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21-04-02 Ericsson Response Brief CAFC
21-04-02 Ericsson Response Brief CAFC
No. 2021-1565
IN THE
United States Court of Appeals
FOR THE FEDERAL CIRCUIT
(
Nicholas T. Matich Elizabeth K. Clarke
MCKOOL SMITH, P.C. MOLOLAMKEN LLP
1717 K Street, N.W., Suite 900 300 N. LaSalle Street, Suite 5350
Washington, D.C. 20006 Chicago, IL 60654
(202) 221-6267 (telephone) (312) 450-6700 (telephone)
(212) 402-9444 (facsimile) (312) 450-6701 (facsimile)
Blake H. Bailey
MCKOOL SMITH, P.C.
600 Travis Street, Suite 7000
Houston, TX 77002
(713) 485-7300 (telephone)
(713) 485-7344 (facsimile)
Samuel F. Baxter
MCKOOL SMITH, P.C.
104 E. Houston Street, Suite 300
Marshall, TX 75670
(903) 923-9000 (telephone)
(903) 923-9099 (facsimile)
CERTIFICATE OF INTEREST
I certify the following information and any attached sheets are accurate and
complete to the best of my knowledge.
04/02/2021
Date: _________________ Signature: /s/ Jeffrey A. Lamken
܆
✔ None/Not Applicable ܆None/Not Applicable
4. Legal Representatives. List all law firms, partners, and associates that (a)
appeared for the entities in the originating court or agency or (b) are expected to
appear in this court for the entities. Do not include those who have already
entered an appearance in this court. Fed. Cir. R. 47.4(a)(4).
None/Not Applicable ✔ Additional pages attached
See addendum.
5. Related Cases. Provide the case titles and numbers of any case known to be
pending in this court or any other court or agency that will directly affect or be
directly affected by this court’s decision in the pending appeal. Do not include the
originating case number(s) for this case. Fed. Cir. R. 47.4(a)(5). See also Fed. Cir.
R. 47.5(b).
None/Not Applicable ✔
Additional pages attached
See addendum.
CERTIFICATE OF INTEREST
Addendum to Questions 3, 4, and 5
4. Legal Representatives. List all law firms, partners, and associates that (a)
appeared for the entities in the originating court or agency or (b) are expected to
appear in this court for the entities. Do not include those who have already entered
an appearance in this court. Fed. Cir. R. 47.4(a)(4).
5. Related Cases. Provide the case titles and numbers of any case known to be
pending in this court or any other court or agency that will directly affect or be
directly affected by this court’s decision in the pending appeal. Do not include the
originating case number(s) for this case. Fed. Cir. R. 47.4(a)(5). See also Fed. Cir.
R. 47.5(b).
TABLE OF CONTENTS
Page
INTRODUCTION .....................................................................................................1
ISSUES PRESENTED...............................................................................................4
i
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ARGUMENT ...........................................................................................................20
I. The District Court Properly Granted a Defensive Injunction .......................... 22
D. The Defensive Injunction Does Not “Offend” Principles of Comity ...... 45
CONCLUSION ........................................................................................................62
ii
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TABLE OF AUTHORITIES
Page(s)
CASES
Bethell v. Peace,
441 F.2d 495 (5th Cir. 1971) .............................................................................. 48
Bowne v. Joy,
9 Johns. 221 (N.Y. 1812) .................................................................................... 22
Cohen v. Rothfield,
[1919] 120 LT 434 (Eng.) (appeal)...............................................................23, 25
iii
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Hilton v. Guyot,
159 U.S. 113 (1895) ............................................................................................ 47
iv
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Hyman v. Helm,
[1883] 49 LT 376 (Eng.) (appeal)....................................................................... 23
Janvey v. Alguire,
647 F.3d 585 (5th Cir. 2011) .............................................................................. 22
v
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Maule v. Murray,
7 T.R. 470 (1798) ................................................................................................ 22
Nokia v. Cont’l,
Oberlandesgericht München [Munich Higher Regional Court],
Dec. 12, 2019, 6 U 5042/19 (Ger.) ...............................................................26, 27
Porter v. Lee,
328 U.S. 246 (1946) ......................................................................................54, 60
vi
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The Salvore,
36 F.2d 712 (2d Cir. 1929) ................................................................................. 50
Stanton v. Embrey,
93 U.S. 548 (1876) .............................................................................................. 22
vii
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In re VoIP-PAL.com, Inc.,
No. 2021-112, 2021 WL 650626 (Fed. Cir. Feb. 19, 2021) ............................... 48
Waffenschmidt v. MacKay,
763 F.2d 711 (5th Cir. 1985) .............................................................................. 53
Wise v. Wilkie,
995 F.3d 430 (5th Cir. 2020) .............................................................................. 41
RULES
viii
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OTHER AUTHORITIES
ix
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No appeal in or from this civil action was previously before this or any other
appellate court. The decision in this case may directly affect or be directly affected
Chu No. 743 (2020), currently pending in the People’s Republic of China Wuhan
x
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INTRODUCTION
house-mirror version of international norms. Samsung argues that the district court
was required to surrender its constitutional and statutory authority over the case
before it in view of an order issued by a court in Wuhan, China. It demands that the
district court do nothing to protect that authority, as Samsung invokes the U.S. legal
decree to prevent Ericsson from invoking the U.S. legal system to vindicate its U.S.
patent rights. Samsung insists the district court stand by, even though the parties
and the dispute have a strong connection to it, in favor of a foreign jurisdiction with
almost no connection to either. And Samsung insists the district court sit on its hands
after Samsung brought the Wuhan suit and obtained the Wuhan injunction in secret.
Courts have long rejected such theories and have protected themselves from efforts
standards (“SEPs”) and have entered into contractual commitments to license those
facture cellular equipment that must comply with industry standards. Both have long
1
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Ericsson filed a complaint in the Eastern District of Texas, where Ericsson Inc. is
headquartered and Samsung has major operations. Ericsson seeks damages for Sam-
its FRAND commitment in connection with the parties’ negotiations over a cross-
license, thereby forfeiting any right to a FRAND license from Ericsson; and a dec-
laration that Ericsson complied with its FRAND commitment in connection with
its own suit days before in Wuhan—where no part of the licensing dispute took
century, those two cases should proceed in parallel, with neither court interfering
with the other’s sovereignty. But Samsung secretly urged the Wuhan court to issue
an ex parte global anti-suit injunction. The district court responded with a protective
injunction to maintain the status quo. It did not attempt to shut down the Wuhan
case. It merely enjoined enforcement of the Wuhan court’s injunction so both suits
could proceed.
Attacking the district court’s injunction, Samsung contends that U.S. courts
must surrender their jurisdiction when there is a “first-filed action” in a foreign court.
But the international norm is for parallel cases in courts of different sovereigns to
2
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proceed undisturbed. When confronted by actions that would upset that norm, courts
Confronted by injunctions similar to the one the Wuhan court issued, other Nations’
courts have protected their authority. The district court had no less authority to
the parties or the case. Samsung’s suit there is deliberately partial: Samsung and
Ericsson negotiated over a cross-license, but Samsung asked the Wuhan court to
calculate a FRAND rate only for Ericsson SEPs, while excluding its own SEPs from
that proceeding. The resulting suit cannot decide any rights, because Ericsson’s
reciprocal FRAND terms for Samsung SEPs; Ericsson has no obligation to offer
Samsung the one-way license for which the Wuhan court allegedly will calculate a
field.
Samsung disagrees with the district court’s reading of the Wuhan injunction.
But the district court properly concluded that the injunction threatened the proceed-
ings properly before it. Samsung downplays its inequitable behavior in obtaining
the Wuhan injunction in secret. But Samsung attacked similar Chinese proceedings
3
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mistake in the district court’s description of related ITC proceedings, the court was
invoking U.S. proceedings to enforce its 4G and 5G patents, while reserving to itself
the right to use those proceedings to assert its own patents and attack Ericsson’s.
The Eastern District of Texas has an overwhelming interest in adjudicating this case;
Wuhan has virtually none. It did not offend comity for the district court to issue a
ISSUES PRESENTED
tion to protect its jurisdiction over a case with strong connections to the U.S.
were permissible given the threat to its jurisdiction posed by the Wuhan injunction.
around the world; Ericsson equipment serves over one billion subscribers in 180
4
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countries. Id. Ericsson invests $4-5 billion yearly in innovation, Appx430(¶ 27),
Electronics America, Inc., a New York company headquartered in New Jersey, and
the world’s largest mobile-phone maker and manufactures myriad other products.
Appx424(¶ 5). Samsung’s Plano, Texas office employs over 1,000 people.
Appx427(¶ 15).
