  United States Court of Appeals
      for the Federal Circuit
                ______________________

    SANOFI-AVENTIS DEUTSCHLAND GMBH,
              Plaintiff-Appellee,

                          v.

                 GENENTECH, INC.,
                 Defendant-Appellant,

                         AND

                 BIOGEN IDEC INC.,
                      Defendant.
                ______________________

                      2012-1454
                ______________________

   Appeal from the United States District Court for the
Northern District of California in Nos. 08-CV-4909 and
09-CV-4919, Judge Susan Y. Illston.
                ______________________

                Decided: May 10, 2013
                ______________________

   WILLIAM E. SOLANDER, Fitzpatrick, Cella, Harper &
Scinto, of New York, New York, argued for plaintiff-
appellee. With him on the brief were DOMINICK A. CONDE,
NINA SHREVE, JOSHUA A. DAVIS and LINDSAY HERSH.
2            SANOFI-AVENTIS DEUTSCHLAND   v. GENENTECH, INC.

   CHARLES K. VERHOEVEN, Quinn Emanuel Urquhart &
Sullivan, LLP, of San Francisco, California, argued for
defendant-appellant.   With him on the brief were
VICTORIA F. MAROULIS and ERIC W. WALL.
                ______________________

    Before RADER, Chief Judge, DYK and REYNA, Circuit
                         Judges.
    Opinion for the court filed by Circuit Judge REYNA.
        Concurring opinion filed by Circuit Judge DYK.
REYNA, Circuit Judge.
    This case requires us to determine whether, based on
a final judgment in the United States that a patent is not
infringed, a party is entitled to an injunction preventing
the patent owner from proceeding in a previously-filed
foreign arbitration of a license to that patent. We con-
clude that under Ninth Circuit law and the facts of this
case, the injunction is not warranted. We therefore affirm
the district court’s denial of the injunction.
                        BACKGROUND
    Sanofi-Aventis Deutschland GmbH (“Sanofi”) sued
Genentech, Inc. (“Genentech”) and Biogen Idec Inc. 1
(“Biogen”) for infringement of U.S. Patent Nos. 5,849,522
and 6,218,140 (the patents-in-suit) based on sales of the
allegedly infringing drugs Rituxan and Avastin. The
district court found that there was no infringement,
Sanofi–Aventis Deutschland GmbH v. Genentech, Inc.,
Nos. C 08–4909 SI, C 09–4919 SI, 2011 WL 839411 (N.D.
Cal. Mar. 7, 2011), and this court affirmed. Sanofi-


