US vs China – Moving toward Global Injunctions

by Dennis Crouch

Ericsson v. Samsung, Docket No. 21-1565 (Fed. Cir. 2021)

I wanted to briefly highlight this important pending Federal Circuit appeal involving parallel litigation in both the US and China. The Swedish company wants to litigate in the US, while the Korean company wants to litigate in China.

  • US Case: Ericsson Inc. v. Samsung Elecs. Co., No. 2:20-CV-00380-JRG (E.D. Tex. Jan. 11, 2021)
  • Chinese Case: Samsung Electronics Co., Ltd. et al. v. Telefonaktiebolaget LM
    Ericsson, (2020) E 01 Zhi Min Chu No. 743.

The Chinese court issued an anti-suit injunction order that would force Ericsson to stop litigating the case in the US (and globally anywhere but in Wuhan).  The US court then issued an anti-interference order that bars Samsung from attempting to enforce the Chinese order against the US actions.  Litigation between the parties is apparently also ongoing in the USITC, Netherlands, Germany, and Belgium.

Ericsson believes it has the stronger IP rights.  There is a general indication that those rights will be more strongly protected and with a higher royalty rate if determined by a US court rather than a Chinese court.  The following timeline from Samsung’s brief offers some historic perspective:

The basic setup here is as follows:

  • Both parties have committed to license their standard essential patents (SEPs) for 2G, 3G, 4G, and 5G cellular communication according to  “Fair, Reasonable and Non-discriminatory” (“FRAND”) principles
  • 2014 global cross-license of the SEPs between the two companies.  This agreement expired at the end of 2020.
  • December 7, 2020: Samsung sued Ericsson in Wuhan People’s Court seeking a declaration of global licensing terms in accordance the FRAND principles.
  • December 11, 2020: Ericsson sued Samsung in USA (E.D.Tex.) alleging Samsung failed to comply with its FRAND patent licensing commitments (and for declaratory judgment that Ericsson is not in breach).  In January 2021, Ericsson amended its complaint to include assertions of patent infringement — this ensures Federal Circuit jurisdiction over the appeal.
  • December 25, 2020: On request from Samsung, the Wuhan court issued an global “anti-suit injunction” — enjoining Ericsson from seeking relief from any other court, either in China or Globally.  And also ordering withdrawal of any claims already filed (such as the Texas action).  The order expressly indicates that violations of the order by Ericsson will be punished by with substantial fines.
  • December 28, 2020: Ericsson successfully petitioned the Texas Court to  issue a temporary restraining order (TRO) against Samsung.
  • January 11, 2021: Texas court issued a fairly narrow “anti interference injunction” — sometimes known as an “anti-anti-suit injunction.”  The court ordered that Samsung take no actions in the Chinese case that would interfere with the US lawsuit.  In addition, Samsung must indemnify Ericsson against any penalties levied by the Wuhan Court associated with Ericsson’s efforts to litigate the US case.

Samsung has now appealed the case to the Federal Circuit — arguing that the anti-antisuit injunction should be vacated or significantly narrowed.  Here are briefs filed:

I am generally sympathetic to Ericsson in this case with the big caveat that Ericsson committed its patents to FRAND licensing on a global level.  It does not seem reasonable (the R in FRAND) to expect that the result will be a separate lawsuit regarding the global license in each individual country.

9 thoughts on “US vs China – Moving toward Global Injunctions

  1. 5

    If a court in any country have the authority to decide global rates in a SEP patent case, then courts in any other countries may think they could do that as well, even globally issued Non-SEP patents.

  2. 4

    Parties in SEP cases regularly frame FRAND as a contract issue even though the terms are beyond ambiguous for a contract or its enforcement.

    However, if parties and courts are all going to pretend that there really is a FRAND contract, it is easy enough for SSOs to include choice of law and venue provisions. Legislation is not necessary or appropriate to regulate contract disputes.

  3. 3

    I suggest that judges throw out FRAND cases for lack of constitutional standing. The SEP agreements are void for vagueness. They can ask the committee to set the price or put it in the agreement. The non-discrimination provision might be enforceable. What is fair and reasonable – that is up to the parties to decide between themselves. Imagine all the mischief if other private parties agree to treat each other fairly and then they run to federal court every time they don’t get what they want.

