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  • Marta Beckwith

First Pop Quiz - A Tale of Three Lawsuits

Historically, when licensing negotiations fail, large SEP holders file patent infringement lawsuits in multiple jurisdictions against a single implementer. Sometimes implementers file breach of contract (for breach of the FRAND commitment) or declaratory judgement actions against SEP holders when negotiations break down.


Here is the story of three such disputes. Each of the jurisdictions listed below is an outlier in its own way. Can you name each of the jurisdictions? Bonus points if you can also identify why the jurisdiction is an outlier, and even more points if you can name the case.


I’m turning comments on if you want to post your answers in the comments section, or if you’re a subscriber send me a message or just see if you can identify them to yourself. Answers will be posted next week.


Lawsuit 1:


After licensing negotiations fail, Implementer files a lawsuit in Jurisdiction 1 against SEP Holder seeking a determination of its rights, and SEP Holder’s obligations, under SEP Holder’s FRAND commitment. Both Implementer and SEP Holder have their primary bases in Jurisdiction 1.[1] SEP Holder responds by filing a lawsuit against Implementer in Jurisdiction 2 seeking an injunction against Implementer for infringement of SEP Holder’s FRAND committed Jurisdiction 2 SEPs. Implementer asks the court in Jurisdiction 1 for an anti-suit injunction to stop SEP Holder from pursuing an injunction in Jurisdiction 2.

Jurisdiction 1 issues an anti-suit injunction preventing SEP Holder from pursuing an injunction in Jurisdiction 2. Jurisdiction 1 determines that SEP Holder’s license offer has breached its FRAND obligation and sets its own FRAND rate for SEP Holder’s SEPs.


Lawsuit 2:


After licensing negotiations fail, Implementer files a lawsuit in Jurisdiction 1 against SEP Holder seeking a determination of its rights, and SEP Holder’s obligations, under SEP Holder’s FRAND commitment. SEP Holder responds by filing a lawsuit against Implementer in Jurisdiction 3 seeking an injunction against Implementer for infringement of SEP Holder’s FRAND committed Jurisdiction 3 SEPs. Implementer asks the court in Jurisdiction 1 for an anti-suit injunction to stop SEP Holder from pursuing an injunction in Jurisdiction 3. SEP Holder races to file an additional suit in Jurisdiction 4 and asks the courts in both Jurisdiction 3 and Jurisdiction 4 for an anti-anti suit injunction preventing Implementer from pursuing its anti-suit injunction in Jurisdiction 1. Neither Implementer nor SEP Holder are primarily based in either Jurisdiction 1, Jurisdiction 3 or Jurisdiction 4. Implementer is primarily based in Jurisdiction 5 (albeit with a significant presence in Jurisdiction 1) and SEP Holder in Jurisdiction 2. Implementer has significant sales in Jurisdiction 1 (and Jurisdiction 5), but comparatively small sales in Jurisdictions 3 and 4.


Nonetheless, before the court in Jurisdiction 1 can rule on the original anti-suit injunction request, the courts in both Jurisdiction 3 and Jurisdiction 4 issue anti-anti suit injunctions preventing Implementer from pursuing its anti-suit injunction in Jurisdiction 1. Jurisdiction 4 specifically requires Implementer to withdraw its Jurisdiction 1 request for an anti-suit injunction as it relates to Jurisdiction 4. The parties eventually settle.


Lawsuit 3:


After licensing negotiations fail, SEP Holder files a lawsuit in Jurisdiction 3 against Implementer seeking a determination that the terms it offered to Implementer satisfied its FRAND obligation and seeking an injunction against Implementer for not taking a license. SEP holder also files a suit in Jurisdiction 2 against Implementer seeking an injunction against Implementer’s sales in Jurisdiction 2. Implementer files a lawsuit in Jurisdiction 5 against SEP Holder seeking a determination of its rights, and SEP Holder’s obligations, under SEP Holder’s FRAND commitment. Implementer has some sales in Jurisdictions 2 and 3, but they are not (a) its country of incorporation; (b) where it has its headquarters; nor (c) its biggest market for its products. Implementer is incorporated, has its headquarters and the largest part of its sales in Jurisdiction 5. Neither Jurisdiction 2 nor Jurisdiction 3 is SEP Holder’s primary base. SEP Holder claims to be based in Jurisdiction 1, but its parent entity is based in an entirely different country that is not any of the jurisdictions discussed in this post. Implementer seeks and the court in Jurisdiction 5 grants an anti-suit injunction against SEP Holder enforcing any injunction received in Jurisdiction 2 and also issues a decision about FRAND rates for the Jurisdiction 5 SEPs. Jurisdiction 3 issues a global FRAND determination, including setting rates for the Jurisdiction 5 SEPs.


[1] By primary base, I mean the country in which the ultimate parent is incorporated and headquartered, not where the particular entity involved in the lawsuit is incorporated or headquartered.

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