    1   Biogen was a party in the infringement lawsuit
but is not involved in the arbitration. It did not partici-
pate in the request to enjoin the arbitration and is not a
party to this appeal.
 SANOFI-AVENTIS DEUTSCHLAND   v. GENENTECH, INC.      3
Aventis Deutschland GmbH v. Genentech, Inc., 473 F.
App’x 885 (Fed. Cir. 2012).
     Although the U.S. lawsuits were filed in 2008, the
origin of this dispute is much older. On August 23, 1985,
Sanofi’s predecessor, Behringwerke AG (“Behringwerke”),
filed a U.S. patent application directed to the use of
certain DNA sequences, known as enhancers, that had
been identified in human cytomegalovirus. An enhancer
is a sequence of DNA that, when introduced into a cell
that produces a drug, can enable the cell to produce the
drug at a much higher rate than would ordinarily be
possible.
    In 1992, Genentech entered into an agreement (the
“Agreement”) with Behringwerke licensing intellectual
property related to enhancers, including the applications
that ultimately matured into the patents-in-suit. The
Agreement specified that in exchange for fixed annual
payments, Genentech could practice the patents-in-suit
for research purposes. Genentech made these payments
from 1992 to 2008. In addition, the Agreement required
Genentech to pay a running royalty of 0.5% on the sale of
commercially marketable goods incorporating a “Licensed
Product.” The Agreement defined licensed products as
“materials (including organisms), the manufacture, use or
sale of which would, in the absence of this Agreement,
infringe one or more unexpired issued claims of the Li-
censed Patent Rights.” The Agreement was governed by
German law and required disputes to be settled by arbi-
tration in accordance with the rules of the International
Chamber of Commerce (“ICC”).
    In 1996, Behringwerke AG became Hoechst AG
(“Hoechst”).  Hoechst transferred its pharmaceutical
business to a company which, after a series of name
changes, eventually became Sanofi. Both the Agreement
and the rights in the patents-in-suit remained with
4          SANOFI-AVENTIS DEUTSCHLAND    v. GENENTECH, INC.
Hoechst. Hoechst is a holding company that owns 85% of
Sanofi; both are German entities.
    In the present case, Sanofi alleges that Biogen and
Genentech infringed the patents-in-suit by using the
patented enhancers in the manufacture and sale of two
drugs: Rituxan and Avastin. Genentech launched Ritux-
an in December 1997 and Avastin in February 2004.
Genentech did not identify Rituxan or Avastin as licensed
products, nor did it pay the 0.5% royalty on them. In
letters dated June 30, 2008, and July 15, 2008, Sanofi
accused these products of infringing the asserted patents.
Shortly thereafter, on August 27, 2008, Genentech noti-
fied Sanofi of its intent to terminate the Agreement. On
October 10, 2008, Hoechst transferred the patents to
Sanofi. 2 On October 24, 2008, pursuant to the Agree-
ment, Hoechst demanded arbitration before a European
arbitrator of the ICC. Termination of the Agreement
became effective on October 27, 2008.
     Three days after Hoechst initiated the foreign arbitra-
tion, Genentech terminated the Agreement and filed a
complaint for declaratory judgment of invalidity and non-
infringement in the United States District Court for the
Northern District of California. On the same day, Sanofi
filed an infringement complaint in the United States
District Court for the Eastern District of Texas. The two
actions were consolidated in the Northern District of
California and, after a Markman hearing, the court
granted summary judgment of non-infringement. Sanofi



    2   During the course of these proceedings, the rights
to the patents-in-suit and the Agreement have passed
between Hoechst and Sanofi several times. Because the
details of these transactions are not material to our
discussion, we do not describe them in detail here.
 SANOFI-AVENTIS DEUTSCHLAND   v. GENENTECH, INC.        5
appealed, 3 and this court affirmed.        Sanofi-Aventis
Deutschland, 473 F. App’x at 886.
    While the litigation proceeded in the United States,
the ICC arbitration continued abroad. After the Mark-
man hearing but before the judgment of non-
infringement, Sanofi argued to the arbitrator that the
district court’s claim construction was wrong. After this
court affirmed, Genentech argued to the arbitrator that
our judgment disposed of all issues in the arbitration;
Hoechst and Sanofi urged the arbitrator to proceed to
determine an appropriate amount of royalties. In the
Second Partial Award, the arbitrator appeared inclined to
agree with Hoechst, stating that Rituxan “is produced
with the help of the [patents-in-suit].” The arbitrator did
not, however, decide the issue of liability at that time.
     On remand, Genentech moved the district court to en-
join Sanofi from continuing with the foreign arbitration.
At the motion hearing, the district court stated its belief
that the non-infringement ruling would be dispositive if
applied in the foreign arbitration. Nevertheless, the court
denied the motion, finding that (1) “Genentech has not
shown that the parties are the same, as Hoechst is a party
to the European arbitration, but is not a party to this
litigation,” (2) that “an injunction would frustrate the
policies of [the United States] in favor of enforcement of
forum selection clauses in arbitration agreements,” and
(3) that the injunction would not be in the interest of
international comity. The court observed that as a matter
of U.S. law, Rituxan did not infringe the patents-in-suit,


