IP Bridge v Huawei, Regional Court (Landgericht) of Munich I

24 June 2021 - Case No. 7 O 36/21

http://caselaw.4ipcouncil.com/german-court-decisions/lg-munich-district-court/ip-bridge-v-huawei

A. Facts

The claimant, IP Bridge, is a Japanese non-practising entity that holds a portfolio of patents declared as (potentially) essential to various wireless telecommunications standards (standard essential patents, or SEPs) developed by the European Telecommunications Standards Institute (ETSI). ETSI requires from patent holders to commit to make SEPs accessible to standard users on fair, reasonable and non-discriminatory (FRAND) terms and conditions.

The defendants are the parent company and a German affiliate of the Huawei group (Huawei), a global telecommunications and electronics corporate group with headquarters in China.

The parties were involved in licensing negotiations since 2015. During this time, IP Bridge made several offers to Huawei. An agreement was, however, not reached.

On 18 December 2020, during a video call between the parties, IP Bridge pointed out that German courts had confirmed both the validity of a patent included in its portfolio as well as the FRAND-conformity of a licensing offer very similar to the conditions proposed to Huawei and had, consequently, granted an injunction against an unlicensed implementer. Huawei, on the other hand, highlighted inter alia a case, in which the Chinese Supreme People's Court had issued a so called 'anti-enforcement injunction' (AEI) against an injunction granted by the District Court of Duesseldorf. Said AEI ordered the SEP holder, who had sued Huawei, under penalty to refrain from the enforcement of the Duesseldorf injunction in favour of pending Chinese court proceedings concerning the determination of FRAND rates for the Chinese patents included in its portfolio.

On 8 January 2021, IP Bridge brought an infringement action against Huawei before the District Court of Munich I (Court) based on a German patent (German infringement proceedings). Infringement actions were also filed before the District Court of Mannheim in Germany and the High Court of Justice in the UK (UK proceedings).

Along with the infringement action, IP Bridge also filed a motion for a so-called 'anti-anti suit injunction' (AASI) in Munich. IP Bridge requested the Court to order Huawei to refrain from filing a motion for an 'anti-suit injunction' (ASI) and/or an AEI in China as well as to withdraw such motion, in case it had already been filed.

On 11 January 2021, the Court issued an AASI without prior hearing of Huawei (Munich AASI). Huawei filed an objection against this order.

On 5 March 2021, Huawei filed a suit against IP Bridge in Guangzhou, China, asking the court to determine the FRAND royalty rates for IP Bridge's SEP portfolio, which would apply to a licensing agreement covering only the Chinese territory (Chinese FRAND proceedings).

On 19 March 2021, IP Bridge asked Huawei in the parallel UK proceedings to declare that it would refrain from filing a motion for an ASI in China. Huawei did not make such declaration. Nevertheless, no ASI motion was filed against IP Bridge in China until the Court delivered the present ruling in June 2021.

The Court dismissed Huawei's objection and confirmed the Munich AASI. [1] (cited by https://www.gesetze-bayern.de/Content/Document/Y-300-Z-BECKRS-B-2021-N-17662?hl=true)
 

B. Court's reasoning

The Court held that both a claim and sufficient grounds for a preliminary injunction in form of an AASI were given. [2]
 

Claim for preliminary injunction

The Court explained that the filing, prosecution and enforcement of an ASI or an AEI (in China or the United States) with the objective of preventing the assertion of claims for injunctive relief against patent infringement in Germany impairs the 'property-like legal position' of the patent holder in terms of tort law (in particular Section 823 para. 1 of the German Civil Code). [3] Accordingly, patent holders can invoke the right for self-defence pursuant to Section 227 of the German Civil Code, which provides that any action necessary to avert a present illicit attack is not unlawful. [4]

A prerequisite for (interim) measures directed at safeguarding property rights is that a 'risk of first infringement' exists. The Court outlined that, as a rule, it will assume that a 'risk of first infringement', which could justify the grant of an AASI is given in the following cases:

