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Anti-anti-suit injunctions: filers reveal importance of new orders

IPCom, Nokia and two car companies say the success of the new order shows that forum-shopping does not fly with European courts and – if that continues – anti-suit injunctions will not become popular as a ‘stalling tool’

The emergence of anti-anti-suit injunctions in France and Germany in response to stay-of-proceedings orders from the Northern District of California has emphasised that European courts will not accept interference from other jurisdictions, according to in-house counsel.

Senior sources at companies including Nokia, IPCom and Volvo also say that so long as the appeals courts judges agree with their lower-court counterparts, anti-suit injunctions are unlikely to become a popular tool among implementers to stall proceedings.

Finnish telecoms company Nokia and non-practising entity IPCom filed stays of proceedings against Daimler and Lenovo respectively this year after those implementers launched anti-suit injunctions in the Northern District of California, demanding that the patent holders cease litigation proceedings.

The Tribunal de Grande Instance of Paris granted IPCom’s request for an anti-anti-suit injunction last November, reasoning that the case in California is sufficiently different from that in France. The Munich Regional Court was the first court to issue one of these injunctions for Nokia against Daimler last August.

Pio Suh, managing director at IPCom in Munich, says that these decisions from France and Germany illustrate attitudes from European jurisdictions around anti-suit injunctions, and emphasise to implementers that forum-shopping in this manner may not be an effective strategy.

“Had the Paris court decided differently, that would have given implementers motivation to pursue anti-suit injunctions,” he says. “These injunctions forbidding parties to pursue their rights in other jurisdictions could be a powerful tool, so I’m very happy that so far we have sent a strong signal that Europe makes its own decisions and is not submissive.”

Suh says that the inspiration for his company’s anti-anti-suit injunction filing came from Nokia’s actions in the Munich Regional Court, adding: “It all happened fast because it was an urgent matter.”

He says that the Nokia case is demonstrably different from IPCom’s matter, in that the telecoms company’s lawsuit was already in place when the Munich court ruled on the anti-anti-suit injunction. IPCom filed its stay of proceedings to clear the path for preliminary injunction proceedings in Paris.

Nokia’s European head of dispute resolution, Clemens Heusch, who spearheaded the new order, adds that it is important that matters are heard in the correct jurisdiction. “We are a Finnish company suing a German company, so we believe the case should be heard in Germany, not California,” he says.

“This is a nice interim success, but we are not at the end yet. So far Daimler has not taken a licence, though our door remains open for constructive discussions to reach an agreement.”

The Munich appeals court is set to rule on Nokia’s anti-anti-suit injunction on December 12, and the first Nokia v Daimler trial is also scheduled to be heard at the Mannheim Regional Court on December 10.

Speaking from the implementer perspective, an automotive company industry source says anti-suit injunctions are simply a new type of holdout from implementers who, for whatever reason, do not want to take a licence to a standard essential patent (SEP).

“Continental is trying to keep Nokia’s Munich case pending with an anti-suit injunction in California so that they have more time to negotiate, but knowing that they will probably not take a licence and defer that obligation to a supplier.

“Nokia’s anti-anti-suit injunction is just the answer to that. The telecoms company doesn’t want the opposition to be able to hold out, it wants to force Daimler or its suppliers to take a licence.”

He adds that when the Munich appeals court rules on Nokia’s anti-anti-suit injunction order next week, it may choose to reverse the order because of technical reasons. But from a common-sense view, he says, it seems unlikely that the German courts will allow California to hinder the cases between Nokia and Daimler.

More injunctions coming?

The outcome of the Munich appeals court ruling will probably have a huge impact on the popularity of anti-suit injunctions, and therefore their anti-anti-suit counterpart as well, according to in-house and private practice sources.

The automotive industry source points out that a Nokia win next week might not stop anti-suit injunctions from being filed for SEP matters, but it would probably dampen them.

“If implementers know that an anti-suit injunction will immediately be responded to by something that does not allow that stay of proceedings, why would they do it in the first place? The question then is will there be a decision made that others know they cannot get around?”

Johanna Wright, senior patent attorney at Volvo Cars in Sweden, adds that if the Munich court upholds the lower court next week and enough courts deliver similar rulings in the future, few implementers will want to bear the cost of obtaining an anti-suit injunction.

Tawfik Goma, managing principal of Goma Law and former senior counsel at Philips in New York, agrees, adding that the potential popularity of these new orders could vary between jurisdictions, depending on how different courts react to anti-suit injunction orders.

“Looking at the outcome of the Munich appeal will be important, and looking at the facts around that and determining whether they’re applicable beyond those parties in those jurisdictions,” he says.

The anti-anti-suit injunction is certainly a hot topic among patent litigators at the moment. Whether it stays so will become more apparent next week.

Until then, the message from the lower courts has been clear: California will not stop European proceedings.

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