Düsseldorf Higher Regional Court rejects request for an Anti-Anti-Suit Injunction (AASI) as inadmissible in an individual decision, but confirms its applicability in principle
Even if the decision at first glance seems to diminish the rights of patent owners, the Düsseldorf Higher Regional Court makes it absolutely clear that so-called anti-suit injunctions are to be disapproved and that one can also defend oneself against them before the Düsseldorf Courts. The difference to the case law of the Munich Courts essentially concerns the question, to which degree of probability it has to be expected that a license seeker will actually seek an anti-suit injunction before a foreign Court. Likewise, the Higher Regional Court Düsseldorf confirms that anyone seeking an anti-suit injunction in a foreign jurisdiction is to be regarded as unwilling licensee, so that the Court would issue a request for injunction relief and a request for recall resulting from a standard-essential patent without further discussion whether the FRAND offer is appropriate.
In a judgment dated on 7 February 2022, (Case No. I-2 U 27/21), the Second Civil Senate of the Düsseldorf Higher Regional Court has set aside a preliminary injunction (hereinafter: AASI) issued by the Düsseldorf Regional Court on 14 December 2020 (Case No. : 4c O 73/20). The decision is the second decision of a Higher Regional Court on AASI in Germany issued in regard to disputes on standard-essential patents (hereinafter: SEP). In contrast to previous decisions on AASI, this is the first time that a Court has rejected a request for issuing an AASI as inadmissible based on the grounds of the specific individual case.
In its decision, the Second Civil Senate of the Düsseldorf Higher Regional Court expressly emphasized that engaging in an ASI proceeding is an encroachment on rights of patent owners protected in absolute and constitutional terms. Legal protection against such an encroachment can be obtained before German Courts.
The Second Civil Senate of the Düsseldorf Higher Regional Court reasoned that, for constitutional reasons, there was in principle a need for legal protection in SEP disputes to issue an AASI. However, this only applies to the extent that the issuance of an AASI is objectively necessary to ensure effective legal protection.
It was decisive that – in contrast to previous decisions of Munich Courts – neither an action on the merits was pending nor a request to issue an ASI had been filed. In the individual case, the Dusseldorf Higher Regional Court therefore denied that it is objectively necessary to issue an AASI.
Contrary to the case law of the Munich Courts, the Düsseldorf Higher Regional Court did not consider it to be sufficient that the users of the SEP had not made a binding declaration that they did not wish to request for an ASI in a foreign jurisdiction.
A ”subsequent protection order“ was to be sufficient for the protection of the patentees; in contrast, an ”anticipatory“ AASI did not offer better protection. In the absence of substantial indications, an AASI cannot be issued merely because there was an abstract possibility of an ASI request, due to the rule of law.
The Second Civil Senate emphasized that the subsequent legal protection was also acceptable because patent users by filing a request for an ASI showed that they are obviously unwilling licensees. They should therefore be ordered to cease and desist without further ado.
The Dusseldorf Higher Regional Court also recognized that the threats of sanctions by foreign Courts may deter patent owners from enforcing their rights for economic reasons and that, from their perspective, legal protection is inadequate. However, this was a general consequence of the practice of foreign Courts and is independent of the date on which the AASI was issued.
The Dusseldorf Higher Regional Court ruled that there was no need for legal protection even if an affiliated company had already requested for an ASI in the past, insofar as the facts of the case differed in material respects – e.g. pending proceedings on the merits abroad.
Finally, the Second Civil Senate made an obiter dictum on the wording of the request: It could be left open whether the request was inadmissible for this reason.
It is gratifying that the Second Civil Senate of the Düsseldorf Higher Regional Court in principle has endorsed the view of the Munich case law and confirmed that patent holders can obtain protection for their IP Rights against ASI before national Courts. SEP owners can therefore in principle continue to obtain effective legal protection against ASI before Düsseldorf Courts. The differences in the dogmatic approach are unlikely to have an impact in practice.