   3    The district court certified its non-infringement
ruling as final pursuant to Fed. R. Civ. P. 54(b) and
stayed the remainder of the case, including the issue of
invalidity. Sanofi–Aventis Deutschland GmbH v. Genen-
tech, Inc., Nos. C 08–4909 SI, C 09–4919 SI, 2011 WL
839411 (N.D. Cal. Apr. 21, 2011), ECF Nos. 621, 622.
6           SANOFI-AVENTIS DEUTSCHLAND    v. GENENTECH, INC.
but concluded that “[t]o the extent that the arbitration
involves the same infringement questions, under U.S.
law, Genentech can present its arguments to the arbitra-
tor regarding why the judgment of this court should be
respected.”
     On September 5, 2012, the arbitrator issued his Third
Partial Award. See Motion to Take Judicial Notice of
Arbitral Award and Motion to Dismiss on the Papers or
for Lack of Subject Matter Jurisdiction, Sanofi-Aventis
Deutschland GmbH v. Genentech, Inc., No. 2012-1454
(Fed. Cir. Sept. 18, 2012), ECF No. 50, at Ex. A. (“Third
Partial Award”). The arbitrator determined that German
substantive law, not United States patent law, would be
used to determine whether Rituxan was a licensed article
under the Agreement. See Third Partial Award ¶¶ 246-
50, 253, 293. Applying that law, the arbitrator deter-
mined that a drug could be a licensed article even though
it did not contain the patented enhancers, so long as those
enhancers were used in its manufacture. Id. ¶ 283.
Because it concluded that the enhancers were used in
making Rituxan, the arbitrator determined that Genen-
tech was liable for damages under the Agreement. Id.
¶ 331. Arbitration proceedings to determine a damages
amount are ongoing at this time.
    Genentech appeals the denial of its request for an an-
ti-suit injunction. As in the first appeal, we have jurisdic-
tion under 28 U.S.C. § 1295(a)(1).
                        DISCUSSION
                              I
    Genentech asserts that we should apply Federal Cir-
cuit law because the order under review in this case is a
district court’s decision granting, denying, or modifying
an injunction in a patent case. See Int’l Rectifier Corp. v.
Samsung Elecs. Co., 361 F.3d 1355, 1359 (Fed. Cir. 2004).
Genentech observes that although our decision in Katz v.
 SANOFI-AVENTIS DEUTSCHLAND    v. GENENTECH, INC.         7
Lear Siegler, Inc., 909 F.2d 1459, 1462 (Fed. Cir. 1990) is
contrary to its position, the distinction is not relevant
here as both the Ninth Circuit and the Federal Circuit
employ the same legal standard.
    Sanofi contends that the law of the Ninth Circuit ap-
plies and that we should review the denial of an anti-
arbitration injunction for abuse of discretion. Applied
Med. Distrib. Corp. v. Surgical Co., 587 F.3d 909, 931 (9th
Cir. 2009).
    We agree with Sanofi. “For issues not unique to pa-
tent law, we apply the law of the regional circuit in which
this appeal would otherwise lie.” i4i Ltd. P’ship v. Mi-
crosoft Corp., 598 F.3d 831, 841 (Fed. Cir. 2010), aff’d, –––
U.S. ––––, 131 S. Ct. 2238 (2011). The issue before us is
whether an anti-suit injunction should issue, which is not
unique to patent law. See, e.g., E. & J. Gallo Winery v.
Andina Licores S.A., 446 F.3d 984 (9th Cir. 2006) (in-
structing the district court to grant an anti-suit injunction
in a case dealing with wine distribution); Paramedics
Electromedicina Comercial, Ltda. v. GE Med. Sys. Info.
Techs., Inc., 369 F.3d 645, 649 (2d Cir. 2004) (affirming
the district court’s order compelling arbitration and
enjoining a foreign litigation over a sales and service
agreement and a distribution agreement for medical
equipment); Karaha Bodas Co. v. Perusahaan Per-
tambangan Minyak Dan Gas Bumi Negara, 335 F.3d 357,
359-60 (5th Cir. 2003) (vacating an order enjoining a
party from pursuing a foreign suit to enforce a foreign
arbitration award regarding a construction contract). We
therefore apply the law of the Ninth Circuit.
    The Ninth Circuit reviews the grant or denial of an
anti-suit injunction for abuse of discretion. Applied Med.,
587 F.3d at 931. Under Ninth Circuit law, the denial of
an anti-suit injunction will be reversed “where the district
court abused its discretion or based its decision on an
erroneous legal standard or on clearly erroneous findings
8           SANOFI-AVENTIS DEUTSCHLAND     v. GENENTECH, INC.
of fact.” Gallo, 446 F.3d at 989 (quoting Sammartano v.
First Judicial Dist. Court, 303 F.3d 959, 964 (9th Cir.
2002)) (internal quotation marks omitted).
                              II
    It is well-settled that U.S. courts have the power to
enjoin parties from pursuing litigation before foreign
tribunals. See, e.g., Gallo, 446 F.3d at 989; accord Stein
Assocs., Inc. v. Heat & Control, Inc., 748 F.2d 653, 658
(Fed. Cir. 1984). “[I]n evaluating a request for an anti-
suit injunction, [the district court] must determine (1)
‘whether or not the parties and the issues are the same,
and whether or not the first action is dispositive of the
action to be enjoined’; (2) whether the foreign litigation
would ‘frustrate a policy of the forum issuing the injunc-
tion’; and (3) ‘whether the impact on comity would be
tolerable.’” Applied Med., 587 F.3d at 913 (quoting Gallo,
446 F.3d at 991, 994). Genentech argues that each of the
three factors is present in this case.
    As to the first factor, Genentech argues that the issue
in both proceedings is infringement and that the parties
are identical. For the second factor, Genentech argues,
inter alia, that the policy in favor of arbitration does not
apply here, and that res judicata requires us to ensure
that the foreign arbitrator respects the judgments of U.S.
courts. Finally, Genentech contends that enjoining the
foreign    arbitration    would    benefit—not      impair—
international comity. We address each factor in turn.
                              A
    “The first step . . . in deciding if an anti-suit injunc-
tion is appropriate is determining ‘whether or not the
parties and the issues are the same, and whether or not
the first action is dispositive of the action to be enjoined.’”
Applied Med., 587 F.3d at 915 (quoting Gallo, 446 F.3d at
991). The issues need not be identical; it is enough that
they are functionally the same such that the result in one
 SANOFI-AVENTIS DEUTSCHLAND    v. GENENTECH, INC.         9
action is dispositive of the other. Id. If they are not
identical or functionally the same, no injunction will lie.
    Genentech argues that the issues are functionally the
same because the royalty obligation that is the subject of
the foreign arbitration depends upon the same alleged
patent infringement that the Federal Circuit held did not
occur; thus, there is nothing left for the foreign arbitrator
to resolve.
    Sanofi offers several bases for its counter-argument
that the issues are not the same: (1) that the U.S. litiga-
tion involves infringement, while the foreign arbitration is
a breach of contract dispute; (2) that the U.S. litigation
involves only the time after the license was terminated,
whereas the foreign arbitration involves the time up until
the termination; and (3) that the U.S. dispute involves the
application of U.S. patent law, while the foreign arbitra-
tion involves the application of German contract law,
French procedural law, and the rules of the ICC.
    The Ninth Circuit recently addressed anti-suit injunc-
tions in Applied Medical. There, a Californian supplier
entered into a distribution agreement with a Belgian
distributor. The agreement was governed by California
law, and the parties agreed that California courts would
have exclusive jurisdiction over “any dispute arising out of
[the] agreement.” Id. at 911. When the supplier notified
the distributor of its intent not to renew the agreement,
the distributor requested compensation it claimed was
due under a Belgian law. Id. at 912. The supplier de-
clined this request and brought suit in California to
“enjoin [the distributor] from pursuing relief in Belgium
or any other non-California forum under non-California
law.” Id. Subsequently, the distributor filed suit in
Belgium. Id.
   Although Applied Medical dealt with an agreement
under U.S. law and a forum selection clause specifying a
U.S. state, its reasoning is nevertheless instructive. The
10         SANOFI-AVENTIS DEUTSCHLAND   v. GENENTECH, INC.
Ninth Circuit held that the district court had erred by
“requiring that the claims in the domestic and foreign
action be ‘identical’ instead of engaging in the more
functional inquiry concerning dispositiveness required by
Gallo.” 587 F.3d at 914. The functional inquiry required
the district court to “determine whether the issues are the
same in the sense that all the issues in the foreign action
fall under the forum selection clause and can be resolved
in the [U.S.] action.” Id. at 915. Although the Belgian-
law claims were not identical to the U.S. claims, which
were phrased as concerning the limitation on liability
provision of the agreement, the Ninth Circuit determined
that they were functionally the same because they arose
out of the agreement and were subject to the forum selec-
tion clause.
    The instant case presents a mirror image of Applied
Medical: the Agreement is governed by German law, the
forum selection clause specifies arbitration at the ICC,
and the initial suit was brought pursuant to the Agree-
ment in Europe. Had Genentech not terminated the
Agreement, it would be easy to apply Applied Medical to
the facts of this case. Whether Genentech had infringed,
and therefore owed royalties under the Agreement, would
be a claim arising out of the Agreement and subject to the
Agreement’s forum selection clause. 4
    By electing to terminate the license, however, Genen-
tech created a situation where, at least for the period
after it had terminated the license, neither the Agreement
nor the forum selection clause applied, and Genentech
was free to litigate infringement in the United States. It
has done so, obtaining a judgment of non-infringement.


