UPC grants first anti-interim-licence injunction in SEP dispute; English court responds with anti-anti-suit relief

For the first time, the Mannheim Local Division (LD) of the Unified Patent Court (UPC) granted an application for an anti-interim-licence injunction (AILI), a form of targeted anti-suit injunction (ASI), in standard essential patent (SEP) litigation between InterDigital and Amazon.

The AILI was granted to InterDigital on an ex parte basis and it prohibits Amazon by the threat of an injunction from seeking interim licences, anti-suit injunctions or equivalent measures that might prevent InterDigital from bringing patent infringement proceedings before the UPC.

A corresponding order was also granted by the Munich Regional Court in parallel German national proceedings.

After a case management conference to consider the impact of the AILIs, concerns over whether these extended to any of the final relief sought in the English proceedings prompted a swift response from the English Patents Court, which granted Amazon an anti-anti-suit injunction (AASI) to protect the continuation of the substantive RAND (reasonable and non-discriminatory) proceedings in England.

This Insight focuses on the UPC's decision to grant an AILI and the English Patents Court's response, but the analysis applies equally to the Munich Regional Court's decision to grant similar relief.

RAND proceedings

In August 2025, Amazon initiated RAND rate-setting proceedings in the English courts. These are RAND proceedings not FRAND (fair, reasonable, and non-discriminatory) proceedings, because they concern digital streaming technology and the International Telecommunication Union-Telecommunication Standardization Sector, or ITU-T, standards regime rather than the European Telecommunications Standards Institute, or ETSI, regime, which much English case law to date has been based on. The proceedings also include applications for negative declaratory relief in relation to infringement, essentiality and validity of four UK designations of European Patents.

The proceedings were formulated to include a declaration that Amazon was entitled to be offered a licence to the challenged patents on RAND terms, and that InterDigital could be ordered to comply by way of an order for specific performance. Amazon is also seeking a declaration of licence terms including both substantive final RAND terms and interim RAND terms, adjustable pending the court's final determination.

Ex parte applications

InterDigital made an ex parte application for a preliminary order against Amazon in the Mannheim LD, seeking anti-suit relief to restrain Amazon from pursuing measures that would prevent InterDigital from enforcing its patent rights before the UPC (such as seeking an interim licence declaration). The Manheim LD made an order for an AILI on 30 September. 

A similar ex parte application was made in the Munich Regional Court in the parallel German proceedings, and the Munich court made a similar order on 26 September.

Provisional measures requirements

In considering the usual requirements for provisional measures, the Mannheim LD explained that there was an imminent risk to its proceedings (by a possible interim licence application in England, which "in effects [sic] is equivalent to a prohibition on litigation"). The matter was held to be objectively urgent, as an application for an interim licence could be decided quickly by the English courts, and InterDigital was found not to have delayed in seeking provisional measures.

The weighing of interests was found to favour InterDigital because the court held that a declaratory judgment for an interim licence is aimed at preventing the pursuit of injunctive relief in other jurisdictions, including before the UPC. The practical effect was that the parties would be persuaded to litigate the RAND licence exclusively before the English courts. 

The Mannheim LD's reasoning focuses on EU antitrust law

The Mannheim LD explained that an interim licence declaration by the English courts may result in a SEP proprietor being de facto forced to accept an offer that is "at the lower end of the FRAND corridor or, depending on the amount of the implementor's offer, even outside it."

This could result in offers being contrary to EU public policy because "the granting of an interim license is not preceded by an examination of whether the competing offers are FRAND-compliant or not", which is a requirement of the Court of Justice of the EU (CJEU) decision in Huawei v ZTE. The UPC is bound by CJEU case law and EU antitrust law, so this was not tenable as an outcome.

In weighing the parties' interests, the Mannheim LD noted that the order sought was "exclusively defensive in nature and is intended to shield the proceedings before the UPC" and, therefore, did not interfere with the jurisdiction of the English courts. 

In particular, the English courts remained free to decide how the RAND rate is to be calculated and the consequences in the UK if a party failed to comply with the court's orders. If this leads to parallel determinations of RAND licences in different jurisdictions, then the Mannheim LD said that this "must be accepted as a decision of the litigating parties".

Accordingly, the Mannheim LD granted the AILI and imposed a penalty of up to €250,000 for each day of non-compliance. InterDigital had a period of 31 calendar days or 20 working days (whichever is longer) from the date of service of the order on Amazon to initiate proceedings on the merits. Amazon was entitled to seek a review of the order within 30 days and, indeed, the Mannheim LD has scheduled an inter partes AILI hearing for 14 November.

The English court decisions

Case management judgment

The English court held a case management conference inter alia to determine the impact of the AILIs on the English proceedings. In his judgment on 9 October, Mr Justice Meade explained that the UPC and German orders bite on any request by Amazon for an interim licence declaration (or similar relief), but he did not understand them to bite on any substantive decision on final RAND terms. 