  4. 2

    For those interested the DCT opinion is reported at

    Ericsson Inc. v. Samsung Elecs. Co., Ltd., No. 2:20-CV-00380-JRG, 2021 WL 89980, *4-*8 (E.D. Tex. Jan. 11, 2021) (granting patentee an anti-interference injunction and refusing to enforce an anti-suit injunction (ASI) issued by a Chinese court that would have prevented the patentee from enforcing its U.S. patent in U.S. courts during the pendency of a proceeding in China regarding a dispute over FRAND licensing of standard essential patents between the two parties, the court noting that i) “Ericsson is not seeking an anti-suit injunction to prevent the Chinese Action from proceeding. Rather, Ericsson is seeking an anti-anti-suit injunction (sometimes called an anti-interference injunction) to prevent Samsung from attempting to enforce the ASI and thereby interfering with this Court’s exercise of its own jurisdiction”; ii) “Allowing Samsung to enjoin Ericsson from asking this Court to adjudicate legally cognizable claims under United States law would frustrate this Court’s compelling interest in ensuring that litigation within its legitimate jurisdiction proceed in this forum”; iii) “[p]roceeding to enforce the ASI will impose an inequitable hardship on Ericsson because it will unfairly deprive Ericsson of the right to bring claims it is entitled to bring under United States law,” “it would unfairly but necessarily put Ericsson in a weaker negotiating position when it comes to cross licensing its 4G and 5G SEPs to both Samsung and others,” and this may have been “the real motivation behind the ASI”; iv) the court also noting if the Chinese injunction “is given its full effect, it would lay claim to causes of action properly raised in this Court and not raised in the Chinese Action” while “the causes of action here have no implication on the speedy and efficient determination of the issues raised before the Wuhan Court”; v) the tow lawsuit involved “very separate legal questions”)

  5. 1

    Since standard-setting agreements or policies are so committed to a licensing term as ambiguous as FRAND, is there any logical solution to these international jurisdictional battles other than treaties or legislation to require international compulsory arbitration for enforcement of FRAND disputes?

    1. 1.1

      ETSI and other SDOs could adopt a forum selection clause?

      1. 1.1.1

        This is an excellent thought, Anonymouse, but it would not really solve the problem. Even if SDOs forced all companies to sign very clear forum selection or arbitration clauses, it’s still just a contract clause, nothing else. A courts could still decline to enforce those clauses as contrary to its local public policy (which is almost certainly what the court in Wuhan would do). To make that work, you’d really need international treaties, coupled with binding legislation in each country, to give binding legal effect to SDO forum selection clauses. That would require a level of international coordination and cooperation that, unfortunately, seems unlikely in the foreseeable future.

    2. 1.2

      I’m thinking the same thing Paul. Courts — any nation’s courts — simply don’t have the necessary international authority to settle these types of international conflicts.

      Maybe the International Court of Justice or the United Nations? Yea, right.

    3. 1.3

      Paul, international arbitration is probably the most sensible way to resolve multi-jurisdictional FRAND disputes. That’s actually a common way of resolving disputes in another situation where there is essentially no way to establish jurisdiction, e.g., when two sovereign states have a legal disagreement such as territorial boundary dispute. A sovereign would most likely never agree to submit to jurisdiction in the other sovereign’s courts, so the two will often use international arbitration as it is seen as a more neutral and non-governmental forum, and adjudication before an arbitration panel is based on the consent of contracting parties.

      But international arbitration would only work in the FRAND context if all of these countries agree to go along with this framework, which might require legislation in each participating country. Because if courts in Wuhan or the United States or Europe can legally continue to assert jurisdiction in their own territories, then arbitration cannot be ineffective for setting global FRAND rates. And the courts in Wuhan, to put it bluntly, believe that the United States and parts of Western Europe have gone completely bonkers in FRAND royalty rates. While the assumption is that rates set through an international arbitration process would likely fall somewhere between Wujan and United States rates, no one knows for sure where the rates would fall and that uncertainty makes stakeholders on all sides reluctant to go along with any kind of centralized system. The courts in Wuhan, for example, would not likely agree to surrender their jurisdiction to an arbitration panel unless they knew the panel would set rates more in line with Wuhan courts, which is currently unknowable.

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