21-04-09 InterDigital Amicus Brief

Case: 21-1565 Document: 39-2 Page: 1 Filed: 04/09/2021
2021-1565
United States Court of Appeals

for the Federal Circuit
ERICSSON INC., TELEFONAKTIEBOLAGET LM ERICSSON,

Plaintiffs-Appellees,
v.
SAMSUNG ELECTRONICS CO., LTD., SAMSUNG ELECTRONICS

AMERICA, INC., SAMSUNG RESEARCH AMERICA,
Defendants-Appellants.
____________________________________
Appeal from the U.S. District Court, Eastern District of Texas, No. 2:20-cv-380,
Judge J. Rodney Gilstrap
____________________________________
BRIEF OF INTERDIGITAL, INC. AS AMICUS CURIAE

IN SUPPORT OF THE ERICSSON PLAINTIFFS-APPELLEES
____________________________________
James M. Wodarski
Michael T. Renaud
Andrew H. DeVoogd
Daniel B. Weinger
MINTZ LEVIN COHN FERRIS
GLOVSKY AND POPEO P.C.
One Financial Center
Boston, MA 02111
(617) 542.6000
Counsel for Amicus Curiae
InterDigital, Inc. April 9, 2021
CERTIFICATE OF INTEREST
Counsel for amicus curiae certifies the following:
1. The full name of every party represented by me is:
InterDigital, Inc.
2. The name of the real party in interest represented by me is:
InterDigital, Inc.
3. All parent corporations and any publicly held companies that own 10
percent or more of the stock of the party or amicus curiae represented by me are:
As of December 31, 2020, BlackRock, Inc. (a publicly held company)

beneficially owned 11.9% of the common stock of InterDigital, Inc., as reported on
a Schedule 13G/A filed by BlackRock, Inc. with the Securities and Exchange
Commission on February 5, 2021.
4. The names of all law firms and the partners or associates who
appeared for the party or amicus now represented by make in the trial court or
agency who are expected to appear in this Court, are:
Andrew H. DeVoogd; Michael T. Renaud; Daniel B. Weinger; James M.

Wodarski. MINTZ LEVIN COHN FERRIS GLOVSKY AND POPEO P.C., Boston,
MA
5. The title and number of any case known to counsel to be pending in

this or any other court or agency that will directly affect or be directly affected by
this court’s decision in the pending appeal. See Fed. Cir. R. 47 4(a)(5) and 47.5(b).
The Court’s decision in the pending appeal may affect Samsung Electronics
Co., Ltd. v. Telefonaktiebolaget LM Ericsson, (2020) E 01 Zhi Min Chu No.
743, currently pending in the Wuhan Intermediate People’s Court, Hubei
Province in the People’s Republic of China.
DATE: April 9, 2021 /s/ Andrew H. DeVoogd
ii
TABLE OF CONTENTS
IDENTITY AND INTEREST OF AMICUS CURIAE............................................. 1

INTRODUCTION ..................................................................................................... 3
ARGUMENT ............................................................................................................. 5
I. Honoring the Patent Rights of Innovators that Contribute to Standards Is
Critical to Incentivizing Innovation ............................................................. 5
II. The Wuhan Intermediate People’s Court’s Anti-Suit Injunctions Ignore
Basic Principles of Comity and Due Process ............................................... 9
III. Anti-Suit Injunctions Granted by U.S. Courts Are Narrowly Tailored to
Preclude Only Foreign Injunctive Relief ................................................... 12
IV. Foreign Courts Have Uniformly Rejected the Wuhan Court’s Unlawful
ASIs ............................................................................................................ 14
V. Courts Have Rejected Every ASI Seeking to Bar the Assertion of Foreign
Patent Rights ............................................................................................... 18
CONCLUSION ........................................................................................................ 20
iii
TABLE OF AUTHORITIES
Page(s)
Cases
Cont'l Auto. Sys. v. Avanci, LLC,
Case No. 5:19-cv-02520-LHK, ECF No. 32 (N.D. Cal. June 12,
2019) ................................................................................................................... 18
Huawei Technology Co. Ltd. v. Conversant Wireless Licensing

S.A.R.L., Zui Gao Fa Zhi Min Zhong Nos. 732, 733, 734 Part 1
(2019) (China)..................................................................................................... 14
Huawei Techs. Co v. Samsung Elecs. Co.,

Case No., 3:16-cv-02787-WHO, 2018 U.S. Dist. LEXIS 63052, *
(N.D. Cal. Apr. 13, 2018) ................................................................................... 13
InterDigital Tech. Corp. v. Xiaomi Commc’ns Co.,

Landgericht München [Regional Court of Munich I],
Feb. 25, 2021, 7 O 14276/20 (Ger.).................................................................... 15
InterDigital Tech. Corp. v. Xiaomi Corp.,

Delhi HC, Oct. 9, 2020, I.A. 8772/2020
CS (COMM) 295/2020 (India). .......................................................................... 16
IPCom GmbH & Co. KG v. Lenovo Tech. (U.K.) Ltd.,

[2019] EWHC (Pat) 3030 (Eng.) ..................................................................19, 21
Lenovo (U.S.) Inc. v. IPCom GmbH & Co. Kg,

Cour d’appel [CA] [regional court of appeal] Paris, civ.,
Mar. 3, 2020 14/2020 (Fr.) ...........................................................................19, 21
Microsoft Corp. v. Motorola, Inc.

