Federal Circuit Reopens Door to Anti-Litigation Relief | Mintz – Intellectual Property Perspectives

On our blog, Another Enforcer Closes the Door: The Death of the Anti-Litigation Measure? Earlier this year, we suggested that a popular patent enforcement tactic could be off the table, based on an order issued by Judge Terrence Boyle of the Eastern District of North Carolina (EDNC). Inside Ericsson/LenovoIn the case, the District Court rejected Lenovo’s request for an anti-litigation injunction (“ASI”) aimed at preventing Ericsson from enforcing SEP injunctions in foreign cases. Based on the District Court’s decision, the door to ASIs appeared to be essentially closed. However, Federal Circuit He recently clarified that this was not the case and that, in fact, the door appeared to be wide open.

Order of the District Court

As we explained in our February blog, the District Court stated that, among other requirements, a party seeking ASI must show that resolution of the case before the court will be determinative of the foreign actions to be barred. The District Court found that the current case did not affect the foreign case and therefore denied the requested ASI without reaching the second and third parts of the analysis. The court considered that in order for the domestic case to be positive, it should result in a global cross-licensing between the parties. “The Court is not convinced that resolution of the underlying contractual issues would compel Lenovo or Ericsson to enter into a global license agreement that would resolve the patent infringement claims at the core of the Brazilian and Colombian cases,” the District Court said, and therefore denied that request. Lenovo’s move before we get to the rest of the ASI analysis.

Federal Circuit Decision

On appeal, the Federal Circuit reversed and remanded the District Court’s decision to deny Lenovo’s request. Most importantly, as described below, the Federal Circuit clarified the “dispositive” standard for ASI threshold research.

After expressing the framework as follows Microsoft Corp. and Motorola, Inc.696 F.3d 872 (9th Cir. 2012), the Federal Circuit summarized the parties’ positions and the District Court’s reasoning regarding the “savings” requirement. Ultimately, the Federal Circuit held that the District Court’s analysis was flawed. The court explained: “Ericsson and the district court’s interpretation of what is needed to meet the ‘current’ requirement is based on a misunderstanding of: Microsoft.” Contrary to the views of Ericsson and the District Court, the Federal Circuit “sees nothing in this decision”. Microsoft the opinion of the regional court, which considers as ‘critical’ the fact that the previously filed case will result in a license.” Therefore, the Federal Circuit declared that “the district court erred in law when it held that a domestic lawsuit must result strictly in a global cross-licensing” and that “the ‘savings’ clause does not constitute a foreign anti-suit injunction.” grant only a foreign injunction (and all foreign case)and although the relevant solution depends on: potential in a domestic case, a party’s view of the facts or law is valid.”

After clarifying the “economy” standard for ASI threshold research, the Federal Circuit returned to the facts of the instant dispute and ultimately concluded that the “precaution” requirement was met. Using its discretion to reach the contractual issue not addressed by the District Court, the Federal Circuit held: “A party making an ETSI FRAND commitment must have previously complied with the obligation of the commitment to negotiate in good faith on a license for its SEPs.” is seeking injunctive relief based on these SEPs.” This means that a SEP holder “may not seek injunctive relief against other standards enforcers without first complying with these rules.” some standard of conduct. We conclude that this standard of conduct must be—at least—the standard imposed by the FRAND undertaking’s obligation to negotiate in good faith.” Although the Federal Circuit based this analysis on the Court’s interpretation of the ETSI FRAND undertaking, it noted that “such a result would be at least the ‘fair’ standard recognized in this country.” He acknowledged that it ‘fits very well with the general common law principle’ of seeking a solution.for examplean injunction) must ensure justice and appear in court with clean hands.’”

The Federal Circuit therefore concluded that the “economy” requirement was satisfied here because: “(1) The ETSI FRAND undertaking precludes Ericsson from seeking SEP-based injunctive relief unless it complies with this decision. First has complied with its obligation to undertake to negotiate in good faith regarding the license to be granted to these SEPs; and (2) whether Ericsson complied with this obligation is a matter before the district court. Accordingly, if the court finds that Ericsson has failed to comply with this obligation, this determination will determine the impropriety of Ericsson’s pursuit of SEP-based injunctive relief.”

take away

The Federal Circuit’s opinion apparently changes the door to patents by opening the back of ASIs and provides clarity on the “dispositive” requirement. This view has practical implications for all parties involved in global FRAND/RAND disputes. It reminds practitioners that ASIs are still on the table and appears to lower the bar for practitioners to meet the “dispositive” requirement. The proper inquiry now is not whether the US case resolves the issue, but whether the party challenging the ASI complied with its FRAND/RAND obligations before seeking injunctive relief. all foreign case. For SEP holders seeking to enforce foreign injunctions, it appears they may need to arrive in US courts not only with clean hands but also evidence of FRAND/RAND compliance to satisfy this inquiry.

The future of ASIs is uncertain. Although it has long-term effects Ericsson/Lenovo It is currently unknown, but this is a hurdle for SEP holders who want to effectively incentivize potential licensees to minimize hold-up behavior. This setback is likely to be temporary, as the Federal Circuit has been transferred to the District Court, and the District Court will provide important guidance on whether there is a credible risk of injunctive relief in a U.S. court for practitioners seeking to employ stalling tactics in SEP negotiations. . In the inevitable future appeal, the Federal Circuit will likely have the final say on whether U.S. business is open to injunctive relief in SEP cases where the licensee resists.

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