US anti‐suit injunctions and German anti‐anti‐suit injunctions in SEP disputes

Hess, Felix K. Article — Published Version US anti‐suit injunctions and German anti‐anti‐suit injunctions in SEP disputes The Journal of World Intellectual Property Provided in Cooperation with: John Wiley & Sons Suggested Citation: Hess, Felix K. (2022) : US anti‐suit injunctions and German anti‐anti‐suit injunctions in SEP disputes, The Journal of World Intellectual Property, ISSN 1747-1796, Wiley, Hoboken, NJ, Vol. 25, Iss. 2, pp. 536-555, https://doi.org/10.1111/jwip.12240 This Version is available at: https://hdl.handle.net/10419/265075 Standard-Nutzungsbedingungen: Die Dokumente auf EconStor dürfen zu eigenen wissenschaftlichen Zwecken und zum Privatgebrauch gespeichert und kopiert werden. Sie dürfen die Dokumente nicht für öffentliche oder kommerzielle Zwecke vervielfältigen, öffentlich ausstellen, öffentlich zugänglich machen, vertreiben oder anderweitig nutzen. Sofern die Verfasser die Dokumente unter Open-Content-Lizenzen (insbesondere CC-Lizenzen) zur Verfügung gestellt haben sollten, gelten abweichend von diesen Nutzungsbedingungen die in der dort genannten Lizenz gewährten Nutzungsrechte. Terms of use: Documents in EconStor may be saved and copied for your personal and scholarly purposes. You are not to copy documents for public or commercial purposes, to exhibit the documents publicly, to make them publicly available on the internet, or to distribute or otherwise use the documents in public. If the documents have been made available under an Open Content Licence (especially Creative Commons Licences), you may exercise further usage rights as specified in the indicated licence. http://creativecommons.org/licenses/by/4.0/ Received: 23 May 2022 | Accepted: 10 June 2022 DOI: 10.1111/jwip.12240 ORIGINAL ARTICLE US anti‐suit injunctions and German anti‐anti‐suit injunctions in SEP disputes Felix K. Hess Faculty of Law, Goethe‐Universität Frankfurt, Frankfurt am Main, Germany Correspondence Felix Hess, Faculty of Law, Goethe‐ Universität Frankfurt am Main, Max‐ Horkheimer‐Str. 2, Postfach EXC‐12, D‐60323 Frankfurt am Main, Germany. Email: [email protected] Abstract The essay argues that anti‐suit injunctions granted in disputes on standard‐essential patents are inconsistent with the general standards governing anti‐suit injunctions. The section on anti‐suit injunction demonstrates that the case law on anti‐suit injunctions is not comparable to disputes over standard essential patents. In contrast, anti‐anti‐suit injunctions are a legitimate response to an extraterritorial assertion of jurisdiction by foreign courts. Under EU law, the courts of member states might even be required to issue anti‐anti‐suit injunctions to protect their exclusive jurisdiction over patents. KEYWORDS anti‐anti‐suit injunctions, anti‐suit injunctions, FRAND, litigation, SEP, standards, telecommunications 1|INTRODUCTION Tech giants are taking their disputes over the licensing of standard essential patents (“SEPs”) to courts around the world. At the heart of the disputes are the terms of global licences. The patentee must license its SEPs on fair, reasonable and nondiscriminatory (“FRAND”) conditions. Courts in different jurisdictions have different opinions on which licensing terms are FRAND. Hence, both parties will fight tooth and nail to bring the dispute to the jurisdiction most favorable to them. To this end, they may try to enjoin each other from litigating in a foreign court by applying for an anti‐suit injunction. Particularly noteworthy are cases in which both sides obtain anti‐suit injunctions and the proceedings in both jurisdictions come to a halt. The surge of (anti‐)anti‐suit injunctions has left commentators wondering whether litigation on SEPs is spinning out of control. This essay aims to show why J World Intellect Prop. 2022;25:536–555.536 | wileyonlinelibrary.com/journal/jwip This is an open access article under the terms of the Creative Commons Attribution License, which permits use, distribution and reproduction in any medium, provided the original work is properly cited. © 2022 The Authors. The Journal of World Intellectual Property published by John Wiley & Sons Ltd. anti‐suit injunctions granted by US courts in SEP disputes are inconsistent with the general standards governing anti‐suit injunctions. Subsequently, the paper discusses German anti‐anti‐suit injunctions. 2|SEP DISPUTES IN A NUTSHELL To enable mobile phones, laptops, and other connected devices to work worldwide, telecommunications infrastructure and equipment must be interoperable. This is achieved by standards. Prominent standards, such as UMTS (3G) or LTE (4G), are set by Standard Setting Organizations (“SSOs”). For a patent to be recognized as a SEP, the patentee must commit to the respective SSO to license the SEP on FRAND terms (“FRAND Commitment”). Usually, implementers already use the standard during ongoing contract negotiations. Since SEPs are rarely licenced individually but in large portfolios, determining what is “fair and reasonable”may take several years. Possibly, the SEP owner fears that the implementer deliberately delays contract negotiations to pay less licence fees or because some patents are about to expire. It may then threaten injunctive relief to gain bargaining power. An injunction could lead to the implementer having to withdraw from the market. To avoid the injunction, the implementer would have to agree to adverse conditions. As frequent injunctions would threaten the availability of standards, courts around the world agree that the enforcement of SEPs is subject to certain limitations. In particular, no injunction will be granted against implementers who are genuinely interested in and trying to reach an agreement on FRAND terms (“willing licensee,” or in the opposite case, an “unwilling licensee”). 1 Although courts agree on this point, the courts' views on what constitutes a willing licensee differ considerably. Courts in some jurisdictions regularly grant injunctions against implementers. In other jurisdictions, injunctions are generally not issued if the infringed patent is a SEP. For example, German courts are considered SEP owner friendly. 2 Injunctions are granted quicker and under lesser requirements than in other jurisdictions in major markets. In contrast, US courts will mostly deny the SEP owner injunctive relief, as the requirements for injunctive relief set out in Ebay v MercExchange 3 are usually not met in SEP disputes. 4 Since procedural and substantive law differ considerably, both parties aim to take the dispute to the jurisdiction most favorable to them. Global licences in conjunction with the territoriality of patents make up for forum shopping opportunities on both sides. SEP owners usually seek injunctive relief in jurisdictions whose courts are more inclined to grant an injunction. Implementers may try to counter the SEP owners' forum shopping. Courts in some jurisdictions accept that the FRAND Commitment constitutes a contract for the benefit of any willing licensee as third party (FRAND Obligation). This enables the implementer to bring an action for an alleged breach of the FRAND Obligation. Courts in China, England, and the United States may even determine the royalties of a worldwide licence upon request. 