However, the Second Civil Senate of the Düsseldorf Higher Regional Court rules on stricter standards compared to the Munich case law. In doing so, the Dusseldorf Higher Regional does not apply all the “categories” developed by the Regional Court Munich. According to the decision of the Düsseldorf Higher Regional Court, in particular the following categories do not entitle to issue an AASI without further ado:
- Patent users have threatened to file proceedings on the merits for licensing or for a determination of a reasonable global royalty for such license in a jurisdiction that generally provides ASI;
- Patent users have not declared in text form within a short time limit set by the patent proprietor not to file a request for an ASI;
- Patent users have threatened to request an ASI towards other patent owners or have already requested such an ASI, insofar as indications, which are recognizable for the patent owner, are missing that the patent user will not continue this practice in the future, at least in relation to the patent owner;
In the following constellations, requests by SEP holders for AASI are likely to be issued even after the decision of the Düsseldorf Higher Regional Court:
- (Active) threat of patent users towards to patent owners with a request for an ASI;
- Patent users have already filed a request for an ASI against the patent owners;
- Patent users have filed proceedings on the merits for licensing or for determination of a reasonable global royalty for such license in a jurisdiction that generally provides ASI;
Gratifyingly, the Düsseldorf Higher Regional Court recognized that sanctions imposed by foreign Courts may deter patent owners from enforcing their rights for reasons of economic rationality and that, from their perspective, legal protection is inadequate. This shows that German Courts do consider that ASI decisions can exert considerable pressure on companies.
However, the further reasoning that this is not connected with the question of whether action is taken against an ASI anticipatory or subsequently, but is a general consequence of the ruling of Chinese Courts, is not convincing. The reasoning of the Düsseldorf Higher Regional Court is only partially correct in this respect. For patent owners, the point in time at which an AASI decision is issued is very decisive. It may be true that foreign Courts do not sufficiently consider decisions of German Courts in their decisions. However, for the activities of companies abroad, it is factually very decisive whether their own conduct is covered by an AASI. Patent owners who have their own AASI in their hand prior to an ASI to be issued are presented in a different light and can also act differently in negotiations on FRAND terms. In addition, companies are sometimes required by their own compliance rules to abide by rulings of foreign Courts and may not challenge the order of a foreign Court because of this self-binding nature. In our view, the Düsseldorf Higher Regional Court does not take these factual aspects sufficiently into account. We believe that under these circumstances it could be objectively necessary for reasons of effective legal protection to issue an anticipatory AASI. In addition, fines in particular issued by Chinese Courts are significantly higher than in German Courts. Because of this asymmetry of economic pressure, a subsequent legal protection of German Courts remains ineffective.
It should be emphasized that, in addition to the Munich Regional Court (cf. Regional Court Munich I, judgement dated 28 January 2021, case no. 7 O 14276/20 (an English translation is available here)) now also the Düsseldorf Higher Regional Court explicitly recognizes that patent users requesting an ASI are obviously unwilling licensees. It should be obvious that this unwillingness to license cannot be compensated by a later behavior; patent users who request ASI are thus quasi incurably unwilling to license. This is an important and clear signal that requests for an ASI in Germany will have considerable consequences.
We assume that the Patent Senates of the Düsseldorf Higher Regional Court have agreed on such a fundamental and landmark decision and that this decision therefore provides guidance not only for future decisions of the Second Civil Senate, but also for decisions of the XV Civil Senate.
In order to further compensate for the ”inadequacy“ of legal protection, it would also be desirable that Courts cushion sanctions imposed by foreign Courts by means of indemnification claims in the context of AASI decisions. Such claims are likely to arise from Sections 823 and 249 (1) of the German Civil Code and, in our view, can also be asserted in preliminary injunction proceedings. However, German Courts have not yet issued any decisions in this regard.
Dr Christof Augenstein
Dr Benedikt Walesch