On 16 December 2021 the PI Judge of the District Court of The Hague (“PI Judge”) rendered a judgment in PI proceedings initiated by Telefonaktiebolaget LM Ericsson (“Ericsson”) against Apple Retail Netherlands B.V., Apple Benelux B.V., Apple Inc., Apple Distribution International and Apple Sales International Ltd (“Apple et al.”). Ericsson is the patent proprietor of inter alia 4G and/or 5G standard essential patents. In the present proceedings, Ericsson claimed an anti-anti-suit injunction (“AASI”) against Apple et al.
As a preliminary point, the PI Judge decided that he had international jurisdiction to hear Ericsson’s cross-border claims against Apple Inc, Apple Distribution International and Apple Sales International Ltd, only as far as they were based on the fear that Apple Inc will institute anti-suit injunctions (“ASIs”) aimed at the Netherlands and Belgium. Against the Dutch Apple entities (Apple Retail Netherlands B.V. and Apple Benelux B.V.), the PI Judge held that he had international jurisdiction to hear Ericsson’s worldwide cross-border claims.
Perceived threat of an ASI
Ericsson relied on a perceived threat that Apple et al. would file an ASI against Ericsson somewhere in the world that would also cover patent proceedings in the Netherlands.
The PI Judge held that Ericsson had not asserted anything from which such threat follows. Firstly, the Judge held that a threat could not be based on the general fact that ASIs have been claimed by other parties in similar circumstances, because this does not mean that Apple et al. would do the same. Secondly, the fact that Apple et al. are not prepared to give an undertaking not to institute an ASI against Ericsson, is in itself insufficient. According to the Judge, this fact could only be relevant if Apple et al. had instituted an ASI against Ericsson and/or against other patent proprietor(s) in the past, or if there would be other circumstances from which a threat to that effect could be inferred.
In this regard, the PI Judge made a clear distinction between two types of ASIs. On the one hand, an ASI aimed at enforcing compliance with a ‘covenant not to sue’ and, on the other hand, an ASI pertaining to a situation where such a covenant is not in place. If a covenant is in place, then there should, in principle, be a possibility to claim performance of that covenant (by means of an ASI), according to the Judge. However, without a covenant in place, claiming an ASI could be unlawful under certain circumstances. It is for that reason that the distinction between these two types of ASIs is relevant.
The present case deals with the latter type of ASI (no covenant). The PI Judge held that there was no indication that Apple et al. had ever claimed this specific type of ASI nor that it had any intention to do so now. Based on the above, the Judge did not find a concrete threat. Therefore, the claimed injunction was denied, for lack of an urgent interest.
This case illustrates that Dutch PI Judges are willing to assume cross-border jurisdiction to hear a claim for an AASI. The decision is in line with earlier case law (see inter alia our Pharma Updates Novartis/Mylan and AbbVie/Alvotech) requiring a ‘concrete threat’. Such threat cannot be established if the opposing party is merely unwilling to give an undertaking not to do something. However, if there are additional relevant circumstances and if from those circumstances a threat can be inferred, then refusing a request to make such an undertaking could be enough to establish a ‘concrete threat’. In assessing these circumstances, past behaviour such as (in this case) past claims by Apple for similar ASIs (including claims against other parties than Ericsson) will be taken into account.