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Updated 19 October 2020

Continental v Nokia

OLG Munich
12 December 2019 - Case No. 6 U 5042/19

A. Facts

Nokia holds a number of patents declared essential to the practice of 3G and 4G wireless telecommuni- cations standards (Standard Essential Patents, or SEPs). Daimler is one of the world’s largest motor car manufacturers. Continental, a worldwide group of companies with headquarters in Germany, is a supplier of Daimler.

In March 2019, Nokia filed ten patent infringement actions against Daimler before the District Courts of Munich, Duesseldorf and Mannheim in Germany based on several of its German SEPs (German infringement proceedings). Following third-party notices issued by Daimler, two companies of the Continental group joined the German infringement proceedings as interveners (the German subsidiary Continental Automotive GmbH and the Hungarian subsidiary Continental Automotive Hungary Kft.).

On 10 May 2019, a further subsidiary of the Continental group based in the United States, Continental Automotive Systems Inc. (Continental US), brought an action against Nokia and others before the US District Court for the Northern District of California (US Court), accusing Nokia of antitrust violations.

On 12 June 2019, Continental US also filed a motion for an anti-suit injunction, asking the US Court to enjoin Nokia from prosecuting the German infringement proceedings (US motion for anti-suit injunction). The US Court gave Nokia the possibility to respond to the motion for an anti-suit injunction within a deadline expiring on 24 July 2019.

On 9 July 2019, Nokia filed a motion for a preliminary injunction before the District Court of Munich (District Court). Nokia requested the District Court to order Continental US to withdraw the US motion for an anti-suit injunction and to refrain from applying for an anti-suit injunction or similar measures in the future. In addition, Nokia requested an order against the German parent company of the Continental group (Continental Germany), enjoining -among other things- the latter to ensure that Continental US will withdraw the US motion for anti-suit injunction.

On 11 July 2019, the District Court granted Nokia’s request for a preliminary injunction against Continental US [1] .

On 30 July 2019, the District Court issued also an injunction against Continental Germany, ordering the latter to make sure that its affiliate will withdraw the US motion for anti-suit injunction [2] . Continental Germany appealed this decision.

On 3 September 2019, Continental US withdrew the US motion for anti-suit injunction. On 8 October 2019, however, Continental US filed a motion for a Temporary Restraining Order (TRO) against Nokia before the US Court, asking the court to enjoin Nokia from asserting its patents in Germany against companies of the Continental group and their clients. This motion was rejected.

With the present judgment dated 12 December 2019 [3] (cited by https://www.gesetze-bayern.de/Content/Document/Y-300-Z-BECKRS-B-2019-N- 33196?hl=true&AspxAutoDetectCookieSupport=1)., the Higher District Court of Munich (Appeal Court), dismissed the appeal of Continental Germany and confirmed the injunction granted by the District Court on 30 July 2019.


B. Court’s reasoning

The Appeal Court found that Nokia was entitled to an injunction against Continental Germany, in order to prevent a direct unlawful threat to its property rights.

Under German law, an anti-suit injunction or a TRO granted by the US Court would unlawfully infringe Nokia’s property rights: Nokia would be deprived of its right to enforce the exclusivity arising from its patents against Daimler in the pending German infringement proceedings [4] .

The threat to Nokia’s property right emerging from such measures is still urgent, although Continental US had withdrawn the US motion for anti-suit injunction in the meantime. In the Appeal Court’s eyes, the new motion for a TRO filed by Continental US against Nokia indicated that the former had not abandoned the respective strategy yet [5] .

The fact that Continental US – and not Continental Germany – had initiated both motions, did not exclude an injunction against the latter [6] . The Appeal Court confirmed the District Court’s view that Continental Germany was to be considered as ‘co-perpetrator’ of the motions filed by its affiliate in the US, since it had not provided any evidence to counter Nokia’s pleadings suggesting that Continental US acted with the knowledge/consent of its German parent company [7] .

Furthermore, the Appeal Court made clear that the ‘anti-anti-suit injunction’ granted by the District Court in first instance was legally admissible [8] . Continental Germany had, basically, argued that the District Court’s injunction should not have been granted in Germany, since it had the same effect as the US anti- suit injunction, namely depriving Continental US from asserting its rights in court proceedings in the US.

