ATTACHMENT A
Case 5:19-cv-02520-LHK Document 95-1 Filed 07/19/19 Page 2 of 46
VIA ECF
In its letter to the Court, Nokia asserted that this ex parte injunction already has “gone into
effect,” although by the terms of the Order, it is not effective until the Order has been properly
served, which Continental does not believe has taken place. (Dkt. 89-1 at 4.) Counsel for
Continental received “notice” of this ex parte injunction a mere eight minutes prior to Nokia’s
filing of its letter with the Court, via an e-mail from Nokia’s U.S. counsel to myself and another
colleague at my firm. Prior to this e-mail, no one associated with Continental, its affiliates who
are directly involved in the German litigation, or their counsel had received any notice
whatsoever that Nokia had even applied for the injunction in Germany, let alone that an
injunction had issued. The entire proceeding in Germany which resulted in the issuance of the
injunction took place in secret relative to everyone involved in the German litigation except
Nokia. In short, Continental was provided with no due process whatsoever in connection with
this injunction order, even though the order purports to subject Continental to severe penalties if
contravened.
Case 5:19-cv-02520-LHK Document 95-1 Filed 07/19/19 Page 3 of 46
Continental hereby attaches as Exhibit A a copy of Nokia’s ex parte application to the German
Court, seeking an expedited injunction order “without a hearing and without prior hearing from
[Continental] due to the particular urgency and in view of the imminent threat of motions for
countermeasures by Respondents in the US court to preempt the court seised [sic] here and
thus potentially rendering this request void.” (Ex. A at 3 (emphasis in original).) Nokia
misrepresented to the German Court that “there is an acute risk” that this Court would decide
the anti-suit injunction motion shortly after Nokia files its opposition on July 24, 2019, nowhere
mentioning that Continental’s reply brief is not even due until August 9. (Ex. A at 2, 17, 38.)
Accordingly, Nokia gave the German Court the incorrect impression that this Court would decide
Continental’s anti-suit injunction motion imminently after July 24. (See id. at 2 (claiming that “a
decision [by this Court] could be issued at [its] discretion … shortly, in particular from 24 July
2019 on.”) (emphasis added).)
Given Nokia’s representations to the German Court, we further note that on June 14, 2019,
when Nokia moved this Court to enlarge Nokia’s time to respond to the anti-suit injunction
motion, Nokia represented to this Court that Nokia required the requested “additional time to
respond to the Anti-Suit Motion” and that “such an extension would not prejudice Continental
US.” (Dkt. 45 at 2 (emphases added); see also id. at 4 (reiterating “the lack of prejudice to
Continental US”).) More specifically, Nokia represented to the Court that Continental would
suffer no prejudice because of “the lack of immediate deadlines in Germany[.]” (Id. at 5.)
None of the four “particularized reasons” Nokia offered to this Court in support of its requested
extension made any mention of Nokia’s intention to “respond” to Continental’s motion by moving
the German Court for an “ex parte” injunction in the interim, requiring Continental to withdraw its
motion before this Court “immediately” upon effective service, on pain of severe penalties, and
without any opportunity to have contested the injunction before its issuance. (Id. at 5-6; see
Dkt.. 89-1 at 6-7.) Indeed, Nokia indicated to this Court that it needed the extension to avoid
having “to rush and file an opposition” to a purportedly “complex” motion “that, in fairness,
should be briefed and heard later in the case under a more reasonable schedule after
predicate issues are considered in the named Nokia Defendants’ responses to the Complaint.”
(Id. at 5-6 (emphasis added).)
Subsequently, on June 18, 2019, this Court extended Nokia’s opposition time from June 26,
2019 to July 24, 2019, and set August 9, 2019 as the due date for Continental’s reply. (Dkt. 56
at 2.) Nokia then waited three weeks, until July 9, before secretly applying for the ex parte
injunction in Germany, even though it claimed the mere existence of the pending motion for anti-
suit injunction created an urgent and intolerable threat to its legal and commercial rights, such
that Continental should not even have an opportunity to respond to the motion before the
German Court acted. (See e.g., Ex. A at 5 (claiming that Continental’s “request [for an antisuit
injunction] threatens a direct infringement of the Petitioner’s patent rights”).) In hindsight, it is
clear that Nokia apparently never intended to actually oppose Continental’s motion by arguing
the relevant Ninth Circuit standard. Instead, its goal was to secretly obtain an order that would
purport to force Continental to withdraw its motion before Nokia ever had to explain itself to this
Court, and before this Court could rule on the motion in due course.
