The anti-anti-suit injunction that was rendered in Paris in March 2020, is in line with a parallel decision by the Munich Higher Regional Court in a case between Nokia and Continental in 2019.
German courts have never accepted anti-suit injunctions by US courts to stop German proceedings and refused to enforce such anti-suit injunctions in Germany (see Dusseldorf Higher Regional Court case 3 VA 11/95 of January 10, 1996). However, a US anti-suit injunction against a globally active company can be enforced by imposing fines directly in the US and consequently does not have to be enforced in Germany to pose a major threat. Therefore, anti-suit injunctions have been used in the past to derail German patent infringement proceedings, for example in the Motorola v. Microsoft case in Mannheim, where an anti-suit injunction was granted against Motorola in the Western District of Washington 2012 (Case No. C10–1823JLR).
In 2019 Nokia filed a series of patent infringement cases based on various 3G and 4G essential patents in the regional courts of Munich, Mannheim and Düsseldorf against Daimler to force Daimler and its suppliers into a global licence agreement with Avanci for applications in the field of connected cars. Continental as one of Daimler’s suppliers joined the proceedings as assisting party to Daimler. In May 2019. In addition Continental also sued Nokia for the conclusion of a global FRAND licence in the Northern District of California and applied for an anti-suit injunction preventing Nokia from continuing the German infringement proceedings. The District Court scheduled a hearing on the anti-suit injunction for October 10, 2019. Nokia reacted by filing an application for an anti-anti-suit injunction in interim proceedings in the Munich Regional Court on July 9, 2019.
The anti-anti-suit injunction was granted by the Munich Regional Court ex parte on July 11, 2019 and confirmed after oral hearing by judgement of October 2, 2019 (case 21 O 9333/19). The Munich Regional Court held on the one hand that preventing Nokia from enforcing its patent is an illegitimate interference with Nokia’s intellectual property rights. The anti-anti-suit injunction on the other hand was not regarded as inadmissible interference with Continental’s proceedings in the US, because the prevented anti-suit injunction in the US is only an interim measure and Continental can continue its US action for the setting of a FRAND royalty.
The Munich Higher Regional Court upheld the anti-anti-suit injunction on appeal in its judgement of December 12, 2019 (case 6 U 5689/19). The emphasis in the reasoning is slightly different because the appeal judgment is based on a balancing of interests and concluded that the unimpeded enforcement of Nokia’s intellectual property rights outweighed Continental’s right to initiate litigation for the conclusion of a license agreement. Moreover, Continental and Daimler still had effective legal remedies, because the FRAND defence can be raised in German proceedings and will be assessed in accordance with the applicable law under the rules established in the CJEU case Huawei v. ZTE.
After Microsoft’s successful use of a US anti-suit injunction against German SEP infringement proceedings in 2013, the recent anti-anti-suit injunction in Munich provided Nokia with an effective counter-measure against Continental’s attempt to repeat Microsoft’s strategy. With the anti-anti suit injunction in Paris and Munich, the global battle for the most favourable forum to determine FRAND rates between SEP holders and standard implementers is once again open and there is no guarantee that the standard implementer will be able to avoid the venue chosen by the SEP holder.