Insofar, the Appeal Court disagreed with the District Court, which had ruled that a German anti-anti-suit injunction was admissible, because it concerned only an auxiliary motion filed by Continental US (motion for an anti-suit injunction) and, thus, had no effect on the main proceedings initiated against Nokia in the US [9] . The Appeal Court held that, as a rule, it is not justified to prevent a party from pursuing even auxiliary motions by court order [10] .

The Appeal Court took, however, the view that the German anti-anti-suit injunction was admissible, since it was -as Nokia had argued- the ‘only effective means of defence’ against an US anti-suit injunction [11] . Moreover, in the present case, it was justified to allow Nokia’s interest to defend itself against an unlawful legal measure to prevail over the interest of Continental US to preserve its freedom to act [12] .

Furthermore, the fact that Nokia was, in principle, in the position to participate in the US proceedings for an anti-suit injunction did not speak against granting an anti-anti-suit injunction to Nokia in Germany. Reason for that was, according to the Appeal Court, that the implications of an anti-suit injunction on Nokia’s right to proceed with the German infringement proceedings would not have been a factor considered by the US Court, when deciding on the motion for an anti-suit injunction filed by Continental US [13] . Nokia, would, therefore, not be able to sufficiently defend its rights in the proceedings before the US Court.

Equally irrelevant for the present case was the fact that the US anti-suit injunction would most likely not be enforceable in Germany [13] . The Appeal Court pointed out that the penalties which Nokia would be required to pay in the US in case of non-compliance with an anti-suit injunction would, in fact, force Nokia to stop asserting its patents in the German infringement proceedings [14] .

In addition, the Appeal Court found that the ‘anti-anti-suit injunction’ granted by the District Court in Germany did not violate international law, since it did not have any direct impact on the jurisdiction of the US courts and, accordingly, did not question US sovereignty [15] .

Finally, the Appeal Court highlighted that the decision of the District Court did neither violate European law. European law was not even applicable here, since the case involved the infringement of German patent rights by a domestic entity [16] .

  • [1] Nokia v Continental, District Court of Munich, Order dated 11 July 2019, Case-No. 21 O 3999/19.
  • [2] Nokia v Continental, District Court of Munich, Order dated 30 July 2019, Case-No. 21 O 9512/19.
  • [3] Nokia v Continental, Higher District Court of Munich, decision dated 12 December 2019, Case-No. 6 U 5042/19
  • [4] Ibid, para. 55.
  • [5] Ibid, para. 56.
  • [6] Ibid, paras. 76 et seqq.
  • [7] Ibid, paras. 81 et seqq.
  • [8] Ibid, paras. 58 et seqq.
  • [9] Ibid, paras. 59 et seqq.
  • [10]  Ibid, paras. 59 et seqq.
  • [11] Ibid, paras. 69 and 72.
  • [12] Ibid, para. 69.
  • [13]  Ibid, para. 70.
  • [14] Ibid, para. 71.
  • [15] Ibid, para. 73.
  • [16] Ibid, para. 74.

Updated 13 April 2020

IPCom v. Lenovo, Court of Appeal of Paris - RG 19/21426

French court decisions
3 March 2020 - Case No. 14/2020

A. Facts

In 2007, IPCom GmbH & Co. KG (IPCom) acquired a portfolio of over 160 patent families covering 2G, 3G and 4G standards from Robert Bosch GmbH [17] . One of the patents is EP 1 841 268 B2 (EP 268), essential to the 3G standard [18] .

IPCom submitted a FRAND commitment (FRAND stands for Fair, Reasonable and Non-Discriminatory) to the European Telecommunications Standards Institute (ETSI) considering patents that are or might become essential to the practice of a standard [19] .

In September 2018, IPCom made a licensing offer to Lenovo [18] . On 1 March 2019, IPCom sent a formal notice to Lenovo and asked Lenovo to reply to its licensing offer by 15 March 2019 [20] . IPCom indicated that, absent a reply by this deadline, it would initiate legal proceedings to protect its rights [21] .

Claiming that IPCom’s offer was not FRAND in view of the offered rate and the fact that the portfolio included expired or soon to expire patents, the US subsidiaries of the Lenovo group, Lenovo Inc. and Motorola Mobility LLC initiated on 14 March 2019 an action against IPCom before the District Court for the Northern District of California (US District Court) [22] . They claimed that IPCom had breached its duty under the commitment towards ETSI to offer Lenovo a licence on FRAND terms and requested the US District Court to set up the terms for a worldwide FRAND license for IPCom’s patent portfolio [18] .

