The Use and Abuse of Anti-suit Injunctions in SEP Litigation: Is There a Way Forward?

Abstract

Cross-border litigation over Standard Essential Patens (“SEPs”) entered into a new phase when the English courts decided in Unwired Planet v Huawei they have the power to set the terms of a global license within the context of national patent infringement proceedings. Unwired Planet appears to have unleashed a global race to the bottom and a race to the courthouse, with litigants racing to seize their preferred forum to set global rates while trying to prevent their opponent from bringing proceedings elsewhere through “anti-suit injunctions”, a type of relief traditionally granted by common law jurisdictions, but now increasingly so by other jurisdictions such as China. Yet this is now rarely the end of the matter, with litigants applying for anti-anti-suit injunctions or even anti-anti-anti-suit injunctions.

The purpose of this paper is to explore the new realities in SEP litigation post-Unwired Planet, with a focus on the use of anti-suit injunctions and the corresponding turf war between national courts. After discussing the legal test for granting such relief in various legal systems, the paper discusses the worrying proliferation of anti-suit injunctions across major jurisdictions, noting how this trend wastes judicial resources and may undermine international comity. It considers that in the absence of some form of international coordination, a satisfactory solution is unlikely to emerge in the short term. As a first step, it proposes that governments consider establishing “best practices” on SEP licensing dispute resolution, including on jurisdictional issues such as the scope of licenses fashioned by national courts.

Keywords: SEPs, licensing, patent litigation, injunctions, anti-suit injunctions, comity.

JEL Classification: K41, L24