Context: After reporting on the anti-antisuit injunction (AASI) that Huawei won against Netgear in the Unified Patent Court’s (UPC) Munich Local Division (LD) (December 23, 2024 ip fray article), we learned from the judgment that a similar motion had been brought shortly before (December 27, 2024 ip fray article), but did not know the names of the parties, nor was it clear whether the Munich LD’s second panel had merely deemed the motion admissible or had actually granted an AASI. A few days ago we found out the names of the parties: Avago Technologies (Broadcom) v. Realtek Semiconductor (January 12, 2025 LinkedIn post by ip fray).
What’s new: At long last, the UPC has published its December 9, 2024 AASI in Avago v. Realtek (PDF (in German)). The AASI barred Realtek from seeking a U.S. antisuit injunction (ASI) against Avago (Broadcom), by which Taiwan’s Realtek hoped to shield its customer Tesla (whose name is redacted, but we can deduce it) from European patent enforcement actions. Realtek was pursuing antisuit relief in the Delaware Chancery Court, from where the case was temporarily removed to the United States District Court for the District of Delaware, arguing that Avago was barred from its infringement lawsuits because of a license agreement and, in the alternative, a FRAND (fair, reasonable and non-discriminatory) licensing obligation concerning patents declared essential to the 1000Base-T1 Automotive Ethernet Standard. Realtek was pursuing not only an anti-enforcement injunction with respect to potential SEP injunctions, but also a general antisuit injunction (which would have prohibited Avago from bringing and pursuing infringement litigation, not merely from enforcing patent injunctions). The order reveals that the Landgericht München I (Munich I Regional Court) had also granted Avago an AASI to protect pending and potential proceedings in German national court.
Direct impact: Not long after the AASIs, Avago (Broadcom) and Tesla settled (see item 1 of this January 7, 2025 ip fray article). That is a similar pattern as in the two recent Huawei cases (first ADVA, then Netgear), where the defendants chose licensing over litigation they could not derail.
Wider ramifications: The Munich LD is now the go-to UPC venue for AASIs given that either panel has granted an AASI. It is likely, however, that other UPC panels would adopt the Munich case law. The Avago decision goes even further than the Huawei one as the non-movant was not even a party to a pending UPC infringement action, but took an initiative in an effort to bail out a customer. At some point the UPC’s Court of Appeal (CoA) will get to address the related legal questions, but it will take an AASI that is not followed by a settlement in short order.
Last week, we observed that after Judge James L. Robart’s legendary Microsoft v. Motorola Mobility ASI in 2012, which indeed defused two standard-essential patent (SEP) injunctions that were subsequently granted by the Landgericht Mannheim (Mannheim Regional Court), two other attempts to derail German patent enforcement actions had failed, both against Huawei (January 11, 2025 ip fray article). In Huawei v. Netgear, the AASI blowback came from three jurisdictions: UPC, Germany and China.
At the time of the last article on this subject, we did not know whether the AASI motion in a case with unknown parties (we were initially thinking of Advanced Standards Communications v. Xiaomi, given that such a case is also before the Munich LD’s second panel) had been granted. Now there is a clean sweep of 4 out of 4 for AASIs thwarting U.S. ASI motions during the period after Microsoft v. Motorola. This further validates our point that implementers of standards need to be realistic about their chances of a more fruitful outcome than wasting court and party resources if they pursue U.S. ASIs against German and/or UPC enforcement actions.
If not for a purely technical mistake relating to the UPC’s soon-to-be-replaced case management system (CMS), the UPC’s first two AASIs could even have come down on the very same day. But Huawei had to refile, so the decision was delayed by two days.
These are the key dates relating to Avago v. Realtek:
- May 1, 2024: Avago (Broadcom), which had previously sued Tesla in the UPC over other patents, brings yet another complaint. The patent-in-suit is EP1770912 (method and system for 10BASE-T start-up). Apparently the UPC complaint did not accuse Realtek chips of infringement, but specifically mentioned Marvell. But Tesla’s exhaustion defense was not confined to Marvell chips.
- October 31, 2024: Realtek sues Avago (Broadcom) in the Delaware Court of Chancery, a state court of equity (injunctions), seeking a U.S. decision barring Avago from pursuing patent infringement actions against Tesla because of a Realtek-Avago license agreement, but also raising FRAND issues regarding 10BASE-T. Realtek seeks a comprehensive ASI, or at least an anti-enforcement injunction type of ASI, and moves for expedited proceedings a week later.
- November 22, 2024: The Munich I Regional Court’s 7th Civil Chamber (Presiding Judge: Dr. Oliver Schoen (“Schön” in German)) grants Avago an AASI against Realtek.
- November 29, 2024: Avago files its AASI motion in the UPC, pointing to the Munich decision.
- December 9, 2024: The UPC’s Munich LD grants Avago an AASI as well.
- December 17, 2024: Avago withdraws a non-SEP case in the UPC, suggesting that a settlement fell in place shortly after the German and UPC AASIs.
- December 20, 2024: United States District Judge Gregory B. Williams sends Realtek v. Avago & Broadcom back to the Delaware state court where the case was originally filed (PDF). Presumably, Realtek would have withdrawn the U.S. case any moment. (At any rate, the order provides some additional clarification on the standard for removing patent cases from state to federal court.)
Both UPC AASIs came down on an ex parte basis (without hearing the other side) so as to ensure that no U.S. temporary restraining order (TRO) would come in between.
Like the same LD’s first panel two days later, the second panel based its decision on the UPC’s mandate to protect IP, describing an ASI as an unlawful interference with IP that is tantamount to infringement. and referring to Art. 47 of the EU Charter of Fundamental Rights.
Realtek’s U.S. ASI motion referred to both the Munich I Regional Court and the UPC’s Munich LD, as well as any other German national courts or Germany-based UPC divisions, as “the German courts.” That is obviously not correct, and the Avago v. Realtek AASI states what should always have been clear: there is no German UPC or German part of the UPC, but the UPC is a European court system with just some divisions being geographically located in Germany.
The panel was not concerned about a lack of urgency. The AASI motion was brought four weeks after Avago became aware of the U.S. complaint, and the panel also deemed it reasonable that Avago first obtained an AASI in German court, given that the UPC had not developed any AASI case law yet.
While the delays that could be caused by service of process to Taiwan weighed in favor of Avago’s request to decide without hearing Realtek, the court said that at least the attempt should be made to serve the injunction on Realtek. Also, the court did not want to waive the requirement for bringing a regular complaint (full-blown merits proceedings), but that presumably became unnecessary thanks to the settlement.
Panel: Presiding Judge (and here, judge-rapporteur) Ulrike Voss (“Voß” in German), Judge Dr. Daniel Voss (“Voß” in German) and Judge Dr. Walter Schober (Vienna, Austria) (July 20, 2024 ip fray interview).
Counsel for Avago: EIP’s Florian Schmidt-Bogatzky (who was admitted to the New York Bar, so he was in a particularly strong position to explain the related U.S. proceedings to the UPC).