Monday, January 21, 2019

Bechtold, Frankenreiter & Klerman on Forum Selling Abroad

Stefan Bechtold, Jens Frankenreiter and Daniel Klerman have posted a paper on ssrn titled Forum Selling Abroad, 93 Southern California Law Review __ (forthcoming 2019).  Here is a link to the paper, and here is the abstract:
Judges decide cases. Do they also try to influence which cases they decide? Clearly plaintiffs “shop” for the most attractive forum, but do judges try to attract cases by “selling” their courts? Some American judges actively try to enlarge their influence by making their courts attractive to plaintiffs, a phenomenon known as “forum selling.” This article shows that forum selling occurs outside the U.S. as well, focusing on Germany, a country that is often held up as the paragon of the civil law approach to adjudication. As in the U.S., German courts attract cases primarily through the pro-plaintiff manipulation of procedure, including the routine issuance of ex parte injunctions in press cases and refusal to stay patent infringement proceedings when the patent’s validity is challenged in another forum. A critical difference between forum selling in Germany and the U.S. is that court administrators are more actively involved in Germany. As state officials, German court administrators have the incentive to consider the effect of caseloads on government revenue and the local economy, and they use their power to allocate judges to particular kinds of cases in order to make their courts attractive. They also use their power over promotion, case allocation, and resources to reward judges who succeed in attracting cases. Based on an extensive set of interviews with attorneys, judges and court officials, this article describes evidence of forum selling in German patent, press, and antitrust law. It also analyzes how German courts compete internationally with courts from other countries.

This is a very interesting paper.  The authors conclude that the prevalence of patent litigation filed in Düsseldorf, Mannheim, and Munich. is attributable not only to the quality and speed of decisions, but also to such matters as the courts' reluctance to issue stays of judgments pending invalidity proceedings (coupled with the perceived inadequacy of damages for wrongful enforcement in the event the patent is subsequently invalidated), and their reluctance to appoint expert witnesses (which, when it occurs, slows things down considerably).

Thursday, January 17, 2019

Trimble on Territoriality and Remedies

Marketa Trimble has posted a paper on ssrn titled The Territoriality Discrepancy Between Intellectual Property Rights Infringement Claims and RemediesHere is a link to the paper, and here is the abstract:
When in Equustek v. Google a Canadian court ordered that Google de-list the pages of a defendant that infringed intellectual property (“IP”) rights under Canadian law, some commentators were surprised not only by the Canadian court’s assertion of personal jurisdiction over Google (a U.S. third party who was not a party to the original Canadian IP rights infringement litigation), but also by the court’s issuance of a remedy with global effects. However, global and other extraterritorial remedies are not unknown in IP rights infringement cases: U.S. courts have granted extraterritorial remedies in a number of such cases. This article reviews the various types of “extraterritorial remedies” – which the article defines as remedies that reach beyond the territorial scope of the underlying claim – and points out the problems caused by the resulting territorial discrepancy between the territorial scope of claims and the territorial scope of the remedies. The existing literature and international treaty negotiations have not focused on these remedies, which are typically discussed as part of the category of cross-border remedies. The article explores the phenomenon of the territorial discrepancy and considers the ways in which the problems generated by the territorial discrepancy might be addressed. 
I read through this paper last week, and found it very helpful as I try to organize my own thoughts for presentations I will be giving next month in Tokyo and Nagoya, Japan (the details of which I hope to blog about shortly).

Tuesday, January 15, 2019

Upcoming Conference on FRAND and Excessive Pricing

Hat tip to Professor Danny Sokol, for calling this event to my attention on the Antitrust & Competition Policy Blog.  Two of the three speakers, Professors Alison Jones and Renato Nazzini, are also the authors of chapter 6, "The Effect of Competition Law on Patent Remedies," in the forthcoming edited volume Patent Remedies and Complex Products:  Toward a Global Consensus (Brad Biddle, Jorge L. Contreras, Brian J. Love & Norman V. Siebrasse eds., Cambridge Univ. Press), which I have mentioned before (see here, with links to drafts of all of the chapters).  Anyway, this sounds like it will be an interesting discussion; wish I could attend.  To register, click here.