• The implementer has threatened to file a motion for an ASI;
• the implementer has filed a motion for an ASI;
• the implementer has filed or threatened to file a (regular) action for the grant of a licence or the determination of reasonable global royalty rates in a jurisdiction, in which ASIs are, in principle, available;
• the implementer has filed or threatened to file a motion for an ASI against other patent holders and there is no indication that it will not take such measures against the patent holder seeking court protection in Germany as well in the future;
• the implementer failed to declare in text form within a short deadline set by the patent holder (e.g. with the first notification of infringement) that it will refrain from filing a motion for an ASI. [5]

The Court clarified that the above list is not exhaustive; further circumstances could also offer sufficient grounds for the grant of an AASI. [6]

In the eyes of the Court, recognising the existence of a 'risk of first infringement' already when ASIs are threatened is needed for providing 'effective legal protection' in this context. [7] Otherwise, the negotiation process set forth by the Court of Justice of the EU (CJEU) in Huawei v ZTE [8] should be modified. [9] In particular, the SEP holder should no longer be obliged to notify the implementer about the infringement before filing a court action. [10] By making a notification of infringement, the patent holder exposes itself to an ASI. If an ASI is granted, then it will in many cases be de facto prevented from exercising its right to injunctive relief even towards implementers unwilling to take a licence. [11] According to the Court, this result would conflict with both the EU IPR Enforcement-Directive (Articles 9-11) [12] and the case-law of the CJEU. [13]

In addition, the Court pointed out that balanced negotiations on an equal footing -as envisioned by the CJEU in Huawei v ZTE- can only be ensured, if the parties have equal access to legal remedies: The implementer's ability to attack patent validity should be counterbalanced by the patent holder's ability to assert its patent rights before court. [14] This is no longer the case, when the judicial assertion of claims against patent infringement is excluded based on an ASI. [14] The Court noted that an ASI directly violates the SEP holders' right to have access to courts which is established in both European law (Article 47 para. 1 of the EU Charter of Fundamental Rights) and German constitutional law. [14]

Against this backdrop, the Court found that a 'risk of first infringement' was given in the present case. [15]

First, the Court referred to the AEI previously obtained by Huawei in China, preventing a third licensor from enforcing an injunction granted by the District Court of Duesseldorf. [16] According to the Court, this fact revealed Huawei's willingness to take measures against the assertion of claims for injunctive relief in Germany and, thus, established a 'risk of first infringement' in the above sense. [17] The statement of a Huawei representative during the proceedings that such measures are considered only when it is 'reasonable and required' for protecting Huawei's rights and interests did not convince the Court otherwise. [17] In this respect, the Court observed that AEIs are to be treated the same way as ASI, since they follow the same purpose just in a different phase of infringement proceedings (AEIs are relevant after the end of the trial, whereas ASIs impact pending or future trials) [18] . What is more, AEIs impair the SEP holder's right to access justice in an even stronger manner than ASIs, since they are directed against court decisions which have established both infringement and the existence of a claim for injunctive relief. [18]

Second, the Court found that by pointing out to the aforementioned Chinese AEI during the video call on 18 December 2020, Huawei had voiced a threat to file a motion for an ASI in China, which established a 'risk of first infringement' as well. [19] The Court held that -from an objective standpoint- one could 'undoubtedly' extract from Huawei's respective statement that it was prepared to take (even pre-emptive) measures against IP Bridge. In the eyes of the Court, it would make no sense in the context of negotiations to mention available procedural means that are not considered to be suitable in the specific case. [20]

Third, the Court noted that Huawei did not remove the 'risk of first infringement' by declaring that it will refrain from seeking an ASI. [21] Huawei did not make such declaration although it could safely assume that IP Bridge considered Huawei's referral to the AEI previously obtained in China as a threat after the Munich AASI was served in January 2021, at the latest. [21] What is more, Huawei did not make a respective declaration even after having been asked to do so by IP Bridge in March 2021 in the course of the UK proceedings. [22]

Fourth, having taken the overall circumstances of the case into account, the Court held that a 'risk of first infringement' is also established by the launch of the Chinese FRAND proceedings in March 2021. [23] The fact that the Chinese FRAND proceedings did not involve setting global FRAND rates but were limited to the determination of the rates for a licence covering solely Chinese patents made no difference: the Court underlined that under Chinese law ASIs (or AEIs) are not only available in cases, in which Chinese courts are asked to set global rates, but also in cases, where rates for China shall be determined. [24] As an example, the Court mentioned the AEI obtained by Huawei against the Duesseldorf injunction. [24]