Case 5:19-cv-02520-LHK Document 95-1 Filed 07/19/19 Page 4 of 46
Nokia’s U.S. counsel asserts that Continental was properly served under the Hague
Convention, and is thus demanding that Continental immediately withdraw its motion. Based on
its inquiry to date, Continental believes that purported service of the German “ex parte” order by
Nokia’s German counsel upon Continental in the United States is ineffective because it
circumvents formal requirements under international laws of the Hague Convention. As formal
service is a legal requirement under German law for such an ex parte order to become effective,
Continental does not believe it is currently bound by the ex parte order – either in the United
States or Germany.
Stephen S. Korniczky
for SHEPPARD, MULLIN, RICHTER & HAMPTON LLP
EXHIBIT A
Case 5:19-cv-02520-LHK Document 95-1 Filed 07/19/19 Page 6 of 46
English translation
In advance via fax (without exhibits): 089 / 5597-3003 and TIM SMENTKOWSKI
* PARTNER
1 FA FÜR GEWERBLICHEN RECHTSSCHUTZ
KÖNIGSALLEE 59A
D-40215 DÜSSELDORF
T +49 211 54 24 40 40
F +49 211 54 24 40 44
Urgent! Please immediately submit to the chairperson! E INFO@ARNOLD-RUESS.COM
WWW.ARNOLD-RUESS.COM
Nokia Technologies Oy, Karakaari 7, 02610, Espoo, Finland, legally represented by its
Management Board, at the same address;
- Petitioner 1)-
Nokia Solutions and Networks Oy, Karakaari 7, 02610 Espoo, Finnland, legally
represented by its Management Board, at the same address;
- Petitioner 2) –
versus
- Respondent 1) -
- Respondent 2) -
For: tort (inter alia, infringement of rights to the patent EP 2 797 239 B1)
Then, on 12 June 2019 – i.e. shortly after the oral hearing before this Court on 5 June
2019 – Respondent 2), upon instruction by Respondent 1), filed an intermediary motion
with the U.S. court to issue an anti-suit injunction. If granted, this injunction would with
immediate effect injunct Petitioners to pursue the patent infringement proceedings
between Petitioners and Daimler AG. Such a decision could be issued at the discretion of
the US court shortly, in particular from 24 July 2019 on.
/..
Case 5:19-cv-02520-LHK Document 95-1 Filed 07/19/19 Page 8 of 46
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Petitioners are therefore dependent on urgent judicial assistance before such an anti-suit
injunction is issued.
The German patent infringement proceedings are a legal dispute between two Finnish
companies (Petitioners) and a German automobile maker (Daimler AG) regarding the
infringement of German patents through acts commited in Germany. These proccedings
properly belong in the German courts. Respondents should not be allowed to prevent
Petitioners from pursuing these earlier filed cases through its actions in a foreign court.
The present PI request thus is (only) directed against the anti-suit injunction motion filed
against these pending proceedings.
Petitioners thus do not request this court to order Respondents to dismiss the pending
U.S. case completely. Petitioners respect the sovereignity of the U.S. courts. The goal of
the present motion is thus limited to require Respondents to likewise respect the
sovereignty of this German court and thus to ensure that there is a level-playing-field
between the parties, and that the main proceedings in both jurisdictions can proceed in
accordance with their respective applicable rules and governing laws.
– without a hearing and without prior hearing from Respondents due to the
particular urgency and in view of the imminent threat of motions for counter-
measures by Respondents in the US court to preempt the court seised here and
thus potentially rendering this request void -
Preliminary Injunction:
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II. The Respondents are ordered to pay the costs of the proceedings.
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Statement of Grounds
On 12 June 2019, the Respondents filed a motion in the United States District Court -
Northern District of California for an anti-suit injunction. This request threatens a direct
infringement of the Petitioners' patent rights. Such an anti-suit injunction, if granted,
would force the Petitioners to discontinue the German patent infringement proceedings.
Otherwise, the Petitioners would have to fear considerable sanctions in the USA. As a
result, the Petitioners' patent rights in Germany (and worldwide) would be completely
devalued because a pursuit in court against multiple willful patent infringements in
Germany would no longer be possible under those circumstances.
