New Book on Enforcement of IP Rights in the EU

Flip Petillion has published an edited volume titled Enforcement of Intellectual Property Rights in the EU Member States (Intersentia Ltd 2018).  Here is a link to Intersentia's webpage, and here is the book description:

Enforcement of Intellectual Property Rights in the EU Member States provides a timely overview and thorough analysis of intellectual property rights enforcement in the EU Member States. Taking legal action in one or several countries in the EU to enforce intellectual property rights is quite a challenge. The adoption of European Directive 2004/48/EC on the Enforcement of Intellectual Property Rights was meant to put a halt to considerable discrepancies in national legislations which caused uncertainty and a difference in enforcement between the EU Member States. The Enforcement Directive aimed to create a level playing field and to ensure a high, equivalent and homogeneous level of intellectual property protection across the EU.

Over the past decade, the Enforcement Directive has been transposed into all EU Member States, in national legislation and through its application in national and EU case law. Both are essential to understand the Enforcement Directive’s actual scope of application. In order to prepare and undertake an action in different countries – potentially simultaneously – knowledge of national legislation, local custom and practice, as well as procedural law, national and EU case law is essential.

This book is a collaborative effort of lawyers from top tier firms from all 28 EU Member States. It is a valuable resource for both practitioners – who are active cross-border and internationally – and general counsel – who seek an in-depth analysis of the legal landscape across the EU.

For a review on the IPKat Blog, see here.

Vigand and Raynard on the Cour de Cassation's Profits Decision

In March I blogged about a recent decision of France's Cour de Cassation, Carrera SARL et Texas de France SAS v. Muller et Cie, PIBD No. 1112, III, 120 (Jan. 23, 2019), which held that a court may take into account the defendant's profits attributable to the infringement in a case brought by a nonpracticing patent owner, and that the owner is not limited to a reasonable royalty.  The May 2019 issue of Propriété Industrielle (pp. 21-25) includes the text of the decision, with commentary by Privat Vigand and Jacques Raynard.  Although the authors disagree with the court's conclusion on liability, they approve of the court's decision on damages, noting that an NPE may suffer economic harm (in the form of lost payments from its licensees, or loss of sales on products that compete with or substitute for the infringing product), and that allowing the court to consider the defendant's profit may enable the compensation of these losses.  The authors also note that, while the court indicated that damages for moral prejudice might be appropriate when, for example, the patent owner suffers a loss to its reputation, there was a failure of proof on this heading here.   

My Law360 Article on Makan Delrahim's OECD Speech

My article on Makan Delrahim's June 6, 2019 OECD speech, titled Delrahim’s Antitrust Approach To FRAND Still Problematic, is now available on Law360, and also here. Enjoy!

And now, I really will start that blogging break . . .

Delrahim's OECD Speech on FRAND; New FRAND Decision from Germany

I will be taking a blogging break next week (June 10-15).  Before I go, here a couple of items that readers might find interesting:

1.  U.S. Antitrust Division chief Makan Delrahim delivered a speech titled “Don’t Stop Thinking About Tomorrow”: Promoting Innovation by Ensuring Market-Based Application of Antitrust to Intellectual Property, at an OECD Roundtable held in Paris yesterday.  Here is a link to the speech, in which Mr. Delrahim reiterates his view that "violating a FRAND commitment, by itself, should not give rise to an antitrust claim."  And here is a link to the OECD webpage titled "Licensing of IP rights and competition law," which includes short video takeaways from Koren Wong-Ervin and Herbert Hovenkamp, and links to other supporting materials.

2.  On the Kluwer Patent Blog, Thomas Musmann has published a post titled The ‘Non-Discriminatory’ Prong is ‘Essential’ to FRAND Evaluation – Unwired Planet v Huawei – Oberlandesgericht Düsseldorf.  Mr. Musmann discusses a March 22, 2019 decision of the  Oberlandesgericht Düsseldorf.  I haven't read the decision yet myself (link here, in the original German), but according to Mr. Musman, among the key takeaways are that (1) Unwired Planet is bound by the FRAND commitment made by its assignor, Ericsson; (2) that the assignor's licensing practices "set[ ] the benchmark for the [nondiscriminatory] prong for any future licenses";  (3) "the assignee cannot deviate from the license practice of the previous SEP owner unless there are objective reasons justifying the different treatment, for which the SEP owner has the burden of proof"; (4) the SEP owner must "disclose the content of all license agreements that the current and the previous SEP owner concluded," notwithstanding confidentiality agreements; and (5) German courts will require strict compliance with the Huawei v. ZTE back-and-forth of offer, counteroffer, etc. (in contrast to the English courts' view of that procedure as a "safe harbour").  This case will now go on to the BGH, where two Sisvel v. Haier FRAND cases are already pending.