696 F.3d 872, 888 (9th Cir. 2012) ...................................................................... 12
Nokia v. Cont’l,
Oberlandesgericht München [Munich Higher Regional Court],
Dec. 12, 2019, 6 U 5042/19 (Ger.) ..................................................................... 21
Unwired Planet Int’l Ltd. v. Huawei Tech. Co.,
[2017] EWHC (Pat) 711 (Eng.) ............................................................................ 8
iv
Xiaomi Communication Technology Co., LTD v. Inter Digital

Holdings, Inc., E 01 Zhi Min Chu No. 169 (2020) (China) ................................. 3
Rules
Fed. Cir. R. 25(e) ..................................................................................................... 24
Fed. R. App. P. 25 .................................................................................................... 24
Fed. R. App. P. 27(a)(2)(B) ..................................................................................... 23
Fed. R. App. P. 27(d)(2)(A) ..................................................................................... 23
Other Authorities
Damien Geradin and Dimitrios Katsifis, The use and abuse of anti-
suit injunctions in SEP litigation: Is there a way forward?
(March 19, 2021) ..................................................................................8, 9, 12, 20
ETSI Intellectual Property Rights Policy (Sept. 3, 2020), § 3.1............................ 6, 7
Richard A. Epstein & Kayvan B. Noroozi, Why Incentives for “Patent

Holdout” Threaten to Dismantle FRAND, and Why It Matters,
Berkeley Tech. Law. Journal, Vol. 32:1381 2017 at 1428 .................................. 7
Yang Yu & Jorge L. Contreras, Will China’s New Anti-Suit

Injunctions Shift the Balance of Global FRAND Litigation? UNIV.
UTAH COLL. OF L. RES. PAPER NO. 403 (Oct. 22, 2020) .............................. 11-14
v
IDENTITY AND INTEREST OF AMICUS CURIAE1
InterDigital, Inc. is a Pennsylvania corporation with headquarters in
Wilmington, Delaware. The company was founded in 1972 with the objective of
developing new and innovative wireless technologies. It became a publicly traded
company in 1981 and is now a significant commercial research, innovation, and
engineering organization, with research centers in Pennsylvania, New York,
California, Maryland, Canada, France, and England. At the end of 2020, InterDigital,
Inc. and its affiliates (hereinafter “InterDigital”) had approximately 514 employees,
about 300 of whom are engineers. Around 89% of its engineers hold advanced
degrees, 108 of whom have Ph.Ds.
For over four decades, InterDigital has been a pioneer in mobile technology
and a key contributor to global wireless standards. InterDigital does not manufacture
devices; instead, it has chosen to focus on innovation through advanced research,
often collaborating or partnering with other research-focused organizations on
specific projects. InterDigital has invested more than $1 billion in research and
development in recent years. Those R&D efforts have resulted in critical inventions
covered by a portfolio of approximately 28,000 patents and patent applications,
spanning some 50 jurisdictions worldwide.
1
No counsel for any party authored this brief in whole or in part. No party, party’s
counsel, or any person other than amicus curiae or its counsel made a monetary
contribution intended to fund the preparation or submission of this brief.
1
InterDigital is not a typical patent licensing company and rarely buys third-
party patents. Instead, InterDigital creates the technology on which it secures patent
protection: approximately 94% of its cellular and wireless inventions were
developed in-house by InterDigital engineers. In order to continue to fund its
research and development efforts to contribute to the evolution of wireless and other
standards, InterDigital licenses its worldwide portfolio of patents covering those
advances. The vast majority of major companies making wireless and cellular
products have recognized the strength and quality of InterDigital’s patent portfolio
and agreed to take licenses. Among its current and past licensees are the most
prominent companies in the mobile wireless space, such as Apple, Asus, Samsung,
Sony, Ericsson, Panasonic, RIM/Blackberry, HTC, Huawei, LG Electronics,
Pegatron, Wistron, Sanyo, NEC, and Sharp. InterDigital’s constant commitment to
innovation and its particular focus on developing new and innovative wireless
telecommunications standards have benefitted markets, technology, and consumers
around the world.
InterDigital’s experience in participating in standardization efforts and in
licensing a large global patent portfolio relating to wireless standards gives it a
unique perspective on the issues raised in this appeal. For more than twenty years,
InterDigital has participated in technology standardization efforts by standards
development organizations (“SDOs”), including development of 2G, 3G, 4G, and
2
5G cellular standards, through its membership in the European Telecommunications
Standard Institute (“ETSI”). Over the past two decades, InterDigital has disclosed
thousands of its patents and patent applications to ETSI as potentially standards-
essential for cellular standards. InterDigital thus has long and extensive experience
with industry practice in licensing pursuant to SDO policies providing for owners of
standards-essential patents (“SEPs”) to be prepared to grant licenses on fair,
reasonable, and non-discriminatory (“FRAND”) terms.
INTRODUCTION
Courts rarely issue anti-suit injunctions (“ASI”). Even rarer are situations that
merit an ASI in disputes involving FRAND claims. On the rare occasion when courts
have granted this uncommon form of injunctive relief, such ASIs have been
narrowly tailored to prohibit the enforcement of injunctions obtained in foreign
proceedings. They have never been used to prohibit the commencement and
prosecution of foreign proceedings entirely.
The Wuhan Intermediate People’s Court (the “Wuhan Court”) dramatically
altered the generally accepted landscape of ASIs when it significantly broadened the
scope and reach of ASIs to apply to extraterritorial FRAND disputes. To date, the
Wuhan Court has issued two such ASIs known to InterDigital. The first was issued
against InterDigital. Appx356-Appx367 (Xiaomi Communication Technology Co.,
LTD v. Inter Digital Holdings, Inc., dated September 23, 2020 (the “Xiaomi ASI”)).
3
The Xiaomi ASI against InterDigital provided the template for the ASI that is the
subject of this appeal (the “Samsung ASI”). Appx563-Appx576. Both the Samsung
and Xiaomi ASIs (collectively, the “Wuhan ASIs”) attempt to compel adherence to
their unlawful terms through coercive, extortion-level fines of approximately $1M
USD per week for violations.2
The Wuhan ASIs represent a sea-change in the approach of Chinese courts
insofar as these orders ignore basic rules of comity and limits on extraterritorial
jurisdiction. The Wuhan Court has, by issuing these ASIs, shown an unprecedented
willingness to encroach on the sovereign jurisdiction of foreign courts. Predictably,
in response foreign courts have swiftly issued anti-anti-suit injunctions (“AASI”) to
preserve sovereign rights created under their own national patent regimes, as well as
their ability to hear patent and FRAND claims properly raised before them.
Reversal of the district court’s AASI in this case would be an unprecedented
and dangerous step: it would cede jurisdiction to decide matters of U.S. patent
infringement, validity, and damages to a foreign court—a foreign court that has
shown no respect for basic principles of comity or due process. Here, the District
Court, quite correctly, protected its Constitutional jurisdiction to hear Ericsson’s
claims concerning U.S. patents and damages by issuing a narrowly tailored AASI.
2
The fine of 1M RMB per day is explicit in the Xiaomi ASI. In the Samsung ASI,
the Wuhan court only referred to the statutory provision, permitting fines of up to
1M RMB per day.
4
In doing so, Judge J. Rodney Gilstrap took the same approach that each foreign court
has taken in responding to the Wuhan ASIs, as well as to other ASIs of similar scope
that were terminated by AASI prior to issuance.
ARGUMENT
I. Honoring the Patent Rights of Innovators that Contribute to