On 2 July 2019, IPCom filed an infringement action against the group UK subsidiaries, Lenovo technology (UK) Limited and Motorola Mobility UK Ltd., before the London High Court of Justice. IPCom sought an injunction against infringing products, unless a license was concluded within the proceedings pending in the United States [23] .

On 18 September 2019, the US subsidiaries Lenovo Inc. and Motorola Mobility LLC filed an anti-suit injunction motion before the US District Court to prevent IPCom from pursuing the pending infringement proceedings in the UK and to file any new infringement action against any entity of the Lenovo group or to seek any anti-anti suit injunction before a foreign court as long as the US District Court has not ruled over what constitutes FRAND terms and conditions [24] .

On 25 and 28 October 2019, IPCom summoned the French entities of the group, Lenovo (France) SAS and Motorola Mobility France SAS, before the Court of Paris [25] . IPCom’s aim was to have the US anti-suit injunction motion withdrawn and forbid Motorola Mobility LLC and Lenovo Inc. from filing any complaint preventing IPCom from enforcing its rights [18] . IPCom initiated proceedings to the same also in the UK [26] .

IPCom had, in parallel, summoned Lenovo (France) SAS and Motorola Mobility France SAS, Modelabs Mobile Limited and Digital River Ireland Ltd. before the Court of Paris in proceedings, in which it sought a preliminary injunction against them [18] .

On 8 November 2019, the Court of Paris decided that there was no reason for the case to be deferred to the US District Court [27] . The Court of Paris ordered Lenovo Inc. and Motorola Mobility LLC to withdraw the US anti-suit request, immediately and no later than 14 November 2019, as far as it related to any infringement proceedings with respect to the French counterpart of EP 268 and for any facts perpetrated on the French territory by the entities of the Lenovo Group, including any of their wholesalers, distributors, customers and any intermediary [28] . The Court of Paris also prohibited Lenovo Inc. and Motorola Mobility LLC to file any new action to the same end before a foreign jurisdiction [18] . The decision came along a penalty fee of EUR 200,000 per violation and per day of non-compliance [18] .

On the same day, the London High Court of Justice ruled that it would be vexatious and oppressive to prevent IPCom from defending the infringement and validity of EP 268 and ordered the English entities of the Lenovo group to not impede proceedings under English jurisdiction [29] .

The US subsidiaries of the group withdrew their Californian anti-suit injunction with respect to the French proceedings [30] .

On 14 November 2019, IPCom initiated main proceedings for EP 268 infringement against Lenovo group French entities, Modelabs Mobile (importer) and Digital River Ireland Limited (distributor) before the Court of Paris [31] .

On 22 November 2019, Lenovo Inc., Motorola Mobility LLC, Motorola Mobility France et Lenovo (France) filed an appeal against the ruling rendered by the Court of Paris on 8 November 2019, granting an anti-anti-suit injunction to IPCom [32] .

On 12 December 2019, the US District Court ruled that Lenovo and Motorola did not provide prima facie sufficient evidence of the court’s jurisdictional competence to decide over IPCom’s liability for a breach of its contractual duty towards ETSI and for the determination of a worldwide FRAND licence [33] . The US District Court allowed for a discovery to potentially review at a later stage its decision over the jurisdictional competence and terminated the anti-suit injunction [18] .

On 20 January 2020, the Court of Paris rejected in preliminary proceedings IPCom’s request of temporary measures, including an injunction, recall and confiscation of products until the patent expiration [34] . The court considered the measures were manifestly disproportionate and could create a distortion between the parties enabling IPCom to take an unfair advantage of the situation and impose non-FRAND terms and conditions [35] .

With the present judgment, the Court of Appeal of Paris (Court of Appeal) confirmed the first instance decision on the anti-anti-suit injunction [36] . However, the Court of Appeal excluded any new motion for anti-suit injunction that may be filed in the future by Lenovo Inc. and Motorola Mobility LLC from the scope of the anti-anti-suit injunction [18] .

The other court proceedings between IPCom and companies of the Lenovo group mentioned above are still pending.

B. Court’s reasoning

Lenovo’s arguments

The entities of Lenovo group considered that the French courts are not competent to review the measures requested by IPCom against the US subsidiaries. They claimed that the suspension of the French proceedings would not damage IPCom as the US District Court has been seized to determine a FRAND rate [37] . The only risk for IPCom to have the French proceedings suspended was to deprive IPCom from an injunction, however the Court of Paris in its decision in the parallel proceedings had already rejected this request [38] .

