Context: The England & Wales Court of Appeal (EWCA) appears to have zero regard for other jurisdictions when it wants the UK to become the world’s sole arbiter for FRAND (fair, reasonable and non-discriminatory) licensing terms by ordering standard-essential patent (SEP) holders to grant interim licenses (even potentially including non-SEPs) in an effort to prevent other jurisdictions from making their own decisions on whether to grant injunctions against infringement (February 2, 2025 ip fray article).
The UK threatens to become a rogue jurisdiction in the SEP context.
The purpose of this article is to outline different ways in which the Unified Patent Court (UPC), German and other national courts could respond to this megalomaniac madness and effectively protect their jurisdiction.
In particular, granting ex parte preliminary injunctions against further patent infringement the moment someone seeks an interim license and the patentee moves for such injunctions could prove effective and deter such behavior. Not only could this be used against interim licenses but also against any foreign court order to grant a license based on a FRAND determination that takes place without the patentee’s consent.
1. Ex parte preliminary injunctions against infringement in response to interim license requests
A dictum by the Landgericht München I (Munich I Regional Court) in an anti-antisuit injunction ruling served as an effective deterrent of antisuit injunction motions: Presiding Judge Dr. Matthias Zigann (now at the UPC’s Munich Local Division) warned that someone seeking an antisuit injunction could be deemed an unwilling licensee for that reason alone, or for that reason in combination with other factors.
The problem with the interim license dynamic is that once the patentee has been forced to grant one, it is too late. And at the Panasonic v. Xiaomi appellate hearing last year, it was stated clearly that any attempt by a patentee to undermine the UK proceedings could lead to sanctions in the UK.
Therefore, non-UK courts must give patentees decisive leverage even before a UK court hands down an order to grant a license (be it an interim license or be it on the basis of a UK FRAND determination).
If some UK judges believe that they can rule the world and that escalation is a good strategy, then it is time for the rest of the world to show them that they are barking up the wrong tree.
The UPC and German courts, as well as the courts in various jurisdictions, could use their discretion and grant preliminary patent injunctions, even on an ex parte basis (hearings would be held later), over any affected patents. In the dispute between Nokia and Amazon, that would not only relate to Nokia’s multimedia SEPs but also its multimedia non-SEPs, given that Amazon wants the UK judiciary to include them in a forcible license.
The whole idea of a PI is for a court to make a quick decision so as to prevent irreparable harm to the moving party. So far, European courts have not granted PIs over SEPs (especially not ex parte PIs), and there may not even have been a single attempt to obtain one, given that the FRAND part normally requires a certain amount of analysis under Huawei v. ZTE.
But that changes entirely when a defendant like Amazon or Lenovo wants to use a foreign court to derail UPC or German infringement lawsuits. In that case, irreparable harm in the form of unlawfully (from a UPC or German perspective) depriving the patentee of its right to enforce its IP is imminent, and urgent action is required. And just like the Munich I Regional Court said in the above-mentioned dictum, an implementer who acts like that may actually provide a definitive answer to the (un)willingness question.
A patentee could ask the UPC and/or national courts for injunctions over one or more patents impacted by the other party’s push for an interim license in the UK. Of course, the patentee should provide a claim chart for each of those patents.
PI decisions come with an urgency requirement, which in this case is a question of how quickly the patentee acts after the threat of an interim license is real. In Ericsson v. Lenovo, the fact that the appeal has been permitted by the EWCA (though the lower court did not) would be a relevant juncture. In Nokia v. Amazon, the EWCA’s decision that Amazon may pursue an interim license would be an important one, too. At this point, it should be taken into consideration that patentees could not foresee that the UK was going to go rogue. The Panasonic-Xiaomi circumstances were special.
PI decisions are multifactorial. The greater and the more immediate the harm, the less clear and strong the case has to be on the merits. When there is a clear and present danger of the window of opportunity for enforcement closing because of the UK interim license proceedings, a decent claim chart should be enough. The European Court of Justice decision in Phoenix v. Harting stressed the importance of protecting IP and did away with the requirement that the patent had to be battle-tested against the same invalidity contentions.
If the UPC and national courts take the interim license threat as seriously as they should, they can order ex parte PIs (and affirm them a few weeks later after a hearing) with
- infringement being established by plausible claim charts,
- validity being treated flexibly as per Phoenix v. Harting, and
- Huawei v. ZTE being considered inapposite when the purpose is to enable enforcement before the window closes due to (from a UPC or German perspective) unlawful conduct in another jurisdiction, and as a fallback, the implementer being deemed an unwilling licensee.
In these circumstances, no collateral would be required at the PI stage.
In a jurisdiction where a PI has been lifted, it could be reinstated on the above grounds, unless it was lifted because of a strong indication of there being no infringement.
Once the UPC and/or German and/or other national courts act as forcefully as described above, no implementer will dare to try to derail their proceedings through the pursuit of an interim license in the UK. And the EWCA will also see that international comity exists for a reason. What goes around, comes around.
2. Analogous application of anti-antisuit injunctions
Based on how the UPC and German courts justify their anti-antisuit injunctions, the instrument could be applied analogously to the pursuit of interim licenses.
The only problem is that patentees may then get sanctioned by a UK court, possibly even sua sponte. That would not be a problem when the courts on whose jurisdiction the UK court wants to encroach simply hand down a bunch of preliminary patent injunctions, immediately shutting out those implementers from those markets and thereby forcing a global settlement.
3. Sanctions
The UPC and national courts could also explore the possibility of imposing sanctions on those who undermine their proceedings through unlawful conduct.
4. Non-recognition of forcible licenses and even of withdrawals of complaints
Courts should generally not recognize global FRAND licenses with respect to their jurisdictions when they were entered into as the result of a foreign court order. That would enable patentees still to pursue and enforce injunctions in other jurisdictions than the one that forced them to grant a license.
The problem is, however, that the implementer could enforce that contract in the jurisdiction that imposed it, seeking injunctions and damages. In that case, the end game could be an escalation of sanctions, which would not be desirable.
To the extent that courts or agencies have discretion as to whether they accept a settlement, they might even ignore forcible licenses. For example, the USITC might still be able to order an import ban, and U.S. Customs & Border Protection could enforce it, even if the patentee, under pressure, withdrew its Section 337 complaint.
All in all, the sudden death strategy outlined as the first option here would be the most effective one. And it is not mutually exclusive with any of the other measures, but it should normally checkmate those who abuse a rogue jurisdiction to their advantage.