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
Seminar

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

Speakers
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
WC2R 2LS
The event will be followed by a drinks reception

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!

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 Saunders, Wilmer 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.

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 4iPCouncil.  Here 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.

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 

Luca Ghedina, National Patent Litigation-Italy

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

Nongfan Zhu, National Patent Litigation-China

Yasufumi Shiroyama, National Patent Litigation-Japan

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

Darrell Low, National Patent Litigation-Singapore

Bradley Lui, Arbitration & Mediation-ICC Patent Arbitration

Gustavo Moser, WIPO: Resolving Cross-Border Patent Disputes Through Mediation And Arbitration

John Paul and D. Brian Kacedon, Recent U.S. Court Decisions and Developments Affecting Licensing

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. 

Upcoming Lecture on "Patent Wars"

I will be presenting a free public lecture on my book Patent Wars:  How Patents Impact Our Daily Lives, at John Marshall Law School in Chicago on Wednesday, February 27, at 1:15 p.m.  Here is a link if you wish to register in advance; 1.5 CLE credits are pending.  Here is the description:

Patents are ubiquitous in contemporary life. Practically everything we use incorporates one or more patented inventions, and recent years have witnessed epic disputes over such matters as the patenting of human genes, the control of smartphone design and technology, the marketing of patented drugs, and the conduct of "patent trolls" accused of generating revenue from nuisance litigation. But what exactly is a patent? Why do governments grant them? Can patents simultaneously encourage new invention, while limiting monopoly and other abuses?

In Patent Wars, Professor Thomas F. Cotter, one of America's leading patent law scholars, offers an accessible, lively, and up-to-date examination of the current state of patent law, showing how patents affect everything from the food we eat to the cars we drive to the devices that entertain and inform us. Beginning with a general overview of patent law and litigation, the talk addresses such issues as the patentability of genes, medical procedures, software, and business methods; the impact of drug patents and international treaties on the price of health care; trolls; and the smartphone wars. Taking into account both the benefits and costs that patents impose on society, Cotter highlights the key issues in current debates and explores what still remains unknown about the effect of patents on innovation.

Also, if any of you are so moved, please note that the IPKat Blog is conducting a vote for IP books of the year, and that Patent Wars is one of four up for consideration as best patent book of the year.   I believe that voting will be conducted through next Thursday, January 10.

My Most Recent Op-ed, "Atlas Isn't About to Shrug Over Current IP Laws"

The Hill just published my op-ed, titled Atlas isn't about to shrug over current IP laws, which argues against the opinions of some conservative and libertarian commentators that this past decade's reforms to U.S. patent law are undermining innovation.  See what you think.