Anti-anti-suit injunctions at the Unified Patent Court

By Wouter Pors, Partner, Intellectual Property lawyer at Bird & Bird & registered UPC Representative

Patent litigation often has an international dimension, as patentees may hold patents validated in multiple Member States of the European Patent Convention and even across the world. Consequently, patent disputes can be litigated in various courts. While actions may commence concurrently in several countries, it is also possible for litigation to begin in a limited number of jurisdictions -often due to market significance or the courts’ expertise in patent matters- and later expand to others. Multiple actions are quite common in the pharmaceutical sector and the mobile telecommunications sector.

This can be burdensome for the defendant and creates the risk of irreconcilable judgments. A notable example is the litigation between Document Security Systems, Inc and the European Central Bank where the patent holder alleged that a security feature of the Euro banknotes infringed its patent. At first instance, the results in nine EU Member States varied widely, potentially leading to serious consequences.

To counter this, defendants seek ways to limit the number of parallel actions. In disputes involving standard essential patents, the ultimate goal is often to secure a global licence agreement. In such cases, implementers typically aim to prevent national injunctions, while patentees strive to pressure implementers into negotiating in good faith. The threat of injunctions serves as a strategic tool for patentees to expedite the negotiation process.

In addition to parallel actions targeting individual countries, it is also possible to seek cross-border injunctions. Under certain conditions, a court may issue a decision with effects in other jurisdictions, with the basis for such jurisdiction stemming from national procedural law, EU law, or principles of “general international law” (General internation law is at the basis of the CJEU judgment of 25 February 2025 in BSH Hausgeräte v Electrolux, C-339/22, CURIA – Documents). The most suitable court for cross-border litigation is often the defendant’s home court, as, for example, Article 4 of the Brussels I bis Regulation grants that court worldwide jurisdiction over the defendant. However, other grounds for jurisdiction may also apply.  While enforcing an injunction abroad can be challenging, if the defendant’s home court grants the injunction and imposes monetary penalties for non-compliance, those penalties can typically be collected directly from the defendant without requiring enforcement in foreign jurisdictions.

An instrument developed primarily in common law countries to counter foreign litigation is the anti-suit injunction. This remedy seeks to prohibit a party from initiating or continuing litigation in a foreign jurisdiction. When such an action is brought up before the defendant’s home court, enforcement poses little difficulty. However, the Court of Justice of the European Union has ruled -notably in Turner v Grovit (CJEU 27 April 2004, Turner v Grovit, C-159/02, CURIA – Documents) and other cases- that anti-suit injunction cannot be issued to prevent litigation in other EU Member States, as this would be a violation of  the principle of mutual trust among the courts of EU Member States.

Nevertheless, anti-suit injunctions continue to play a role in global disputes, particularly in the mobile telecommunications sector. For example, a US court or a court in China may issue an injunction prohibiting a party from initiating or continuing litigation in the European Union against the party seeking the anti-suit injunction. However, such injunctions may not be recognized in the EU if they are deemed contrary to international “ordre public”. Additionally, there may be no applicable instrument for the recognition and enforcement of these judgments (The Hague Convention on the Recognition and Enforcement of Foreign Judgments in Civil or Commercial Matters of 2 July 2019 excludes intellectual property matters in Article 2(1)(m) and is not yet widely ratified anyway). Nonetheless, if the defendant holds assets in the jurisdiction of the court that issued the injunction, it may still have a practical effect. This dynamic has given a rise to anti-anti-suit injunctions -and even anti-anti-anti-suit injunctions- as parties seek to counteract these cross-border legal manoeuvres. 

The Munich Local Division of the Unified Patent Court (UPC)recently addressed the issue of the anti-suit injunction in a case between Huawei and Netgear. Huawei, based in China, sued Netgear Inc, a US based company, along with two of its Europe-based subsidiaries, for infringement of two European patents within the UPC’s jurisdiction. The Statement of Claim was filed on the UPC’s opening day, 1 June 2023. The patents in question were standard essential patents for the Wi-Fi 6 standard, making the UPC action part of a global dispute. In response, Netgear filed an action for an anti-suit injunction against the UPC proceedings in the District Court for the Central District of California, framing it as part of a competition law claim. Huawei became aware of this on 4 December 2024 and filed an anti-anti-suit injunction at the UPC on 9 December 2024. A hearing for the US action was scheduled for 24 January 2025.

