire set of facts, with no single criterion necessarily being decisive in its own right. But there is a discernible difference between the Dusseldorf appeals court and the Munich lower court as the latter does attach some importance (in the multifactorial analysis of whether an anti-antisuit injunction should issue) to an implementer's conduct vis-à-vis other SEP holders--which the Dusseldorf appeals court is rather disinclined to take into consideration--as well as to an implementer's refusal to promise in writing not to move for a foreign antisuit injunction.
Munich's anti-antisuit case law is influential in Europe (and potentially beyond). A few months ago, a Dutch court denied Ericsson an anti-antisuit injunction against Apple (which denial was later affirmed by an appeals court) on similar grounds as the Dusseldorf appeals court's reversal of the anti-antisuit injunctions against Xiaomi, but applied some of the Munich logic.
It appears likely that the Mannheim Regional Court and its regional appeals court, the Karlsruhe Higher Regional Court, will reach similar conclusions. Mannheim is a key SEP venue and reasonably protective of IPR owners.
The legal innovator who successfully obtained the first German anti-antisuit injunction (at a minimum, the first SEP-related one) is Dr. Arno Risse ("Riße" in German) of the Arnold & Ruess firm. On an ex parte basis, it was granted by the Munich I Regional Court's 21st Civil Chamber, then under Presiding Judge Tobias Pichlmaier (who has recently been reassigned, at his request, to an antitrust-specialized division). Judge Dr. Hubertus Schacht filled in for Judge Pichlmaier (during the main vacation season) to preside over a hearing on Continental's motion for reconsideration--and affirmed the prior decision, which was ultimately affirmed by the Munich appeals court (6th Civil Senate, under meanwhile-retired Presiding Judge Konrad Retzer). Later, Presiding Judge Dr. Matthias Zigann of the Munich I Regional Court's 7th Civil Chamber further developed the criteria to be applied to motions for anti-antisuit injunctions. And now the Dusseldorf Higher Regional Court agrees with the Munich stance on anti-antisuit injunctions (including the potential stigmatization of an implementer as an unwilling licensee) to a larger extent than it differs from it on the hurdles for a pre-emptive anti-antisuit injunction.
Arguably, the Munich court's decisive action against foreign antisuit injunctions has been the primary reason why no SEP implementer appears to have employed that tactic in about two years.
Finally, I wish to thank the Loeffel Abrar firm for drawing my attention to this decision via Twitter.
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