UPC grants first anti-anti-suit injunction

The Munich Local Division with presiding judge Zigann as the single judge has granted the UPC’s first ever anti-anti-suit injunction to Huawei as part of their worldwide dispute with Netgear on FRAND licencing of Huawei’s standard essential patents in the WiFi 6 standard. 

Huawei and Netgear were engaged in a multi-jurisdiction FRAND licencing dispute concerning Huawei’s standard essential patents in the WiFi6 standard. As part of this dispute Netgear filed two requests for anti-suit injunctions with US courts, specifically asking the US courts to bar Huawei from seeking to enforce their WiFi6 standard essential patents at the UPC. In response, Huawei filed an ex parte request for an anti-anti-suit injunction at the UPC Munich LD, asking for an expedited decision without the defendant being heard to obtain the relevant order before a scheduled hearing at the US courts and to prevent a risk of Netgear frustrating the purpose of the anti-anti-suit injunction request by seeking to expedite the US anti-suit proceedings. 

The Munich LD reasoned that not only does the UPC have jurisdiction over infringement of European patents but also that such infringement does not only concern infringement of the patented subject matter by third parties without permission but also violations of the property rights of the patent proprietor. The US anti-suit injunction, if successful, would prevent the claimant Huawei from exercising their rights under the European patent, thereby violating the proprietor’s property rights in the patent. Moreover, the judge considered that an anti-suit injunction granted by the US courts with regard to the jurisdiction of UPC would prevent the patent proprietor from accessing the UPC or, more generally, justice in Europe. This was seen as contrary to the EU charter as well as German law (which is applicable to at least questions regarding German validations of European standard essential patents as an object of property). Whilst not pleaded the judge also considered that it is likely that the property laws of other UPC member states are unlikely to differ at least with the legislative intent of the relevant parts of German law. Consequently Huawei’s request for an anti-anti-suit injunction was granted, with a penalty payment of EUR 250,000 per day. Huawei was required to pay a security of EUR 3,000,000.

Huawei and Netgear appear now to have settled their dispute since this order has issued, so this order will not be scrutinised at full trial, let alone by the UPC Court of Appeal.  It is nevertheless encouraging, if not unexpected, that the UPC has shown a clear intention to continue the anti-anti-suit injunction practice of the German national courts.