To prevent the US Court from granting an anti-suit injunction, Huawei needed to secure an anti-anti-suit injunction, restraining Netgear from pursuing the anti-suit injunction ahead of the scheduled hearing in California on 24 January. This required a swift preliminary injunction (PI) action before the UPC. Huawei also feared that if Netgear became aware of the PI action, it might accelerate the California proceedings. As a result, Huawei requested that the PI action be handled ex parte, meaning without notifying Netgear until after the injunction was granted. While the UPC rules of Procedures permit ex parte proceedings, the requesting party must present compelling reasons to justify excluding the defendant from the process. 

A further challenge arises from Article 32(1) UPC Agreement, which outlines the actions within the UPC’s jurisdiction. These include actions for patent infringement (under paragraph a) and related provisional measures (under paragraph c), but do not cover general tort actions, for example. The UPC’s jurisdiction cannot extend beyond the scope defined in the UPCA, making it more limited in this respect compared to national courts. However, it is clear that an anti-anti-suit injunction, which safeguards litigation concerning the infringement of European patents before the UPC, is closely linked to the enforcement of those patents. The UPC sometimes faces difficulties in navigating these jurisdictional limitations, particularly where such constraints may not have been fully considered by the parties who negotiated the Agreement. 

The UPC Munich Local Division indeed granted an ex parte anti-anti-suit injunction against Netgear in an order dated 11 December 2024 just two days after Huawei filed the claim (2024-12-11 ACT_65376-2024 UPC_CFI_791-2024 AASI AEI redacted.pdf).

According to the judge, not only does the unlawful use of a patent constitute an infringement under Article 32 UPCA, but also any interference with the property rights attached to a patent, such as an injunction that obstructs its enforcement. This was the issue in the present case, as Netgear sought to obtain a permanent injunction against Huawei’s actions before the UPC and against enforcement of orders granted in those actions. The UPC had jurisdiction under both Article 31 UPCA and the Brussels I bis Regulation, as the US anti-suit-injunction would have effect within its territory. The Munich Local Division’s competence was based on Article 33(1)(a) UPCA, as there was a threatened encroachment on Huawei’s property rights regarding the enforcement of its patents through the Munich Local Division.

 The judge emphasized that, under Article 47 of the Charter of Fundamental Rights of the EU, everyone whose rights and freedoms guaranteed by Union law are violated has the right to an effective remedy before an independent and impartial tribunal, previously established by law. Additionally, Article 17(2) of the Charter recognizes intellectual property rights as equivalent to property rights, and therefore, they are to be protected under the Charter (Actually, the ECHR has held in its judgment of11 January 2007, Anheuser Busch v Portugal, 73049/01, that an application for an IP right already falls within the scope of Article 1 of Protocol No. 1, as it gives rise to interests of a proprietary nature (https://hudoc.echr.coe.int/eng?i=001-78981). As a result, access to justice for a party seeking to address infringement ensures access to the UPC. Similar protection is afforded at least for the German validation of European patents under German constitutional law, with no indication that this protection differs under the laws of other states where the European patents are validated.

The application was deemed urgent, and the balance of convenience was found to be in favour of Huawei. The injunction was granted ex parte due to the risk of irreparable harm that could arise if Netgear were made aware of the application. Netgear was enjoined from pursuing the current action in California, as well as from initiating similar actions aimed at preventing Huawei from enforcing its patents at the UPC. A penalty of € 250.000 was imposed for each day Netgear violated this anti-anti-suit injunction.

This is a significant decision. There has been considerable debate over whether the wording of Article 32 UPCA excludes jurisdiction for claims that are not directly aimed at stopping patent infringement. The UPC has now adopted an expansive interpretation of the concept of infringement and has granted a broadly worded injunction. The next question is whether Article 32 UPCA can also extend to claims related to facilitating patent infringements. This decision demonstrates that the UPC Agreement allows for flexibility, enhancing the UPCs utility in handling complex patent disputes.

Anti-anti-suit injunctions at the Unified Patent Court

By Wouter Pors, Partner, Intellectual Property lawyer at Bird & Bird & registered UPC Representative