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.

Concluding remarks

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.

For further inquiries, please contact Marleen van den Horst, Jaap Bremer or Allard van Duijn.