Today, cellular devices and networks use one or more of the 2G, 3G, 4G, or
those standards specify how cellular phones and network infrastructure must
porate advances to improve the speed, reliability, security, and energy efficiency of
5
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LG, and Samsung. Appx431(¶ 30). Thousands of engineers from ETSI members
432(¶ 31). Ericsson has made more than 60,000 contributions to the 2G, 3G, 4G,
ents covering such technologies are called standard-essential patents (“SEPs”), be-
ensure fair access and to protect patent holders’ rights, ETSI has adopted an Intel-
lectual Property Rights (“IPR”) policy. Appx432(¶ 33). Under the policy, com-
panies holding patents that may be standard-essential can voluntarily declare that
or “FRAND” terms and conditions. Appx431(¶ 30); Appx432-433(¶ 34). That dec-
enforced by third parties that implement the standard. Appx432(¶ 33). Ericsson and
ject to the condition that those who seek licenses agree to reciprocate.” Appx1243.
Consequently, where a party has SEPs, Ericsson must license its SEPs on FRAND
6
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terms only if the party is also willing to cross-license its own SEPs to Ericsson on
Appx1187-1190.
For years, Ericsson and Samsung cross-licensed each other’s SEPs for the 2G,
31, 2020. Id.; Appx434(¶ 40). Consistent with the reciprocity conditions, the parties
sung would make a net balancing payment to Ericsson to reflect the greater value of
also for a cross-license (with a much smaller balancing payment), which Ericsson
7
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Many of Ericsson’s SEPs are U.S. patents. Appx436-437(¶¶ 48-55). Samsung has
Appx427(¶ 15). The U.S. is Ericsson’s and Samsung’s largest market. See Appx335;
Appx388.
obligations to negotiate in good faith and offer FRAND terms for cross-licensing its
declarations that Samsung violated, and Ericsson complied with, FRAND obliga-
tions, Appx217-220(¶¶ 65-77 & Prayer for Relief ). An Ericsson negotiator based in
Appx394(¶ 4).
amended its complaint to assert federal claims for infringement of eight U.S. patents.
“gain[ ] a toehold in the Eastern District of Texas” until Ericsson’s federal infringe-
ment claims ripened. Br.14-17; see Br.x-xi, 62-63. That accusation, never made
8
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below and asserted without supporting argument or facts, is frivolous. Parties are
have “no real interest in the dispute.” Louisiana v. Union Oil Co., 458 F.3d 364,
366 (5th Cir. 2006). Samsung never attempts to show the U.S. entities here—
plaintiff Ericsson Inc., a Delaware and Texas corporation, and defendants Samsung
Electronics America, Inc. (“SEA”), a New York and New Jersey corporation, and
Nor could it. The original complaint sought declarations that Ericsson com-
SEA, and SRA have a strong interest in those claims because they each “import[ ]”
and “sell[ ]” products implementing 4G and 5G standards in the U.S.; they risk
liability for infringing U.S. SEPs absent a license. See 35 U.S.C. § 271(a). “Ericsson
Inc.” thus “requires a license on FRAND terms” to Samsung’s SEPs, Appx207(¶ 20),
and SEA and SRA require a license on FRAND terms to Ericsson’s SEPs, Appx206-
207(¶¶ 18-19). They are proper parties. Samsung’s contrary accusation is not color-
able.
9
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the Wuhan Intermediate People’s Court of Hubei Province. Appx2. Samsung did
not notify Ericsson of the Wuhan lawsuit when it was accepted for filing on Decem-
ber 7, 2020. Appx3. It did not notify Ericsson when a panel was assigned on
December 11, 2020 (the same day Ericsson filed its complaint in the Eastern District
of Texas). Id. Because the Wuhan filings are not available electronically, Ericsson
While Ericsson’s U.S. suit seeks to resolve the parties’ reciprocal obligations
determination of a “one-way” FRAND royalty for just Ericsson SEPs, without cross-
licenses for Samsung SEPs. Appx2; Appx11-12 & n.10. Samsung’s suit thus avoids
putting Samsung’s own SEPs or FRAND commitments before the Wuhan court.
the parties’ negotiators reside in Wuhan and no negotiations took place there.
Appx1404(12:13-24). Neither party has a major presence in Wuhan. Id.; see also
Appx334-340; Appx388. China is Samsung’s 30th largest market for cellular de-
10
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previously told a U.S. district court that the Chinese court system is “antithetical to
the United States judicial system,” and that “there’s no due process requirements
On December 14, 2020—three days after Ericsson filed its U.S. suit—Sam-
injunction to prevent Ericsson from seeking relief relating to its 4G and 5G SEPs
anywhere else in the world. Appx3; see Appx978-980. Samsung included a copy
To keep the application secret, Samsung asked the Wuhan court to “hold the
service” until after the injunction issued. Appx3; Appx9; see Appx713; Appx715.
If the application became known, Samsung warned, other courts would act to prevent
UK, German and Indian counsels,” Samsung advised, indicated a “high” and “real-
istic probability” that other courts would grant a “pre-emptive interim injunction” to
protect their authority. Appx714. Even when Samsung notified Ericsson of the
Wuhan suit on December 17, 2020, it kept the application secret. Appx3;
Appx394(¶ 6).
11
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On December 25, 2020, the Wuhan court issued its injunction. Appx4. That
“[R]equesting” that any court “adjudicate the licensing terms” for its
4G and 5G SEPs, including the “royalty rate” and “royalty amount.”
Appx574.
such claims that have already been filed,” and prohibited Ericsson from seeking to
effect “for the duration” of the Wuhan case. Appx5 (emphasis added); Appx573;
Appx575.
The Wuhan court did not notify Ericsson until the day its injunction issued—
December 25, 2020. Appx2-3; Appx5; see Appx369-370. It gave Ericsson five days
12
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ern District of Texas to prevent Samsung from interfering with the action pending
there. Appx225. The court granted a temporary restraining order, invited briefing
The court emphasized the “well established” principle “that a federal court is
empowered to issue injunctions to protect its jurisdiction.” Appx5. The court dis-
tinguished the relief Ericsson requested, which sought to preserve the authority of
Consistent with Fifth Circuit law, the court considered “ ‘principles of inter-
the need “ ‘to protect the court’s jurisdiction’ ” over cases properly before it. Appx6.
The court found that enforcement of the Wuhan injunction would interfere with its
13
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proceed in this forum.” Appx8. Enforcement would not merely “frustrate and
delay” adjudication of causes of action before it, but would “prohibit[ ] their adjudi-
raised in this Court and not raised in the Chinese Action.” Appx11. The court
acknowledged that some of Ericsson’s causes of action might not be covered by the
Wuhan injunction, but held that “the inability for this Court to hear one or many
causes of action equally offends the efficient adjudication of such issues.” Appx11
n.8.
The Wuhan proceedings, the district court continued, would not be adversely
claims before each court “are different.” Id. The parties had been negotiating a
from the case. Appx11-12; see Appx517-518. Ericsson’s suit, by contrast, asked
the U.S. court “to look at the parties’ pre-suit negotiation conduct and determine
whether the parties breached or complied with their mutual FRAND obligations.”
Appx11-12 (emphasis added). The “Wuhan Court is asked to provide [an Ericsson-
only] number,” while “[t]his Court is asked to evaluate [both parties’] conduct.”
Appx12. At the hearing, Samsung itself had distinguished the Chinese action, which
14
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the U.S. claims “deal[ing] with the conduct of the parties,” such as “breach of con-
“[w]hether [Ericsson’s] conduct was FRAND,” and “what the actual FRAND rate is
Because the issues are different, the court found, “the causes of action [in the
U.S. court] have no implication on the speedy and efficient determination of the
issues raised before the Wuhan Court.” Appx11. “The Wuhan Court can continue
to adjudicate the claims that Samsung has brought before it, pursuant to its laws and
its rules of civil procedure.” Id. The fact that “both Courts can properly exercise
jurisdiction over the respective causes of action brought before them” weighed
opportunity to be heard”—of its “right to attempt to obtain redress for claims it has
the right to bring under the laws of the United States.” Appx9. At the hearing,
Samsung had agreed that the Wuhan court had “imposed a preliminary injunction ex
1
Under Federal Rule of Civil Procedure 65(b)(2), ex parte TROs expire automati-
cally at the end of 14 days. The ex parte Wuhan injunction was in place for months
until the Wuhan court denied reconsideration, and will remain in place indefinitely.
