Jurisdictional Battles in Both European Union Cross-border Injunctions and United States Anti-suit Injunctions

• Publication year: 2013

Jurisdictional Battles in Both European Union Cross-Border Injunctions and United States Anti-Suit Injunctions

Tyler J. Dutton

JURISDICTIONAL BATTLES IN BOTH EUROPEAN UNION CROSS-BORDER INJUNCTIONS AND UNITED STATES ANTI-SUIT INJUNCTIONS

Introduction ............................................................................................ 1176

I. Background..................................................................................1178

A. The EU's Patent Application System and Cross-Border Injunctions................................................................................ 1178
B. Cross-Border Injunctions in Germany..................................... 1180

1. Germany's Court System.................................................... 1181
2. German Provisional Proceedings ...................................... 1182

C. Anti-Suit Injunctions in the United States................................. 1184

II. Articles 6(1) and 22(4) of Council Regulation 44/2001 ......... 1187

A. Overview of Council Regulation 44/2001 and ECJ Case Law . 1187
B. Article 6(1): Joinder................................................................. 1189
C. Analysis of Article 6(1) Contrasted with Factor One of the U.S. Anti-Suit Injunction Framework....................................... 1191
D. Article 22(4): Exclusive Jurisdiction for Patent Validity......... 1193
E. Preliminary Cross-Border Injunctions in Germany................. 1197

III. Article 31 of Council Regulation 44/2001 .............................. 1198

A. Article 31 Provisional Measures in Solvay v. Honeywell ....... 1199
B. Connecting Link ....................................................................... 1201
C. The Unterweser Factors Can Help Define Article 31 "Connecting Links"................................................................. 1202

1. The First Unterweser Factor.............................................. 1203
2. The Second Unterweser Factor.......................................... 1205
3. The Third Unterweser Factor............................................. 1206
4. The Fourth Unterweser Factor ........................................... 1207

D. Comity Can Help Define the Limits EU National Courts Should Take When Issuing a Preliminary Cross-Border Injunction Via an Article 31 Provisional Measure................... 1208

Conclusion................................................................................................1211

[Page 1176]

Introduction

The Apple and Samsung litigation has resulted in more than twenty-two patent cases in six EU member states: twelve in Germany, two in the Netherlands, two in France, two in Italy, three in Spain, and one in the united Kingdom.¹ Although the disputes involve the same technologies, Apple and Samsung must litigate the issue in each country because patent rights can only be enforced within the country that granted the patent.² Patent battles, such as those between Apple and Samsung, require a patent owner "to pursue duplicative litigation on a 'nation-by-nation' basis, incurring significant costs and draining valuable judicial resources."³ This Comment investigates a method courts have used to consolidate patent litigation—the cross-border injunction.

To consolidate multi-national patent litigation and avoid duplicative litigation, EU national courts started to issue cross-border injunctions.⁴ When infringement of patent rights occurs in multiple countries, a plaintiff has several options for initiating court proceedings: (1) initiate parallel proceedings in multiple jurisdictions; (2) sue the accused infringer in only one of the countries where infringement occurred—likely because the patent owner cannot afford to pursue an action in multiple countries; or (3) initiate infringement claims in one jurisdiction and use parallel patents to acquire a cross-border injunction.⁵ Plaintiffs—usually the patent owner—often choose the third option to consolidate trials into a single jurisdiction because the costs

[Page 1177]

of simultaneously litigating in many countries can create enormous financial burdens, especially on small- or medium-sized enterprises.⁶

The European Court of Justice (ECJ) is the highest court in the EU and ensures that EU law is applied the same way throughout every EU Member State.⁷ Recently, the ECJ held that an EU national court could grant a cross-border injunction via a provisional measure.⁸ The ECJ did not preclude EU national courts from issuing cross-border injunctions and left it to the courts to interpret when the country has a connecting link to the case.⁹ EU national courts, however, interpret patents differently and have different opinions on the extent to which a party should be enjoined from a particular activity.¹⁰ As a result, EU national courts will encounter difficulties in uniformly deciding when to issue a cross-border injunction and when to enforce injunctions issued by other EU national courts.

