Context: On Monday, we found out that Huawei had won an anti-antisuit injunction (AASI) against Netgear in the Unified Patent Court’s (UPC) Munich Local Division (LD) (December 23, 2024 ip fray article). Within less than 24 hours, Netgear withdrew its antisuit injunction (ASI) motion in the United States District Court for the Central District of California (December 24, 2024 ip fray article). At that point it also became known that the Supreme People’s Court (SPC) of China had ordered an AASI against Netgear. It was previously known that the Munich I Regional Court had done so as well.
What’s new: The UPC has now published a redacted version of the December 11, 2024 Huawei v. Netgear AASI (PDF (in German)). The decision explains the statutory basis for UPC AASIs (Art. 32 (1) (a) and (c) of the UPC Agreement (UPCA) as well as the EU Charter and national constitutional laws that guarantee access to justice). It furthermore reveals that Huawei’s motion was not even the first of its kind to be lodged in Munich. A little bit earlier, a different unnamed party (presumably Advanced Standards Communications) requested an AASI against an unnamed defendant (presumably Xiaomi), which was deemed admissible, though it is unknown whether it was ultimately granted.
Direct impact & wider ramifications: We may see a decision by the UPC’s Court of Appeal (CoA) soon, given that Netgear has not acted so far like a party that is interested in a qiuck settlement.
1. Statutory basis
1.1 UPCA
The Munich LD interprets the UPC’s mandate as giving it jurisdiction over injunctions related to patent infringement matters (as opposed to mere anti-infringement injunctions). This is the relevant part of the statute the decision invokes:
ARTICLE 32
Competence of the Court
(1) The Court shall have exclusive competence in respect of:
(a) actions for actual or threatened infringements of patents and supplementary protection certificates and related defences, including counterclaims concerning licences;
(b) …
(c) actions for provisional and protective measures and injunctions;
In this case, an UPC infringement action (in fact, more than one) was already pending at the time that the AASI was requested. But it appears that the Munich LD would also entertain motions for pre-emptive AASIs.
1.2 EU Charter of Fundamental Rights
The UPC is a court for member states of the European Union and bound by EU law. The AASI decision points to Art. 47 (1) and (2) of the EU Charter of Fundamental Rights:
Article 47
Right to an effective remedy and to a fair trial
Everyone whose rights and freedoms guaranteed by the law of the Union are violated has the right to an effective remedy before a tribunal in compliance with the conditions laid down in this Article.
Everyone is entitled to a fair and public hearing within a reasonable time by an independent and impartial tribunal previously established by law. Everyone shall have the possibility of being advised, defended and represented.
…
A foreign AASI would compromise the access to justice guaranteed by that article.
1.3 National constitutional guarantees
According to Art. 24(1)(e) UPCA, national law must be applied in addition to the UPC’s own governing statutes, EU law and international treaties. With respect to the German part of the patent-in-suit, the decision points to two articles of Germany’s de facto constitution named Basic Law, Art. 2(1) and Art. 19(4):
Article 2
[Personal freedoms]
(1) Every person shall have the right to free development of his personality insofar as he does not violate the rights of others or offend against the constitutional order or the moral law.
…
Article 19
[Restriction of basic rights – Legal remedies]
…
(4) Should any person’s rights be violated by public authority, he may have recourse to the courts. If no other jurisdiction has been established, recourse shall be to the ordinary courts. The second sentence of paragraph (2) of Article 10 shall not be affected by this paragraph.
Huawei is asserting that patent with respect to seven UPC member states, and the decision plausibly presumes that the other relevant member states’ national laws will come with similar guarantees concerning access to justice.
2. Precedent on admissibility: presumably Advanced Standards Communications v. Xiaomi
In the passage in which Presiding Judge (and here, judge-rapporteur) Dr. Matthias Zigann explains why he made this ex parte decision as a single judge, he notes that his division’s second panel (Presiding Judge: Ulrike Voß (“Voss” in German)) already made a decision on the principal admissibility of AASI motions on December 9, 2024 in case no. ACT_63549/2024 UPC_CFI_755/2024. The ultimate outcome (grant or denial) is unknown.
Due to some purely administrative issues, Huawei’s motion, which was originally filed on December 9, had to be refiled on December 11. Given that Huawei’s December 9 motion resulted in the assignment of no. UPC_CFI_777/2024 and the other one was assigned no. UPC_CFI_755/2024, it is certain that the previously unknown other AASI motion was filed ahead of Huawei’s.
We have not (yet) been able to obtain information from any third party, but the most likely UPC dispute in which another AASI motion was brought is Advanced Standards Communications v. Xiaomi (November 28, 2024 ip fray article). As we reported a month ago, that case was assigned to the Munich LD’s second panel. That one is a standard-essential patent (SEP) case, of which the UPC does not have many at the moment due to various settlements.
The panel in the other case consists of Presiding Judge Ulrike Voss (“Voß” in German), Judge Dr. Daniel Voss (“Voß” in German) and Judge Rute Lopes (Lisbon, Portugal). Plaintiff Advanced Standards Communications is represented by Eisenfuehr Speiser’s Dr. Michael Schneider, and Xiaomi by Hogan Lovells (counsel of record for CMS purposes: Oliver Baecker (“Bäcker” in German).
3. Continued pursuit of interim license
While Netgear withdrew its U.S. ASI request, it continues to seek a U.S. court order that would provide the router maker with an interim license. That endeavor is a long shot. The Munich LD’s AASI explicitly references the request for an ASI, but also refers more generally to anything else that would derail Huawei’s SEP enforcement in the UPC. It is unclear whether this could get Netgear into trouble (in the form of contempt sanctions) for continuing its pursuit of an interim license. Another possibility is that the UPC (as well as any other court) might ignore an interim license ordered by a U.S. court and impose sanctions if Netgear sought contract damages in the U.S. over enforcement deemed legal in other (here, European or Chinese) jurisdictions.
4. Counsel for Huawei
The order names two lawyers as Huawei’s counsel in the AASI context: Clifford Chance’s Dr. Tobias Hessel and Bird & Bird’s Christian Harmsen.