Anti-suit injunctions for standard-essential patents: the emerging gap in international patent enforcement

Abstract

Executive Summary: In standard essential patent (SEP) disputes, situations of overlapping national jurisdictions often arise. These overlaps are occasionally resolved with the issuance of an anti-suit injunction (ASI), i.e., an order barring the initiation or continuation of overlapping proceedings in foreign jurisdictions. In the context of SEP disputes, an ASI has been issued in the US on one occasion (by the 9 th Circuit in Microsoft v. Motorola ), while UK courts have also left open the possibility of an ASI being granted in the SEP context. Courts in China appear, however, increasingly willing to issue ASIs. ASIs may potentially undermine relations of comity between national courts and represent a challenge from a rule of law perspective by interfering with patent owners’ right to property and effective judicial protection. engendered a global market for standard-compliant products and standard patents Because patents are territorial rights and major technology contributors hold SEPs in many jurisdictions, it is not uncommon in cases of multi-jurisdictional FRAND disputes situations of overlapping jurisdiction to arise. are in disputes with a private international law dimension. One way to resolve jurisdictional conflicts is the issuance of an ‘anti-suit injunction’ (ASI). ASIs are court orders barring a litigant from initiating or continuing proceedings in foreign jurisdictions regarding the same disputes and against the same counterparties. 1 In SEP disputes, ASIs can be potentially granted by courts the US, the UK, and China. Where ASIs are issues, the parties enjoined are barred from initiating or continuing litigation in foreign jurisdictions, including actions for injunctive relief, declaratory actions to set a FRAND rate, and antitrust complaints.