A Statutory Anti-Anti-Suit Injunction for U.S. Patent Cases?

9 Pages Posted: 19 Apr 2022 Last revised: 8 Jun 2022

See all articles by Jorge L. Contreras

Jorge L. Contreras

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

Date Written: April 14, 2022

Abstract

Litigation relating to fair, reasonable and non-discriminatory (FRAND) licensing of patents essential to industry standards has recently seen a sharp increase in cross-jurisdictional competition fueled by the trend of courts in some jurisdictions (particularly China) to seek to establish FRAND royalty rates applicable around the world, and the increased use of anti-suit injunctions (ASIs) to prevent parties from pursuing parallel litigation in other jurisdictions. The proposed “Defending American Courts Act” (DACA), introduced to the U.S. Senate Judiciary Committee in March 2022, seeks to deter the use of foreign-issued ASIs in U.S. patent litigation. The DACA would effectively create a statutory national “anti-anti-suit injunction” (AASI) that would penalize parties seeking to enforce foreign ASIs by eliminating their ability to challenge asserted patents at the Patent Trial and Appeals Board (PTAB) and establishing presumptions of willfulness, for purposes of enhancing damages under Section 284 of the Patent Act, and exceptional status, for purposes of awarding attorney fees under Section 285. While cross-jurisdictional competition in FRAND cases has created numerous litigation inefficiencies and diplomatic issues, there may be other means to address the problem of foreign ASIs. As a result, further study of these questions, as suggested by DACA itself, may be warranted before legislation is enacted.

Keywords: FRAND, standards, patents, injunction, anti-suit injunction, PTAB, willful infringement

Suggested Citation

Contreras, Jorge L., A Statutory Anti-Anti-Suit Injunction for U.S. Patent Cases? (April 14, 2022). University of Utah College of Law Research Paper No. 495, Available at SSRN: https://ssrn.com/abstract=4084116 or http://dx.doi.org/10.2139/ssrn.4084116

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

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