     4  Of course, the license would also be a defense to
infringement. But this simply reinforces the point that
when the license was in effect, the proper forum was the
ICC.
 SANOFI-AVENTIS DEUTSCHLAND   v. GENENTECH, INC.         11
To the extent that that judgment concerns Genentech’s
actions after the Agreement was terminated, it does not
arise out of the Agreement. The question, then, is wheth-
er that judgment is dispositive of the foreign arbitration
for the period during which the Agreement was in effect.
The answer to this question turns on whether the issues
are functionally identical, as described in Applied Medi-
cal.
    We agree with Sanofi that the U.S. judgment of non-
infringement is not dispositive as to breach of the Agree-
ment. As in Applied Medical, the dispute arises out of the
Agreement and is subject to the Agreement’s forum
selection clause. The issue in the foreign arbitration is
breach of the Agreement, not patent infringement. Apply-
ing German law, the arbitrator has already deviated from
U.S. patent law by concluding that infringement is possi-
ble even if the patents are invalid. In addition, the arbi-
trator has adopted a definition of infringement that
includes using the enhancer to produce Rituxan, even if
the enhancer is not in the ultimate product. The arbitra-
tor thus appears to have adopted a definition of infringe-
ment that is both over- and under-inclusive compared to
U.S. law. 5 The district court came to the same conclusion,
stating that “[t]o the extent that the arbitration involves
the same infringement questions, under U.S. law, Genen-
tech can present its arguments to the arbitrator regarding
why the judgment of this court should be respected.” In
our view, this statement correctly recognizes that the
meaning of infringement under the Agreement and the
meaning of infringement under U.S. law are not function-
ally the same.