Part I of this Comment provides the basis to understand procedures used to issue preliminary cross-border injunctions by examining those used in Germany. Germany is active in cross-border injunctions, and patent owners should continue to choose Germany as a forum to litigate patents. Part I then shifts to anti-suit injunctions in the United States. An anti-suit injunction has a multi-national impact similar to a cross-border injunction, and the U.S. Ninth Circuit case Microsoft v. Motorola¹¹ displays the framework courts apply in anti-suit injunction cases. The U.S. framework parallels issues in EU cross-border injunctions and could serve as a guide for EU national courts. Part II of this Comment details cross-border injunction precedent from the ECJ. A recent

[Page 1178]

ECJ case, Solvay v. Honeywell,¹² has shed light on the jurisdictional provisions EU national courts can use to issue a cross-border injunction.¹³ The decision, however, has left EU national courts with questions on when to issue a cross-border injunction.¹⁴ Part III of this Comment examines the Solvay decision in respect to preliminary cross-border injunctions. Part III also analyzes the U.S. anti-suit injunction framework and how the ECJ's rationale in the Solvay decision fits in with the U.S. anti-suit injunction framework.

I. Background

Part I.A provides background on both the EU's patent application system and cross-border injunctions. Part I.B examines how Germany's bifurcated court system invites claims from patent owners seeking a cross-border injunction. Part I.C then outlines the framework the Ninth Circuit used when issuing an anti-suit injunction in Microsoft v. Motorola. This Comment will later apply the Ninth Circuit framework to some of the upcoming struggles EU national courts will face when issuing cross-border injunctions.

A. The EU's Patent Application System and Cross-Border Injunctions

Patent protection in the EU is territorial.¹⁵ EU Member States independently grant patent rights to the patent owner, and the patent owner enforces the patent in each corresponding EU national court.¹⁶ For applicants to efficiently obtain patent protection in multiple jurisdictions, the European Patent Convention established a unified patent application system that consists of a centralized filing and granting procedure for European patents.¹⁷ The European Patent Office processes the application, examines whether the subject matter is patentable, and grants a European patent.¹⁸ The name "European patent" is a misnomer; the European patent does not result in a

[Page 1179]

unitary patent right, as the name suggests.¹⁹ Instead, a European patent results in a bundle of separate national patents in the EU Member States that the patent owner designated on the application.²⁰ The bundle of patents is called parallel patents.

The purpose of creating a unified patent application system in Europe was to facilitate the burdensome task of obtaining patents in multiple countries, not to ease post-issuance procedures.²¹ Therefore, it is not surprising that EU national courts have struggled with the post-issuance enforcement of parallel patents.²² Jurisdictional procedures to simultaneously enforce parallel patents are not concretely in place.²³ As a result, a patent owner must litigate validity in every country in which the patent was ultimately granted.²⁴

In an effort to consolidate trials in a cost and time effective way, EU national courts started to issue cross-border injunctions.²⁵ These courts issued cross-border injunctions on the reasoning that all parallel patents should be interpreted the same, regardless of the country in which the patent was issued.²⁶ Overall, a cross-border injunction allows a patent owner to initiate

[Page 1180]

infringement proceedings against a defendant in a country based on not only that country's patent but also other parallel patents.²⁷ For example, a patent owner may initiate infringement proceedings against a defendant in a German court based on both the infringement of a German patent in Germany and infringement of parallel patents in the corresponding EU Member States. A patent owner could thus bring a claim against a defendant in a German court claiming that the defendant infringed both a German patent in Germany and a parallel Dutch patent in the Netherlands (see figure below). If the alleged infringing party does not voluntarily comply with the cross-border injunction, the court that granted the injunction can enforce the decision through a contempt order or similar measure, assuming the alleged infringer has assets or does business within its country.²⁸

B. Cross-Border Injunctions in Germany

Jurisdictional procedures vary depending on the EU Member State.²⁹ Because most patent litigation in the EU occurs in Germany,³⁰ the next section

[Page 1181]

of this Comment details the process for issuing a cross-border injunction in Germany.

1. Germany's Court System

Patent owners often choose to litigate in Germany because German court proceedings are...