5 However, the threat of an injunction on a relevant market could force the implementer to accept a global licence before the court has determined the FRAND rate. To avoid an injunction, the implementer may apply for an anti‐suit injunction against the SEP owner. 3|ANTI‐SUIT INJUNCTIONS Anti‐suit injunctions enjoin the injunction defendant from initiating or pursuing proceedings abroad, or from enforcing a judgment. For lawyers with a civil law background, the need for anti‐suit injunctions may be hard to understand. Civil law jurisdictions aim to prevent jurisdictional conflicts from the outset through exhaustive rules (e.g., Regulation (EU) No. 1215/2012, “Brussels Ia Regulation”). Unless a foreign court was seized first and the doctrine of lis pendens is applicable, a court with jurisdiction cannot stay its proceedings. 6 Courts in common law jurisdictions generally exercise wider jurisdiction. To prevent parallel proceedings, courts are supposed to stay domestic proceedings if a foreign forum is more appropriate to hear the dispute. The common HESS | 537 law approach aims to ensure that the court with the closest connection to the dispute and the parties decides the case. However, it relies on the acceptance by courts of other jurisdictions. 7 If a foreign court is less appropriate but does not stay its proceedings, courts may enjoin a party from litigating in the foreign court by granting an anti‐suit injunction. Civil law jurisdictions may perceive anti‐suit injunctions as a hostile intervention on their own jurisdiction. Although an anti‐suit injunction may not be enforceable in a civil law jurisdiction, 8 the defendant will usually comply with it. Otherwise, it would have to pay fines in the forum granting the injunction. Moreover, ignoring the order could expose the defendant to a default judgment on the merits. 9 One effective way to protect a party affected by a foreign anti‐suit injunction is to enjoin the other party from enforcing the order in the foreign jurisdiction or from applying for an anti‐suit injunction. Such an order is called an anti‐anti‐suit or counter injunction. Anti‐anti‐suit injunctions were exclusively granted by courts in common law jurisdictions until 2019. 10 Lately, courts in civil law jurisdictions started to issue anti‐anti‐suit injunctions in SEP disputes. So far, mainly practical concerns have been raised against (anti‐)anti‐suit injunctions in SEP disputes. 11 The main argument is as obvious as reasonable: If one party applies for an anti‐suit injunction and the other party for an anti‐anti‐suit injunction, the case may not be heard at all. 4|US ANTI‐SUIT INJUNCTIONS The circuits are split over the standards governing anti‐suit injunctions. Most circuits argue that anti‐suit injunctions potentially create political tension and should only be issued under the most compelling circumstances (“strict approach”). 12 The Fifth, Seventh, and Ninth Circuits aim to protect litigants from vexatious and abusive foreign actions and will regularly restrain foreign parallel litigation (“lax approach”). 13 Both approaches name similar requirements which they interpret differently. This section provides a brief overview of the criteria courts in the United States consider and examines whether the criteria are met in SEP disputes. District courts have relied on the judgment rendered by the Courts of Appeals for the Ninth Circuit (“Court of Appeals”)inMicrosoft v Motorola in subsequent decisions. 14 Hence, this essay focuses on the reasoning therein. Before the general criteria for anti‐suit injunctions are outlined, a brief summary of the facts of the case is helpful. During contract negotiations, the implementer, Microsoft, sued Motorola for an alleged violation of the FRAND Commitments which Motorola had given to two SSOs, the International Telecommunication Union (ITU) and the Institute of Electrical and Electronics Engineers (IEEE). Six months after legal action was initiated in the United States, Motorola brought an action for patent infringement in Germany against Microsoft. Subsequently, Microsoft applied for an anti‐suit injunction to enjoin Motorola from enforcing a judgment obtained in Germany. 4.1 |Threshold criteria Under both approaches, “[t]he threshold consideration for a foreign anti‐suit injunction is whether or not the parties and the issues are the same […] and whether or not the first [domestic] action is dispositive of the [foreign] action to be enjoined.” 15 In determining whether the parties are the same in the domestic and foreign proceedings, affiliated companies are generally considered as one party. Parties usually disagree on whether the foreign and domestic lawsuits concern the same issue. Courts applying the lax approach require both actions to be based on “the same underlying dispute.” 16 This neither requires both courts to apply the same substantive law, nor that domestic law provides a similar remedy or provision as available under foreign law. It may be sufficient that both proceedings arise from the same factual basis. This is supposedly the case in SEP disputes. Other courts “choose to read ‘dispositive’for what it means: to settle or finish the dispute.” 17 If the remedy available in the foreign forum is not available under the lex fori, the actions concern different issues. Under the latter definition, a foreign patent infringement action does not concern the same issue as a contractual action brought by 538 | HESS an implementer for an alleged breach of a SEP owner's FRAND Obligation. All circuits recognize that proceedings on different national patents regarding the same invention concern different issues. 18 Put to the heart of the matter: Foreign patents, despite covering precisely the same product as an American patent, present separate and independent rights […]. Where patents are at issue, the subject matter is not the same. 19 This does not apply to disputes which concern patents but are contractual in nature. 20 For instance, courts have granted anti‐suit injunctions to enforce contractual agreements not to bring patent infringement actions abroad. 21 Even courts applying the strict approach recognize that the foreign action concerns the same issue as the domestic action if the injunction defendant brought the foreign action in breach of a waiver, or an exclusive jurisdiction or arbitration agreement. 