Context:
- Earlier this year, InterDigital announced enforcement actions over multimedia standard-essential patents (SEPs) against Disney (and its Hulu and ESPN+ subsidiaries) in multiple jurisdictions (February 3, 2025 ip fray article).
- In recent months, the Unified Patent Court (UPC) has handed down several anti-antisuit injunction (AASI), such as in Nokia v. SUNMI (February 20, 2025 ip fray article), a dispute that has meanwhile settled (May 20, 2025 LinkedIn post by ip fray).
What’s new: The UPC’s Mannheim Local Division (LD) has granted its first-ever AASI. After Disney sought an antisuit injunction (ASI) from the United States District Court for the Central District of California (i.e., in Los Angeles; the Southern District is basically San Diego) against InterDigital’s pursuit of preliminary injunctions (PIs) in Brazil and failed to promise not to do so with respect to certain other jurisdictions, InterDigital felt forced to shield its UPC and German infringement cases from such interference. And Disney’s U.S. PI motion aimed at InterDigital’s Brazilian cases also failed for the time being as there is no reason to fear immediate irreparable harm.
Direct impact: Disney has now lost certain tactical options. On top of that, some judges may view Disney’s pursuit of a U.S. ASI against InterDigital’s Brazilian cases as behavior typical of an unwilling licensee. In the U.S., Disney’s counterclaims underlying the PI motion were not dismissed, so Disney might try again at a later stage when the Brazilian proceedings are further along, though the question is whether at some point a Brazilian court will also enter an AASI.
Wider ramifications: Video streaming companies are increasingly expected to license the multimedia patents they use. The most recent high-profile settlement was a license deal between Nokia and Amazon (March 31, 2025 ip fray article).
Here’s the May 27, 2025 AASI in InterDigital v. Disney, which the former attached to a U.S. court filing on Monday as supplemental authority:
This May 27, 2025 decision (of which InterDigital notified the U.S. court on Wednesday May 28, 2025) is apparently the first-ever Mannheim AASI not only for the UPC but also if one includes the Landgericht Mannheim (Mannheim Regional Court). The number one AASI hotspot (both for the UPC and German national courts) is Munich, followed (within Germany) by Dusseldorf. SEP holders seeking AASIs have traditionally brought their motions in those courts where there already was some precedent. But Mannheim is a major SEP venue (again, among German courts and within the UPC system), so it was only a question of when, not if, someone would try. InterDigital did — and succeeded.
The Mannheim LD’s legal reasoning is materially consistent with the Munich LD’s recent AASIs, such as the one in Huawei v. Netgear (December 27, 2024 ip fray article). What is, however, special in this case is that Disney was not yet formally pursuing antisuit relief against a UPC case, but merely unwilling to rule it out. That type of conduct, however, has been deemed sufficient by national courts, particularly the Munich I Regional Court, to warrant an AASI.
The AASI order mentions that the parallel pursuit of an AASI from the Landgericht München I (Munich I Regional Court) for the purpose of protecting infringement actions pending in German national court does not estop InterDigital from seeking a UPC AASI, given that either judiciary will protect its own cases.
In all likelihood, the Munich I Regional Court has already entered an AASI or will do so any moment. A public holiday on Thursday (Ascension Day) might have caused a delay.
Shortly after seeing the Mannheim LD’s AASI, but presumably independently of that development, Judge Wesley L. Hsu of the United States District Court for the Central District of California adjudicated on the pleadings, without the need for an oral hearing, both InterDigital’s motion to dismiss Disney’s FRAND (fair, reasonable and non-discriminatory licensing) counterclaims in the U.S. as well as Disney’s motion for an ASI against InterDigital’s Brazilian enforcement:
Both motions were denied, and it’s fair to say that either party can live with the denial of its motion. For Disney there may be another opportunity at a point where irreparable harm in Brazil is imminent and not just hypothetical. It’s just that a pre-emptive strike in Brazil could bar a second attempt in the U.S. altogether. For InterDigital there are various ways of defeating Disney’s FRAND counterclaims, and a motion to dismiss is only the fastest (and at the same time the least likely to succeed) vehicle. Summary judgment will present another opportunity.
All in all, it is now probably just a matter of time until when InterDigital will get leverage over Disney from SEP injunctions in key markets. There will be a settlement, and what has happened now may or may not lead to one in the near term.
Court and counsel
UPC
This is yet another significant UPC decision to which Judge Mojca Mlakar from Slovenia contributed. At some point, a litigant should give her home court, the Ljubljana Local Division, a chance and file an infringement action there. Geodiversity is desirable for the UPC, and “smaller” venues may provide opportunities to litigants.
Florian Mueller
Founder & Publisher of ip fray
Presiding Judge (and presumably judge-rapporteur) Professor Peter Tochtermann, Judge Dirk Boettcher (“Böttcher” in German) and Judge Mojca Mlakar (Ljubljana, Slovenia).
InterDigital is reresented by the firm of Arnold Ruess (lead counsel: Cordula Schumacher), which back in 2019 obtained the first-ever SEP-related AASI (on Nokia’s behalf against automotive supplier Continental) in the Munich I Regional Court and won its affirmance by the Munich Higher Regional Court, the mastermind behind that theory being Dr. Arno Risse (“Riße” in German). Later, that team also secured the first-ever SEP-related anti-anti-anti-antisuit injunction (AAAASI) in InterDigital v. Xiaomi.
For Disney, the order mentions Taylor Wessing‘s Munich office without naming an attorney.
Central District of California
United States District Judge: Wesley L. Hsu
Counsel for InterDigital:
- McKool Smith:
- Local counsel (Los Angeles, CA): Alan P. Block
- Dallas, TX: Richard Kamprath, Alexandra Easley and R. Arden Seavers
- New York, NY: Hannah Mirzoeff
- Austin, TX: Joshua Budwin
- Marshall, TX (Judge Gilstrap’s town): Kevin Burgess
- Olson Stein’s Nancy Olson
Counsel for Disney: O’Melveny & Myers’s Ryan K. Yagura, Nicholas Whilt and Xin-Yi (Vincent) Zhou.