Standards Is Critical to Incentivizing Innovation
New generations of technology do not appear spontaneously. They are created
through research and development efforts that require painstaking work, and
significant investments of capital and other resources. Companies that prioritize
investment in this type of research and technology development are incentivized to
do so by the prospect of earning fair compensation for their inventions and public
contributions. SDOs involve many industry participants working together to include
the best technology in industry standards. As a result of this cooperative
development by SDOs, standards implementers have access to a wealth of
technology to be used in their products, which are interoperable because they are
designed to comply with consensus-based standards.
These standards could not exist without the contribution of innovators. Thus,
SDOs have long enacted policies that recognize that those who contribute inventive
technology to standard(s) should be able to seek compensation for their
contributions. SDO agreements acknowledge that innovators can obtain intellectual
property rights (“IPRs”) such as patents, and have historically sought to achieve a
5
balanced, level playing field between SEP owners who contribute technology, and
manufacturers who utilize that technology in their products.
The ETSI IPR Policy at issue in the underlying dispute here is instructive. The
ETSI IPR Policy attempts to achieve the “balance between the needs of
standardization for public use in the field of telecommunications and the rights of
the owners of IPRs” by adopting “solutions which best meet the technical
objectives” of the telecommunications sector. ETSI Intellectual Property Rights
Policy (Sept. 3, 2020) (“ETSI IPR Policy”), § 3.1, (retrieved from
https://www.etsi.org/images/files/IPR/etsi-ipr-policy.pdf on April 5, 2021). To do
so, the ETSI IPR Policy recognizes that holders of SEPs “should be adequately and
fairly rewarded for the use of their IPRs in the implementation of STANDARDS and
TECHNICAL SPECIFICATIONS.” Id. at § 3.2.
ETSI attempts to “reduce the risk” that patents are unavailable to those using
the standard by requiring owners of “Essential IPR” to provide an “undertaking in
writing that it is prepared to grant irrevocable licenses on fair, reasonable and non-
discriminatory terms and conditions under such IPR . . ..” Id. at § 6.1. This
commitment to license works in conjunction with ETSI’s recognition that IPR
Holders should be fairly compensated for their contributions. Thus, contrary to the
arguments of Samsung, the ETSI IPR Policy and its FRAND commitment are not
concerned only with making essential IPRs available to manufacturers or protecting
6
manufacturers from so-called “hold-up,” but also mandates that the interests of
patent owners are to be equally protected to achieve a balanced result that fosters
continued investment in the standards development process. Failure to recognize the
ETSI IPR Policy’s promotion of the crucial balance between patent owners and
manufacturers would lead to damaging consequences in industries that rely on
standardized technologies, including by disincentivizing innovators from
participating in SDOs.
Implementers, such as Samsung in the present matter, have for years
attempted to maintain an imbalance in the FRAND structure. Indeed, there can be
no serious doubt that manufacturers have economic incentives to delay, or avoid
entirely, licensing the technologies that were disclosed to and made part of a
standard. This is referred to as “patent hold out” or “reverse patent holdup.” As
Epstein and Noroozi aptly describe it:
In many instances, the most likely source of abuse lies with the putative
licensee, who already has what it wanted (use of the innovator’s
valuable technology as part of its products and the standard) and who
(absent a court order) can profit from that technology through its
product sales without paying anything to the innovator at all. And the
prospective licensee’s incentives for such opportunism only increase
once it has little or no SEPs of its own to license out. The same situation
arises when its counterparty is purely an innovator or patent holder,
rather than an innovator-implementer.
Richard A. Epstein & Kayvan B. Noroozi, Why Incentives for “Patent Holdout”
Threaten to Dismantle FRAND, and Why It Matters, Berkeley Tech. Law. Journal,
7
Vol. 32:1381 2017 at 1428 (retrieved from
https://chicagounbound.uchicago.edu/cgi/viewcontent.cgi?article=13768&context=
journal_articles on April 5, 2021).
Justice Colin Birss of the High Court of England and Wales came to the same
conclusion, recognizing that:
eliminating hold up value is not the only consideration to take into

