In a recent decision (docket no. 7 O 14276/20), the Munich District Court has linked the anti-suit injunction (ASI) and anti-anti-suit injunction (AASI) disputes, which have become popular in the past months, to the concept of the “willing licensee” and thus to the success of the FRAND defence.

In the underlying case, InterDigital had applied for an injunction in the Munich District Court against Xiaomi, which had lodged a complaint before the Intermediate People's Court in Wuhan to establish an appropriate global portfolio licence. In addition, Xiaomi also requested the IPC Wuhan to grant an accompanying ASI. InterDigital’s AASI before the Munich District Court was directed against this ASI. Further proceedings between the parties were pending in India. 

Following on from the previous decisions, in particular the established case law of the Munich courts, on the admissibility of AASIs in Germany, the court held also in this case that, firstly, an ASI obtained abroad, which also prevents the patent proprietor from bringing patent infringement actions in Germany, constitutes a violation of the patentee’s rights (Sections 823, 1004 German Civil Code). According to the Munich District Court, an ASI may be classified as a violation of the German rules of international jurisdiction as well as a violation of the German order public. 

Secondly, and this makes the decision particularly relevant, the Munich District Court apparently takes the view that the application for an ASI could at the same time be considered as evidence that the defendant is not a "willing licensee" in the context of a FRAND defence raised in the main proceedings. In this case, the FRAND defence would be dismissed due to the defendant’s ASI alone and without any further evaluation of the patentee’s FRAND offer or other relevant circumstances of the parties’ negotiation history.  

The Munich District Court assumes that an implementer who is truly willing to take a license will refrain from further violations of the patentee’s intellectual property. It could be expected from the implementer that, at least after receipt of the infringement notification, he not only declares his unrestricted willingness to take a FRAND license, but also that he will not apply for an ASI. However, from the reasons of the judgment it is not entirely clear whether the Munich District Court means that the implementer must proactively issue an explicit declaration that no ASI will be requested, or whether it is sufficient that the implementer simply does not file an ASI request. 

According to the reasons of the decision, the implementer is of course entitled to request an ASI in a foreign court abroad, if it is admissible under the rules of the foreign court. However, the consequence for the German patent infringement proceedings will be that the implementer loses the FRAND defense and will be injuncted, if the patent is found valid and infringed. 

Therefore, the new decision of the Munich Regional Court – in particular in case it is confirmed by the Munich Court of Appeal – will again raise the bar for implementers in their defence against SEP based patent infringement proceedings. 

However, as German courts always review the FRAND defence on the basis of the individual case at hand, an automatic rejection of the FRAND defence – without assessment of the specific case - will in any case not be appropriate. Rather the specific situation of the individual case will have to be considered before deciding on the FRAND defence. In any case it seems arguable that a withdrawal of an ASI should generally lead to a revival of the FRAND defence. This already follows from the Federal Supreme Court’s guidance in Sisvel v Haier II, according to which a review of the entire negotiation history and ongoing conduct of the parties during the proceedings is required to decide on the FRAND defence. 

In any case, it can be assumed that the Munich District Court with this decision has placed another argument for the patent owners to choose Munich as jurisdiction for SEP complaints.