Centre of European Law
The Dickson Poon School of Law

New Frontiers at the Crossroads between IP and Competition Law; FRAND and Excessive Pricing

Gabriella Muscolo, Commissioner, Italian Antitrust Authority
Renato Nazzini, Professor of Law King's College London
Professor Alison Jones, Professor of Law, King's College London in the Chair

18.00 -19.15
Edmond Safra Lecture Theatre
King's College London
Strand, London
The event will be followed by a drinks reception

Monday, January 14, 2019

China Weighs Quintuple Damages for Willful Patent Infringement

The ChinaIPR Blog recently published a couple of posts on proposed revisions to China's patent law (see here and here; see also Erick Robinson's post on the China Patent Blog here).  The second of these links to an unofficial English-language translation.  The proposed amendment to the damages provision (renumbered article 72) provides that "For willful patent infringement with serious circumstances, the amount of compensation shall be determined ranging from one to five times of the amount of compensation determined by the preceding methods," and increases the amount of statutory damages from "no less than RMB 10,000 and no more than RMB 1,000,000" to "no less than RMB 100,000 and no more than RMB 5,000,000."  I don't know of any other country that authorizes quintuple damages for patent infringement!

Friday, January 11, 2019

IP Chat Channel Webinar on Extraterritorial Liability

On Thursday, January 17, from 2-3 p.m. Eastern Time, the IP Chat Channel will be hosting a webinar titled Extraterritorial Liability:  Spotlight After WesternGeco.  Here is a link, and here is the description:
The case law regarding extraterritorial liability for patent infringement is extraordinarily complicated ‒ and evolving.
Last year the Supreme Court decided WesternGeco v. ION, widening the scope of 35 U.S.C. § 271(f) by holding that once a domestic act of infringement has been proven under § 271(f)(2), damages resulting from the infringement may be recoverable regardless of where they occur in the world.
This month the Supreme Court asked for the views of the Solicitor General regarding the cert. petition in Texas Advanced Optoelectronic Solutions v. Renesas Electronics America.  That case challenges the holding in TransOcean v. Maersk, a 2010 Federal Circuit opinion that found an offer to sell was “within the United States,” even though negotiation and execution of the contract took place abroad, when the two contracting entities were U.S. companies and delivery was to be in the U.S.
Our panel of experts will discuss how district courts have applied WesternGeco to date (including in Power Integrations v. Fairchild in the District of Delaware) and the open questions that remain. They will analyze the case law concerning extraterritoriality at both the Supreme Court and the Federal Circuit. In addition, they will also address the challenges in litigating these issues. The cases to be discussed include:
·     Halo v. Pulse (Fed. Circ. 2014)
·     NTP v. Rim (Fed. Circ. 2005)
·     Microsoft v. AT&T (S. Ct. 2007)
·     Cardiac Pacemakers v. St. Jude Medical (Fed. Circ. 2009) and
·     Life Technologies v. Promega (S. Ct. 2017)
Speakers will include:
  • Danielle Joy Healey, Fish & Richardson, PC
  • Prof. Timothy Holbrook, Emory University School of Law
  • Thomas SaundersWilmer Cutler Pickering Hale and Dorr, LLP
*                     *                     *
In related news, the Federal Circuit this morning, on remand from the Supreme Court, remanded WesternGeco v. ION back to the district court to consider whether the lost profits award the district court originally awarded still stands, following the invalidation of all but one of the patent claims in suit.  Opinion here.