Furthermore, Lenovo argued that the anti-suit injunction requested in the US could rebalance the rights of the parties by avoiding multiple infringement proceedings by which IPCom intended to gain an advantage in licensing negotiations [39] . Accordingly, it claimed that IPCom’s behaviour constitutes an abuse of a dominant position, as IPCom had requested an injunction against their products although they were willing to take a license [18] .

Lenovo further took the view that the anti-suit injunction motion preserves the competence of the first jurisdiction seized with the case; it does not impede the sovereignty and competence of French courts and is, therefore, not contrary to French or European international public order [40] . It added that their anti-suit injunction motion did not differ from IPCom’s anti-anti suit injunction. Accordingly, the Court of Appeal should question the impact of its decision over the sovereignty of the US jurisdiction [18] .

Lenovo supported this argumentation with case law of the French Supreme Court that accepts anti-suit injunctions as long as they aim to sanction the breach of a pre-existing contractual duty [41] . It considered this applied in the present case, as IPCom had breached its FRAND commitment towards ETSI, by refusing to offer a FRAND license [18] .

Finally, Lenovo argued that the anti-suit injunction motion had not a manifestly illicit character and did not violate either IPCom’s right to a judge nor its property rights, since IPCom could exercise the right to a judge before the US District Court and it would be compensated by licensing fees [42] .

IPCom’s arguments

On the other hand, IPCom claimed that the French court was materially and territorially competent based on Article 46 of the French Code of Civil Procedure, since it could face damages in France [43] . Additionally, there was a possibility for the US District Court to be seized for a new anti-suit injunction motion after the discovery, as the US lawsuit had been temporarily suspended until the end of the discovery [18] .

IPCom further argued that the anti-suit injunction motion created an imminent harm to its fundamental rights, including the right of industrial property and the right to a fair trial, as guaranteed by Articles 1, 6-1 and 13 of the European Convention of Human Rights and Articles 17 and 47 of the European Charter of Fundamental Rights. There was also a risk of an imminent harm due to the fact that an anti-suit injunction could still be issued [44] .

IPCom also stated that the US anti-suit injunction motion was threatening the sovereignty of the French state and violated the French and European international public order [45] , since it sought to prohibit the French jurisdiction from exercising its jurisdictional powers [46] . On the contrary, IPCom’s request of an anti-anti-suit injunction did not have as an object or effect to deprive the claimants from their fundamental rights or the US courts from exercising their jurisdictional power [47] . Indeed, the decision did not aim to prohibit the US subsidiaries of Lenovo from continuing their action in the US [18] .

Moreover, the anti-suit injunction motion had breached the international public order as it was impeding the French courts to exercise the powers they were allocated by Articles 7-2 and 24.4 of the European regulation 1215/2015, i.e. reviewing the validity and infringement of EP 268 in France [48] ; and depriving IPCom from an effective jurisdictional protection of its intellectual property rights in any Member State of the European Union covered by the patent [18] .

The assessment of the Court of Appeal

The Court of Appeal agreed with the Court of Paris that had confirmed the competence of French courts for the claim raised [49] , as damages may occur in France [18] .

The Court of Appeal found that, if IPCom’s request was rejected, the latter would be deprived from the possibility to act and raise its rights arising from the French part of EP 268 before the French courts [18] . French courts were, however, competent based on Article 46 of the French Code of Civil Procedure (referring to tort claims) [18] .

The Court of Appeal added that the jurisdiction of French courts covered also preliminary proceedings, because such proceedings are attached to the court that would review the claims in the main proceedings, which could be affected by the anti-suit injunction motion [50] .

With respect to the merits of IPCom’s request, the Court of Appeal found that the US anti-suit injunction motion would create a manifestly illicit harm to IPCom, because it would prevent IPCom from pursuing or filing any new infringement action [51] . This would breach Article 17 of the European Chart of Fundamental Rights, as well as L611-1 and L615-1 of the French Intellectual Property Code, as IPCom would be deprived from the right to be heard by the sole judge competent to decide on the infringement [52] . Furthermore, IPCom’s right to a fair process would be taken away, in violation of Articles 6 para. 1 and 13 of the European Convention of Human Rights [18] . Finally, IPCom’s fundamental right to property would also be harmed [18] .

However, the Court of Appeal rejected IPCom’s claim to prohibit entities of the Lenovo group to file any new anti-suit injunction motion [53] . The Court of Appeal held that the sole possibility of harm did not suffice for such an order [54] . Therefore, it overturned the first instance decision to that extent [55] .