15
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the Wuhan litigation “until well after [Ericsson] filed” its complaint in the Eastern
in both courts: It had “agreed on the record . . . that parallel actions are inevitable”
and “readily admitted” that Ericsson’s U.S. action was not “vexatious or oppres-
The district court rejected Samsung’s rationalizations for the Wuhan injunc-
tion. It had no doubt the “real motivation” for procuring the Wuhan injunction was
to “put Ericsson in a weaker negotiating position.” Appx10. The parties had been
negotiating reciprocal cross-licenses. But the Wuhan suit put only the value of
Ericsson’s SEPs at issue, and restrained only Ericsson’s ability to assert its patents.
Appx11-12. The Wuhan injunction would “prevent Ericsson from seeking injunc-
tive relief relating to its 4G and 5G SEPs in any tribunal in the world except in the
Wuhan Court,” while not limiting Samsung’s options. Appx12. Indeed, Samsung
thereafter asserted patents against Ericsson in the U.S. International Trade Commis-
sion (“ITC”), and challenged Ericsson patents in the U.S. Patent and Trademark
Office (“PTO”). Allowing Samsung to “seek redress of its claims” in the U.S., while
“[tying] Ericsson’s hands from doing the same,” “would be the height of inequity
Samsung from:
16
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(1) Taking “action in the Chinese Action that would interfere with this
Court’s jurisdiction to determine whether Ericsson or Samsung have
met or breached their FRAND obligations” relating to their 4G and 5G
SEPs or “with any other cause of action before this Court”; and
(2) Taking “action in the Chinese Action that would deprive Ericsson” of
its “rights to assert the full scope” of U.S. patent rights “in the United
States.”
Appx15 (footnote omitted). The court ordered that Samsung indemnify Ericsson for
fines imposed to enforce the Wuhan anti-suit injunction insofar as they were
imposed against Ericsson for engaging in otherwise lawful U.S. litigation over
“claims relating to the 4G and 5G SEPs identified or involved in this case.” Id.
The court deemed the indemnification provision critical to address its “con-
cern that Samsung may seek the imposition of substantial fines in the Chinese Action
for the purpose of creating economic leverage against Ericsson to achieve practically
what it may not be able to obtain legally.” Appx14. Indemnification was especially
necessary given the risk of ex parte communications. Samsung had agreed that, in
Chinese proceedings, “the judge can call either side and meet with them separately.”
would not “have a sword and [Ericsson] be unarmed” in what should be “parallel
litigation.” Appx1441(49:5-7).
17
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After the district court issued its order, Samsung filed a “notice to clarify” that
the ITC proceeding referenced in the order did not involve SEPs. Appx1501-1502.
SUMMARY OF ARGUMENT
ordinarily proceed concurrently. Where one court disturbs that norm with an anti-
suit injunction, other courts are authorized to respond with orders to protect their
jurisdiction. Courts worldwide issue injunctions similar to the one the district court
issued here; courts in Germany and India took identical action in response to an
that U.S. courts would have enjoined foreign litigation under the same circum-
outcome, since it involves calculating FRAND terms for a one-way license, while
I.B. The protective injunction was appropriate under governing Fifth Circuit
law. The district court properly concluded that enforcement of the Wuhan injunction
18
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grant. The Wuhan injunction threatened all of Ericsson’s claims, including claims
not raised in Wuhan. Enforcement of the Wuhan injunction also would have been
vexatious and oppressive, denying Ericsson remedies available in the U.S. but not
also left Samsung free to file enforcement actions with respect to its SEPs all over
the world while tying Ericsson’s hands with respect to enforcement of Ericsson
SEPs.
I.C. Samsung nitpicks the district court’s analysis but fails to show abuse of
discretion. The court reasonably found the Wuhan injunction—a decree of indefinite
arguments are wrong and employ the wrong test. The court also correctly evaluated
the inequity and prejudice to Ericsson from Samsung obtaining a lopsided anti-suit
injunction in secret from the Wuhan court. Samsung’s comparison to forum non
conveniens underscores why the district court acted within its discretion. Had
Samsung filed such a motion here, it certainly would not have prevailed. Samsung
injunction. While Samsung notes an error in the description of a related ITC case,
the district court’s point was correct: The Wuhan injunction left Samsung free to
file injunctive actions in the U.S. while denying Ericsson that same U.S. remedy.
19
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I.D. The district court correctly concluded that comity did not require it to
surrender its jurisdiction to the Wuhan court. A court’s authority to issue a protective
Samsung’s attempt to conjure a rule that district courts must defer to “first-filed”
foreign actions falls short. Courts have long rejected any such rule. And the notion
that China is an especially appropriate forum because it will adjudicate FRAND rates
consent, and Ericsson does not consent to the one-way rate Samsung seeks. Where
ed by Fifth Circuit precedent and necessary for its efficacy. Without nationwide
reach, indemnification, and permission for Ericsson to seek U.S. injunctive relief,
the injunction would not remedy the Wuhan court’s interference with U.S. courts’
and agencies’ lawful jurisdiction. The district court properly restored the status quo
the Wuhan injunction, but which avoids interfering with the Wuhan litigation on the
merits.
ARGUMENT
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side interference. The longstanding norm is that proceedings in the courts of differ-
injunctions like the one the district court entered here reflect that principle. When
the same Wuhan court issued an almost indistinguishable injunction seeking to claim
exclusive jurisdiction over an SEP dispute in the past, German and Indian courts
issued decrees to protect the rights of the patentees to seek relief in their courts. The
The district court did not foreclose Samsung’s Wuhan suit. It allowed that
before it. That was especially appropriate as both parties and the dispute have strong
system under which one Nation’s courts may halt proceedings in other Nations. That
proposed rule has been repeatedly rejected. Samsung assails the district court’s de-
scription of the Wuhan injunction, its analysis of Chinese procedure, and the details
of a related ITC case that Samsung filed. But those arguments show neither revers-
ible error nor an abuse of discretion. The district court’s injunction was no broader
21
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Corp., 76 F.3d 624, 626 (5th Cir. 1996). Factual findings “ ‘are not overturned unless
“clearly erroneous.” ’ ” Houston Agric. Credit Corp. v. United States, 736 F.2d 233,
235 (5th Cir. 1984). Legal conclusions are reviewed de novo. See Janvey v. Alguire,
Fifth Circuit law. Samsung treats it as routine for one Nation’s courts to assert ex-
clusive authority and prohibit other courts from adjudicating claims. Br.36-37. It
then rewrites Fifth Circuit law to forbid district courts from responding to such over-
mentally unfair (to the point of being illegitimate).” Br.51. Both suppositions are
wrong. Under settled law, the district court’s exercise of authority to protect pro-
ceedings and the rights of the parties before it was unquestionably proper.
1. Courts have long followed the “rule” that they will not surrender
involves the same parties and claims. Bowne v. Joy, 9 Johns. 221 (N.Y. 1812) (citing
Maule v. Murray, 7 T.R. 470 (1798)); see Renner & Bussard v. Marshall, 14 U.S.
215, 217 & n.a (1816); Stanton v. Embrey, 93 U.S. 548, 554 (1877). Conversely,
22
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courts ordinarily will not “interfere with or try to restrain proceedings in another”
Nation’s courts. Compagnie des Bauxites de Guinea v. Ins. Co. of N. Am., 651 F.2d
877, 887 (3d Cir. 1981) (citing Donovan v. City of Dallas, 377 U.S. 408, 412 (1964)),
aff ’d sub nom. Ins. Corp. of Ireland v. Compagnie des Bauxites de Guinee, 456 U.S.
694 (1982); Hyman v. Helm, [1883] 49 LT 376, 380 (Eng.) (Bowen LJ) (appeal)
Gas Bumi Negara, 335 F.3d 357, 372-73 (5th Cir. 2003); Cohen v. Rothfield, [1919]
against pursuit of foreign proceedings “exercised with great caution, to avoid even
Instead, when parallel cases are filed in courts of different sovereigns, “[e]ach
court is free to proceed in its own way and in its own time, without reference to the
proceedings in the other court.” Kline v. Burke Constr. Co., 260 U.S. 226, 230
(1922); see Quaak v. Klynveld Peat Marwick Goerdeler Bedrijfsrevisoren, 361 F.3d
in one which can be pled as res judicata in the other.” Laker Airways Ltd. v. Sabena,
Belgian World Airlines, 731 F.2d 909, 926-27 (D.C. Cir. 1984); see, e.g., Karaha,
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335 F.3d at 372 n.59 (citing Laker); China Trade & Dev. Corp. v. M.V. Choong
Yong, 837 F.2d 33, 35 (2d Cir. 1987) (same). Each Nation’s courts exercise
“independent sovereign power” and have “exclusive and absolute” jurisdiction over
cases within their borders. The Schooner Exch. v. McFaddon, 11 U.S. (7 Cranch)
116, 136 (1812); see Joseph Story, Commentaries on the Conflict of Laws § 8 (1834);
independent countries are rarely issued.” Laker, 731 F.2d at 927; E.&J. Gallo
Winery v. Andina Licores S.A., 446 F.3d 984, 989 (9th Cir. 2006) (anti-suit injunc-
tions to “ ‘be used sparingly’ ”); MWK Recruiting Inc. v. Jowers, 833 F. App’x 560,
564 (5th Cir. 2020) (“ ‘extraordinary remedy’ ” that should not be “commonplace”).
