The Regional Court Düsseldorf has partially upheld an anti-anti-suit injunction application by HEVC Advance pool members against Xiaomi. The case is part of ongoing proceedings by Philips, General Electric and Mitsubishi Electric against Xiaomi in Germany. However, with the granting of this ex-parte AASI, the Düsseldorf court is entering new territory.
20 July 2021 by Amy Sandys
The Regional Court Düsseldorf has delivered a judgment confirming an anti-anti-suit injunction against Xiaomi (case numbers: 4c O 73/20; 4c O 74/20; 4c O 75/20). In December, Philips, General Electric and Mitsubishi Electric had already obtained an AASI ex-parte against the Chinese mobile communication company.
HEVC filed the AASI to protect pending actions at the same court. The main proceedings, which began in August last year, concern Xiaomi’s alleged infringement of HEVC Advance’s patents (case numbers: 4c O 49/20; 4c O 50/20; 4c O 68/20).
Usually, in ASI proceedings in Germany, a continuous or imminent risk of infringement must precede the injunction claims. This includes the need for the defendant to provide a concrete indication of imminent or planned infringement.
However, in the Xiaomi case, the Düsseldorf court upheld its first-instance decision without the suing parties presenting such evidence. This pre-emptive granting of an anti-anti-suit injunction is new ground for the Düsseldorf court, although the German judiciary is becoming more vocal in such matters.
It was not all bad news for Xiaomi. The latest decision, handed down by the court at the end of June, was upheld only to a limited extent. It limits the scope of the original granted AASI. As such, whereas the first order prohibited Xiaomi from obtaining an ASI in any jurisdiction outside Germany, the current order is only enforceable against ASIs in China.
Philips, General Electric and Mitsubishi Electric are all part of the HEVC patent pool. In summer 2020, in main proceedings four members of the HEVC pool launched a wave of lawsuits against Xiaomi over the video coding standard HEVC/H.265. The pool members accused Xiaomi of infringing the standard.
In December 2020, the three claimants filed for an anti-anti-suit injunction at the Regional Court Düsseldorf. The pool was reacting to the prevalent trend of Chinese companies filing ASIs.
Initially, the judgment covered all the applicants patent rights, including cases other than the current one, as well as having a global effect on Xiaomi’s ability to file ASIs at other courts.
However, in March, Xiaomi filed an opposition against the ex-parte AASI, arguing that the court could not grant the injunction without concrete evidence of impending risk of infringement. Prior to the first judgment in December, Xiaomi had not filed any defence with the court.
The latest judgment now restricts the AASI in relation to the filing of an ASI in China.
Furthermore, the decision also only covers HEVC Advance’s patent rights from the current main proceedings. The first decision was broader in scope, covering patent rights for other proceedings too.
During 2020, anti-suit injunctions became more popular with Chinese companies as a means of prohibiting companies based elsewhere from filing proceedings outside of China.
However, an AASI without an ASI remains rare. Here, although Düsseldorf is the main forum for the entire HEVC vs. Xiaomi proceedings, some observers consider it an unusual forum to bring ASI and AASI suits. This is because Munich is the usual go-to court for such cases.
For example, last month the Munich Regional Court gave IP Bridge the green light to proceed against Huawei with three SEP suits. The judges rejected Huawei’s opposition to an AASI (case ID: 7 O 36/21). Under German law, parties can oppose an AASI judgment at the same chamber before appealing it at a higher court.
The Munich Regional Court has also upheld numerous AASI applications in the past, after Chinese courts granted ASIs against patent suits in Germany.
Among other reasons, an increase in AASI requests is why, next month, the Munich Regional Court is establishing a third patent chamber.
Xiaomi relies on a mixed team around Munich-based Vossius partner Georg Rauh.
In a separate case, MAS Elektronik also instructed the firm for its dispute against HEVC Advance, with Düsseldorf partner Kai Rüting leading the Vossius team. In new HEVC litigation against the Advance patent pool, partner Andreas Kramer leads for TCL.
Eisenführ Speiser partners Volkmar Henke and Tilman Müller lead the case for the HEVC Advance pool, specifically in this case for Philips, Mitsubishi Electric and General Electric. The relationship between the mixed IP firm and the patent pool goes back four years, since HEVC Advance members first filed litigation suits in Germany.
Eisenführ Speiser also represents pool members in other litigation proceedings against TCL in Munich, as well as against Turkish applicance company Vestel in Düsseldorf.
In the latter case, Vestel retains mixed law firm Grünecker.
Vossius & Partner (Munich): Georg Rauh (lead); associates: Moritz Bloser (German attorney), Zhuomin Wu (Chinese attorney)
For HEVC Advance
Eisenführ Speiser (Hamburg): Volkmar Henke, Tilman Müller
In-house (Mitsubishi Electric): Takao Tominaga
Regional Court Düsseldorf, Chamber 4c
Sabine Klepsch (presiding judge)