22 4.1.1 |Comparability of the FRAND Commitment and jurisdiction agreements In Microsoft v Motorola, the Court of Appeals relied on case law concerning contractual agreements not to sue abroad and compared the FRAND Commitment to a jurisdiction agreement. According to the Court of Appeals, the SEP owner declares “not [to] take steps to keep would‐be users from using the patented material, such as seeking an injunction”by undertaking the FRAND Commitment. 23 Similarly, a party consenting to a jurisdiction agreement “relinquishes any benefits that it might receive from statutory rights or favorable canons of contractual interpretation only available in other forums.” 24 In both cases, the anti‐suit injunction would enforce contractual obligations. The ITU Licensing Declaration Form, which the Court of Appeals compared to a jurisdictional agreement, provides: The Patent Holder is prepared to grant a license to an unrestricted number of applicants on a worldwide, non‐discriminatory basis and on reasonable terms and conditions to make, use and sell implementations of the relevant ITU‐T/ITU‐R Recommendation. Negotiations are left to the parties concerned and are performed outside the ITU‐T/ITU‐R. 25 At first glance, the wording does not imply an obligation not to claim injunctive relief. However, the SEP owner shall offer a licence on FRAND terms to any implementer. An SEP owner who seeks injunctive relief at the first opportunity breaches this duty. In general, the purpose of SSOs is to develop widely available standards and to balance the interests of SEP owners and implementers. Implementers should be able to use the standard at a reasonable price, while SEP owners (or their legal successors) should be compensated and rewarded for their R&D efforts. 26 The Court of Appeals only took into account the implementers' interests and interpreted the licensing declaration as a unilateral waiver of the right to claim injunctive relief by the SEP owner. Neither the wording nor the purpose of the declaration or the ITU Policy support this interpretation. 27 The SEP owner's obligation not to bring patent infringement actions is not unconditional. If SEP owners could not obtain injunctive relief, implementers would have little incentive to conclude a licence agreement. Hence, SEP owners are entitled to injunctive relief against unwilling licensees. 28 The Court of Appeals did not examine whether the injunction claimant, Microsoft, was a willing licensee. It stated that Motorola “may or may not have […] breached its contract with the ITU.” 29 Thus, the Court of Appeals has neither considered the precise scope of the FRAND Obligation, nor whether Motorola had violated it by filing the German suit. To stick to the comparison of the FRAND Commitment with a choice of court agreement: HESS | 539 The court would have issued an anti‐suit injunction to enforce a jurisdiction agreement whose scope and enforceability were uncertain. Some courts have issued anti‐suit injunctions to enforce jurisdiction agreements valid under US law and invalid under foreign law. There is no precedent in which a US court has granted an anti‐suit injunction to enforce a jurisdiction agreement, of which it did not know whether it was valid and enforceable. In all cases, an obligation not to sue abroad likely existed and the injunction defendant had likely violated it. 30 Courts refused to grant anti‐suit injunctions where it was uncertain whether the foreign claims fell inside the scope of the jurisdiction agreement. 31 4.1.2 |Contractual umbrella The second straw on which the court relied is a “contractual umbrella”of the Californian action. 32 Even if Motorola did not breach its contract, the court would have had to determine a FRAND rate. If Microsoft had agreed to take a licence under the conditions set by the court, Motorola would not have been entitled to injunctive relief. Therefore, as in Medtronic, the [injunction claimant] was not seeking to enjoin a party from litigating in a foreign court on the basis of a patent validity or infringement finding by a United States court but on the basis of a contract interpretation by a U.S. court. 33 In Medtronic, the agreement provided inter alia: [Injunction defendant] agrees to and does hereby grant [injunction claimant] complete release and immunity from suit for any and all claims in law or in equity for damages, profits or any injunctive relief or relief of any kind resulting from the transfer […]. 34 However, the contract was ambiguous. Another paragraph suggested that the injunction defendant was entitled to injunctive relief under certain circumstances. Judge Larson provided a textbook example of contract interpretation. He ascertained “the intent of the parties and determine[d] the meaning of the language by looking to the circumstances surrounding the making of the contract and to the parties' own subsequent interpretation of the agreement.” 35 No such interpretation of the words “non‐discriminatory”and “reasonable terms and conditions” occurred in Microsoft v Motorola until the substantive proceedings. Besides, what Judge Robart did in the later FRAND trial to determine the royalties has little to do with contract interpretation in the traditional sense. He assessed the technical utility of different patent families and the extent to which Microsoft's products utilized their respective functions. The assessment seems closely related to that of the validity and infringement of patents. This classification would be consistent with the distinction of federal and state court jurisdiction in patent licensing disputes. Generally, as long as no rule provides for the jurisdiction of federal courts, state courts have subject–matter jurisdiction. One example for such rule is 28 USCA § 1338 (a), under which federal courts have exclusive jurisdiction for civil actions relating to patents. The purpose of the provision is to prevent conflicting decisions on patents. In some “contractual cases”federal courts had jurisdiction under 28 USCA § 1338 (a), because the contractual issues were interconnected with patent law. However, not any breach of contract case involving patents establishes federal jurisdiction. 36 Patent law must be a substantial part of the claim. In Jang v Boston Scientific Corp., the claimant had assigned two patents to the defendant. The defendant had agreed to pay an additional amount based on later sales of products “covered by”the assignment. Later, the claimant alleged that a product sold by the defendant fell inside the scope of the licensing agreement. The product would have been covered by the agreement if it infringed the assigned patent. 37 As the 540 | HESS complaint relied on the infringement of patents, the Court of Appeals confirmed federal jurisdiction over the contractual claim to avoid conflicting decisions. 38 In Microsoft v Motorola, Judge Robart examined the relevant patents and patent families in detail to determine the royalties. He concluded the technical value of six patent families to the H.264 Standard. 