Samsung never reconciles the Wuhan injunction with those principles. That
“withdraw or suspend” claims “that have already been filed.” Appx574. It bars
Ericsson from seeking statutorily authorized injunctive relief on its 4G and 5G SEPs.
Id. It forecloses any effort to “adjudicate the licensing terms” for Ericsson’s 4G and
5G SEPs, including “royalty rate” and “royalty amount.” Id. And it bars Ericsson
negotiating with Samsung—precisely what Ericsson had sought. Id. Samsung never
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asserts that allowing Ericsson to pursue such claims “would plainly interfere with
the global rate-setting action” the Wuhan court would allegedly conduct, Br.36,
nothing about Ericsson’s U.S. suit impedes the Wuhan court’s ability to address
Samsung’s claims.
en[s] interference with the Chinese action,” Br.44, defies international norms. “ ‘The
general rule . . . is that concurrent proceedings regarding the same question are toler-
ated.’ ” Bugliotti v. Republic of Argentina, 952 F.3d 410, 415 (2d Cir. 2020). Over-
lapping issues are not “ ‘exceptional circumstances’ ” that justify departure from the
norm but are “ ‘generally present as a result of parallel litigation.’ ” Id.; see Laker,
731 F.2d at 928; Cohen, 120 LT at 436 (Eve J) (Appx1556) (existence of “overlap-
rule”: Where a foreign Nation’s court reaches across the border to interfere with law-
suits here, this Nation’s courts may protect the parties and matter before them. Laker,
731 F.2d at 929. “Just as” the law “counsels against” interfering with “concurrent
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court to interfere with an in personam action before the domestic court.” Id.
(emphasis added).
When a foreign court “attempts to carve out exclusive jurisdiction over con-
current actions” by enjoining litigation here, domestic courts may issue injunctions
to “conserve [their] ability to reach a judgment.” Laker, 731 F.2d at 929-30; see id.
20-21 (affirming “defensive injunction that sought only to preserve the court’s abil-
ity to adjudicate the claims before it”). “Our courts are not required to stand by”
when a foreign court “attempts to close a courthouse door” that Congress, exercising
“territorial jurisdiction, has opened.” Laker, 731 F.2d at 936. Courts worldwide
München [Munich Higher Regional Court], Dec. 12, 2019, 6 U 5042/19 (Ger.),
2
See also InterDigital Tech. Corp. v. Xiaomi Commc’ns Co., Landgericht München
[Munich Regional Court I ], Feb. 25, 2021, 7 O 14276/20 (Ger.), translation at 39
(Appx1868-1922) (confirming anti-interference injunction to ensure patentee is not
“deprived of his right[s]” to “enforcement”); Interdigital Tech. Corp. v. Xiaomi
Corp., Delhi HC, Oct. 9, 2020, I.A. 8772/2020 in CS(COMM) 295/2020 ¶ 76 (India)
(Appx252-324) (granting anti-interference injunction to protect “jurisdiction of
26
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with the sovereign rights” of other Nations. Nokia, No. 6 U 5042/19, supra,
translation at 8 (Appx1865).
Other courts have issued protective injunctions to address a decree from the
same Wuhan court nearly indistinguishable from the one here. India’s Delhi High
Court issued an injunction to address the Wuhan court’s attempt to seize exclusive
the same Wuhan injunction, followed suit, declaring the decree was “not to be
at 39 (Appx1906); see Appx985. As the German regional court panel explained, the
Wuhan injunction “threatened” patent holders and created a “coercive situation” that
limited the freedom of companies holding German patents to protect their rights in
[Indian] Court”); Pan Austl. Shipping Pty. Ltd. v. The Ship ‘Comandate’, [2006]
FCA 881 ¶ 31 (Austl.) (Appx1935-1948) (anti-interference injunction to protect
right to “pursue[ ]” claims under Australian law); IPCom GmbH & Co. KG v. Lenovo
Tech. (U.K.) Ltd., [2019] EWHC (Pat) 3030 ¶¶ 52-54 (Eng.) (Appx1098-1109) (anti-
interference injunction to protect English proceedings); Lenovo (U.S.) Inc. v. IPCom
GmbH & Co. Kg, Cour d’appel [CA] [regional court of appeal] Paris, civ., Mar. 3,
2020, 14/2020 ¶ 36 (Fr.) (Appx1923-1934) (requiring party to withdraw request for
anti-suit injunction that constituted “manifestly unlawful disturbance”).
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(Appx1906). The U.S. district court had no less authority to protect its jurisdiction
Samsung knows that rule—which is why it urged the Wuhan court to withhold
service (i.e., notice) of its application for the injunction. If the application became
known, Samsung warned, there was a “high” probability other courts would issue
U.S. courts would interfere with foreign proceedings just as the Wuhan court
interfered with U.S. proceedings here. See Br.3, 40-41; see Professors’ Br.15-16
Ericsson, No. 14-cv-341, Dkt. 279-1 (C.D. Cal. June 29, 2015), involved a “mutual
agreement ” between the parties to stay foreign suits in favor of a “global resolution”
of their FRAND dispute in the U.S. Id. at 11. That consensual resolution provides
And Microsoft Corp. v. Motorola, Inc., 696 F.3d 872 (9th Cir. 2012), and
1784065 (N.D. Cal. Apr. 13, 2018), undermine Samsung’s position. Those cases
invoke the generally accepted view that parties seeking to enjoin foreign suits must
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make a “threshold” showing that “ ‘the parties and the issues are the same’ in both
the domestic and foreign actions” such that the domestic action “ ‘is dispositive of
the [foreign] action to be enjoined.’ ” Microsoft, 696 F.3d at 882 (emphasis added);
see Huawei, 2018 WL 1784065, at *8, *10; accord Quaak, 361 F.3d at 18; China
Trade, 837 F.2d at 35; MWK, 833 F. App’x at 564-65 (must consider whether actions
Laker, 731 F.2d at 928 & n.55. But if the suits are not duplicative, U.S. courts will
Quaak, 361 F.3d at 18; cf. Professors’ Br.15 (conceding that action pending before
Samsung never suggests that the Wuhan injunction would be issued by U.S.
courts under that standard—because it flunks the test. The U.S. action extends well
beyond the case Samsung filed in Wuhan. The Wuhan case seeks determination of
one-way “royalty rates” solely for a license to Ericsson SEPs; Samsung excluded its
own SEPs from that case. Appx410. The U.S. case, by contrast, addresses the parties’
both parties’ SEPs. Appx12 n.10; see Appx480; Appx442-445. Whereas the Wuhan
case involves forward-looking royalty numbers, the U.S. case involves conduct:
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22, 2019); see Appx12. The district court case also seeks damages for past
infringement. Appx481. The Wuhan action does not. Samsung thus concedes that
this action is not “vexatious or oppressive,” and that the Wuhan action cannot be
The Wuhan action thus concerns less than half the controversy here:
Samsung’s suit there seeks a FRAND rate for a license from Ericsson to Samsung,
not the two-way cross-license that the parties were negotiating. See pp. 6-7, supra;
Appx12 n.10. For that reason, the Wuhan case cannot even produce the binding
(like Samsung’s) is “ ‘made subject to the condition that those who seek licenses
only if Samsung reciprocates with a FRAND cross-license to its own SEPs. See pp.
6-7, supra. The one-way license rate Samsung seeks from the Wuhan court thus
agreement. Appx211; see Appx12 n.10. It is doubtful the Wuhan case can provide
a meaningful result, let alone dispose of this action. A U.S. court likely would not
Samsung’s suggestion that U.S. courts would go further to invoke such a suit to
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Samsung also ignores the inequitable effect of the Wuhan injunction. Erics-
son and Samsung need licenses for each other’s SEPs. The Wuhan injunction Sam-
sung obtained, however, would “prevent Ericsson” alone “from seeking injunctive
relief relating to its 4G and 5G SEPs,” while leaving Samsung free to pursue
injunctions around the globe to halt sales of Ericsson products. Appx12. The district
court recognized the “hypocrisy” of such a decree, and that its unbalanced impact
could force Ericsson to surrender its U.S. rights without a proper adjudication.