  • [17] Court of Appeal of Paris, judgement dated 3 March 2020, page 2, par. 4.
  • [18] Ibidem
  • [19] Court of Appeal of Paris judgement dated 3 March 2020, page 2, par. 5.
  • [20] Court of Appeal of Paris, judgement dated 3 March 2020, pages 2 and 3, par. 6.
  • [21] Court of Appeal of Paris, judgement dated 3 March 2020, page 3, par. 6.
  • [22] Court of Appeal of Paris, judgement dated 3 March 2020, page 3, par. 7.
  • [23] Court of Appeal of Paris, judgement dated 3 March 2020, page 3, par. 8.
  • [24] Court of Appeal of Paris, judgement dated 3 March 2020, page 3, par. 9.
  • [25] Court of Appeal of Paris, judgement dated 3 March 2020, page 3, par. 10.
  • [26] Court of Appeal of Paris, judgement dated 3 March 2020, page 3, par. 12.
  • [27] Court of Appeal of Paris, judgement dated 3 March 2020, page 3, par. 13.
  • [28] Court of Appeal of Paris, judgement dated 3 March 2020, pages 3 and 4, par. 13
  • [29] Court of Appeal of Paris, judgement dated 3 March 2020, page 4, par. 14.
  • [30] Court of Appeal of Paris, judgement dated 3 March 2020, page 4, par. 15.
  • [31] Court of Appeal of Paris, judgement dated 3 March 2020, page 4, par. 16.
  • [32] Court of Appeal of Paris, judgement dated 3 March 2020, page 4, par. 17. The Lenovo subsidiaries requested the Paris Court of Appeal to reform the anti-anti-suit injunction granted on 8 November 2019, to deny competence to review the action filed by Lenovo Inc. and Motorola Mobility LLC before the US District Court, consider the US judgement common to Lenovo (France) SAS and Motorola Mobility France SAS, refer IPCom to the US District Court, reject all claims of IPCom against Lenovo Inc. and Motorola Mobility LLC and condemn IPCom to pay 50,000 as process costs.
  • [33] Court of Appeal of Paris, judgement dated 3 March 2020, page 4, par. 19.
  • [34] Court of Appeal of Paris, judgement dated 3 March 2020, pages 4 and 5, par. 20.
  • [35] Court of Appeal of Paris, judgement dated 3 March 2020, page 5, par. 20
  • [36] Court of Appeal of Paris, judgement dated 3 March 2020, page 12, par. 1.
  • [37] Court of Appeal of Paris, judgement dated 3 March 2020, page 6, par. 25.
  • [38] Court of Appeal of Paris, judgement dated 3 March 2020, page 6, par. 26.
  • [39] Court of Appeal of Paris, judgement dated 3 March 2020, page 6, par. 28.
  • [40] Court of Appeal of Paris, judgement dated 3 March 2020, pages 6 and 7, par. 29.
  • [41] Court of Appeal of Paris, judgement dated 3 March 2020, page 7, par. 30.
  • [42] Court of Appeal of Paris, judgement dated 3 March 2020, page 7, par. 32
  • [43] Court of Appeal of Paris, judgement dated 3 March 2020, page 7, par. 34.
  • [44] Court of Appeal of Paris, judgement dated 3 March 2020, page 8, par. 37.
  • [45] Court of Appeal of Paris, judgement dated 3 March 2020, page 8, par. 39.
  • [46] Court of Appeal of Paris, judgement dated 3 March 2020, page 8, par. 39-40.
  • [47] Court of Appeal of Paris, judgement dated 3 March 2020, page 8, par. 40.
  • [48] Court of Appeal of Paris, judgement dated 3 March 2020, page 8, par. 41.
  • [49] Court of Appeal of Paris, judgement dated 3 March 2020, page 9, par. 45.
  • [50] Court of Appeal of Paris, judgement dated 3 March 2020, page 9, par. 46.
  • [51] Court of Appeal of Paris, judgement dated 3 March 2020, pages 10 and 11, par. 56-57.
  • [52] Court of Appeal of Paris, judgement dated 3 March 2020, pages 10-11, par. 57.
  • [53] Court of Appeal of Paris, judgement dated 3 March 2020, page 11, par. 61- 64.
  • [54] Court of Appeal of Paris, judgement dated 3 March 2020, page 11, par. 62-63.
  • [55] Court of Appeal of Paris, judgement dated 3 March 2020, page 11, par. 64.