By contrast, the torpedoed proceedings have no relevant connection with the USA
whatsoever - neither substantively nor procedurally. The Respondents here are not
involved in the German proceedings at all - not even as interveners. The Petitioners'
actions are directed solely against Daimler AG and especially not against its suppliers.
The unlawfulness of an action such as that of the Respondents has already been
established in German case law. The Higher Regional Court (Oberlandesgericht - OLG) of
Düsseldorf already established in 1996 with regard to a foreign anti-suit injunction (order
of 10 January 1996, 3 VA 11/95, margin no. 31 - quoted from juris):
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"Proper judicial proceedings under the rule of law are guaranteed only - and this
requires no further explanation - if the parties involved and their representatives
can submit to the court, without any restriction, all facts which they consider
necessary for the assessment of the court and can file the motions which are
necessary according to the state of the proceedings. These rights are safeguarded
in many respects by the German Rules of Procedure and the German Basic Law.
The courts are obligated to enforce these rights." [emphasis added]
Against this background, we ask the Court Chamber to enforce the Petitioners' rights by
issuing the preliminary injunction requested in order to keep the current status quo and
to ensure the undisturbed continuation of the German proceedings.
A.
Facts of the Case
I.
The Parties
1. Petitioners
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– EP 2 797 239 B1
– EP 2 286 629 B2;
– EP 2 981 103 B1, cf.
Set of Exhibits AR 1a.
2. Respondents
Exhibit AR 2:
"Heute ist die Continental AG, nach wie vor mit Sitz in Hannover,
Deutschland, die Muttergesellschaft des Continental-Konzerns.
[...]
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[...]
The overall responsibility for the management lies with the Executive Board
of Continental AG. The core sectors of Continental AG are – except for
group sourcing – being represented by the chariman, the CFO and the
CHRO. They take over the functions that are necessary to control the group
over all its divisions. This includes in particular the sectors finance,
controlling, compliance, legal and IT, sustainability as well as quality and
environment."
Respondent 2) is merely the executive organ of Respondent 1). This results from
several aspects:
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1 Exhibit AR 4 has a different page numbering in the header and in the footer. We use the page numbers
given in the header.
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Accordingly, the motions are also submitted "on behalf" of the entire
Continental Group and in particular on behalf of the parent company,
Respondent 1). This is because the motions are directed at preventing the
conduct of the proceedings against Daimler AG as the "customer of
Continental". As evidenced by the third-party notices and corresponding
intervention, however, Daimler AG is only the customer of the other group
companies mentioned and not of Respondent 2). In addition, it is to be
ordered that no further actions are brought against "Continental" and its
customers. This does not only mean Respondent 2) and its customers (in
the USA), but comprehensive protection of the parent company
(Respondent 1)) and all of its customers is sought.
d) The same also follows from the notice of intervention of 31 May 2019 filed
by the interveners from the Continental Group in the proceedings under
case no. 7 O 3890/19, cf. p. 2 and 7 of Exhibit AR 5b:
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"If the specific company is not important, the interveners and all
other companies of the Continental Group will hereinafter be
referred to only as "interveners" [...].
f) In fact, the dispute between the Petitioners and the Continental Group is
conducted directly with Respondent 1) as the Group's management.
Respondent 1) filed the complaint with the Commission, submitted in
extract as
Exhibit AR 6.
Exhibit AR 7.
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Exhibit AR 8:
In German translation:
The address stated there for Mr Schäfer is the same as Respondent 1)'s
registered business seat.
It follows from this that Respondent 1) controls and coordinates the activities of
Respondent 2) in this dispute. It is also in line with general life experience that
Respondent 2), who is uninvolved in the German proceedings and the license
negotiations, does not "act alone" in filing an action for the determination of a
/..
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global FRAND license for the Continental Group and the supplementary motion
for issuance of an anti-suit injunction in the USA. This is done at the behest of the
Group's management, namely Respondent 1).
II.
The German Patent Infringement Proceedings
On 21 March 2019, the Petitioners filed a total of ten patent infringement suits against
Daimler AG before the Regional Courts of Munich I, Mannheim and Düsseldorf. The
patents in suit and the corresponding docket numbers are listed below:
In proceedings 7 O 3890/19, an oral hearing before the Regional Court Munich I already
took place, cf. minutes of the oral hearing of 5 June 2019 in
Exhibit AR 9.