Appx12-13. Samsung never suggests U.S. courts would issue such an unbalanced
injunction, and Microsoft and Huawei reject such one-sided pressure tactics.
cretion. Confronted with Samsung’s effort to wrest away district court authority
relating to Ericsson’s 4G and 5G SEPs, the court reasonably defended its lawful
power to resolve the case before it. In the Fifth Circuit, courts may issue anti-suit
relief, even to proscribe a foreign action, where that action would “frustrate a
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(5th Cir. 1970), aff ’d on reh’g, 446 F.2d 907 (5th Cir. 1971) (en banc) (per curiam),
rev’d on other grounds sub nom. M/S Bremen v. Zapata Off-Shore Co., 407 U.S. 1
tions are then weighed against any resulting intrusion on “international comity.”
Microsoft, 696 F.3d at 881; MWK, 833 F. App’x at 562. The Unterweser factors,
which Samsung barely addresses, amply support the district court’s protective
injunction.
injunctions seeking only to restore the norm of parallel proceedings and “preserve
the district court’s” authority—like the order here—are more easily justified than
“offensive” injunctions that would foreclose relief in foreign courts. Laker, 731 F.2d
at 938 (emphasis omitted). That injunctions are reserved for “extraordinary” situa-
tions, Br.36, adds nothing. Samsung cites no court that has ever refused to protect
itself from foreign court interference on such a theory; and a foreign court’s effort
to deny U.S. courts their ability to adjudicate matters within their jurisdiction is
exceptional regardless. E.g., Quaak, 361 F.3d at 20; see also Laker, 731 F.2d at 929;
Microsoft, 696 F.3d at 881, 889; Unterweser, 428 F.2d at 890. Application of ordi-
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response to a decree that would frustrate U.S. policy. Congress empowered federal
1367.
sions. Appx11. Clause 1 of the Wuhan injunction prohibits Ericsson from seeking
an injunction for the SEPs asserted here, despite Congress’s determination that fed-
eral courts have injunctive authority. Appx4. Clause 3 prohibits Ericsson from re-
questing that courts “adjudicat[e ] the licensing terms (including the royalty rate) or
royalty amount ” for Ericsson 4G and 5G SEPs. Id. (emphasis added). That threat-
ens even damages for infringement under § 284—which are no less than a reasonable
royalty—as FRAND “limits” reasonable royalties for any SEP. Ericsson, Inc. v. D-
Link Sys., Inc., 773 F.3d 1201, 1231 (Fed. Cir. 2014). And Clause 4 prohibits Erics-
son from filing a case “to determine whether [Ericsson] fulfilled [its] FRAND obli-
gations,” Appx4, even though Congress authorized district courts to issue such dec-
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The effort to deny Ericsson Inc.—a U.S. citizen and U.S. patentee—the right
to seek relief Congress made available “frustrate[s]” Congress’s policy and U.S. law.
Federal courts have unquestioned authority to resist foreign efforts to “supersede the
right and obligation of the United States courts” to adjudicate matters properly be-
fore them. Laker, 731 F.2d at 935-36; Quaak, 361 F.3d at 20-21. They may defend
the “ ‘virtually unflagging obligation of the federal courts to exercise the jurisdiction
given them.’ ” Appx8 (quoting Colo. River Water Conserv. Dist. v. United States,
424 U.S. 800, 817 (1976)); see Bugliotti, 952 F.3d at 414-15 (district court defies its
ces’ ”). That authority has a long pedigree: The first Judiciary Act of 1789 author-
ized federal courts to “ ‘issue all writs necessary or appropriate in aid of their respec-
tive jurisdictions,’ ” United States v. N.Y. Tel. Co., 434 U.S. 159, 172 (1977), includ-
resist the extreme intrusion on federal authority Samsung sought to impose. First,
the Wuhan court’s injunction threatened all of Ericsson’s U.S. claims in the Eastern
District. The Wuhan injunction does not merely proscribe injunctive relief. It bars
any “adjudicat[ion of ] the licensing terms (including the royalty rate) or royalty
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Ericsson, 773 F.3d at 1231, that language could easily be read to preclude calculating
The Wuhan injunction would also foreclose Ericsson’s contract and declara-
breached its FRAND obligations. As explained above (at 6-7), Ericsson’s and
with FRAND obligations absent the other’s compliance. There is thus no way to
adjudicate Ericsson’s claim that Samsung breached its FRAND commitment, see
Appx440-445; Appx480, without deciding whether Ericsson met the condition that
it comply with FRAND as well—a condition Ericsson cannot litigate under Clause
4 of the Wuhan injunction. Moreover, Ericsson’s and Samsung’s offers were both
for cross-licenses that included a net balancing payment reflecting the difference in
value between Ericsson’s SEPs and Samsung’s SEPs. See p. 7, supra. Whether the
cross-license Samsung offered was FRAND thus requires determining the value of
both Ericsson’s and Samsung’s SEPs. But the Wuhan injunction’s Clause 3
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under Colorado River does not apply to declaratory relief, Br.43, is thus beside the
point and wrong. The district court here did not merely protect its declaratory-relief
are not exempt from the district court’s “virtually unflagging” obligation to exercise
jurisdiction. See, e.g., Sprint Commc’ns, Inc. v. Jacobs, 571 U.S. 69, 72 (2013).
Under Wilton v. Seven Falls Co., 515 U.S. 277 (1995), district courts may in their
judgment remedy, and the fitness of the case for resolution.” Id. at 289. But nothing
exempts courts from exercising that discretion to make “decisions about the
propriety of ” declaratory relief. Id. at 289-90; see, e.g., Agora Syndicate, Inc. v.
Robinson Janitorial Specialists, Inc., 149 F.3d 371, 372-74 (5th Cir. 1998); MedIm-
mune, Inc. v. Genentech, Inc., 549 U.S. 118, 136-37 (2007) (remanding for court to
Second, the U.S. has a “compelling interest” in providing a U.S. forum for a
case with overwhelming ties to the U.S., in a district “where both parties have a
Samsung maintains a large office there—and where the conduct at issue occurred.
Appx8; Appx10; see Appx429(¶ 22); Appx1404. The U.S. is the largest market for
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both companies. See pp. 7-8, supra. Ericsson seeks damages for infringement of
U.S. patents based on Samsung’s conduct in the U.S. Appx445-480 (Counts VI-
XII).
have been filed. China is not a major market for Samsung. Appx1404-1405(12:25-
determining a one-way rate for Ericsson patents illusory, as the court cannot legally
2. Vexatious and Oppressive. Nor did the district court abuse its discre-
frustrates or delays the district court proceedings; and (3) the extent to which the
domestic and foreign cases overlap. See MWK, 833 F. App’x at 562. Enforcement
of the Wuhan injunction would not merely “frustrate” and “delay” the Texas case; it
threatens to halt the case entirely. That imposes “inequitable hardship” on Ericsson,
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“depriv[ing]” Ericsson “of the right to attempt to obtain redress for claims it has the
unavailable in Wuhan. Laker, 731 F.2d at 930. The U.S. case presents infringement
claims absent in the Wuhan case. The contract and declaratory-judgment claims in
the U.S. case involve compliance with FRAND obligations in negotiations for a
reciprocal cross-license, while the Wuhan case only involves computation of a one-
way FRAND rate to Ericsson’s SEPs alone. Appx12 & n.10. The “legal questions”
in the proceedings thus are different, and a decision in the Wuhan case “is unlikely
to obviate” the U.S. suit. Appx11-12 & n.10. Nearly all the remedies Ericsson seeks
here are unavailable in the Wuhan suit, including damages for infringement of
Ericsson’s U.S. patents and adjudication of the parties’ compliance with FRAND
Relief). Because the Wuhan injunction sweeps wider than the case Samsung filed
there, its enforcement would foreclose Ericsson from obtaining those remedies in
the U.S. despite their unavailability in Wuhan. See pp. 34-35, supra. That makes
the need for a defensive injunction “particularly” pressing. Laker, 731 F.2d at 929-
30. By contrast, Samsung has “readily admitted” that “parallel actions” would not
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manship.” Appx13. Had Samsung believed Wuhan was the better forum for this
dispute, it would have filed a forum non conveniens motion in the district court. But
that would have failed—“the lawsuit’s bona fide connection . . . to the forum of
similar relevant factors, Iragorri v. United Techs. Corp., 274 F.3d 65, 72 (2d Cir.
2001), all clearly favor the U.S., see pp. 36-37, supra.
asking the Wuhan court not to notify Ericsson. Appx9-10. Samsung only put Erics-
son’s SEPs at issue, not its own. Samsung pursued that strategy to “put Ericsson in
a weaker negotiating position when it comes to cross licensing its 4G and 5G SEPs.”
ship.” Appx13.