account. The authorities and the economics literature have identified a
countervailing factor called “reverse hold up” or “hold out”. The idea
is that an unscrupulous licensee may use their economic strength to
avoid paying anything to a patentee, unduly dragging out the process of
licence negotiation, thereby putting the patentee to additional cost and
forcing it to accept a lower royalty rate than is fair.
Appx1568-Appx1733 (Unwired Planet Int’l Ltd. v. Huawei Tech. Co., [2017]
EWHC (Pat) 711 (Eng.) at ¶ 95). The most recent tactic being used by unwilling
licensees to maintain the FRAND imbalance is pursuing ASIs, namely asking a court
of one country to prohibit a patent owner from even asserting patents in the courts
of the country that issued those patents. In this way, ASIs pit the courts of various
countries against one another, which necessarily introduces additional litigation
costs and burdens on patent owners, and which unfairly allows the party seeking an
ASI to leverage settlement at non-FRAND rates to the detriment of the
disadvantaged licensor. Some commentators have noted the abusive rise in the use
of ASIs in FRAND-related patent litigation:
At the same time, litigants are incentivized to spend resources to pre-

empt their opponent by seizing first their preferred forum - resources
8
which could have more spent more efficiently on negotiations and

avoiding court proceedings. When it comes to the jurisdictional ping-
pong described above, the litigant with the deepest pocket may in the
end gain an edge in the not-so-extreme scenario where two parties are
both disobeying (A)ASIs and are waiting for the other party to break
first under the pressure of paying penalties. That is not a positive
outcome.
Damien Geradin and Dimitrios Katsifis, The use and abuse of anti-suit injunctions
in SEP litigation: Is there a way forward?, at 27 (April 2, 2021) (retrieved from
https://papers.ssrn.com/sol3/papers.cfm?abstract_id=3807899 on Apr 5, 2021).
Foreign courts have overwhelmingly found that the use of ASIs deprive patent
owners of their lawful right to enforce their patents in courts of competent
jurisdiction. As a result, these foreign courts have, to date, unanimously issued
AASIs to preserve the status quo in every case in which such an AASI has been
sought.
II. The Wuhan Intermediate People’s Court’s Anti-Suit Injunctions

Ignore Basic Principles of Comity and Due Process
To date, the Wuhan Court has issued two ASIs in the FRAND context that
sought to enjoin licensees from asserting their patent rights before competent courts
in other jurisdictions. The Xiaomi ASI seeks to enjoin InterDigital from, among
other things, enforcing its SEPs, seeking a determination of the appropriate royalties
for its SEPs, and resolving any “relevant” SEP disputes with Xiaomi before any
9
court in any jurisdiction around the world. See Xiaomi ASI, at 11-12.3 On
reconsideration, the Wuhan Court affirmed the Xiaomi ASI and essentially
demanded that other courts cede jurisdiction to Wuhan:
Other courts should give up the jurisdiction over the same dispute even
if they have the reasonable reason to accept such dispute and turn to
respect the jurisdiction of the competent court that already accepted the
dispute, so as to make the competent court be the only court having
jurisdiction over the dispute between the parties.
SAppx0001-SAppx0034 at SAppx0012-SAppx0013 (Certified Translation of Civil
Ruling of Wuhan Intermediate People’s Court, Hubei Province, People’s Republic
of China, Case No.: (2020) E 01 Zhi Min Chu No. 169-2).
The Samsung ASI, at issue here, seeks to enjoin Ericsson from pursuing
similar relief, e.g., “applying for any preliminary and permanent injunctive relief or
administrative measures before any courts, customs offices, or administrative
enforcement agencies either in China or other countries and regions or through any
other procedures against Samsung . . .” and “requesting any courts either in China
or other countries and regions to adjudicate the licensing terms (including the royalty
rate) or royalty amount in terms of the 4G and 5G SEPs involved in this Case . . .”
Appx1-Appx16 at Appx4. The Samsung ASI carries with it an undisclosed financial
penalty. See id. at Appx14-Appx15; see also Appx563-Appx576 (Samsung ASI).
3
Citations to the page number refer to the page numbers of the and not the page
numbers found on the bottom of each document.
10
The breadth and scope of the Wuhan ASIs are broader and more intrusive than
any previously-issued ASI in the FRAND context—anywhere. The Samsung ASI is
the second ASI issued by the Wuhan Court which purports to prospectively block
the enjoined party from seeking relief. Going further, it purports to extend, on its
face, to every jurisdiction in the world. The Wuhan ASIs depart even from the
existing precedent of the Supreme People’s Court of the People’s Republic of China
(the “SPC”) enjoining Conversant in the first-ever ASI issued by a Chinese court in
the FRAND context:
The ruling of the Wuhan court is far broader than the Supreme People’s
Court’s ruling in Conversant v. Huawei in two major respects that are
worth considering. First, its geographic scope is not limited to the
country in which InterDigital sought injunctive relief (India), but
extends to all jurisdictions in the world. As an anti-suit measure, this is
more sweeping than nay ASI issued in the U.S. or other courts in
FRAND cases. Under U.S. and UK law, a court considering a request
for an ASI must compare the action in the domestic court with the
parallel action in the foreign court and determine whether they address
the same matter and whether the resolution of the domestic action
would dispose of the foreign action. This type of analysis is not possible
with an ASI that is not directed to a particular foreign action, but
prospectively prohibits any attempt to seek an injunction anywhere in
the world.
The second major addition by the Wuhan court is the prohibition on