   5    We also note that Sanofi has not asked the U.S.
courts to decide the meaning of infringement under
German law. See Gallo, 446 F.3d at 991 (“[T]o the degree
that [foreign] law does apply, federal courts are capable of
applying it . . . .”).
12          SANOFI-AVENTIS DEUTSCHLAND    v. GENENTECH, INC.
    Turning to the identity of the parties, Genentech cites
several district court decisions and one Second Circuit
case for the proposition that, under the facts of this case,
we should treat Hoechst and Sanofi as identical parties.
Given that we hold that the issues in this case are not the
same, it is unnecessary to address this argument. We
therefore express no opinion as to the district court’s
reliance on the presence in the foreign arbitration of
Hoechst (who was not a party to the U.S. litigation) to
support the denial of the injunction.
                              B
    The district court’s denial of the anti-suit injunction is
further grounded in the second Gallo factor: whether the
foreign litigation would frustrate a policy of the forum
issuing the injunction. 6 Genentech argues that res judi-
cata requires us to ensure that the arbitrator respects the
judgment of the U.S. courts, and that the U.S. policy in
favor of arbitration does not apply here. Sanofi responds
primarily that the strong interest in enforcing forum
selection clauses requires the injunction to be denied.
    Genentech’s res judicata argument is without merit.
Genentech suggests that the judgment of non-
infringement has res judicata effects on the foreign arbi-
tration. But Genentech is not arguing that the district
court in this case is bound by res judicata—it is in essence


