InterDigital v Amazon (UPC_CFI_936/2025)
Decision date:
30 September 2025
Osborne Clarke summary
- InterDigital issued an application in the Mannheim LD for an ex parte preliminary order against Amazon, which was referred to as an "anti-interim-license-injunction" (AILI) (a form of targeted anti-suit injunction (ASI)). InterDigital argued that, as holders of patents falling within the UPC's jurisdiction, it was entitled to file the application.
- InterDigital maintained that it feared that Amazon would file an application for an interim licence before the UK courts, which would prevent InterDigital from initiating patent infringement proceedings before the UPC. The requested injunction would prohibit Amazon from seeking interim licences, ASIs or equivalent measures that might prevent InterDigital from bringing infringement proceedings before the UPC.
- 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.
- For the first time, the Mannheim LD granted InterDigital's application for an AILI. The court explained that InterDigital is entitled to assert its patent rights in the UPC and that includes enforcement of a claim for injunctive relief.
- The Mannheim LD stated that a declaratory judgment from the English courts would result in the parties solely submitting to the English courts for the global determination of the RAND rate. The court explained that the purpose of the interim licence declarations was to deter the SEP proprietor from initiating or continuing other parallel pending litigation concerning SEPs.
- 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 the UK, which "in effects [sic] is equivalent to a prohibition on litigation"). It also held that the matter was objectively urgent as an application for an interim licence could be decided quickly by the English courts. InterDigital was also found not to have delayed in making its application for the provisional measures.
- The weighing of interests was also found to favour InterDigital because the court held that the effect of 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 the parties would be persuaded to litigate the RAND licence exclusively before the English courts.
- The Mannheim LD explained that a party is "effectively compelled by the declaration to have its global legal dispute decided solely by UK courts in accordance with the rules applicable there and to refrain from enforcing injunctive relief in other territories in particular, so as not to jeopardize the UK proceedings." This was justified by the UK courts as stopping other courts from carrying out unnecessary work and therefore was not a violation of the principle of comity.
- The Mannheim LD held that this argument was untenable. The court explained that the UPC is bound by the case law of the CJEU and the obligation to enforce EU antitrust law. An interim licence declaration is an unacceptable encroachment that affects the patent rights of proprietors (which are constitutionally guaranteed in EU Member States) and the judicial sovereignty of other states. 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".
- The court continued that this must be considered in the context of EU antitrust law and, if an EU court – here the UPC, was prevented from carrying out this review, it 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 CJEU's decision in Huawei v ZTE.
- Thus, if a mid-point between the competing offers is set as the interim licence rate, this could fall "outside of the corridor of EU law". Although the Mannheim LD noted that actual (F)RAND compliance can be determined subsequently, it said that the UK courts do not aim to do this as they consider it "desirable for the parties to reach a settlement under the pressure of the interim license". This may lead to the rate in the interim licence being a reference point for further negotiations, which, again, would be contrary to EU antitrust law.
- Lastly in the weighing of interests, the Mannheim LD noted that the order being sought was "exclusively defensive in nature and is intended to shield the proceedings before the UPC" and therefore the jurisdiction of foreign courts is not interfered with. It noted that the English courts are free to decide how the RAND rate is calculated and the consequences in the UK if a party fails 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".
- The Mannheim LD granted the AILI and imposed a penalty of up to €250,000 for each day of non-compliance. The order was made immediately enforceable, but that would lapse if security was not provided by InterDigital within 20 days.
- According to Rule 213.1 RoP, 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. The Mannheim LD has scheduled an inter partes AILI hearing for 14 November.
- In parallel German national proceedings, the Munich Regional Court also granted InterDigital a similar AILI.
- For more analysis of this decision and the response from the English courts, see our Insight here.
Issue
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