InterDigital’s ability to ask any other court in the world to determine a
global FRAND rate for its 3G/4G patents. As such, China has clearly
joined the international race to be the jurisdiction of choice for
determining FRAND royalty rates in global disputes involving
standard-essential patents.
11
Yang Yu & Jorge L. Contreras, Will China’s New Anti-Suit Injunctions Shift the
Balance of Global FRAND Litigation?, at 4-5 (Oct. 22, 2020) (retrieved from
https://papers.ssrn.com/sol3/papers.cfm?abstract_id=3725921 on Apr. 5, 2021).
The extortionist-level $1M USD per week fines imposed by the Wuhan Court
unfairly shift the balance sought by SDOs. Instead of being resolved on the merits,
the Wuhan ASIs convert FRAND disputes into an endurance match, where the
parties ignore existing ASIs and corresponding AASIs while waiting for the other to
submit under threat of fines. Damien Geradin and Dimitrios Katsifis, The use and
abuse of anti-suit injunctions in SEP litigation: Is there a way forward?, at 17-18.
III. Anti-Suit Injunctions Granted by U.S. Courts Are Narrowly

Tailored to Preclude Only Foreign Injunctive Relief
In the context of patent law, not a single United States court has granted an
anti-suit injunction so broad as to prevent a patent owner from filing and
substantively prosecuting related, foreign proceedings. In fact, the term “anti-suit
injunction” as used in the context of this case is a misnomer. In the two U.S. cases
relied upon by Samsung, the relief granted by each court was limited to enjoining
the patent-holder from taking steps to enforce injunctions in a foreign jurisdiction—
more accurately described as an anti-injunction injunction.
First, in Microsoft Corp. v. Motorola, Inc., the Ninth Circuit upheld an anti-
injunction injunction that only prevented Motorola from “posting the bond required
to enforce the German injunction.” 696 F.3d 872, 888 (9th Cir. 2012). That order
12
did not prevent Motorola from seeking an adjudication of its foreign patent rights
and “le[ft] Motorola free to continue litigating its German patent claims against
Microsoft as to damages or other non-injunctive remedies to which it may be
entitled.” Id. at 888-89.
Second, in Huawei Techs. Co v. Samsung Elecs. Co., the Northern District of
California issued an anti-injunction injunction to block Huawei from enforcing a set
of injunctions it sought and obtained in parallel proceedings in China. Case No.,
3:16-cv-02787-WHO, 2018 U.S. Dist. LEXIS 63052, * (N.D. Cal. Apr. 13, 2018).
That anti-suit injunction was likewise narrowly tailored to only “enjoin Huawei from
enforcing the injunction orders issued by the Shenzhen court[.]” Id. at *39. As in
Microsoft, the patent owner “would remain free to seek damages for infringement of
its Chinese patents while this action is pending.” Id.
By contrast, the Samsung ASI at issue in this case is grossly overbroad and
mandates the withdrawal or suspension of Ericsson’s patent claims globally,
including those for the determination of damages relating to infringement of
Ericsson’s U.S. patents in the form of a royalty rate or royalty amount. Moreover,
the Samsung ASI is prospective in nature, and ignores any comparison between the
claims at issue before the Wuhan Court and those to be enjoined. Thus, the Samsung
ASI is broader and more intrusive than any anti-suit, or anti-injunction, injunction
previously issued by a U.S. court in the context of patent law. See Yang Yu and
13
Jorge L. Contreras, Will China’s New Anti-Suit Injunctions Shift the Balance of
Global FRAND Litigation?, at 4-5.
Further underscoring its unreasonable scope, the Samsung ASI even exceeds
that of the ASI issued in 2020 by the SPC in the Huawei v. Conversant matter. In
that case, Huawei sought an ASI to enjoin Conversant from enforcing injunctive
relief in Germany. The SPC narrowly tailored the resulting ASI to avoid interfering
with the parallel German proceedings, and only delayed enforcement of the German
injunction, to the extent one issued, until the Chinese actions were resolved.
Moreover, the SPC properly undertook a comparison of the claims before the
Chinese and German proceedings. Yang Yu & Jorge L. Contreras, Will China’s New
Anti-Suit Injunctions Shift the Balance of Global FRAND Litigation?, at 2-3.
By contrast, here the Samsung ASI preemptively enjoins Ericsson from even
filing any case against Samsung in a foreign jurisdiction under threat of coercive
monetary fines. Appx1-Appx16 at Appx14-Appx15.
IV. Foreign Courts Have Uniformly Rejected the Wuhan Court’s