     6  The fact that we discuss the second and third Gal-
lo factors should not be read to imply that an anti-suit
injunction would necessarily be precluded based on those
factors alone in a case where the issues are the same. As
the concurrence correctly observes, this is not such a
case. We express no opinion as to the correct result under
Ninth Circuit law should those circumstances arise in
some future case.
 SANOFI-AVENTIS DEUTSCHLAND     v. GENENTECH, INC.          13
asking us to find that res judicata should apply in another
case, the foreign arbitration. First, Genentech cites no
authority to suggest that res judicata can be applied in
this manner. Second, Genentech asks us to apply res
judicata in a manner that essentially replaces the Ninth
Circuit’s three-factor test in Gallo, effectively nullifying it.
Third, we are persuaded by Collins v. D.R. Horton, Inc.,
505 F.3d 874, 880 (9th Cir. 2007), which Genentech itself
has cited to us, that although arbitrators may not ignore
res judicata, they “generally are entitled to determine in
the first instance whether to give the prior judicial deter-
mination preclusive effect.” This is especially appropriate
here, where there is no reason to believe that res judicata
operates identically under German law. Furthermore,
given that we have acknowledged that the issues are not
the same, and the named parties in the foreign arbitra-
tion are different from those in the U.S. litigation, the res
judicata argument is not persuasive.
    Turning to whether the injunction would frustrate the
policies of the forum, it is undeniable that the United
States has a strong policy in favor of forum selection
clauses. See, e.g., Gallo, 446 F.3d at 992. In both Gallo
and Applied Medical, the Ninth Circuit vindicated this
policy by enforcing U.S. forum-selection clauses by means
of an anti-suit injunction. Although the forum selection
clause in this case weighs against jurisdiction in the
United States, the same reasoning applies: enjoining suit
would undermine the parties’ choice of forum.
    The parties in this case entered into an agreement in
1991 that remained in force until Genentech terminated it
in 2008. They agreed that disputes under that agreement
would be governed by German law and heard by the ICC.
Hoechst remained faithful to that agreement, initially
seeking relief in the ICC after Genentech asserted that
Rituxan and Avastin were not licensed articles. Only
after Genentech terminated the license did the parties
seek relief in a different forum—the United States. To
14           SANOFI-AVENTIS DEUTSCHLAND     v. GENENTECH, INC.
the extent that the parties sought relief for the period
after the license was terminated, there was no frustration
of the policy in favor of enforcing forum selection clauses.
By seeking to impose the U.S. judgment of non-
infringement on the foreign arbitration, however, Genen-
tech effectively asked this court to relieve it of its obliga-
tion to settle such disputes at the ICC. We conclude that
Genentech’s request would frustrate the interest in en-
forcing forum selection clauses, and therefore reject
Genentech’s argument.
                               C
     The third and final factor when reviewing an anti-suit
injunction is “whether the impact on comity would be
tolerable.” Gallo, 446 F.3d at 994. Here, because forum
selection is involved, this factor overlaps with the second
factor. As the Ninth Circuit explained in Applied Medi-
cal:
     [G]lobalization has enhanced the significance of
     international trade, and those in business who
     would trade across national lines confront many
     varying legal systems in different countries. If we
     do not give primacy to parties’ choice of forum and
     choice of law, there will be insufficient certainty to
     foster international trade relations. Conversely,
     so long as the parties have no gross disparity in
     bargaining power, it is difficult to see how holding
     them to their agreed forum and law is not benefi-
     cent.
587 F.3d at 916. As we have explained more fully above,
the parties in this case agreed to the ICC as a forum for
disputes over the license. “In a situation like this one,
where private parties have previously agreed to litigate
their disputes in a certain forum, one party’s filing first in
a different forum would not implicate comity at all.”
Gallo, 446 F.3d at 994.
 SANOFI-AVENTIS DEUTSCHLAND   v. GENENTECH, INC.       15
                      CONCLUSION
    The district court’s denial of Genentech’s request for
an anti-suit injunction was not an abuse of discretion.
None of the three Gallo factors supports the imposition of
the injunction Genentech requests. Accordingly, the
decision of the district court is
                      AFFIRMED.
  United States Court of Appeals
      for the Federal Circuit
                 ______________________

     SANOFI-AVENTIS DEUTSCHLAND GMBH,
               Plaintiff-Appellee,

                             v.