However, the judge raised concerns about InterDigital's conduct in bringing the applications for an AILI in the UPC and the German national court. InterDigital made representations to the German court that the English court could schedule a hearing on the AILI "very soon", and "the decision would be announced immediately after the hearing".

Mr Justice Meade said that this statement was "obviously incorrect and unmaintainable". He explained that there would not be any real possibility that the court would schedule a hearing "very soon". No previous similar applications had run on the expedited timetable suggested by InterDigital – applications had taken weeks and months to be scheduled.

It would also be "wildly unlikely almost to the point of inconceivable" that the court would announce its decision on the interim licence immediately after the hearing. Further, Mr Justice Meade was critical of InterDigital's evidence that 'justified' the ex parte nature of the UPC and the German national court hearings.

AASI judgment

On 20 October 2025, Mr Justice Meade heard an ex parte application from Amazon for AASI against InterDigital. Amazon's concern was twofold. First, that InterDigital was not being clear as to whether the UPC or German orders impacted on any aspect of the final relief sought in the English proceedings (such as the request for an order for specific performance). Second, that in any event InterDigital may formulate a further application to restrain Amazon from pursuing certain final relief (on the basis that the final relief would interfere with the UPC or German proceedings or both, especially if the trial was expedited).

Mr Justice Meade emphasised that his judgment was not to be seen as "hostile to the UPC or the Munich court, or retaliatory". Rather, the application was directed at InterDigital and its possible conduct concerning the final relief sought in the English proceedings, and shielding that from interference.

Amazon advanced its application two grounds: (1) to protect the English court's jurisdiction and, separately or cumulatively, (2) on the basis that it is to restrain conduct by InterDigital that would be vexatious or oppressive.

Mr Justice Meade explained that the "heart" of the English proceedings is to determine the scope, price and terms of a final RAND licence. It was reasonably arguable that an ASI/AILI would block that and would undermine the jurisdiction of the English court in relation to the claim. The court explained that there are "no proceedings anywhere else where those matters could be determined and where no other court has been suggested as available, or more appropriate than the UK".

Further, the judge was "particularly struck" by InterDigital's tactical and constantly changing position about whether final relief is or is not within the proper scope of the English proceedings or may be restrained by the ASIs/AILIs.

The judge was satisfied that both grounds, separately or cumulatively, provided an appropriate basis for the AASI. Further, it was appropriate to make the order on an ex parte basis because there was a real likelihood that InterDigital would seek urgent ex parte relief in another court if given notice of the hearing.

However, as is usual with ex parte relief, a return hearing on notice has been scheduled at short notice (specifically, it is listed to be heard in the window 28 to 30 October 2025) to ensure that InterDigital can be heard on whether the AASI should continue.

Osborne Clarke comment

The Mannheim LD's decision to grant InterDigital an AILI on an ex parte basis before proceedings had even been commenced in the UPC underscores its stark disapproval of the English courts' approach to granting interim licences in (F)RAND proceedings.

The Mannheim LD considered that such interim licences could be contrary to EU antitrust law because the grant of the licence is not preceded by examining whether the parties' competing offers are (F)RAND-compliant or not. It did not address, however, the fact that any such interim licence would be subject to a true-up mechanism depending on the final RAND licence set by the English courts.

The Mannheim LD's approach is a stark reminder of the fundamental differences in how (F)RAND disputes are seen by the courts in the EU versus the UK. The English courts focus on the patentee's contractual commitment, and have been willing to grant interim licence declarations in situations where they believe it will serve a useful purpose, such as helping to facilitate settlement between the parties. In contrast, EU courts focus on competition law and rigidly follow the prescriptive approach set out by the CJEU in Huawei v ZTE.

These decisions highlight the complex, global nature of (F)RAND litigation, and the inevitable frictions as issues of comity and judicial sovereignty are engaged. Different courts (and even different judges within the same court – see, for example, the dissenting judgment of Lord Justice Phillips in Panasonic v Xiaomi) have different views as to how best to manage the interplay between a contractual commitment with global scope and national patent rights and competition laws.

It is also worth noting that this UPC decision, which puts significant emphasis on judicial sovereignty and the national nature of patent rights, comes in the wake of massive jurisdictional changes in the EU following the CJEU's decision in BSH v Electrolux. That CJEU decision has led to the UPC exercising enthusiastically its so-called long-arm jurisdiction. There is an interesting dichotomy between the UPC's expansive approach to jurisdiction, including a willingness to assess infringement and validity of patent rights outside the UPC territory, and the rationale for the grant of the AILI in this case. All of this provides interesting context that might inform the next steps taken by the English courts or the UK government following the closure of its recent SEP consultation.

For both SEP holders and implementers, these decisions add a further layer of complexity to (F)RAND litigation, particularly as the proceedings are ongoing and the position is in flux. However, these decisions do underline the importance of considering the forum and timing of applications in contemplated or ongoing (F)RAND litigation, as well as the continued relevance of ASIs in this space.