Finally, the Court added that the fact that the patent asserted by IP Bridge in the German infringement proceedings would expire soon (7 September 2021) did not exclude the 'risk of first infringement' here, particularly since the Munich AASI extended to IP Bridge's entire SEP portfolio. [25]
 

Grounds for preliminary injunction

Having said that, the Court found that IP Bridge had shown sufficient grounds for the grant of an AASI as well. [26]

The Court observed that the urgency required for interim measures (such as an AASI) was given. [27] IP Bridge had filed the motion for an AASI on 8 January 2021, that is within a deadline of one month starting from the moment, in which Huawei articulated the threat of an ASI (video call on 18 December 2020).Ibid, para. 69 and 71. As a rule, Munich courts require that requests for preliminary injunctions concerning patents must be filed within a deadline of one-month, which begins when the patent holder gains 'secure knowledge' of the filing of an ASI request or the respective threat; see paras. 64-68.

Furthermore, the Court explained that interim measures are justified, since it was not reasonable to ask IP Bridge to defend itself against a potential Chinese ASI in regular (main) court proceedings in Germany. [29] The right to injunctive relief is the 'essential feature' of exclusionary rights, such as patent rights, and the 'sharpest weapon' against infringement: Indeed, patents would be factually 'worthless', if the patent holder would be denied the possibility to enforce its rights by way of court proceedings. [29] Given that injunctions are available only for the limited lifetime of a patent, regular proceedings against an ASI would not sufficiently secure patent holder's rights; the latter would be, effectively, deprived of the right to injunctive relief until the first instance ruling of the court. [29]
 

Balance of interests

The Court further explained that IP Bridge's interest in obtaining protection of its legal position under an AASI outweighs Huawei's interest to use procedural means likely available under Chinese law. [30]

IP Bridge had an interest that the Munich AASI is confirmed. Although a potential Chinese ASI would not be enforceable in Germany due to violation of public order, the threat of sanctions that could be imposed in China would de facto prevent IP Bridge from enforcing its patent rights in Germany for an unforeseeable period of time, which would significantly limit its right to have access to justice. [31]

On the other hand, the Munich AASI would not impair the Chinese FRAND proceedings initiated by Huawei. [32] According to the Court, the German infringement proceedings would most likely not revolve around the same question raised in the Chinese FRAND proceedings, that is the determination of the FRAND rate for a Chinese licence. German courts would probably not examine the amount of an adequate global royalty rate (including the Chinese rate), because it is very unlikely that they would examine a FRAND defence raised by Huawei on the merits. [32] Reason for that would be, that by threatening to file an motion for an ASI in China, Huawei acted as an 'unwilling licensee', so that a potential FRAND defence raised in the German infringement proceedings would have almost no prospects of success. [32]

In addition, the Court took the view that Huawei's interest to avoid infringement trials in Germany during the pendency of the Chinese FRAND proceedings was not worthy of protection. [33] Huawei did neither constantly monitor the IPR landscape, as it is obliged to, nor obtain necessary licences before starting production. What is more, it refused to do so for more than five years, so that it can no longer be expected from IP Bridge to further delay the assertion of its rights. [33]
 

ASI and implementer's willingness to obtain a licence

Apart from the above, the Court made clear that an implementer, who threatens to file a motion for an ASI or files such a motion, can, as a rule, not be treated as a 'willing licensee' within the meaning of the Huawei v ZTE ruling of the CJEU and the recent case-law of the German Federal Court of Justice (Bundesgerichtshof) in the Sisvel v Haier [34] cases. [35] According to the Court, an implementer truly willing to obtain a FRAND licence would regularly refrain from actions impairing SEP holder's 'property-like' rights, which go beyond the past and ongoing acts of infringement (e.g. the filing of a motion for an ASI). [7]

Furthermore, the Court expressed the view that an implementer notified about the infringement of SEPs can be required to not only to adequately demonstrate willingness to obtain a FRAND licence, but also to declare that it will not file a motion for an ASI against the patent holder. [7]

