The Anti-Suit Injunction - A Transnational Remedy for Multi-Jurisdictional SEP Litigation

Cambridge Handbook of Technical Standardization Law - Patent, Antitrust and Competition Law (Jorge L. Contreras, ed., 2017, Forthcoming)

University of Utah College of Law Research Paper No. 209

9 Pages Posted: 12 May 2017 Last revised: 8 Jun 2017

Jorge L. Contreras

University of Utah - S.J. Quinney College of Law

Michael A. Eixenberger

University of Utah, S.J. Quinney College of Law, Students

Date Written: May 10, 2017

Abstract

Litigation concerning standards-essential patents (SEPs) has become increasingly global, with parallel litigation occurring over the same issues in multiple jurisdictions throughout North America, Europe and Asia. As a result, litigants have sought mechanisms to coordinate these actions both to manage costs and to avoid inconsistent and incompatible results. One little-known procedural mechanism that has long been available to manage multi-jurisdictional litigation, and which is growing in popularity in SEP disputes, is the anti-suit injunction.

An anti-suit injunction is an interlocutory remedy issued by a court in one jurisdiction which prohibits a litigant from initiating or continuing parallel litigation in another jurisdiction or jurisdictions. Anti-suit injunctions thus contain litigation costs and reduce the likelihood of inconsistent results by ensuring that issues are resolved in one jurisdiction before they are litigated elsewhere. In the standards context, anti-suit injunctions can be particularly powerful tools for prospective licensees alleging that SEP holders have failed to comply with their FRAND licensing obligations. Specifically, a court reviewing a SEP holder’s compliance with a FRAND licensing commitment may issue an anti-suit injunction to prevent the SEP holder from bringing foreign patent infringement claims (including injunctions against the sale of infringing products) until the FRAND licensing dispute has been resolved in the issuing jurisdiction.

This chapter discusses the historical development and procedural requirements for anti-suit injunctions in both the United States and Europe. It also reviews recent SEP cases in which anti-suit injunctions have been granted, including Microsoft v. Motorola, Vringo v. ZTE and TCL v. Ericsson.

Keywords: FRAND, SEP, standard, patent, anti-suit injunction, injunction

JEL Classification: K00, K12, K21, K41, L63, L86, L96, O34

Suggested Citation

Contreras, Jorge L. and Eixenberger, Michael A., The Anti-Suit Injunction - A Transnational Remedy for Multi-Jurisdictional SEP Litigation (May 10, 2017). Cambridge Handbook of Technical Standardization Law - Patent, Antitrust and Competition Law (Jorge L. Contreras, ed., 2017, Forthcoming); University of Utah College of Law Research Paper No. 209. Available at SSRN: https://ssrn.com/abstract=2966309

Jorge L. Contreras (Contact Author)

University of Utah - S.J. Quinney College of Law ( email )

383 S. University Street
Salt Lake City, UT 84112-0730
United States

Michael A. Eixenberger

University of Utah, S.J. Quinney College of Law, Students ( email )

332 South 1400 East
Salt Lake City, UT 84112
United States

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