III.
Subsequent Proceedings in the United States
In response to the lawsuits filed by the Petitioners against Daimler AG, Respondent 1)
had Respondent 2) to file a main action against the Petitioners in the U.S. District Court -
Northern District of California on 10 May 2019, alleging violation of its FRAND
obligations (Exhibit AR 7).
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Shortly after the first hearing date in the proceedings under case no. 7 O 3890/19 in
Munich and even before Petitioners had replied to the U.S. main action, the Respondents
(through Respondent 2)) requested the issuance of an anti-suit injunction as an
intermediary order (Exhibit AR 4).
If it were to grant the requested anti-suit injunction, the Californian court would
directly enjoin the Petitioners and its affiliated companies from further pursuing
the patent infringement suits already pending in Germany against Daimler AG.
The motion dated 12 June 2019 states, cf. Exhibit AR 4, p. 2, lines 9 to p. 3, lines
10 (emphasis added):
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The present injunction request by Petitioners is only directed against this part of
the motion for an anti-suit injunction. The proceedings listed there relate to the
patents in suit mentioned above.
The Respondents essentially trust that the anti-suit injunction will ensure
"[...] to broadly resolve all disputed issues between Continental on the one
hand and Nokia and Defendants on the other hand, related to Defendants'
wireless SEPs" (cf. Exhibit AR 4, p. 20, lines 5 - 7).
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This surprises, as the Petitioners did not file a claim for patent infringement
against the Respondents, but against Daimler AG. Instead, it was the Respondents
themselves who filed a lawsuit before the US court only two months after
pendency of the German lawsuits. This was probably also done with the aim of
creating a supposedly "competing" proceeding here. However, the Respondents
fail to realize that competing jurisdiction cannot exist at all in the absence of party
identity between the proceedings.
2. Chronological sequence
The Petitioners currently have until 24 July 2019 to comment on the motion for
issuance of an anti-suit injunction. A hearing is provisionally scheduled for 10
October 2019. Under US law, however, a decision on the motion can also be made
beforehand based on the information available in the file. This is not an
uncommon practice. In fact, in anti-suit injunction proceedings between
InterDigital and Pegatron, the US court seised here issued such an injunction a
day before the originally scheduled oral hearing and then cancelled the hearing.
Thus, there is an acute risk that a decision will be made without a hearing, in
particular potentially shortly after the Petitioners have submitted their reply on
24 July 2019.
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Also, the Petitioner could be ordered to immediately withdraw also this present
preliminary injunction request. This would then thwart the objective of legal
protection requested here. According to Rule 65 of the US Federal Rules of Civil
Procedures, a US court can issue so called Temporary Restraining Orders even
without prior notice to the adverse party.
To secure the status quo, the Petitioners are therefore crucially dependent on the
fact that a decision is made here prior to hearing from the Respondents. Should
Respondents oppose such descision, Petitioners are willing to defend.
IV.
Background to Anti-Suit Injunctions
Exhibit AR 13:
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In the present case, however, the Petitioner has applied to a court in the Ninth
Circuit. The literature states on anti-suit injunctions by these courts (Kaltner, GRUR
Int 2012, 1078 [1079], emphasis added):
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In the past, in particular the courts of the Ninth Circuit have granted many of the
requested anti-suit injunctions. Some examples are jurisdiction (see affidavit Prof.
Rutledge, no. 4, Exhibit AR 11):
- In the case of Microsoft v. Motorola, for example, the courts of the Ninth
Circuit issued an anti-suit injunction in favor of Microsoft in 2012, enjoining
Motorola from enforcing a patent infringement judgment against Microsoft
that had been duly won before the Mannheim Regional Court (US Court of
Appeals for the 9th Circuit, Microsoft v. Motorola, 696 F.3d 872 (2012),
judgment of 28 September 2012 = GRUR Int 2012, 1149).
Irrespective of the fact that the Petitioners do not consider the requirements for
an anti-suit injunction under US law to be met in this present case, there is
nevertheless still a considerable risk that the US court seised will nevertheless
issue such an order. Also in view of the severe consequences, such risk is not
acceptable for Petitioners.
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It is recognized in the case law and literature that anti-suit injunctions are
incompatible with EU law or German law.
Exhibit AR 14.