39 Invalid patents are likely not valuable or even essential. Determining the technical value of patent families, therefore, contains an implicit decision on patent validity. The court did not stop there and “examine[d] the importance of Motorola's H.264 SEPs not only to the H.264 Standard itself, but also with respect to Microsoft's products.” 40 As 14 out of the 16 H.264 SEPs in question contributed to a function called interlaced video, the court examined the extent to which Microsoft's products utilized interlaced video. It found that for the most relevant products, Windows and the Xbox, there was hardly any use for interlaced video, as only minor functionalities, which most consumers did not use, supported the H.264 Standard. The Windows Phone did not support the H.264 Standard at all. 41 In examining the importance and utility of the SEPs to Microsoft's products, Judge Robart decided whether and to what extent Microsoft infringed Motorola's SEPs. Under the above‐mentioned principles on 28 USCA § 1338 (a), resolution of the contractual claim relied substantially on questions of patent law. Moreover, the court acknowledged that the 18 US patents on which it relied to calculate the royalty rate, have had many foreign counterparts essential to the H.264 Standard. 42 That the assessment was limited exclusively to the US patents therefore seems hardly plausible. How can a court assess the utility of inventions protected by foreign patents without implicitly ruling on the foreign patents? 43 4.1.3 |Summary Regardless of whether a national court has jurisdiction to adjudicate a global SEP portfolio, the Court of Appeals' comparison with Medtronic and the case law on anti‐suit injunctions enforcing jurisdiction agreements fails for two reasons. First, the court did not examine whether Motorola was more likely than not to have breached its FRAND Obligation, that is, whether Microsoft had a right not to be sued abroad. 44 Second, there is no contractual umbrella over the patent law claims, as the decision on the merits substantially concerned patent law. Therefore, the United States and German proceedings did not concern the same issue. 45 4.2 |Grounds for relief Under the strict approach, courts will almost exclusively grant anti‐suits injunctions on two grounds: (i) to protect the court's jurisdiction and (ii) to protect important US public policies. An (anti‐)anti‐suit injunction to protect the court's jurisdiction may be appropriate to protect the injunction claimant from a foreign anti‐suit injunction. 46 The most important public policies, which may be protected by anti‐suit injunctions, are the protection of final judgments (res iudicata) 47 and the protection of choice of court and arbitration agreements. 48 Courts applying the lax approach will additionally grant anti‐suit injunctions to protect the injunction claimant from what the court considers “vexatious or oppressive”foreign proceedings or on other equitable grounds. As the mere inconvenience for parties and witnesses to participate in parallel proceedings in courts of different countries is considered vexatious and oppressive, 49 the lax approach will usually provide injunctive relief. In Microsoft v Motorola, the anti‐suit injunction was justified on the grounds of protecting the court's jurisdiction. As Motorola had claimed injunctive relief in California and in Germany, there would have been a risk of inconsistent judgments. Moreover, it would only be clarified in the breach of contract proceedings, whether Motorola was entitled to injunctive relief. Hence, “Motorola's actions have frustrated this court's ability to adjudicate issues properly before it. Without the issuance of an anti‐suit injunction, the integrity of the action HESS | 541 before this court will be lessened.”Additionally, the delay in filing the German infringement claim had indicated a forum shopping, rendering the German action vexatious and oppressive. 50 4.3 |Comity Finally, a court must consider the impact of the anti‐suit injunction on comity. Comity is a self‐imposed obligation to respect the courts, judgments, and laws of other nations. The Supreme Court described comity 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.” 51 One rationale is that foreign courts may in turn recognize and enforce the decisions of US courts. Under the strict approach, anti‐suit injunctions will only be granted under exceptional circumstances, as they interfere with a foreign court's process. 52 This is reflected by the limited grounds for relief. The Sixth Circuit questioned whether any public policy of a state could ever justify a foreign anti‐suit injunction. 53 If the dispute affects the national interests of other nations, courts must be particularly mindful. 54 In such cases, only the most compelling national public policies can justify an anti‐suit injunction. The D.C. Circuit additionally weighs the interests of the United States against the national interests of the jurisdiction affected by the anti‐suit injunction. 55 Courts applying the lax approach “decline […] to genuflect before a vague and omnipotent notion of comity every time that [a court] must decide whether to enjoin a foreign action.” 56 The Ninth Circuit's standard is whether the injunction's impact on comity is “tolerable.” 57 If the anti‐suit injunction serves to enforce a contract between two private parties, it would have little impact on comity, if any. 58 The Fifth and Seventh Circuits set even lower standards. 59 There would have to be concrete evidence that the specific anti‐suit injunction would affect comity. As long as no foreign state complains to the US court, the impact on comity is negligible, according to Justice Posner. 60 In Laker v Sabena, one of the most authoritative cases on anti‐anti‐suit injunctions to date, Justice Wilkey emphasized the importance of comity. He criticized that US courts largely ignore comity. Back in 1984, he found, “[s]cholary criticism has intensified.” 61 Over the past decades, criticism on the lax approach has further intensified. 62 4.3.1 |Reasoning in Microsoft v Motorola In Microsoft v Motorola, a negligible impact on comity was mainly explained by the contractual nature of the dispute. It served to enforce a contract between two US companies. 63 The Court of Appeals considered the fact that German courts do not recognize contractual obligations of the SEP owner towards the implementer to be irrelevant. Would the impact on comity be intolerable if courts in the other jurisdiction answer legal issues differently, “there could virtually never be a foreign anti‐suit injunction.” 64 Both courts also relied on the sequence, in which the claims were filed. Comity concerns would be mitigated because the German action was initiated even though the dispute was pending in the United States. 