                  GENENTECH, INC.,
                  Defendant-Appellant,

                            AND

                  BIOGEN IDEC INC.,
                       Defendant.
                 ______________________

                       2012-1454
                 ______________________

   Appeal from the United States District Court for the
Northern District of California in Nos. 08-CV-4909 and
09-CV-4919, Judge Susan Y. Illston.
                ______________________

DYK, Circuit Judge, concurring.
     I agree with the majority that the district court did
not abuse its discretion in denying the anti-suit injunction
sought by Genentech. The majority correctly concludes
that the issues litigated in the foreign International
Chamber of Commerce arbitration and the United States
patent infringement proceeding were not identical. Specif-
ically, it concludes that “the U.S. judgment of non-
2          SANOFI-AVENTIS DEUTSCHLAND    v. GENENTECH, INC.
infringement is not dispositive as to breach of the agree-
ment,” Maj. Op. at 11, and that “the meaning of infringe-
ment under the Agreement [arising from German contract
law] and the meaning of infringement under U.S. law are
not functionally the same.” Maj. Op. at 11. Because iden-
tity of issues is a “threshold consideration” that must
necessarily be met before an anti-suit injunction may
issue, see Microsoft Corp. v. Motorola, Inc., 696 F.3d 872,
882 (9th Cir. 2012), the lack of identical issues in the two
proceedings is alone sufficient to demonstrate that the
district court did not abuse its discretion.
     The majority opinion, however, goes on to address the
two remaining factors that are sometimes given some
weight in determining whether an anti-suit injunction
should issue. These issues, as the majority notes, are
“whether the foreign litigation would ‘frustrate a policy of
the forum issuing the injunction’; and . . . ‘whether the
[injunction’s] impact on comity would be tolerable.’”
Applied Med. Distrib. Corp. v. Surgical Co. BV, 587 F.3d
909, 913 (9th Cir. 2009) (quoting E. & J. Gallo Winery v.
Andina Licores S.A., 446 F.3d 984, 991, 994 (9th Cir.
2006)). Here, the majority emphasizes that both the
United States’ “strong policy in favor of the enforcement
of forum selection clauses,” Gallo, 446 F.3d at 992, and
international comity further support the district court’s
ruling.
     However, despite this language, I do not read the ma-
jority as holding that comity and public policies favoring
forum selection clauses necessarily foreclose anti-suit
injunctions where the issues are the same.
    Specifically, there may be instances where, in contrast
to this case, the issues raised and resolved in the U.S.
patent infringement action were identical to those raised
in the international forum. In such instances, the patent
holder should not be allowed to make an end run around
the U.S. determination by later invoking an international
 SANOFI-AVENTIS DEUTSCHLAND   v. GENENTECH, INC.         3
proceeding, and an anti-suit injunction against the foreign
proceeding may be appropriate.
     In cases cited by the Ninth Circuit in Gallo, 446 F.3d
at 995, other circuits have noted that foreign tribunals are
not entitled to deference under comity principles where a
foreign proceeding is a “blatant attempt to evade the
rightful authority of the forum court,” Quaak v. Klynveld
Peat Marwick Goerdeler Bedrijfsrevisoren, 361 F.3d 11, 20
(1st Cir. 2004), or where the foreign suit “is specifically
intended to interfere with and terminate” a suit in the
U.S. courts, Laker Airways Ltd. v. Sabena, Belgian World
Airlines, 731 F.2d 909, 938 (D.C. Cir. 1984). This is espe-
cially the case where the foreign proceeding “could
amount to an unjustified evasion of United States law
injuring significant domestic interests.” Id. There is a
strong U.S. “policy of promoting uniform interpretation
and enforcement of United States patent law.” Deprenyl
Animal Health, Inc. v. Univ. of Toronto Innovations
Found., 297 F.3d 1343, 1356 (Fed. Cir. 2002). Where a
patentee chooses to litigate in a U.S. forum and loses, it
would be unreasonable to give the patentee a second bite
at the apple that would undo the U.S. judgment. This is
not the situation here because of the different issues
involved in the two proceedings, but an anti-suit injunc-
tion may be appropriate in future cases.
