Anti Suit Injunction, Anti Anti Suit Injunction, Anti Anti Anti Suit Injunction–Is there an end?
Anti Suit Injunctions:
Anti Suit Injunctions (ASI) are gaining prominence in today’s day and time owing to the increased international dispute redressal proceedings which have sprouted due to the need for better dispute adjudication between parties, especially those involved in trans-border economic activities. The remedy of ASI was provided to curb the malpractice of instituting parallel proceedings in courts of other jurisdictions or other forums which parties commence to frustrate the ongoing proceedings. These remedies are particularly common in matters pertaining to standards-essential patents (SEPs). The concept of ASI developed in the 15th century in England and later gained prominence around the 1970s in the USA.
ASI can be defined as a court order which restrains the defendant from commencing, pursuing or advancing a particular claim, or orders the defendant to terminate or suspend the proceedings initiated in a court in a foreign jurisdiction. It is the power granted to a Court in one jurisdiction to prevent a party in a proceeding from initiating parallel proceedings in another jurisdiction. ASI acts in personam, i.e., is directed towards an individual and not a court.
Grant of such injunctions is broadly based on the principles of balance of convenience and equity by dissuading forum shopping as well as by preventing unnecessary, duplicative and vexatious litigation and preventing miscarriage of justice. The main criteria for a court to determine is whether the parties and the issue in both the matters is same so as to be considered to be duplicative. Further, the court also needs to consider whether disposal of the local suit would lead to disposal of the foreign suit as well. Moreover, the grant of the ASI should not be disruptive of international harmony. Thus, the Courts are generally cautious while granting ASI.
There are no specific rules pertaining to grant of ASI in India, however, the jurisprudence has developed basis of considerable precedence. The principles for grant of ASI in India developed specifically in the case of Modi Entertainment Network & Anr Vs W.S.G. Cricket Pte. Ltd.[1] and are broadly similar to the criteria followed in other jurisdictions, such as maintaining the comity, preventing injustice, defendant being amenable to the personal jurisdiction of the court, parallel proceedings being vexatious or oppressive, determination of appropriate forum as well as placing the burden of proof on the party seeking the grant of ASI. Some of the principles which must be borne in mind while granting ASI have been succinctly provided below:
1. The Court must be satisfied that the following criteria are met –
(a) the defendant must be amenable to the personal jurisdiction of the court;
(b) declining the injunction must not cause injustice or defeat the ends of justice; and
(c) principle of comity must be taken into account;
2. In cases where more than one forum is available, the Court needs to determine the appropriate forum on the basis of convenience of the parties.
Elaborating upon the case of Modi Entertainment, in the case of Board of Control for Cricket in India v. Essel Sports Private Limited and Ors[2], the Court held that in matters where the party is a foreign entity, courts would have to further tread carefully in granting ASI and should also note that summons issued outside the territorial jurisdiction of Indian courts, “may not be complied with or, that the foreign party may attempt to seek remedy in the jurisdiction of the court where it is resident. However, subsistence of such situation should not deter an Indian Court to issue an injunction if it otherwise finds it has jurisdiction.”
Recently, in India, in the case of HT Media Limited & Anr vs Brainlink International, Inc.[3], the Delhi High Court deliberated on the concept of ASI and restrained the Defendant from instituting a suit in relation to the present subject matter in any Court of Law or Authority and from continuing with the suit already filed before United States District Court for the Eastern District of New York. The Court placed reliance on the principles laid down in the case of Modi Entertainment Network and held that a substantial part of cause of action arose within the jurisdiction of the Court and that the parallel suit filed is vexatious, oppressive and to frustrate the Plaintiff from availing its remedies. Thus, the Court held that the Plaintiff had made out a prima facie case for grant of an ASI.
Thus, ASI serve as an effective mechanism in situations where the Defendant is based in another nation and aims to hinder the proceedings initiated in India by initiating frivolous and vexatious proceedings in other Courts or Authorities.
Anti Anti Suit Injunctions:
If a litigant believes that the other party may file a request for grant of ASI barring the litigant from initiating proceedings in another jurisdiction of its preference, the litigant may file a request for grant of an injunction barring the other party from seeking an ASI against the litigant. This request is referred to as an Anti Anti Suit Injunction (AASI) and is granted less frequently than ASI since courts exercise higher caution while granting AASI. AASI is also an in personam right and in fact allows the continuance or commencement of parallel proceedings.