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The Higher Regional Court continues that it is also irrelevant that the anti-
suit injunction is not directed directly against the German court, but against
the party. Because of the disposition maxim, the court is dependent on the
cooperation of the party (Higher Regional Court (OLG) of Düsseldorf, loc.
cit., margin nos. 29 et seqq.).
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b) The Court of Justice of the European Union (CJEU) has ruled that anti-
suit injunctions are incompatible with European civil procedural law,
namely the Brussels Convention, cf.
Exhibit AR 15:
c) Continuing this case law, the CJEU has ruled that anti-suit injunctions are
also incompatible with the Brussels I Regulation. An anti-suit injunction
prevents a state court from deciding on its own jurisdiction, which would
violate the principle of mutual trust (comitas) (CJEU, judgment of 10
February 2009, C-185/07 - Allianz / West Tankers, margin nos. 28 et seqq.),
cf.
Exhibit AR 16.
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Section 328 margin no. 127; Saenger, ZPO, 8th edition 2019, Section 328,
margin no. 54). We submit these references collectively as
B.
Legal Assessment
The motion filed by the Respondents for the issuance of an anti-suit injunction threatens
to devalue the exclusive rights conferred by the Petitioners' patents in Germany. The
present case is not a classical patent infringement case within the meaning of Sections 9
and 10 of the German Patent Act (Patentgesetz - PatG), but an interference with the
Petitioner's exclusive rights otherwise. With respect to this interference, the Petitioners
are entitled to preventive injunctive relief, Sections 1004 para. 1 sent. 2 of the German
Civil Code (Bürgerliches Gesetzbuch - BGB) by analogy in conjunction with Section 823
para. 1 of the German Civil Code (BGB) (cf. I.). At the same time, the filing of a motion by
Respondent 2) constitutes intentional, immoral damage (vorsätzliche, sittenwidrige
Schädigung) within the meaning of Section 826 of the German Civil Code (BGB) (cf. II.).
I.
Injunctive relief under
Sections 1004 para. 1 sent. 2 by analogy, 823 para. 1 BGB
The motion for the issuance of an anti-suit injunction interferes with various legal
rights protected by Sections 1004 by analogy, 823 of the German Civil Code
(BGB), in particular with the patent rights of the Petitioners as such as well as with
their established and practiced business enterprises.
a) Patent rights
Patents are protected as other rights within the meaning of Section 823
para. 1 of the German Civil Code (BGB) (Palandt, BGB, 78th edition 2019,
Section 823, margin no. 15; BeckOGK, as of: 1 May 2019, Section 823 BGB,
margin no. 173, MüKo-BGB, 7th edition 2017, Section 823, margin no. 282).
Pursuant to Section 9, sent. of the German Patent Act (PatG), the patent
primarily confers on its owner a right to prohibit the use of the protected
invention by unlicensed third parties and demand damages in case of
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"Eine andere Beurteilung ist auch nicht deshalb geboten, weil die
streitigen "Antisuit Injunctions" nicht unmittelbar gegen den
deutschen Staat oder gegen deutsche Gerichte, sondern gegen
Herrn ... als den Kläger der von ihm in Deutschland anhängig
gemachten Verfahren und Potentieller weiterer Verfahren gerichtet
sind, und zwar im wesentlichen aus folgenden Gründen:
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[...]
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[...]
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The business activities of the Nokia Group consist inter alia in the licensing
of inventions developed by the group. Through such licensing, Petitioner 1)
contributes significantly to the business result of the Nokia group.
Exhibit AR 18.
Also Petitioner 2) is proprietor of various patents which are part of the SEP
portfolio of the Nokia group and are thus licensed on FRAND terms as part
of its business activities:
Exhibit AR 19.
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third parties. Indirectly, the requested anti-suit injunction would impact the
possibility to assert its patents also against any other third party because it
would show that such torpedoing of German infringement proceedings is
possible. In negotiations with unlicensed third parties, they would thus lack
the necessary counterbalance to obtain fair, appropriate and non-
discriminatory compensation for its innovation performance and to oppose
a hold-out by the infringers.
Fundamental rights contain not only a defense claim against the state, but at the
same time a protective function, which is also referred to as the indirect third-
party effect of fundamental rights. This protective function comprises in particular
the obligation of the state and its organs, including the ordinary courts, to
guarantee the enforcement of fundamental rights in private law relationships (cf.
BeckOGK, as of: 1 April 2019, Section 134 BGB, margin no. 36).