65 4.3.2 |Discussion The Court of Appeals relied on its assumption that the anti‐suit injunction serves to enforce a contract. As seen, the court has neither explained, when an obligation not to claim injunctive relief arises from the FRAND Commitment, nor if the obligation existed because Microsoft was likely to be a willing licensee. The second assumption, that SEP disputes are purely commercial disputes, is also questionable. With an unsubstantiated classification as a contractual dispute, the Court of Appeals attempts to undermine the principle of territoriality in patent law. 542 | HESS US courts consider the technical importance of the patents and the extent to which the implementer utilizes the relevant functions in determining the royalty rate. This assessment is interconnected with patent law. The court did not consider that patent law only operates domestically and that courts must pay particular caution if their judgment on patents affects other jurisdictions. In Microsoft v AT & T, the Supreme Court warned, “[t]he presumption that United States law governs domestically but does not rule the world applies with particular force in patent law.” 66 US courts shall take into account the interest of foreign jurisdictions in the protection of their national patents. This is what a district court did in Optis v Apple in declining jurisdiction to assess whether the SEP owner (Optis) was FRAND compliant and whether the implementer (Apple) was an unwilling licensee and therefore not entitled to raise the FRAND defence in the United States. The district court declined jurisdiction, as, “[l]ike claims for foreign patent infringement, claims asking the Court to pass upon foreign obligations under foreign laws related to foreign patents [the FRAND Obligation] are best left to the courts of those foreign countries.” 67 In granting an anti‐suit injunction, the Court of Appeals ignored Germany's national interest in the effective protection of German and European patents. 68 Moreover, German courts assess the SEP owner's licensing obligation under antitrust law. US case law recognizes that courts in any country whose markets are affected by abuse of dominance or by a conspiracy should be able to decide on the legal consequences. 69 As a district court has recognized, a “breach of contract judgment that relies on private law will not affect a GWB 70 —or EC Treaty‐based antitrust analysis that relies on public law.” 71 Even if one were to stick to the classification as a contractual dispute, SEP disputes involve national interests. 72 For example, Chinese courts allegedly determine low FRAND royalties to strengthen the domestic industry. 73 The political significance is illustrated by former US President Trump's veto on the acquisition of Qualcomm by Broadcom. Qualcomm is one of the most important SEP owners. The Treasury Department stated that the acquisition of Qualcomm through (formerly) Singapore‐based Broadcom could reduce US influence on telecommunications infrastructure and thus harm national security: Given well‐known national security concerns about Huawei and other Chinese telecommunication companies, a shift to Chinese dominance in 5G would have substantial negative national security consequences for the United States. 74 National security concerns had little significance in Microsoft v Motorola, as both parties were US companies. However, the District Court paid no attention to the national interests at stake in Huawei v Samsung 75 which ignored the political dimension of the SEP dispute between two foreign companies. 76 It is also questionable to attach any significance to the chronological order in which the domestic and foreign actions were filed. Although some authority supports this criterion, 77 it cannot be relevant in SEP disputes. The SEP owner is obligated by its FRAND Obligation to claim injunctive relief as late as possible. If Motorola had filed the German action six months earlier, before Microsoft initiated the contractual action in California, filing of the German action would likelier have violated the FRAND Obligation. In this case, the court would have been less reluctant to grant an anti‐suit injunction. Furthermore, Motorola would have jeopardized its chances to obtain injunctive relief in Germany, as Microsoft was more likely to be considered a willing licensee at an earlier point. At least where the SEP dispute involves a foreign party, the anti‐suit injunction's impact on comity is not tolerable. Even under the Ninth Circuit's standard, the issuance of an anti‐suit injunction in such cases appears as an abuse of discretion. 4.4 |Summary Until 2019, foreign courts and governments have tolerated anti‐suit injunctions. This may be because they were mostly issued in disputes which were simply too unimportant to risk a clash of jurisdictions. Because of the HESS | 543 5 Oppo v Sharp, (2020) Zui Gao Fa Zhi Min Xia Zhong No. 517 (Supreme People's Court of the People's Republic of China, 2021); Unwired Planet v Huawei [2020] UKSC 37; Microsoft v Motorola, 795 F.3d 1024, 1048 (9th Cir. 2015). 6 Cf. Owusu v Jackson [2005] CJEU, Case C‐281/02, ECLI:EU:C:2005:120, at [41]–[46]; Trevor C. Hartley, International Commercial Litigation, 3rd ed. 2020, pp. 245–246. 7 Cf. Airbus GIE v Patel [1999] 1 A.C. 119, 131–133 (HL). 8 Cf. HRC Düsseldorf, IPRax 1997, 260; French courts may recognize anti‐suit injunctions granted to enforce jurisdictional or arbitration agreements, cf. In Zone Brands, Cour de cassation, Chambre civile 1, 14 octobre 2009, Docket‐Nos. 08‐16.369, 08‐16.549. 9 Richard Fentiman in Jürgen Basedow et al. (eds), Encyclopedia of Private Int'l Law Vol. 1 (2017), p. 82. 10 For anti‐anti‐suit injunctions granted by courts in the UK cf. Sabah Shipyard (Pakistan) v Islamic Republic of Pakistan [2002] EWCA Civ 1643 [2004] 1 CLC 149; Tonicstar v American Home Assurance [2004] EWHC 1234 (Comm); Ecom Agroindustrial v Mosharaf Composite Textile Mill [2013] EWHC 1276 (Comm); IPCom v Lenovo [2019] EWHC 3030 (Pat); for further references, cf. Thomas Raphael, The Anti‐Suit Injunction, 2d ed. 2019, para. 5.60. For anti‐anti‐suit injunctions granted by courts in the United States, cf. Laker v Sabena, 731 F.2d 901 (DC Cir. 1984); Mutual Service Ins. v Frit Industries, 805 F.Supp. 919, 925 (M.D. Alab. 1992), aff'd 3 F.3d 442 (11th Cir. 1993); Ericsson v Samsung, 2021 WL 89980 (E.D. Tex. 2021). 11 Jorge L. Contreras, ‘The New Extraterritoriality: FRAND Royalties, Anti‐Suit Injunctions and the Global Race to the Bottom in Disputes over Standards‐Essential Patents’, (2019) 25 BUSTL 251, 286; Thomas F. Cotter, ‘Is Global FRAND Litigation Spinning Out of Control?’, 2021 POLJ 1, 23; Damien Geradin and Dimitrios Katsifis, The Use and Abuse of Anti‐Suit Injunctions in SEP Litigation (2021), pp. 3, 27 (available via SSRN <https://papers.ssrn.com/sol3/papers.cfm? abstract_id=3807899> accessed June 13, 2022); Haris Tsilikas, ‘Anti‐Suit Injunctions for Standard‐Essential Patents: The Emerging Gap in International Patent Enforcement’, (2021) 16 JIPLP 729, 736‐737; Igor Nikolic, Licensing Standard Essential Patents, 2021, p. 221. 