The concept of AASI is gaining momentum worldwide, including in India and some of the landmark decisions pertaining to AASI have been touched upon briefly below –
The Munich District Court, in a patent litigation against Nokia on grounds of violation of FRAND licenses and antitrust obligations, ordered Continental, a German automotive company, to withdraw its motion for an ASI filed before a US District Court and to abstain from pursuing the same as well as from applying for an ASI barring Nokia from pursuing its German patent infringement lawsuits. The Munich Court of Appeal thereinafter confirmed the decision of the Munich District Court, which could be termed as the first AASI granted in Germany. The Court observed that on balancing the rights of the two parties, the ASI filed in the US damaged Nokia’s legal position more.[4]
In the dispute between IPCom and Lenovo[5], the US subsidiaries of the Lenovo group filed a suit in the US District Court alleging that IPCom’s licensing offers were inconsistent with its FRAND obligations to its alleged SEP portfolio. Subsequently, IPCom filed an infringement action against the UK subsidiaries of the Lenovo group before the London High Court of Justice and sought an injunction against infringing products, unless a license was concluded within the proceedings pending in the US. The US subsidiaries of the Lenovo group then went on to file a request before the US District Court for grant of ASI restraining IPCom from continuing with the infringement proceedings initiated in the UK and from initiating any other proceedings in any jurisdiction. IPCom thereinafter filed a request before the Court of Paris for grant of AASI seeking withdrawal of the ASI requested by Lenovo. The Paris Court of First Instance Decision, while ruling in favour of IPCom, held that except in cases where they seek to enforce contractual arbitration or jurisdiction clauses, grant of ASI is contrary to French public policy and would infringe upon the “Fundamental Rights pursuant to French laws protecting patents, property rights in general and procedural provisions regulating fair legal proceedings.” The Court of Appeal affirmed the decision of the lower court regarding the withdrawal of the motion for ASI and confirmed the decision on the AASI but overruled the decision of the lower court prohibiting any further motions for ASI which may be filed by Lenovo. Moreover, the UK Court also granted a motion for AASI in favour of IPCom and enjoined Lenovo from asserting its U.S. ASI in preventing IPCom from proceeding with its UK action. The London Court also ruled that it would be vexatious and oppressive to prevent IPCom from defending the infringement and ordered Lenovo to not impede the proceedings under English jurisdiction.
Most recently, in the patent infringement dispute of SEP between InterDigital and Xiaomi Corporation, the Delhi High Court, in view of public policy, passed an interim order restraining Xiaomi from enforcing an ASI order passed by the Wuhan Intermediate People's Court against InterDigital. The Wuhan Court had granted an ASI order restraining InterDigital from pursuing or initiating any lawsuit before any Courts in China or any other country. It also ordered Interdigital to withdraw or suspend its application for any temporary injunction before the Delhi High Court against Xiaomi. Interdigital then approached the Delhi High Court seeking an injunction against Xiaomi, restraining them from pursuing or enforcing the ASI order.[6]
Anti Anti Anti Suit Injunctions:
Anti Anti Anti Suit Injunctions (AAASI), though rare, are not unheard of and are filed in anticipation of an AASI and to restrain a litigant from filing an AASI preventing filing of an ASI by the first party. In the aforementioned case of Continental and Nokia, the Munich Court had issued an AASI restraining Continental from seeking an ASI in the U.S. Subsequently, Continental had filed a petition with the U.S. district court to issue a temporary restraining order preventing the other defendants from filing a similar AASI in Germany or in any other jurisdictions. Even though the said motion was denied, it laid the foundation for filing motions for AAASI in FRAND disputes.[7]
Conclusion:
Even though such rarefied measures were only popular in the USA and UK initially, litigants across the world are regularly filing such requests and Courts of various jurisdictions are granting orders for the same. In the field of Intellectual Property, ASI and subsequent requests, though more common in FRAND disputes, are gaining prominence in other domains as well such as trade mark disputes. Grants of ASI and other subsequent reliefs are a positive development and the fact that an Indian Court has granted a request for AASI is a welcome development for litigants in India. However, owing to the delicate nature of such proceedings, Courts must continue to exercise caution while granting any such requests. Further, Courts should necessitate balancing the rights of the parties along with providing justice and equity while determining each case on its own merits.
For any queries, you may write to Ms. Saumya Kapoor, Senior Associate, at saumya.kapoor@iprattorneys.com.
[1] Modi Entertainment Network & Anr Vs W.S.G. Cricket Pte. Ltd. AIR 2003 SC 1177 [2] Board of Control for Cricket in India v. Essel Sports (P) Ltd., 2010 SCC Online Del 443 [3] HT Media Limited & Anr. Vs. Brainlink International, Inc. & Anr. (Delhi High Court); CS (COMM) 119/2020 and IAs 3767-3771/2020; 28.04.2020 [4] Nokia v Daimler/Continental (case 6 U 5689/19), accessible at https://www.gesetze-bayern.de/Content/Document/Y-300-Z-BECKRS-B-2019-N-25536?hl=true&AspxAutoDetectCookieSupport=1 [5] IPCom v. Lenovo, Court of Appeal of Paris - RG 19/21426, accessible at https://caselaw.4ipcouncil.com/french-court-decisions/ipcom-v-lenovo-court-appeal-paris-rg-1921426 [6] Interdigital Technology Corporation Vs. Xiaomi Corporation Case no.: I.A. 8772/2020 in CS(COMM) 295/2020, accessible at http://164.100.69.66/jsearch/ [7] Jorge L. Contreras, It’s Anti-Suit Injunctions All The Way Down – The Strange New Realities Of International Litigation Over Standards-Essential Patents, accessible at https://poseidon01.ssrn.com/delivery.php?ID=035082020017065119030111028108065073062005049007084090076023115111095078090084098072053057049122058038019123014091064031103068016009043022084021124113089082116113091032009009064116075102114125107125023117019065020001027066001001072000110118102068000025&EXT=pdf