Wednesday, January 9, 2019

Scharen on Injunctions in German Patent Litigation

Uwe Scharen, a retired presiding judge of the German Federal Supreme Court, has published an article titled Zur Praxis der gerichtlichen Geltendmachung des Verlangens nach Unterlassung von Patentverletzungen ("On the judicial enforcement of claims for enjoining patent infringement"), in the September 2018 issue of Mitteilungen der deutschen Patentanwälten (pages 369-79).  The essay was commissioned by the 4iPCouncilHere is the abstract (my translation):
The essay comprises a practice-oriented overview of first instance patent infringement actions, insofar as they are directed to injunctive relief, including proceedings for preliminary injunctions.  On the basis of case law through the end of 2017, the essay discusses the typical course of both proceedings as well as the requirements and possibilities for both parties, in particular those for averting an injunction.
Anyone hoping that the essay might suggest some movement on the part of the German judiciary towards a more flexible standard for  awarding injunctions will be disappointed.  Upon review of the statutory provisions and the case law, Judge Scharen argues that German judges cannot use article 3(2) of the Enforcement Directive (which states that measures, procedures, and remedies for the enforcement of IP rights shall be "effective, proportionate, and dissuasive," my emphasis) as authority for restricting injunctive relief in patent cases.  Instead, the courts are limited to a small number of established exceptions for which the requirements are strict.  These include compulsory licensing in the public interest (possible, but so far rare); the possibility that an injunction might be denied if the patent owner has acted in bad faith, e.g., by delaying the commencement of proceedings against an infringer who has reasonably relied on the owner's inaction (also rare); the competition-law defense as recognized by the CJEU in Huawei v. ZTE and interpreted by the lower courts in Germany; and (maybe) some sort of abuse of right defense, the contours of which in patent cases is at present unclear.  Judge Scharen also notes that, while the Federal Supreme Court's 2016 decision in Wärmetauscher envisions the possibility of courts granting an Aufbrauchfrist (essentially, a stay pending design-around) under appropriate circumstances, those circumstances are exceptional.  (For previous discussion on this blog of the Aufbrauchfrist, see here, here, and here.  I hope to have a little more to say about this topic in a forthcoming post.)  Judge Scharen closes this portion of the essay by stating that:
The literature has considered whether, and if so under what circumstances (for example, a plaintiff that hasn't incurred any R&D expenses of its own), the good-faith principle prevents a nonpracticing entity from demanding an injunction, or whether an injunction should be denied if the protected subject matter is merely a minor component of a complex device the demand for which is driven by other subject matter.  To date, it is clear that injunctive relief has not been denied on these grounds (p.374, my translation).
There is also a discussion of stays pending revocation proceedings and stays pending appeal, as well as (as the abstract suggests) a discussion of preliminary injunctions.

Monday, January 7, 2019

les Nouvelles Issue on International Patent Enforcement

The December 2018 issue of les Nouvelles, a publication of the Licensing Executives Society International, is devoted to the subject of international patent enforcement.  Here is a link to the publication's webpage, from which subscribers can access the entire issue, including individual articles address the topic of national patent litigation in the U.S., Germany, France, the Netherlands, the U.K., Italy, Spain, China, Japan, South Korea, and Singapore.  Almost all of the papers in this issue are also freely available on ssrn, however, to wit:

Sherry Rollo & Julianne Hartzell, National Patent Litigation-United States 

Tilman Müller-Stoy & Alexander Haertel, National Patent Litigation-Germany

Emmanuel Gougé and Léonore Isnard, National Patent Litiation-France

Jaap Bremer & David Mulder, National Patent Litigation-The Netherlands

Ian Kirby & Jennifer Dixon, National Patent Litigation-United Kingdom 

José-Miguel Lissén Arbeloa and Álvaro de Castro, National Patent Litigation-Spain

Kijoon Kang & Hankil D. Kang, National Patent Litigation-South Korea 

I haven't read any of these yet myself, so I can't offer any evaluation, but I would think they may be a useful source of information.  For some other recent summaries, see my post on a series published last year on Law360