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above). The Respondents thus seek an individual order by a US court which does
not have jurisdiction over these questions and thereby interferes specifically with
the constitutionally guaranteed judicial independence under Article 97, para. 1 of
the German Basic Law (GG) (cf. in general Hillgruber, in: Maunz / Düring,
Grundgesetz-Kommentar [Basis Law Commentary], as of: 86. EL January 2019, GG,
Art. 97, margin no. 75). This interference with judicial independence also violates
the Petitioners' right of due process (Recht auf den gesetzlichen Richter) under
Article 101 para. 1 sent. 2 of the German Basic Law (GG) (Hillgruber, in: Maunz /
Düring, Grundgesetz-Kommentar [Basis Law Commentary], as of: 86. EL January
2019, GG, Art. 97, margin no. 5).
The Respondents' attempt to thwart the use of judicial assistance against the
deliberate and continued patent infringement in Germany is at the same time a
violation of the right to effective and efficient legal protection (the so-called right
to recourse), which is guaranteed by Article 2 para. 1 of the German Basic Law
(GG) in conjunction with the rule of law. This guarantee also covers civil law
enforcement and requires, in particular, that the legal process in civil law disputes
may not be unreasonably impeded without objective justification (Di Fabio, in:
Maunz / Düring, Grundgesetz-Kommentar [Basic Law Commentary], as of: 86. EL
January 2019, GG Art. 2 para. 1 GG, margin no. 73). Only the German civil courts
are called upon to decide on patent infringement in Germany. The motion for an
anti-suit injunction of the Respondents, on the other hand, pursues the purpose
of cutting the Petitioners off from this legal process. It is thus intended to prevent
effective legal protection.
For these reasons, the Respondents cannot invoke the fact that they are merely
seeking legal remedies under foreign law. Not every exercise of legal remedies is
justified in individual cases. Even the exercise of rights to which the injuring party
might be entitled per se (under US law) may be immoral (BeckOGK, as of: 1 May
2019, Section 826 BGB, margin no. 131).
By filing their motion with the US court, the Respondents have created the
concrete risk of an illegal interference with the patent rights of the Petitioners and
its established and practiced business enterprise.
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4. Disturber quality
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Respondent 2) at any time to refrain from pursuing the motion. Thus, Respondent
1) is also a disturber.
5. Remedy
The motion of the Respondents for issuance of an anti-suit injunction creates the
immediate and tangible risk of interference with the legal interests of the
Petitioners. The Petitioners are entitled to preventive injunctive relief against this
(Palandt, loc. cit., introduction to Section 823, margin no. 30). Behavior is owed
which causes the non-occurrence of the imminent impairment (Palandt, loc. cit.,
Section 1004, margin no. 33; German Federal Court of Justice (Bundesgerichtshof
- BGH), NJW 04, 1035).
II.
Immoral intentional damage
(Sections 1004 para. 1, sent. 2 by analogy, 826 BGB)
1. Damage
The concept of damage within the meaning of Section 826 of the German Civil
Code (BGB) is broad. It covers not only the violation of certain legal interests, but
any adverse effect on the financial situation, impairment of a legally recognized
interest or burden with an unintentional obligation (German Federal Court of
Justice (BGH) NJW 2004, 2971 [2972]).
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exclusive rights in court and to claim injunctive relief or damages etc. from the
Respondents or their customers.
In addition, the Petitioners are to be obligated against their will not to further
pursue the actions before the seised court. As immediate effect, this will have
significant financial impact in view of the statutory cost reimbursement
stipuations. The substantial internal and external costs in connection with these
proceedings would be lost. An even more grave implication on the Petitioners'
assets follows from the fact that they will be forced to continue to accept the
patent infringements by Daimler AG, which have lasted for years, without
compensation.
2. Immorality
a) Objective immorality
Acts which are incompatible with the fundamental values of the legal and
moral order are objectively immoral (Palandt, loc. cit., Section 826 margin
no. 4).
aa) There is agreement in the case law and literature that anti-suit
injunctions are incompatible with European civil procedural law and
German constitutional law (cf. above under IV.3. and Exhibits AR 14
to AR 17).
bb) The exercise of rights to which the injuring party is entitled per se
may also be immoral (BeckOGK, as of: 1 May 2019, Section 826 BGB,
margin no. 131). The Petitioners observe and respect court decisions,
especially those of US courts. They have themselves often sought
judicial assistance from US courts in the past.