More Commentary on FTC v. Qualcomm

1.  Erik Hovenkamp has posted an essay titled FTC v. Qualcomm: New Frontiers in the Antitrust-IP Interface, forthcoming in Regulatory Review, on ssrn.  Here is a link, and here is the abstract:

The Federal Trade Commission recently scored a substantial victory in its antitrust suit against Qualcomm. The case represents a novel confluence of standard-setting and IP licensing issues with bedrock antitrust subjects: tying and exclusive dealing. It also takes a surprising turn in resuscitating the long-dormant doctrine of the antitrust “duty to deal.” In this short essay, I review and evaluate the court’s decision in FTC v. Qualcomm. The analysis of Qualcomm’s exclusive dealing is sound and very likely correct. However, the court’s duty-to-deal analysis sits on shakier ground, omitting consideration of potential immunity under the Patent Act and sidestepping thorny questions on the appropriate source of law. 

2.  For a decidedly different view of the case, see, e.g., Jonathan Barnett's post titled Qualcomm ruling a case of antitrust gone wrong on The Hill; James Edwards's post titled Restoring IP Rights After the Destructive, Unjust Antitrust Rendering in FTC v. Qualcomm, on IP Watchdog; Richard Epstein's post Judge Koh Is No 5G Wiz, on Defining Ideas:  A Hoover Institution Journal; and Adam Mossoff's post on the Federalist Society Blog titled An Unprecedented Conflict Between the FTC and DOJ at the Intersection of Antitrust and Patent Law.  

3.  Amy Gallegos and Julia Kim Hirata published an expert analysis on Law360 titled Cooperating With Competitors In The Wake Of Qualcomm.  The article concludes with five takeaways for attorneys advising clients on how to avoid liability for refusing to deal.

4.  For recent expressions of my own views, see here and here.

Wang on China's New Preliminary Injunction Provisions

Zhengzhi Wang has published an article titled A New System for Preliminary Injunctions in the Intellectual Property Law in the May 2019 issue of the German law journal GRUR Int. (pp. 463-67).  The article (which is in English, not German) provides a detailed overview of the "Provisions of the Supreme People's Court Concerning Application of Law Regarding Behavior Preservation in the Examination of Intellectual Property Dispute."  As the author explains, the concept of "behavior preservation" is "similar to that of a preliminary injunction in a common law system," in that "a party is specifically asking the court to require or refrain an averse party from engaging in certain activities."  The article includes a translation of and commentary on each of the 21 articles of the Provisions.  Article 7 lists the factors courts should take into account in deciding whether to grant a preliminary injunction (factual and legal basis, irreparable harm, balancing, public interest), and article 10 goes into more specifics on the meaning of irreparable harm.   Article 11 discusses security, and articles 16 and 18 the consequences of a wrongly issued preliminary injunction.  The provisions went into effect on January 1.

For previous discussion on this blog, see this post and the accompanying comment by Mark Cohen.

Landers on Proximate Cause and Patent Law

Amy Landers has posted a paper on ssrn titled Proximate Cause and Patent Law, forthcoming in the Boston University Journal of Science & Technology Law.  Here is a link to the paper, and here is the abstract:

The U.S. Supreme Court’s WesternGeco LLC v. ION Geophysical Corp. decision provides the opportunity to open a policy space for proximate cause in patent litigation. As the country’s highest Court has pushed patent law, as well as other statutory torts, in the same direction as other civil causes of action, the full adoption of proximate cause in all monetary forms of recovery appears to be inevitable. At this time, a full adoption of this complex, multidimensional requirement will allow the patent system to resolve several troubling existing problems, including the appropriate extraterritorial reach of the system. Properly implemented, proximate cause in patent law can resolve other difficulties that are explored in this article. These include accounting for the social benefits of infringing implementations, the multiple serial plaintiff problem, and the problem of patent infringement actions brought against end-user consumers as some examples. As the patent system joins other civil causes of action in implementing proximate cause, it is likely that other problems can be implemented and resolved so long as the standard is modified to account for the unique policy problems of the patent system.

The article reviews a good deal of case law and scholarship on proximate cause generally, before reaching its conclusions that, among other things, the Supreme Court's opinion in WesternGeco and Judge Stark's opinion in Power Integrations are incorrect.  (I respectfully disagree, see here.)