In this context, the Court noted that SEP holders cannot be expected to pre-emptively prepare countermeasures for potential future ASIs, even when they seek to offer global portfolio licences to implementers. [11] This would lead to disproportionate high costs at a point in time, in which either the risk nor the impact of an ASI could be reliably assessed. [7]
 

C. Other issues

The Court explained that IP Bridge had a legitimate interest in initiating legal proceedings in the present case. [36] Under German law, this is a prerequisite for any court action and is, basically, given, when the claims asserted have not been fulfilled by the defendant. The fact that IP Bridge would, in principle, be in a position to contest an ASI potentially issued in China in so-called 'reconsideration proceedings' before Chinese courts did not remove its legitimate interest that its case is heard by German courts. [37] The Court held that 'reconsideration proceedings' could not sufficiently protect IP Bridge's 'property-like' rights in Germany, especially since a reliable assessment of the prospects of success of such legal remedy is hardly possible. [37] What is more, 'reconsideration proceedings' have no suspensory effect, so that a granted ASI remains in force, even if such proceedings are introduced by the patent holder. [37]

Furthermore, the Court explained that the pendency of the Chinese FRAND proceedings did not remove IP Bridge's legitimate interest in legal remedies or prevent German courts from hearing the case (no lis pendens) [38] , given that the German infringement proceedings and the Chinese FRAND proceedings had different subject matters. [39]

The Court also confirmed that the Munich AASI had been served to Huawei within the relevant one-month deadline under German law. [40]
 

• [1] IP Bridge v Huawei, District Court of Munich I, judgment dated 24 June 2021, Case-No. 7 O 36/21
• [2] Ibid, para. 23.
• [3] Ibid, para. 32; see also para. 25.
• [4] Ibid, para. 32.
• [5] Ibid, paras. 34 and 41.
• [6] Ibid, para. 34.
• [7] Ibid, para. 37.
• [8] Huawei v ZTE, Court of Justice of the EU, judgment dated 16 July 2015, Case No. C-170/13.
• [9] IP Bridge v Huawei, District Court of Munich I, judgment dated 24 June 2021, para. 38.
• [10]  Ibid, para. 38.
• [11] Ibid, para. 40.
• [12] Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights (OJ L 157, 30.4.2004).
• [13] IP Bridge v Huawei, District Court of Munich I, judgment dated 24 June 2021, para. 40.
• [14] Ibid. para. 39.
• [15] Ibid, paras. 42 et seqq.
• [16] Ibid, paras. 43 et seqq.
• [17] Ibid, para. 45.
• [18] Ibid, para. 43.
• [19] Ibid, paras. 46 et seqq.
• [20] Ibid, paras. 48 and 49.
• [21] Ibid, para. 52.
• [22] Ibid, paras. 52 and 56-57.
• [23] Ibid, paras. 53 et seqq.
• [24] Ibid, para. 53.
• [25] Ibid, para. 58; see also para. 79.
• [26] Ibid, paras. 63 et seqq.
• [27] Ibid, paras. 64 et seq.
• [28] Ibid, para. 69 and 71. As a rule, Munich courts require that requests for preliminary injunctions concerning patents must be filed within a deadline of one-month, which begins when the patent holder gains 'secure knowledge' of the filing of an ASI request or the respective threat; see paras. 64-68.
• [29] Ibid, para. 73.
• [30] Ibid, paras. 74 et seqq.
• [31] Ibid, para. 75; see also para. 73.
• [32] Ibid, para. 76.
• [33] Ibid, para. 78.
• [34] Sisvel v Haier, Bundesgerichtshof, judgment dated 5 May 2020, Case No. KZR 36/17; and Sisvel v Haier II, Bundesgerichtshof, judgment dated 24 November 2020, Case No. KZR 35/17.
• [35] IP Bridge v Huawei, District Court of Munich I, judgment dated 24 June 2021, para. 37; see also para. 59.
• [36] Ibid, paras. 27 et seqq.
• [37] Ibid, para. 29.
• [38] Ibid, para. 77.
• [39] Ibid, para. 30.
• [40] Ibid, para. 80.