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Exhibit AR 20.
The plaintiff had first turned to the German courts to assert his
claims (for divorce from his wife) against the other side. After this
was unsuccessful, he appealed to a foreign court, which offered a
supposedly more favorable legal situation for him (i.e. which would
possibly pronounce the intended divorce). The Imperial Court of
Justice considered this to be immoral,Exhibit AR 20, p. 138:
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b) Reprehensibility
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The Respondents act with the intent to cause damage. This is already apparent
from the wording of the requests submitted in the motion (cf. A.III.1. above). The
motion for issuance of an anti-suit injunction is deliberately and intentionally
aimed at thwarting the assertion of the exclusive rights by the Petitioners in
Germany. The Respondents who were advised by lawyers are aware that anti-suit
injunctions violate the principle of comity between nations (comitas) (cf. Exhibit
AR 4, p. 31, line 13).
4. Remedy
The Petitioners are entitled to preventive injunctive relief, Section 1004, para. 1,
sent. 2 of the German Civil Code (BGB) in connection with Section 826 BGB. In
analogous application of Section 1004 of the German Civil Code (BGB), all legal
interests protected in tort by Section 826 BGB are covered (Palandt, loc. cit.,
Section 1004, margin no. 4).
VI.
Ground for injunction
Finally, the required ground for injunction also exists. Without the order being issued,
the Petitioners would suffer considerable disadvantages.
1. Urgency
The motion is extremely urgent. Immediately after the filing on 12 June 2019, the
Petitioners became aware of the motion for issuance of an anti-suit injunction.
The US court has currently scheduled the date for the hearing for 10 October
2019. However, an anti-suit injunction may be issued considerably earlier and in
particular after 24 July 2019 because the US court can then decide based on the
information available in the file. US courts have a wide discretion with the
handling of decisions on intermediary motions of the parties.
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2. Balance of interests
With the present motion for a preliminary injunction, the Petitioners demand no
more than the issuance of a measure enabling the proper continuation of the
patent infringement actions pending before the competent German courts seised
against another party. The Petitioners are therefore worthy of protection, in
particular against the background that these proceedings were brought before
the courts long before the main action was filed in the USA.
Furthermore, the present motion is not intended to deny the Respondents' access
to the US courts altogether. For the present motion is not directed against the
USmain proceedings filed of 10 May 2019 (Exhibit AR 7), but solely against the
supplementary motion for issuance of an anti-suit injunction. This is an essential
difference to the approach of the Respondents. The Respondents are seeking a
comprehensive prohibition of all current and future patent infringement actions
brought by the Petitioner against Continental or on of their customers under a
mobile communications SEP for the duration of the anti-suit injunction. The
defensive measure requested here is therefore only aimed at preserving the status
quo and a considerably smaller curtailment of the legal position of the
Respondents.
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VII.
Jurisdiction
1. The subject-matter jurisdiction of the Court seised follows from Section 143
para. 1 of the German Patent Act (PatG). The term "patent litigation" must be
interpreted broadly (German Federal Court of Justice (BGH), GRUR 2011, 662).
Pursuant to Section 143 of the PatG, this includes all actions by which a claim is
asserted under one of the legal relationships governed by the German Patent Act
(PatG) (Higher Regional Court (OLG) of Düsseldorf, GRUR-RR 2012, 305). It is not
necessary that the basis of the claim follows from the German Patent Act (Higher
Regional Court (OLG) of Düsseldorf, GRUR-RR 2012, 305). The present motion for
issuance of a preliminary injunction is intended to ensure the undisturbed
continuation of the German patent infringement proceedings and therefore
affects the exclusive rights arising from the patents in suit there.
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We therefore request that the preliminary injunction be issued without prior hearing of
the Respondents. In addition, we ask to be notified by telephone of the intended
issuance of an injunction so that we can initiate the necessary steps for service. Pursuant
to Sec. 170 Civil Procedure Code, service upon Respondent 2) can be effected directly to
Mr. Schäfer as a member of the Board of Directors and thus an organ of Respondent 2),
cf. Court of Appeal Stuttgart, decision of 28 May 2013, 20 U 5/12, BeckRS 2013, 12075.
He has his place of business at the seat of Respondent 1) (Exhibit AR 8b).