Samsung does not deny the district court applied the correct legal standard.
the conclusion that enforcement of the Wuhan injunction would be “vexatious and
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oppressive.” Id. Those unmeritorious quibbles do not approach the high bar for
Samsung asserts that the district court “misapprehended” the Wuhan injunc-
tion’s “scope,” challenging its conclusion that the injunction threatened to prevent
the U.S. case from proceeding. Br.4, 38-42. But Samsung’s contention that some
small piece of that case could proceed is irrelevant and mistaken. It is irrelevant
because the district court ruled that, even if “not all causes of action before this Court
are enjoined by the” Wuhan injunction, the court would still issue the anti-
interference injunction to preserve its authority over the whole case, including all
the causes of action Ericsson joined. Appx11 n.8. Samsung never shows that to be
an abuse of discretion.
in Ericsson’s Amended Complaint. See pp. 34-35, supra. Samsung asserts that the
claims charging Samsung with breaching its FRAND obligations, as well as dam-
ages claims for infringement, can proceed. But the Wuhan injunction could reach
those claims for the reasons above. Samsung offers no argument to support the
merely states those portions can proceed. Samsung’s position is thus not merely
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wrong but waived. It cannot provide the missing argument for the first time in reply.
court was entitled to consider the risk the Wuhan court might read its order broadly.
See Karaha, 335 F.3d at 369. As the district court found, “Samsung furnished
Ericsson’s [U.S.] Complaint to the Wuhan Court and specifically asked for an in-
junction preventing this case from moving forward.” Appx11. While Samsung
the U.S. complaint, describing it as “a repeated lawsuit based on the same portfolio,
patent licensing negotiation facts, and legal issues” as the Wuhan case. Appx721;
Appx982. It asserted that the Wuhan suit would resolve “all the parties’ previous
“unnecessary” and a “repeated lawsuit.” Appx989. It was not clear error for the
district court to conclude that the Wuhan injunction threatened many if not all the
U.S. claims. Appx11. Samsung offers no basis for overturning the district court’s
Samsung argues that the district court overstated the unfairness resulting from
disputes that “Ericsson had no notice” of the Wuhan suit “until well after” Ericsson
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filed and notified Samsung of this suit. Appx1452(60:19-24). Samsung agreed that
resulting prejudice. Samsung urged the Wuhan court to keep the injunction appli-
cation secret precisely because there was a “high” “probability” that other courts
would issue defensive injunctions if Ericsson learned of the application and sought
relief. Appx714. That Samsung had to keep the application secret because other
Samsung urges that the district court failed to appreciate Ericsson’s right to
eliminate prejudice from being denied the opportunity to be heard in the first place.
See Hoechst Diafoil Co. v. Nan Ya Plastics Corp., 174 F.3d 411, 422 (4th Cir. 1999).
A German court faced with a nearly identical Wuhan injunction came to the same
Samsung’s discursions on inquisitorial systems and burdens of proof are beside the
point. Br.46-47. They are inapt coming from a company that decried Chinese courts
as “antithetical to the United States judicial system” and lacking “due process
requirements like the[re] are in this country.” Appx392. None rebut the district
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below. Br.48. “Given the ‘virtually unflagging obligation of the federal courts to
exercise the jurisdiction given them,’ . . . forum non conveniens should be invoked
Corp., 891 F.3d 615, 618 (6th Cir. 2018). While U.S. courts “regularly defer to
Chinese courts” on forum non conveniens grounds, Br.48; see Sinochem Int’l Co. v.
Malaysia Int’l Shipping Corp., 549 U.S. 422, 435-36 (2007), they do so where the
U.S. contacts are so tenuous it is unclear the district court has jurisdiction. Innova-
tion First Int’l, Inc. v. Zuru, Inc., 513 F. App’x 386, 388-89 (5th Cir. 2013) (events
Koninklijke Boskalis Westminster NV, 569 F.3d 189, 201 (4th Cir. 2009) (collision
That rule, and this case’s tenuous connection to China compared to its strong
connection to the U.S., mean that Samsung would not have prevailed on forum non
conveniens in district court. See pp. 36-37, supra. That is why Samsung circum-
vented the district court’s discretion to decide whether this suit should be litigated
foreign court. The district court was not required to allow itself to be strong-armed
in that manner.
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The district court properly considered the fact that Samsung sought to restrict
Ericsson’s access to U.S. proceedings but left itself free to pursue them at will. “If
Samsung can seek redress of its claims through injunctive relief in the United
States,” the court found, “it would be the height of inequity . . . to allow the [Wuhan
injunction] to tie Ericsson’s hands from doing the same.” Appx13 (emphasis added).
Samsung complains that the district court, in illustrating that inequity, erron-
eously stated that Samsung had asserted 4G and 5G SEPs in the ITC. The point
remains: Samsung and Ericsson both seek to license each other’s SEPs, but Sam-
sung seeks to deny Ericsson a U.S. remedy (injunctive relief ) that Samsung pre-
serves for itself. And Samsung has attacked Ericsson 4G and 5G SEPs through IPRs
in the U.S., see Samsung Elecs. Co. v. Telefonaktiebolaget LM Ericsson, IPR Nos.
2021-487, -447, -446, -486 (Jan. 29, 2021), -730 (Mar. 26, 2021), but seeks to
foreclose Ericsson from asserting those same SEPs as a basis for injunctive relief in
the U.S. The court was entitled to consider the “inequity” of that result. Appx12-
13.
research.” Br.48-49. But Samsung filed the ITC complaint “the day of the hearing”
in district court, without informing the court about that impending suit. Id.
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Samsung’s lack of candor about facts relevant to the court’s consideration of the
Nor is it true that the district court imposed the protective “injunction . . . to
from relying on a mistaken “legal principle that all parties to a negotiation should
have equal leverage,” id., the court found that Samsung’s “litigious gamesmanship”
sought to force Ericsson to settle without exercising its legal rights, Appx13.
litigation is complete” can support protective decrees. Microsoft, 696 F.3d at 886;
The district court correctly found that “international comity is not offended by
the issuance of an anti-interference injunction which seeks to preserve the ability for
litigation to proceed in parallel.” Appx13 (citing Laker, 731 F.2d at 926-27). Sam-
sung’s contrary argument rests on the false premise that federal courts violate comity
by defending their authority to adjudicate cases before them whenever the foreign
action was filed first—here, by a few days, without notice until after the district court
action was filed. E.g., Br.2, 18, 33, 53-56; see Professors’ Br.26-27. The contention
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order invades U.S.-court authority in violation of comity principles, the party that
sought the foreign order cannot invoke comity to prevent U.S. courts from protecting
themselves. Quaak, 361 F.3d at 21; SAS Inst., Inc. v. World Programming Ltd., 952
F.3d 513, 525 (4th Cir. 2020). Here, Samsung urges that comity precluded the
district court from protecting itself unless stringent standards are met. Br.51. But it
nowhere suggests the Wuhan court invoked those standards before attempting to
wrest authority from U.S. courts. Samsung conceded that the U.S. proceedings are
district court from protecting itself from the resulting interference. See, e.g., Quaak,
361 F.3d at 20-21. A foreign injunction “specifically intended to interfere with and
terminate” a U.S. lawsuit is “not entitled to comity” from U.S. courts “by any
definition.” Laker, 731 F.2d at 938; see Amchem Prods. Inc. v. B.C. Workers’ Comp.
Bd., [1993] 1 S.C.R. 897, 902 (Can.) (Appx1949-1992) (“[A] foreign court, not
having, itself, observed the rules of comity, cannot expect its decision to be respected
parallel does not “[o]ffen[d]” comity, Br.51; it arises out of comity principles, pp.
22-28, supra. The international norm in favor of parallel proceedings flows from
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the “deference and mutual respect” courts of different Nations owe each other to
comity. Laker, 731 F.2d at 928. Comity is not offended when the court of one
Nation acts to protect itself from another court’s “attempts to carve out exclusive
which creates” international conflict in the first place. Id. at 930, 939.3
2. Samsung attempts to invent a rule that U.S. courts must tolerate such
intrusions if imposed by a “foreign court having jurisdiction over the first-filed ac-
tion.” Br.2; see id. at 18, 33, 53-56; see also Professors’ Br.13-14. Samsung told
this Court the opposite in litigation against Huawei, urging “The Timing Of The
Samsung Elecs. Co., No. 18-1979 (Fed. Cir. filed Aug. 27, 2018) (reproduced
properly rejected any such rule, Appx1. There is no “first-filed principle” (Br.54) in
suits before separate sovereigns. See Laker, 731 F.2d at 927 (“The mere filing of a
suit in one forum does not cut off the preexisting right of an independent forum to
regulate matters subject to its prescriptive jurisdiction.”); Microsoft, 696 F.3d at 887
3
Another precondition for comity, that “due notice” was given to the party affected
by the foreign order, Hilton v. Guyot, 159 U.S. 113, 166-67 (1895), was also absent
here.