Unlawful ASIs
Foreign courts consistently recognize that broad anti-suit injunctions, such as
the Wuhan ASIs, interfere with a patent owner’s property rights and encroaching on
the sovereign rights of foreign nations. Those foreign courts have issued AASIs to
combat the egregious violation of foreign sovereignty that might result from
14
enforcement of vague and overbroad ASIs that seek to prohibit the ability of a party
to rightfully exercise their lawful patent rights.
For example, in InterDigital Tech. Corp. v. Xiaomi Commc’ns Co., the
Regional Court of Munich I affirmed a preliminary AASI issued against Xiaomi on
November 9, 2020. Appx1868-Appx1922 at Appx1921-Appx1922 (Certified
Translation of Landgericht München [Regional Court of Munich I], Feb. 25, 2021,
7 O 14276/20 (Ger.)). The Regional Court of Munich I ordered Xiaomi to “refrain
from further encroachments and to remedy the consequences” of the Xiaomi ASI by
withdrawing its “application for the issuance of the ASI in relation to the territory of
the Federal Republic of Germany[.]” Id. at Appx1921. The Court also found that
while “an ASI issued by a foreign court is not to be recognized in Germany because
it would violate the ordre [sic] public,” the ASI still comprises “threatened or
nationally enforced coercive measures of a foreign court [that] can establish and
maintain a coercive situation vis-à-vis the patent proprietor, which factually prevents
an effective enforcement of the patents.” Id. at Appx1907.
The Regional Court of Munich I also recognized that enforcement of the
Xiaomi ASI would effectively render InterDigital’s German patent rights worthless:
The injunctive relief is the essential feature of any exclusive right such
as a patent right, and at the same time also represents the sharpest
weapon of the patent proprietor. The patent right as an exclusive right
would in fact be worthless if the patent proprietor were deprived of the
possibility of enforcing its exclusive right via the state monopoly on the
use of force in the form of ordinary court proceedings. However, the
15
right to injunctive relief is only available to the patent proprietor during

the limited term of the patent. Therefore, the injunctive relief could not
be sufficiently secured by a decision in the main proceedings with
respect to an ASI issued by another court. This is because, at least in
the period up to the provisional enforcement of a successful first-
instance judgment in the main proceedings, the patent proprietor would
be de facto deprived of his right to injunctive relief.
Id. at Appx1907 (internal citations omitted). The analysis went further, noting that a
party using ASIs to impinge upon the patent rights of patent holders cannot be
considered a willing licensee:
If, however, these patent users are willing to license, they will refrain
from further unlawful interference with the property-like protected
legal positions of the patent proprietor beyond the already committed
and ongoing acts of use. Or, in other words, a patent user who files an
application for an ASI or threatens to do so cannot, as a rule, be
considered sufficiently willing to license within the meaning of the
case law of the Court of Justice of the European Union and German
Federal Court of Justice. Consequently, the patent user can also be
required to declare not only its qualified willingness to license after
receipt of the infringement notice, but also that he will not request an
ASI.
Id. at Appx1913 (internal citations omitted) (emphasis added).
Similarly, in InterDigital Tech. Corp. v. Xiaomi Corp., the Delhi High Court
issued an AASI against the Xiaomi ASI from the Wuhan Court. Appx252-Appx324
(Delhi HC, Oct. 9, 2020, I.A. 8772/2020 in CS (COMM) 295/2020 (India) at ¶ 1).
Much like the Samsung ASI at issue here, the Xiaomi ASI required that InterDigital
“withdraw or suspend their application for any permanent injunction before the High
Court of Delhi” and precluded InterDigital from “fil[ing] any lawsuits before any
16
courts in either China or any other countries and regions requesting to adjudicate the
royalty rate of the royalty disputes in terms of the 3G and 4G SEPs involved in the
present case” against Xiaomi. Id.
In response, the Delhi High Court issued an ad interim AASI enjoining
Xiaomi from enforcing the Xiaomi ASI because “the operation of the [Xioami ASI],
of the Wuhan Court, would violate public policy in this county” and “[n]o
considerations of comity can, therefore, stand in the way of restraining its
enforcement.” Id. at ¶¶ 75, 79. The Delhi High Court noted that enforcement of the
Xiaomi ASI would be tantamount to surrendering jurisdiction over matters properly
decided by an Indian court and would destroy faith in the Indian judicial system:
If the anti-suit injunction order, passed by the foreign Court, results in

the unfair deprivation of the right, of the plaintiff in this country, to
prosecute its suit, which is maintainable as per the laws of this country,
and cannot be prosecuted before any other forum, it is the bounden duty
of the court, in this country, to protect the plaintiff from the damaging
effects of such an injunction. No consideration of comity of courts can
stand in the way of the court protecting such a plaintiff. If a litigant,
who seeks to prosecute a litigation, maintainable under Indian law,
to ventilate his due rights and entitlements, is to find himself at the
mercy of a foreign court, which, though seized of an entirely different
issue (even if marginally overlapping), injuncts the Indian litigant, ex
parte, from prosecuting his litigation in India, we may as well consign
the faith of the citizen, in the Indian judicial system, to the
graveyard of posterity.
Id. at ¶ 68.5 (emphases added).
Accordingly, each foreign court to review a Wuhan ASI has issued an AASI
to preserve its own jurisdiction to hear patent claims properly before it. The Indian
17
and German courts each issued an AASI to allow patent owners to assert claims of
infringement under their respective nation’s patents laws. And both the Indian and
German courts also correctly found that the enforcement of an ASI issued by the
Wuhan Court was contrary to public policy and would deprive the patent owner of
their right to enforce their patents in the appropriate forum.
V. Courts Have Rejected Every ASI Seeking to Bar the Assertion of