12 †Beijing Fito Medical v Wright Medical Technology, 763 Fed.Appx. 388, 399 (6th Cir. 2019); Rancho Holdings v Manzanillo Associates, 435 Fed.Appx. 566 (8th Cir. 2011); Goss Int'l v Man Roland, 491 F.3d 355, 359–360 (8th Cir. 2007); Quaak v KPMG‐B, 361 F.3d 11, 17 (1st Cir. 2004); General Electric v Deutz AG, 270 F.3d 144, 161 (3d Cir. 2001); Computer Associates Int'l v Altai, 126 F.3d 365, 372 (2d Cir. 1997); Gau Shan v Bankers Trust, 956 F.2d 1349, 1354 (6th Cir. 1992); China Trade v M.V. Choong Yong, 837 F.2d 33, 36–37 (2d Cir. 1987); Laker Airways v Sabena, 731 F.2d 909, 927‐28 (D.C. Cir. 1984). 13 MWK Recruiting Incorporated v Jowers, 833 Fed.Appx. 560, 562 (5th Cir. 2020); H‐D Michigan v Hellenic Duty Free Shops, 2012 WL 404895, *2 (E.D. Wisc. 2012), aff'd 694 F.3d 827 (7th Cir. 2012); Gallo Winery v Andina Licores, 446 F.3d 984, 991 (9th Cir. 2006); Kaepa v Achilles, 76 F.3d 624, 627 (5th Cir. 1996); Allendale v Bull Data Systems, 10 F.3d 425, 431 (7th Cir. 1993). 14 Cf. Huawei v Samsung, 2018 WL 1784065 (N.D. Cal. 2018); Apple v Qualcomm, 2017 U.S. Dist. LEXIS 145835 (S.D. Cal. 2017); TCL v Ericsson, 2015 U.S. Dist. LEXIS 191512 (C.D. Cal. 2015). 15 Microsoft v Motorola, 696 F.3d 872, 882 (9th Cir. 2012); Canon Latin America v Lantech, 508 F.3d 597, 601 (11th Cir. 2007); Paramedics v GE Medical Systems, 369 F.3d 645, 652 (2d Cir. 2004). 16 Jolen v Kundan Rice Mills, 2019 WL 1559173 *2 (S.D.N.Y. 2019); AU New Haven v YKK, 2018 WL 2128373, *3 (S.D.N.Y. 2018). 17 Canon Latin America v Lantech, 508 F.3d 597, 601 (11th Cir. 2007). 18 Stein Associates v Heat & Control, 748 F.2d 653, 658 (Fed. Cir. 1984); Canadian Filters v Lears Siegler, 412 F.2d 577, 579 (1st Cir. 1969); Sperry Rand v Sunbeam, 285 F.2d 542, 545 f. (7th Cir. 1961); Zynga v Vostu USA, 816 F.Supp. 2d 824, 829 (N.D. Cal. 2011); Black & Decker v Sanyei America, 650 F.Supp. 406, 410 (N.D. Ill. 1986); Rauland‐Borg v TCS, 1995 WL 31569, *4 (S.D.N.Y. 1995); This is also recognized in English Law, cf. Apple Corps v Apple Computer [1992] R.P.C. 70, 77 (1990); IPCom v Lenovo [2019] EWHC 3030 (Pat), at [48–49]; James J. Fawcett and Paul Torremanns, Intellectual Property and Private Int'l Law (2011), para. 6.133. 19 Medtronic v Catalyst Research, 518 F.Supp. 946, 955 (D. Minn. 1981). 20 Microsoft v Motorola, 696 F.3d 872, 883 (9th Cir. 2012); Medtronic v Catalyst Research, 518 F.Supp. 946, 955 (D. Minn. 1981). 21 Medtronic v Catalyst Research, 518 F.Supp. 946 (D. Minn. 1981); cf. Fairchild Semiconductors v 3D Semiconductors, 589 F.Supp.2d 84, 97–100 (D. Me. 2008); Warner & Swasey v Salvagnini Transferica, 633 F.Supp 1209 (W.D.N.Y. 1986), aff'd 806 F.2d 1045 (Fed. Cir. 1986). 550 | HESS 22 Beijing Fito Medical v Wright Medical Technology, 763 Fed.Appx. 388, 399‐400 (6th Cir. 2019); WTA Tour v Super Slam, 339 F.Supp.3d 390, 405 (S.D.N.Y. 2018). 23 Microsoft v Motorola, 696 F.3d 872, 884 (9th Cir. 2012). 24 Id. 25 ITU‐T Licensing Declaration Form <https://www.itu.int/oth/T0404000003/en> accessed June 18, 2022. 26 Unwired Planet v Huawei [2020] UKSC 37, at [7]. 27 Cf. Kristian Henningsson, Int'l Rev. of IP and Competition Law (IIC) 2016, 438, 463, 466. 28 Supra note 1. 29 Microsoft v Motorola, 696 F.3d 872, 884 (9th Cir. 2012). 30 Gallo Winery v Andina Licores, 446 F.3d 984, 991 (9th Cir. 2006); Paramedics v GE Medical Systems, 369 F.3d 645 (2d Cir. 2004); Medtronic v Catalyst Research, 518 F.Supp. 946, 953, 955 (D. Minn. 1981), aff'd 664 F.2d 660, 665 (8th Cir. 1981). 31 Canon Latin America v Lantech, 508 F.3d 597, 600–602 (11th Cir. 2007); Fisher & Company v Fine Blanking & Tool, 2019 WL 5853539, *2 (E.D. Mich. 2019). 32 Microsoft v Motorola, 696 F.3d 872, 883 (9th Cir. 2012). 33 Id., internal citations omitted. 34 Medtronic v Catalyst Research, 518 F.Supp. 946, 949 (D. Minn. 1981). 35 Id., 951–953. 36 Board of Regents v Nippon, 414 F.3d 1358, 1363–1364 (Fed. Cir. 2005); AT & T v Integrated Network, 972 F.2d 1321, 1322 (Fed. Cir. 1992). 37 Jang v Boston Scientific, 532 F.3d 1330, 1332, 1336 (Fed. Cir. 2008). 38 Id., 1334, n. 5, aff'd 767 F.3d 1334, 1336–1338 (Fed. Cir. 2014); for similar cases, cf. U.S. Valves v Dray, 212 F.3d 1368, 1371 (Fed. Cir. 2000); Ameranth v ChowNow, 2021 WL 3686056, *11–12 (S.D. Cal. 2021). 39 Microsoft v Motorola, 2013 WL 2111217, paras. 163–256 (W.D. Wash. 2013); cf. In re Innovatio, 2013 WL 5593609, *43 (N.D. Ill. 2013), where the court established a “moderate‐high importance”of Innovatio's SEPs. 40 Microsoft v Motorola, 2013 WL 2111217, paras. 257–406 (W.D. Wash. 2013). 41 Id., paras. 261–302. 42 Id., para. 163. 43 This question was raised but remained unanswered in Optis v Apple, 2020 U.S. Dist. LEXIS 36104, *11 (E.D. Tex. 2020). 44 Above at 4.1.1. The same applies to the anti‐suit injunction granted in Huawei v Samsung, 2018 WL 1784065, *8‐9 (N.D. Cal. 2018). 45 Cf. InterDigital v Xiaomi, I.A. 8772/2020 in CS (COMM) 295/2020, para. 109 (Delhi High Court, 2021), finding the Court of Appeals' reasoning “unacceptable.” 46 Laker v Sabena, 731 F.2d 901, 930 (DC Cir. 1984); Ericsson v Samsung, 2021 WL 89980 *4 (E.D. Tex. 2021); Mutual Service Cas. Ins. v Frit Industries, 805 F.Supp. 919, 925 (M.D. Alab. 1992); Owens‐Illinois v Webb, 809 S.W.2d 899, 902 (Tex. App. 1991). 47 Gau Shan v Bankers Trust, 956 F.2d 1349, 1356 (6th Cir. 1992); ChinaTrade v M.V. Choong Yong, 837 F.2d 33, 36 (2d Cir. 1987); Gary B. Born and Peter B. Rutledge, International Civil Litigation in US Courts, 6th ed. 2018, p. 583. 48 Supra note 22. 49 Kaepa v Achilles, 76 F.3d 624, 627‐28 (5th Cir. 1996); Allendale v Bull Data Systems, 10 F.3d 425, 431 (7th Cir. 1993); Seattle Totems v National Hockey League, 652 F.2d 852, 855‐56 (9th Cir. 1981). 50 Microsoft v Motorola, 871 F.Supp.2d 1089, 1100 (W.D. Wash. 2012), aff'd 696 F.3d 872, 886 (9th Cir. 2012). 51 Hilton v Guyot, 159 U.S. 113, 164, 16 S.Ct. 139 (1895). 52 Supra note 12. 53 Gau Shan v Bankers Trust, 956 F.2d 1349, 1358 (6th Cir. 1992). 54 Fisher & Company v Fine Blanking & Tool, 2019 WL 5853539, *2 (E.D. Mich. 2019); Michael D. Schimeck, ‘Anti‐Suit and Anti‐Anti‐Suit Injunctions: A Proposed Texas Approach’, (1993) 45 Baylor L.R. 499, 506; Thomas E. Burck, ‘Gau Shan HESS | 551 Co. v. Bankers Trust Co.: What Should be the Role of International Comity in the Issuance of Antisuit Injunctions’, (1993) 18 NCJICR 475, 488; Laura M. Salava, (1994) 205 JL 267, 270. 55 Laker Airways v Sabena, 731 F.2d 909, 927‐28 (D.C. Cir. 1984). 56 Kaepa v Achilles, 76 F.3d 624, 627 (5th Cir. 1996). 57 Microsoft v Motorola, 696 F.3d 872, 886 (9th Cir. 2012); Gallo Winery v Andina Licores, 446 F.3d 984, 996 (9th Cir. 2006). 58 Microsoft v Motorola, 696 F.3d 872, 888 (9th Cir. 2012); Applied Medical v Surgical, 587 F.3d 909, 921 (9th Cir. 2009); Gallo Winery v Andina Licores, 446 F.3d 984, 994 (9th Cir. 2006). 