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(“The order in which the domestic and foreign suits were filed . . . [is] not
dispositive.”).
Samsung analogizes to a rule “favoring the forum of the first-filed case” when
two or more federal district courts hear overlapping litigation. Br.55; see Elecs. for
Imaging, Inc. v. Coyle, 394 F.3d 1341, 1347 (Fed. Cir. 2005); In re VoIP-PAL.com,
Inc., No. 2021-112, 2021 WL 650626, at *1 (Fed. Cir. Feb. 19, 2021). But that rule
“has never been applied, and in fact it was never meant to apply[,] where the two
courts involved are not courts of the same sovereignty.” Compagnie des Bauxites,
Comity and U.S. law defy any such notion. Allowing the first court to seize
jurisdiction, and to enjoin all other sovereign courts, would “destroy the principle of
concurrent jurisdiction.” Laker, 731 F.2d at 929 n.63. It would render interference
with other sovereigns the default, rather than the exception. MWK, 833 F. App’x at
564-65. Court after court has held that first-filed status cannot be given such weight
in the international anti-suit context. See Laker, 731 F.2d at 929 n.63; Compagnie
des Bauxites, 651 F.2d at 887 n.10; China Trade, 837 F.2d at 36; see also Unter-
weser, 428 F.2d at 890 (upholding injunction against prior-filed English action);
Bethell v. Peace, 441 F.2d 495, 496 (5th Cir. 1971) (similar). It does not prevent
district courts from protecting their authority, much less where the “prior” suit was
filed just days earlier and kept secret until after the U.S. suit was filed.
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Samsung’s authorities are not to the contrary. In Kaepa, the Fifth Circuit
upheld an anti-suit injunction in part because the case had been “long and firmly
ensconced” in the U.S. court such that permitting the foreign suit would “entail ‘an
then-days-old and still-secret Wuhan case was “firmly ensconced” when Ericsson
sought relief in district court; nor would the two very different cases result in “absurd
duplication of effort.” See pp. 29-31, supra. In Unwired Planet International Ltd.
the U.K. court indicated it would have issued an anti-suit injunction where a party
initiated proceedings in China to “relitigate matters that the UK court ha[d] already
decided ” and entered judgment upon. Id. ¶ 7 (Appx1564) (emphasis added). Pre-
injunctive decree, see, e.g., SAS, 952 F.3d at 524, 529; foreclosing pre-judgment
Filing order might matter if it “ ‘raises the concern that [a party] is attempting
to evade the rightful authority of the district court.’ ” Microsoft, 696 F.3d at 887.
Here, Ericsson could not have brought the U.S. suit to “evade” the Chinese court’s
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jurisdiction—Ericsson did not know about the Wuhan case when it filed this action.
when “courts of two sovereign nations have jurisdiction over the same controversy.”
such conflicts: the “principle of concurrent jurisdiction.” Laker, 731 F.2d at 929
ping-pong,’ ” Br.55, results. Because “both Courts can properly exercise jurisdiction
over the respective causes of action brought before them,” both suits should proceed,
and filing order is “not dispositive.” Appx8. U.S. law “has not departed so far from
common sense that it is reversible error for a court not to capitulate to a foreign
judgment . . . designed to prevent the court from resolving legitimate claims placed
parties to race to their chosen forums and obtain global injunctions. The result would
Nation rush to seize exclusive jurisdiction at the expense of others. It would en-
4
Samsung cites The Salvore, 36 F.2d 712 (2d Cir. 1929), as supporting a first-to-file
rule. But Second Circuit precedent clearly holds that first-to-file is not dispositive.
See China Trade, 837 F.2d at 36.
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actions encompassing the whole dispute with a foreign action covering just the
Br.2, 52. The U.S court’s overwhelmingly greater connection to the dispute and the
parties, and the partial nature of Samsung’s suit, demonstrate the opposite.
Samsung claims that China “is one of two jurisdictions (the other is the United
Kingdom) that will determine worldwide FRAND rates without requiring bilateral
consent.” Br.2. That is false. As Ericsson explained below, “[n]o court, whether
here or in China, can simply create binding contracts for private parties without their
refuted that or explained how a Chinese court could impose a one-way rate on
U.K. courts will not impose licenses without consent either. In Unwired Plan-
et International Ltd. v. Huawei Technologies Co., [2017] EWHC (Pat) 711 ¶¶ 793-
remedy for infringement because the infringer would not consent to a global license.
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Samsung has no support for the theory that the Wuhan court—or any other court—
terms on a global basis with consent. HTC, 2019 WL 4734950, at *5; see Microsoft,
696 F.3d at 884. Nothing about power to declare FRAND terms globally supports
China.
Samsung argues that the district court “overreached” by (1) protecting Erics-
son’s ability to assert its patent rights—including injunctive relief for infringe-
ment—throughout the U.S., rather than just in the Eastern District of Texas; and
(2) requiring that Samsung indemnify Ericsson if Ericsson is fined by the Wuhan
court for lawfully litigating claims in the U.S. Br.64-75. Samsung fails to show an
5
Samsung’s suggestion (Br.12-13, 52) that Ericsson took the opposite position in
Unwired Planet is baseless. Ericsson argued only that global license offers (rather
than country-by-country licenses) could be FRAND. Appx1327-1331. Ericsson
nowhere endorsed anti-suit injunctions, nor did the U.K. court issue one.
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Samsung insists without citation that there was no “basis in law or equity” for
Br.67, or protects Ericsson’s right to petition for “redress of grievances” before U.S.
government agencies, U.S. Const. amend. I. The law recognizes, however, that
States, 809 F.3d 134, 188 & n.211 (5th Cir. 2015); see Waffenschmidt v. MacKay,
763 F.2d 711, 716 (5th Cir. 1985). Where a foreign court decree seeks to
“undermine” a company’s ability “to enforce” its U.S. legal rights “in U.S. courts”
generally, federal courts may respond by protecting those rights nationwide. SAS,
Nor can Samsung rely on the assertion that “ ‘the sweep of an injunction
should be no broader than necessary to avoid the harm on which [it] is predicated.’ ”
Br.64 (quoting Microsoft, 696 F.3d at 887). The district court’s anti-interference
injunction meets that standard. The Wuhan injunction was not limited to actions in
the Eastern District of Texas; it barred Ericsson from seeking relief “before any
the Wuhan court. Appx4. The district court’s anti-interference injunction responded
by prohibiting Samsung from enforcing that decree to deprive Ericsson of the ability
to assert its U.S. patent rights “before any Article III Court, customs office, or
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administrative agency in the United States.” Appx15. The sweep of the district
anti-suit injunction’s interference with U.S. authority. See Fiber Sys. Int’l, Inc. v.
Roehrs, 470 F.3d 1150, 1159 (5th Cir. 2006) (injunctions should “ ‘remedy the
specific action necessitating the injunction’ ”). The district court’s anti-interference
injunction also “restore[d] the status quo” that existed before Samsung provided an
tribunals’ jurisdictions, those other tribunals are the proper places to make those ar-
U.S. tribunal would improperly threaten Wuhan proceedings, Samsung should raise
that with the U.S. tribunal rather than seeking a foreign coercive decree. And Sam-
sung nowhere explains how tribunals like the ITC, with limited statutory authority,
could grant Ericsson protection from the Wuhan injunction regardless. See Span-
sion, Inc. v. ITC, 629 F.3d 1331, 1359 (Fed. Cir. 2010).
The district court was also permitted to ensure that the “unbalanced economic
pressure” resulting from the Wuhan decree would not have the practical effect of
preventing Ericsson from pursuing its case “on the merits.” Appx13-14; pp. 34-38,
supra. Samsung protests that, without the Wuhan injunction, Ericsson can use U.S.
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suits to “force Samsung to take a license at holdup rates.” Br.73. U.S. law, however,
is calibrated to prevent that. See eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388,
394 (2006). Regardless, as the district court found, the Wuhan injunction enables
Samsung to do exactly that to Ericsson, leaving Samsung free to enforce its SEPs
apply that pressure across the country. On January 29, 2021, Samsung filed IPR
petitions in the PTO seeking to invalidate Ericsson 4G and 5G SEPs, including two
patents Ericsson asserted here. See Samsung, IPR Nos. 2021-487, -447, -446, -486.