Foreign Patent Rights
Seeking true anti-suit injunctions (i.e., those that preclude asserting foreign
patent rights) is a recent development, starting in 2018. In every case in which such
broad injunctions have been sought, they have been met with appropriate AASIs.
In Continental v. Avanci, LLC, Continental sought an ASI from the Northern
District of California (“Nokia ASI”) to enjoin Nokia and its affiliates from
prosecuting several earlier filed patent infringement actions in Germany. Cont'l
Auto. Sys. v. Avanci, LLC, Case No. 5:19-cv-02520-LHK, ECF No. 32 (N.D. Cal.
June 12, 2019). Nokia sought and received an AASI from the Regional Court of
Munich I, which held that the Nokia ASI, if granted, would unlawfully interfere with
Nokia’s legal interests, and deprive it of its right of action in Germany. Id. at ECF
No. 89-1, at 13-15 (English translation of German AASI order). While Continental’s
motion was ultimately denied without prejudice on procedural grounds, Continental
did not seek to renew its motion for the Nokia ASI. See id. at ECF No. 173.
18
Likewise, in a series of actions between IPCom and Lenovo, Lenovo moved
for an ASI seeking to force IPCom to withdraw a series of lawsuits alleging patent
infringement in the UK and France. The High Court of London issued an AASI
prohibiting the UK affiliates of Lenovo from engaging in conduct that may lead to
the extinction of IPCom’s right to have validity and infringement of its UK patents
decided by a UK court. Appx1098-Appx1109 (IPCom GmbH & Co. KG v. Lenovo
Tech. (U.K.) Ltd., [2019] EWHC (Pat) 3030 (Eng.)). Similarly, the Paris Court of
Appeal affirmed an AASI issued by the Court of Paris forcing Lenovo to withdraw
its ASI application in the U.S. with respect to any of IPCom’s claims for
infringement of its French patents. Appx1923-Appx1934 (Lenovo (U.S.) Inc. v.
IPCom GmbH & Co. Kg, Cour d’appel [CA] [regional court of appeal] Paris, civ.,
Mar. 3, 2020 14/2020 (Fr.)). In rendering its decision, the Paris Court of Appeal
stated that ASIs, “apart from certain very specific cases of litigation involving the
implementation of an arbitration clause and / or a clause conferring jurisdiction
freely agreed by the parties[,] … are contrary to international public policy under
French and European law”. Id. at ¶¶ 39-42, 60.
Commentators have noted the rising abuse of the ASI tactic on behalf of
unwilling licensees:
If the cases discussed in the previous Section are representative of the

new realities in international SEP litigation, then commentators are
right to be worried about what the future may hold. Indeed, there seems
to be no light at the end of the tunnel, at least for the time being. It
19
would not be an exaggeration to suggest that national courts are

gradually getting embroiled in a turf war, with each court trying to
protect its own jurisdiction (especially against ASIs issued by foreign
courts) and with comity considerations taking a back seat. In practice,
no court appears willing to cede what it perceives as its rightful
jurisdiction to decide on patent infringement or to set (global) FRAND
rates. In the absence on an international system for allocating
jurisdiction among national courts, or perhaps some form of judicial
self-restraint as regards the exercise of international jurisdiction and the
grant of ASIs, there is simply no way to untie this Gordian Knot.
National courts are (for good reasons) sovereign, hence the
jurisdictional ping-pong is likely here to stay.
Damien Geradin and Dimitrios Katsifis, The use and abuse of anti-suit injunctions
in SEP litigation: Is there a way forward?, at 27.
The immediate solution to the noted problem is for courts to swiftly issue
AASIs in response to ASIs. That is precisely what the District Court properly did in
this case.
CONCLUSION
The Samsung ASI issued by the Wuhan Court is not the first of such unlawful
scope and it is unlikely to be the last—unless this Court recognizes what every other
court has concluded when faced with the same questions. Every court that has
reviewed a Wuhan ASI (in InterDigital’s case, the Regional Court of Munich I and
the Delhi High Court, and, here, the Eastern District of Texas) has found it to be
overly broad, overreaching, unlawful in its extraterritorial effect, and contrary to
public policy. This is not surprising: an ASI of the scope at issue here is an extreme
remedy with profound consequences. Many other courts faced with similar but still-
20
pending requests for ASIs have reached the same conclusions. Those include the
AASIs issued by the Regional Court of Munich I and affirmed by the Higher Munich
Regional Court in Nokia v. Continental; the UK High Court in IPCom GmbH & Co.
KG v. Lenovo Tech. (U.K.) Ltd.; and the Court of Paris and affirmed by the Court of
Appeal of Paris in Lenovo (U.S.) Inc. v. IPCom GmbH & Co. Kg.
Each of these separate, unrelated, and independent tribunals have concluded
that these types of broad ASIs impinge on a patent owner’s fundamental right to
enforce their patent in the relevant jurisdiction of their choosing and are further
contrary to public policy. A patent right is by nature exclusionary. Without the right
to exclude, a patent owner has no leverage to fairly benefit from its invention. And,
without such available benefits, innovators have no incentive to disclose their
inventions to SDOs for inclusion in standards that benefit the public.
With the ASI becoming a common litigation tactic for unwilling licensees, an
AASI is presently the only tool available to patent owners to preserve their ability to
exercise their lawful patent rights in the jurisdictions that have awarded them
national patent rights. Without AASIs, patent owners face the constant threat of
significant monetary fines and contempt in foreign courts for asserting their lawful
patent rights in courts of competent jurisdictions.
For these reasons, amicus curiae InterDigital respectfully submits that the
district court’s injunction should be upheld in its entirety.
21
Dated: April 9, 2021 /s/ Andrew H. DeVoogd

James M. Wodarski
Michael T. Renaud
Andrew H. DeVoogd
Daniel B. Weinger
MINTZ LEVIN COHN FERRIS
GLOVSKY AND POPEO P.C.
One Financial Center
Boston, MA 02111
(617) 542.6000