59 Kaepa v Achilles, 76 F.3d 624, 630‐633 (5th Cir. 1996); Allendale v Bull Data Systems, 10 F.3d 425, 431 (7th Cir. 1993). 60 Allendale v Bull Data Systems, 10 F.3d 425, 431 (7th Cir. 1993). 61 Laker v Sabena, 731 F.2d 901, 950 (DC Cir. 1984). 62 Teresa D. Baer, ‘Injunctions Against the Prosecution of Litigation Abroad: Towards a Transnational Approach’, (1984) 37 SLR 155, 173; Trevor C. Hartley, ‘Comity and the Use of Antisuit Injunctions in International Litigation’, (1987) 35 AJL 487, 509; George A. Bermann, ‘The Use of Antisuit Injunctions in International Litigation’, (1990) 28 CJL 589, 630–631; Thomas E. Burck, (n 52), 475, 488–489; Michael D. Schimeck, (n 52), 520–522; Haig Najarian, ‘Granting Comity its Due: A Proposal to Revive the Comity‐Based Approach to Transnational Antisuit Injunctions’, (1994) 68 SJLR 961, 983–985; Laura M. Salava, ‘Balancing Comity with Antisuit Injunctions: Considerations Beyond Jurisdiction’, (1994) 20 JL 267, 269–270; Steven R. Swanson, ‘The Vexatiousness of a Vexation Rule: International Comity and Antisuit Injunctions’, (1996) 30 GWJILE 1, 33, 36–37; Eric Roberson, ‘Comity be Damned: The Use of Antisuit Injunctions Against the Courts of a Foreign Nation’, (1998) 147 UPLR 409, 433; John Ray Phillips III., ‘A Proposed Solution to the Puzzle of Antisuit Injunctions’, (2002) 69 UCLR 2007, 2023–2024; N. Jansen Calamita, 'Rethinking Comity: Towards a Coherent Treatment of International Parallel Proceedings’, (2006) 27 UPJIEL 601, 680; Kathryn E. Vertigan, ‘Foreign Antisuit Injunctions: Taking a Lesson From the Act of State Doctrine’, (2007) 76 GWLR 155, 180; Samantha Koeniger and Richard Bales, ‘When a U.S. Domestic Court can Enjoin a Foreign Court Proceeding’, (2014) 22 CJICL 473, 491–495; Trevor C. Hartley, International Commercial Litigation, 3rd ed. 2020, p. 280; cf. Eli Greenbaum, ‘No Forum to Rule Them All: Comity and the Conflict in Transnational FRAND Disputes’, (2019) 94 WLR 1085, 1100; Haris Tsilikas, (n 11), 736 (both referring to SEP disputes). 63 Microsoft v Motorola, 696 F.3d 872, 888 (9th Cir. 2012). 64 Id. 65 Microsoft v Motorola, 871 F.Supp.2d 1089, 1101 (W.D. Wash. 2012), aff'd 696 F.3d 872, 887–888 (9th Cir. 2012). 66 Microsoft v AT & T, 550 U.S. 437, 454–455 (2007). 67 Optis v Apple, 2020 U.S. Dist. LEXIS 36104, *9 (E.D. Tex. 2020). 68 HRC Munich, GRUR 2020, 379, para. 57; RC Munich, BeckRS 2019, 25536, paras. 58–61; cf. Dicky King Fung Tsang and Jyh‐An Lee, The Ping‐Pong Olympics in Antisuit Injunction in FRAND (2021), pp. 28–29, (available via SSRN <https:// papers.ssrn.com/sol3/papers.cfm?abstract_id=3968645> accessed June 13, 2022) forthcoming in (2022) 28 MTLR. 69 Laker v Sabena, 731 F.2d 901, 932‐933 (DC Cir. 1984). 70 Gesetz gegen Wettbewerbsbeschränkungen (German Competition Act). 71 SynCardia Systems v MEDOS Medizintechnik, 2008 WL 11339957, *3 (D. Az. 2008). 72 Apple v Qualcomm, 2017 U.S. Dist. LEXIS 145835, *53–54. (S.D. Cal. 2017); Greenbaum, (n 62), 1100‐1103; Tsang and Lee, (n 68), pp. 16–17. 73 Adam Mossoff, Brief as Amicus Curiae in Support of Claimant in Ericsson v Samsung, Case‐No. 2:20‐cv‐380‐JRG (E.D. Tex. 2021), pp. 7–9; D. Daniel Sokol and Wentong Zheng in Jorge L. Contreras (ed), Cambridge Handbook of Tech. Standard. Law Vol. 1 (2017), pp. 306, 316–318; Tsang and Lee, (n 68), p. 35. 74 Department of the Treasury, Public Letter dated 5 March 2018 <https://www.sec.gov/Archives/edgar/data/804328/ 000110465918015036/a18-7296_7ex99d1.htm> accessed June 11, 2022 75 Huawei v Samsung, 2018 WL 1784065, *11–12 (N.D. Cal. 2018). 76 Tsang and Lee, (n 68), pp. 22–23. 77 Applied Medical v Surgical, 587 F.3d 909, 920 (9th Cir. 2009); Kaepa v Achilles, 76 F.3d 624, 627 (5th Cir. 1996). In Huawei v Samsung, 2018 WL 1784065, *12 (N.D. Cal. 2018), the court found that the anti‐suit injunction “would not intolerably impact comity,”as the US action was filed minutes or hours earlier. 552 | HESS 78 IPCom v Lenovo [2019] EWHC 3030 (Pat); Cour d'appel de Paris, 3 Mars 2020, RG 19/21426 (Lenovo v IPCom); RC Munich, BeckRS 2019, 25536 (Nokia v Daimler/Continental). 79 Ericsson v Samsung, 2021 WL 89980, *5 (E.D. Tex. 2021). 80 Contreras, (n 11), 278–279; cf. Geradin and Katsifis, (n 11), p. 12. 81 Press Release of the Supreme People's Court <http://ipc.court.gov.cn/zh-cn/news/view-1056.html> accessed December 23, 2021; cf. Jorge L. Contreras, Peter K. Yu, and Yu Yang, Transplanting Anti‐Suit Injunctions (Draft of 6 November 2021, available via SSRN <https://papers.ssrn.com/sol3/papers.cfm?abstract_id=3937716> accessed January 4, 2022, forthcoming (2022) 71 AULR, pp. 41–42. 82 Geradin and Katsifis, (n 11), pp. 9–10; Brief of IP Law professors as amici curiae, March 1, 2021, Ericsson v Samsung, Case‐No. 21‐1565, p. 16 (available via SSRN <https://papers.ssrn.com/sol3/papers.cfm?abstract_id=3802235> accessed December 24, 2021); for a discussion of Chinese anti‐suit injunctions cf. Tsang and Lee, (n 68), pp. 27–37. 83 Huawei v Conversant, (2019) Zui Gao Fa Zhi Min Zhong 732, 733 and 734 No 1 (Supreme People's Court of the People's Republic of China, 2020). An unofficial English translation is available at <https://patentlyo.com/media/ 2020/10/Huawei-V.-Conversant-judgment-translated-10-17-2020.pdf> accessed June 11, 2022); Tsang and Lee, (n 68), pp. 28–29, 35–37. 84 Xiaomi v InterDigital, (2020) E 01 Zhi Min Chu No. 169 (Wuhan Intermediate People's Court, 2020); Tsang and Lee, (n 68), p. 32. 85 Cf. the anti‐anti‐suit injunctions granted in InterDigital v Xiaomi, I.A. 8772/2020 in CS (COMM) 295/2020 (Delhi High Court, 2021), and RC Munich, GRUR‐RS 2021, 3995. 86 RC Düsseldorf, BeckRS 2021, 36218 (HEVC Advance v Xiaomi), vacated on appeal, cf. HRC Düsseldorf, GRUR 2022, 318; RC Munich, GRUR‐RS 2021, 17662 (IP Bridge v Huawei); RC Munich, GRUR‐RS 2021, 3995 (InterDigital v Xiaomi); a fourth one was granted by the RC Munich in Sharp v Oppo, but was not enforced, cf. Contreras, Yu, and Yu, (n 81), p. 32. 87 HRC Munich, GRUR 2020, 379; RC Munich, BeckRS 2019, 25536. 88 Ulrich Magnus in Gerhard Dannemann and Reiner Schulze (eds), German Civil Code—Commentary (2020), Sec. 823, para. 3. 89 Cf. FCJ, GRUR 2016, 1257, para. 24; NJW 2004, 3102, 3105. 90 HRC Munich, GRUR 2020, 379, para. 55; RC Munich, BeckRS 2019, 25536, paras. 56–58; RC Düsseldorf, BeckRS 2021, 36218, paras. 23–26. 91 Ulrich Magnus, (n 88), paras. 39–40. 92 FCJ, NJW 2020, 399, para. 44; GRUR 2018, 832, para. 76; NJW 2009, 1262, paras. 12–13. 93 FCJ, NJW 2020, 399, paras. 44–45; HRC Nuremberg, RIW 1993, 412, 413; RC Konstanz, Beck RS 2011, 11373; the RC Munich seems to disagree, RC Munich, BeckRS 2019, 25536, paras. 62–65. The applicability to foreign proceedings is also controversial in German literature. For further references, cf. Michael Stürner, ‘Domestic Legal Protection Against Foreign Judgements/Inländischer Rechtsschutz gegen ausländische Urteile, Funktion und Reichweite von § 826 BGB als Abwehrinstrument gegen rechtskräftige Entscheidungen insbesondere aus dem außereuropäischen Ausland’, (2007) 71 RabelsZ 597, 602. 