Samsung seeks to use U.S. forums to attack Ericsson patents, including the patents
in this case, while restraining Ericsson’s access to U.S. courts and agencies to assert
those patents. The district court’s injunction simply restores both parties’ ordinary
and the district court’s effort “ ‘to preserve its jurisdiction,’ ” while “ ‘allowing both
[the U.S. and Chinese] suits to proceed without interference.’ ” Br.64-65 (quoting
Appx13-14). The court explained that it had limited relief to “preserv[ing] the ability
for litigation to proceed in parallel” in both the U.S. and China, Appx13, as opposed
to taking more drastic measures and “insert[ing ] itself into” the Wuhan action,
Appx14. Nothing about the injunction’s scope is inconsistent with that “targeted
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Samsung argues the district court should not have required it to indemnify
Ericsson for fines the Wuhan court might impose as a result of Ericsson’s U.S.
efforts “to lawfully litigate or adjudicate claims relating to the 4G and 5G SEPs
identified or involved in this case.” Appx15. Samsung again fails to show an abuse
of discretion.
for conduct Samsung undertook in Wuhan. Br.68. It is not a “sanction,” and the
district court never suggested it was. Sanctions are penalties for past misconduct.
See Sanction, Black’s Law Dictionary (11th ed. 2019). The indemnification pro-
vision does not punish Samsung for anything that has already happened. It is a
anything. “[W]here an order for the payment of money is forward-looking and in-
volves an amount that cannot be calculated with specificity” at the time it is entered,
“it is equitable” relief, and may take the form of an “injunction.” Aleynikov v. Gold-
man Sachs Grp., Inc., 765 F.3d 350, 356-57 (3d Cir. 2014). Samsung calls such
relief “unprecedented,” Br.68, but courts routinely issue injunctions requiring one
party to indemnify another for costs it may incur in the future. See, e.g., Gon v. First
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State Ins. Co., 871 F.2d 863, 866 (9th Cir. 1989); Friends for All Children, Inc. v.
Lockheed Aircraft Corp., 746 F.2d 816, 830 (D.C. Cir. 1984).
The district court explained why that was necessary here. Samsung could
“seek the imposition of substantial fines in the Chinese Action for the purpose of
creating economic leverage against Ericsson to achieve practically what it may not
would be “[n]o record” if Samsung asked the Chinese court to impose a penalty.
Appx1417(25:5). The indemnity, by contrast, would “put both parties in the same
The cases Samsung invokes show that the indemnification provision would
be permissible even if it were a sanction. In FDIC v. Maxxam, Inc., 523 F.3d 566
(5th Cir. 2008) (cited Br.68), the Fifth Circuit reversed a district court’s award of
before the district court. Id. at 593. The court of appeals stressed that the court’s
6
Samsung’s claim that “[t]he court’s reference to ‘what [Samsung] may not be able
to obtain legally’ is inexplicable except as an insinuation that the Chinese courts may
behave illegitimately,” Br.69, misreads the opinion. The court meant only that fines
could force Ericsson to withdraw its suit, where Samsung could not “obtain legally”
a dismissal of the suit by the district court.
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inherent powers “did not grant a district court the power to police the administrative
courts . . . when those courts do not threaten the court’s own judicial authority or
where the conduct might “directly interfere with the district court’s authority.” Id.
at 952. Likewise, Positive Software Solutions, Inc. v. New Century Mortgage Corp.,
619 F.3d 458 (5th Cir. 2010) (cited Br.68), acknowledged that courts have the
court.’ ” Id. at 460. The Fifth Circuit explained that such “power” thus “does not
extend to collateral proceedings” if those proceedings “ ‘do not threaten the court’s
own judicial authority.’ ” Id. at 460-61. Here, the indemnification provision was
appropriate precisely to avoid efforts to enforce the Wuhan injunction that would
“threaten the [district] court’s own judicial authority or proceedings,” Maxxam, 523
F.3d at 593, and “prejudice[ ] Ericsson’s right to assert lawful causes of action,”
Appx13.
due process by “ punish[ing]” Samsung for doing “what the law plainly allows [it]
to do” in China, Br.70 (quotation marks omitted), is rich. Any penalties the Wuhan
court imposed on Ericsson under its injunction would likewise “punish” Ericsson for
doing “what the law plainly allows [it] to do”—enforce its rights in U.S. courts.
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it procured “blocks the Chinese court’s ability to enforce its order”; that court, Sam-
sung insists, is “entitled” to greater “respect.” Br.70. But the whole problem here
is that Samsung procured a foreign-court order to “block” the U.S. court’s ability to
adjudicate this case. The U.S. court was “entitled” to far greater “respect” than Sam-
sung gave it. Samsung’s argument reduces to the complaint that the indemnification
order actually protects Ericsson from the effects of the Wuhan injunction, ensuring
that “both proceedings can progress on the merits.” Appx14. That the indemnifi-
cation order works as intended is a reason to uphold it, not overturn it.
Br.69, is waived and meritless. Pressed by the district court to suggest a more tailor-
not clearly err in finding that indemnification was the most narrowly targeted means
of addressing its concern that Samsung might “leverage” the Wuhan injunction’s
fines provisions to deprive U.S. courts of the ability to resolve Ericsson’s claims.
Appx14.
against claims for injunctive relief on Ericsson’s 4G and 5G SEPs” because Ericsson
is not currently seeking such relief. Br.71-72. But Samsung thought such claims
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were sufficiently likely to warrant asking the Wuhan court to prohibit them. Appx4.
The district court simply “restore[d] the status quo,” so Ericsson could seek relief
that U.S. law permits. Porter, 328 U.S. at 251. Regardless, if Ericsson will not bring
such claims, Samsung suffers no effects from the portion of the anti-interference
That portion of the district court’s order is hardly “an unnecessary affront to
the Chinese court.” Br.72. The district court’s action to protect its own jurisdiction,
and “to preserve the ability for litigation to proceed in parallel,” Appx13, is no
foreign injunction that is itself “an unnecessary affront” to U.S. courts and agencies
that lawfully entertain requests for injunctive relief for patent infringement, Sam-
“might force Samsung to take a license at holdup rates, preempting the Chinese
Indeed, Samsung asserts that “American courts” recognize the same principles
regarding FRAND-encumbered patents as foreign courts, Br.73-74, and that the U.S.
Supreme Court’s “eBay factors” will “nearly always favor money damages” rather
than injunctive relief, Br.75. None of that, however, justifies Samsung procuring an
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anti-suit injunction from a foreign court to preemptively take that decision away
from the U.S. courts and agencies lawfully tasked with adjudicating such issues. The
district court did not abuse its discretion in preserving U.S. sovereign authority
* * * * *
its broad discretion, not its power to grant relief. Consequently, were this Court to
identify any error warranting further consideration by the district court, the proper
remedy would not be to vacate the injunction, as Samsung requests. Br.76. It would
be to “leave the preliminary injunction in place” while “remand[ing] the case to the
district court for further” consideration. TEC Eng’g Corp. v. Budget Molders
Supply, Inc., 82 F.3d 542, 546 (1st Cir. 1996); see also Takiguchi v. MRI Int’l, Inc.,
It is the district court that must exercise discretion in the first instance.
Vacatur pending that exercise could preclude it entirely and harm Ericsson irrepa-
rably. The district court found an emergency TRO necessary “to prevent Samsung
from interfering with this action or attempting to prevent Ericsson from asserting the
full scope of its patent rights.” Appx5. Samsung obtained an injunction from the
Wuhan court in secret and initiated other litigation bearing on this case without in-
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forming the district court. Lifting the district court’s injunction, even momentarily,
to the Wuhan court for enforcement to cripple Ericsson and preclude remand pro-
ceedings altogether. Remand without vacatur would protect the status quo while the
Alternatively, this Court could stay the mandate and allow Ericsson to seek
an indicative ruling from the district court in light of this Court’s decision. Landis
v. N. Am. Co., 299 U.S. 248, 254 (1936) (courts have “inherent” “power to stay
proceedings”). Were the district court to indicate it would grant the injunction again,
Fed. R. Civ. P. 62.1(a)(3), this Court could remand to the district court for that pur-
pose and then review the resulting decision. See Fed. R. App. P. 12.1(b); Arlington
CONCLUSION
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Samuel F. Baxter
MCKOOL SMITH, P.C.
104 E. Houston Street, Suite 300
Marshall, TX 75670
(903) 923-9000 (telephone)
(903) 923-9099 (facsimile)
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CERTIFICATE OF COMPLIANCE
32(a)(7) and Fed. Cir. R. 32(b) because this brief contains 13,991 words as
measured by the word count function of Microsoft Word, excluding the parts
of the brief exempted by Fed. R. App. P. 32(f ) and Fed. Cir. R. 32(b)(2).