InterDigital, Inc.
22
CERTIFICATE OF COMPLIANCE WITH TYPE-VOLUME

LIMITATION, TYPEFACE REQUIREMENTS AND TYPE STYLE
REQUIREMENTS
I certify that this motion complies with the type-volume limitation of
Federal Rule of Appellate Procedure 27(d)(2)(A). The brief contains 5,435 words,
excluding the parts of the motion authorized by Fed. R. App. P. 27(a)(2)(B). This
brief has been prepared in a proportionally spaced typeface using Microsoft Word
2016 in Times New Roman, 14 Point.
Date: April 9, 2021 /s/ Andrew H. DeVoogd

Andrew H. DeVoogd
MINTZ, LEVIN, COHN, FERRIS,
GLOVSKY, AND POPEO, P.C.
InterDigital, Inc.
23
CERTIFICATE OF SERVICE
I certify that on April 9, 2021, I electronically filed the foregoing BRIEF OF

INTERDIGITAL, INC. AS AMICUS CURIAE IN SUPPORT OF THE
ERICSSON PLAINTIFFS-APPELLEES using the Court’s CM/ECF filing system.

Counsel for appellant and appellee were electronically served by and through the
Court’s CM/ECF filing system per Fed. R. App. P. 25 and Fed. Cir. R. 25(e).
/s/ Andrew H. DeVoogd

Andrew H. DeVoogd
24
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Case: 21-1565 Document: 39-2 Page: 1 Filed: 04/09/2021

United States Court of Appeals

ERICSSON INC., TELEFONAKTIEBOLAGET LM ERICSSON,

SAMSUNG ELECTRONICS CO., LTD., SAMSUNG ELECTRONICS

BRIEF OF INTERDIGITAL, INC. AS AMICUS CURIAE

Counsel for amicus curiae certifies the following:

1. The full name of every party represented by me is:

2. The name of the real party in interest represented by me is:

As of December 31, 2020, BlackRock, Inc. (a publicly held company)

Andrew H. DeVoogd; Michael T. Renaud; Daniel B. Weinger; James M.

5. The title and number of any case known to counsel to be pending in

DATE: April 9, 2021 /s/ Andrew H. DeVoogd

IDENTITY AND INTEREST OF AMICUS CURIAE............................................. 1

Huawei Technology Co. Ltd. v. Conversant Wireless Licensing

Huawei Techs. Co v. Samsung Elecs. Co.,

InterDigital Tech. Corp. v. Xiaomi Commc’ns Co.,

InterDigital Tech. Corp. v. Xiaomi Corp.,

IPCom GmbH & Co. KG v. Lenovo Tech. (U.K.) Ltd.,

Lenovo (U.S.) Inc. v. IPCom GmbH & Co. Kg,

Microsoft Corp. v. Motorola, Inc.

Xiaomi Communication Technology Co., LTD v. Inter Digital

Fed. R. App. P. 25 .................................................................................................... 24

Fed. R. App. P. 27(a)(2)(B) ..................................................................................... 23

Fed. R. App. P. 27(d)(2)(A) ..................................................................................... 23

ETSI Intellectual Property Rights Policy (Sept. 3, 2020), § 3.1............................ 6, 7

Richard A. Epstein & Kayvan B. Noroozi, Why Incentives for “Patent

Yang Yu & Jorge L. Contreras, Will China’s New Anti-Suit

IDENTITY AND INTEREST OF AMICUS CURIAE1

InterDigital, Inc. is a Pennsylvania corporation with headquarters in

developing new and innovative wireless technologies. It became a publicly traded

company in 1981 and is now a significant commercial research, innovation, and

engineering organization, with research centers in Pennsylvania, New York,

degrees, 108 of whom have Ph.Ds.

devices; instead, it has chosen to focus on innovation through advanced research,

often collaborating or partnering with other research-focused organizations on

covered by a portfolio of approximately 28,000 patents and patent applications,

spanning some 50 jurisdictions worldwide.

protection: approximately 94% of its cellular and wireless inventions were

developed in-house by InterDigital engineers. In order to continue to fund its

standards, InterDigital licenses its worldwide portfolio of patents covering those

Sony, Ericsson, Panasonic, RIM/Blackberry, HTC, Huawei, LG Electronics,

Pegatron, Wistron, Sanyo, NEC, and Sharp. InterDigital’s constant commitment to

telecommunications standards have benefitted markets, technology, and consumers

around the world.

InterDigital’s experience in participating in standardization efforts and in

licensing a large global patent portfolio relating to wireless standards gives it a

InterDigital has participated in technology standardization efforts by standards

development organizations (“SDOs”), including development of 2G, 3G, 4G, and

5G cellular standards, through its membership in the European Telecommunications

thousands of its patents and patent applications to ETSI as potentially standards-

standards-essential patents (“SEPs”) to be prepared to grant licenses on fair,

reasonable, and non-discriminatory (“FRAND”) terms.

narrowly tailored to prohibit the enforcement of injunctions obtained in foreign

prosecution of foreign proceedings entirely.

The Wuhan Intermediate People’s Court (the “Wuhan Court”) dramatically

against InterDigital. Appx356-Appx367 (Xiaomi Communication Technology Co.,

their unlawful terms through coercive, extortion-level fines of approximately $1M

USD per week for violations.2

The Wuhan ASIs represent a sea-change in the approach of Chinese courts

willingness to encroach on the sovereign jurisdiction of foreign courts. Predictably,

in response foreign courts have swiftly issued anti-anti-suit injunctions (“AASI”) to

Reversal of the district court’s AASI in this case would be an unprecedented

Court, quite correctly, protected its Constitutional jurisdiction to hear Ericsson’s