94 RC Düsseldorf, BeckRS 2021, 36218, para. 30; RC Munich, BeckRS 2019, 25536, para. 62. 95 RC Munich, BeckRS 2019, 25536, para. 62. 96 Id., para. 61. 97 HRC Munich, GRUR 2020, 379, para. 55. 98 RC Munich, GRUR‐RS 2021, 17662, para. 29; GRUR‐RS 2021, 3995, para. 55. 99 RC Düsseldorf, BeckRS 2021, 36218, para. 30. 100 HRC Düsseldorf, IPRax 1997, 260, 261. 101 RC Düsseldorf, BeckRS 2021, 36218, para. 32. 102 Id., paras. 34–36. 103 Id., para. 36. 104 Id. 105 HRC Düsseldorf, GRUR 2022, 318, paras. 16, 21. HESS | 553 106 Id., paras. 11–13, 16. 107 Id., paras. 21–22; cf. FCJ GRUR 2010, 253; GRUR 1998, 587, 589. 108 HRC Düsseldorf, GRUR 2022, 318, paras. 25–26. 109 Id., paras. 32–42. 110 According to its wording, Sec. 1004 BGB only protects property. Other absolute rights are protected by analogy, cf. Ulrich Magnus, (n 88), Sec. 1004, para. 2. 111 HRC Munich, GRUR 2020, 379, para. 56; RC Munich, GRUR‐RS 2021, 3995, para. 86. 112 FCJ, GRUR 2021, 607, para. 50; GRUR 2015, 603, para. 17. 113 RC Munich, GRUR‐RS 2021, 17662, para. 37. 114 RC Munich, GRUR‐RS 2021, 3995, para. 90; GRUR‐RS 2021, 17662, paras. 34, 37. 115 RC Düsseldorf, BeckRS 2021, 36218, para. 40. 116 Id., paras. 47–51; The appeal on this finding was successful. The Injunction Defendant and its affiliates had applied for an anti‐suit injunction only once, cf. HRC Düsseldorf, GRUR 2022, 318, paras. 37–39. 117 RC Düsseldorf, BeckRS 2021, 36218, paras. 42–46. 118 Cf. FCJ, GRUR 2000, 151, 152; Klaus Grabinski and Carsten Zülch in Benkard PatG, 11th ed. 2015, Sec. 139, para. 153c. 119 RC Munich, GRUR‐RS 2021, 3995, paras. 84, 86; GRUR‐RS 2021, 17662, paras. 65–66; Beck RS 2019, 25536, para. 90; RC Düsseldorf, Beck RS 2021, 36218, para. 56. 120 Maximilian Haedicke, ‘Anti‐Suit Injunctions, FRAND Policies and the Conflict Between Overlapping Jurisdictions’, GRUR Int. 2022, 101, 110. 121 Id. 122 Supra note 93. 123 Laker v Sabena, 731 F.2d 901, 939 (DC Cir. 1984). 124 Besix [2002] CJEU, Case C‐256/00, ECLI:EU:C:2002, at [24–26]; Roche Nederland BV v Primus [2006] CJEU, Case C‐ 539/03, ECLI:EU:C:2006:458, at [37]. 125 Owusu v Jackson [2005] CJEU, Case C‐281/02, ECLI:EU:C:2005:120, at [41]‐[46]. This applies at least where a non‐ member state is the natural forum or the “forum conveniens,”cf. Cheshire, North & Fawcett, Private Int'l Law, 15th ed. 2017, p. 460. 126 Samengo‐Turner v J & H Marsh & McLennan (Services) Ltd [2007] EWCA Civ 723, [2007] IL Pr 52. 127 Cheshire, North & Fawcett, Private Int'l Law, 15th ed. 2017, p. 482. 128 Cf. Turner v Grovit [2004] CJEU, Case C‐159/02, ECLI:EU:C:2004:228; Allianz SpA v West Tankers [2009] CJEU, Case C‐ 185/07, ECLI:EU:C:2009:69; Christopher Knight, ‘Owusu and Turner: The Shark in the Water’, (2007) 66 Cambridge LJ, 288, 301. 129 Cf. General Star International Indemnity v Stirling Cooke Brown Reinsurance [2003] EWHC 3 (Comm), [2003] IL Pr 19, at [8]; Gita F. Rothschild, ‘Forum Shopping’, (1998) 24 Litigation, 40, 74. 130 Sascha Vander and Christian Steigüber in Jan Busche et al. (eds), TRIPS—Kommentar, 2d ed. 2013, Art. 41, para. 3; Justin Malbon, Charles Lawson, and Mark Davison, The WTO Agreement on Trade‐Related Aspects of Intellectual Property—A Commentary (2014), para. 41.08. 131 US—Sec. 211 Appropriations Act, WT/DS176/AB/R, para. 215. 132 Supra note 62. 133 Supra note 12. 134 Cf. Katrin Cremers et al., ‘Patent Litigation in Europe’, (2017) 44 EJLE, 1, 13; Julia Schönbohm and Natalie Ackermann‐ Blome, ‘Products, Patents, Proportionality ‐How German Patent Law Responds to 21st Century Challenges’, GRUR Int. 2020, 578. 135 Léon E. Dijkman, ‘Does the Injunction Gap Violate Implementers' Fair Trial Rights Under the ECHR?’, GRUR Int. 2021, 215, 220; Peter Georg Picht and Anna‐Lena Karczewski in Jorge L. Contreras and Martin Husovec (eds), Injunctions in Patent Law, 2022, p. 142, 148; Arno Riße, in Sikorski (ed) Patent Law Injunctions, 2019, p. 63, 80; according to Peter 554 | HESS Tochtermann's presentation at the Event “Patents in Telecoms,”London (UCL), 27.5.2022, the RC Mannheim has stayed some infringement actions regarding SEPs. 136 Fabian Hoffmann, Stellungnahme zum Gesetzentwurf eines zweiten Patentrechtsmodernisierungsgesetzes (2021) <https:// www.bundestag.de/resource/blob/823364/097add0b3fbce63e24c8aa37b2807a84/stellungnahme-hoffmann-data. pdf> accessed May 18, 2022; Mary‐Rose McGuire, ‘Stellungnahme zum 2. PatModG: Ergänzung des § 139 I PatG durch einen Verhältnismäßigkeitsvorbehalt?’, GRUR 2021, 775; views expressed at the CIPLITEC Conference “Patentrecht: Der Anspruch auf Unterlassen nach dem 2. PatMoG,”October 21–22, 2021, cf. Peter Georg Picht and Anna‐Lena Karczewski in Jorge L. Contreras and Martin Husovec (eds), Injunctions in Patent Law, 2022, p. 142, 162. 137 Cf. FCJ GRUR 2016, 1031, para. 45. 138 Schönbohm and Ackermann‐Blome, (n 134), 580. 139 JRC, Licensing Terms of Standard Essential Patents: A Comprehensive Analysis of Cases (2017), p. 71, <https:// publications.jrc.ec.europa.eu/repository/handle/JRC104068> accessed June 12, 2022; cf. Peter Georg Picht, Wirtschaft und Wettbewerb 2018, 300, 308. 140 The FCJ and the Munich and Mannheim courts mostly determine the FRAND compliance of licence offers in a formal sense (e.g., scope of the licence, calculation methods used). The Düsseldorf courts examine the FRAND compliance of the SEP owner's offer if the implementer shows a general willingness to take a licence on FRAND terms, HRC Düsseldorf, GRUR‐RS 2022, 11779, paras. 181–182. In HRC Düsseldorf, GRUR 2017, 1219, paras. 170–178 a licence offer was deemed discriminatory. In RC Düsseldorf, GRUR‐RS 2021, 50360, paras. 169–217, the court found that the licence offer was unreasonable. 141 RC Munich, GRUR‐RS 2020, 50638, para. 203. 142 RC Mannheim, BeckRS 2012, 11804. 143 Cf. Renato Nazzini, Global Licences under Threat of Injunctions: FRAND Commitments, Competition Law and Jurisdictional Battles, 2022 (working paper, available via SSRN <https://papers.ssrn.com/sol3/papers.cfm?abstract_id=4101176> accessed May 18, 2022). 144 Cf. Torsten Körber, ‘Machtmissbrauch durch Erhebung patentrechtlicher Unterlassungsklagen?’,Wettbewerb in Recht und Praxis (WRP) 2013, 734, 737. 145 Cf. Norman V. Siebrasse et al. in Bradford Biddle et al. (ed), Patent Remedies and Complex Products: Toward a global consensus, 2019, p. 115, 146. AUTHOR BIOGRAPHY Felix K. Hess is a Doctoral Candidate (Dr. iur.) and Research Associate at Goethe University Frankfurt (Chair of Civil Law and Commercial Law, Prof. Dr. Alexander Peukert). The paper is a part of his doctoral thesis and was awarded third place in the 2021 ATRIP Essay Competition. How to cite this article: Hess, F. K. (2022). US anti‐suit injunctions and German anti‐anti‐suit injunctions in SEP disputes. The Journal of World Intellectual Property, 25, 536–555. https://doi.org/10.1111/jwip.12240 HESS | 555