Submarines, donkeys and French hostages

For many years, the ‘Italian torpedo’ was the most discussed defensive patent tactic. An implementer would ask an Italian court to rule on the infringement of a patent from a faster country (often Germany). This prevented an infringement action in the faster court whilst the Italian court remained seized. The US West Coast also became popular for this action, with the courts considered more likely to favour the implementer over the standard-essential patent (SEP) holder, and more willing to grant an anti-suit injunction (ASI) to prevent infringement actions in other countries.

Anti-suit injunctions have long been used where two courts hear issues with potentially overlapping relief. A court cannot make an order against a foreign court, but it can order a SEP owner before it to withdraw an infringement action in another country, or not enforce relief obtained. However, the tactic showed its limitations when, despite initially granting an ASI, the Northern District of California in Continental v Avanci then agreed to transfer the case to the more patent-friendly courts of Texas.

Wuhan in China is the latest jurisdiction where this has come into fashion. Xiaomi is proceeding there against Interdigital, and Samsung against Ericsson. Three things make Wuhan attractive – a belief that it will award low royalties, a readiness to accept jurisdiction, and a practice of granting ASIs. However, what gives it an edge over other courts is its willingness to proceed ex-parte, without notice. As a ‘submarine’ jurisdiction, it remains hidden until after it has struck.

A SEP holder facing an ASI from one court can seek an anti-anti-suit injunction (AASI) in the country where its patent…