Monday, September 8, 2014

Monday Miscellany: New Treatise on Global Patent Litigation, Kühnen on EU Border Measures, and More

1.  Bloomberg BNA has published a new treatise by Michael C. Elmer and C. Gregory Gramenopoulos titled Global Patent Litigation:  How and Where to Win.  Here is a link to the website.  According to the description:
    Global Patent Litigation: How and Where to Win is a comprehensive treatise that will assist multi-national companies and their counsel in answering critical questions for implementing an effective global patent litigation strategy. This is the first text on global patent litigation to provide a unique combination of law, strategies, tools and objective matrices for addressing and quantifying the costs, risks and benefits of patent litigation in 16 countries or jurisdictions. . . .
    The new treatise also includes chapters for 16 individual countries, covering each nation’s court structure, as well as main characteristics of patent litigation; infringement conditions and defenses; evidentiary process; preliminary injunction; remedies and damages; compensation of costs; border enforcement; and specific details.
Our library just recently acquired a copy, and I haven't looked it over very carefully yet, but I did cite some of Michael Elmer's previous research on win rates and such in my book.  I also have used the Darts-IP service the authors use, thanks to a complementary subscription from the provider.

2.  Dr. Thomas Kühnen, a presiding judge of the Oberlandesgericht Düsseldorf, has published a paper in the September issue of GRUR (pp. 811-26) titled Die Haftung wegen unberechtigter oder zu Unrecht unterbliebener Grenzbeschlagnahme nach der VO (EU) Nr. 608/2013 (Teil 1) ("Liability for unauthorized or unenforced border measures under Regulation (EU) No. 608/2013, Part 1").  For a bit of background, the aforementioned regulation is Regulation (EU) No 608/213 of the European Parliamanet and of the Council of 12 June 2013 concerning customs enforcement of intellectual property rights and repealing Council Regulation (EC) No 1383/2003.  Articles 27 and 28 read as follows:
    Article 27
    Liability of the customs authorities
    Without prejudice to national law, the decision granting an application shall not entitle the holder of that decision to compensation in the event that goods suspected of infringing an intellectual property right are not detected by a customs office and are released, or no action is taken to detain them.
    Article 28
    Liability of the holder of the decision
    Where a procedure duly initiated pursuant to this Regulation is discontinued owing to an act or omission on the part of the holder of the decision, where samples taken pursuant to Article 19(2) are either not returned or are damaged and beyond use owing to an act or omission on the part of the holder of the decision, or where the goods in question are subsequently found not to infringe an intellectual property right, the holder of the decision shall be liable towards any holder of the goods or declarant, who has suffered damage in that regard, in accordance with specific applicable legislation.
Here is my translation of the abstract of Dr. Kühnen's article:
    Border measures are directed against goods that are suspected of infringing an intellectual property right.  Subsequently it may turn out that there actually was no infringement, in which case the commercial consequences for the victim of the unauthorized seizure can be grave.  On the other hand, the IP owner also can suffer injury to its property, if the Customs Authorities do not take objectively reasonable measures and thus allow, to the detriment of the IP owner, competition from infringing products.  This essay attempts the first systematic analysis of the liability problem.  Part 1 addresses the liability of Customs Authorities.  Part 2 follows up with the liability of movants and of persons entitled to dispose of the property.  
I haven't read the article in full yet and may have more to say about when I have done so.

3. Tyler Dutton has published a student comment in the Emory International Law Review titled Jurisdictional Battles in Both European Union Cross-Border Injunctions and United States Anti-Suit Injunctions.  Here is a link to the paper.  From the Introduction:
    The Apple and Samsung litigation has resulted in more than twenty-two patent cases in six EU member states: twelve in Germany, two in the Netherlands, two in France, two in Italy, three in Spain, and one in the United Kingdom. Although the disputes involve the same technologies, Apple and Samsung must litigate the issue in each country because patent rights can only be enforced within the country that granted the patent. Patent battles, such as those between Apple and Samsung, require a patent owner “to pursue duplicative litigation on a ‘nation-by-nation’ basis, incurring significant costs and draining valuable judicial resources.” This Comment investigates a method courts have used to consolidate patent litigation—the cross-border injunction.
4.  Giordana Mahn has published a student comment in the Loyola University Chicago Law Journal titled Keeping Trolls Out of Courts and Out of Pocket: Expanding the Inequitable Conduct Doctrine.  Here is a link to the paper, and here is the abstract:
    Patent Asserting Entities (“PAEs”), often compared with the mythological troll who lurks under a bridge it did not build, demanding payment from anybody who wants to pass, are criticized for their business model as a type of “holdup” on innovation. They wait until a practicing entity infringes, then demand payment for technology that they did not create. Their critics charge PAEs with stifling innovation, crippling research and development, and chilling healthy competition. And although the courts, Congress, and government agencies identified PAEs as an issue since their recent emergence, current patent laws are ill-suited to limit PAE litigation and combat trolling tactics. Taking advantage of the weaknesses in the United States patent system, PAEs command the attention of alleged infringers as a serious threat to product companies and startups.
    This Comment distinguishes PAEs from Non-Practicing Entities (“NPEs”), focuses on PAEs and their effect on innovation and the public, explains that PAEs are more harmful to public interest and rightly deserve their “troll” moniker, and suggests a solution to limiting their influence. With public interest as the underlying factor, this Comment proposes an affirmative defense—a combination of ideas and themes inherent in patent law with existing doctrines—to extinguish exclusive rights of PAEs by expanding the current definition of inequitable conduct.
5.  Finally, this doesn't concern patent law as such, but in view of my mention last week of a couple of papers on criminal sanctions for IP infringement some readers also may find Thomas Dubuisson's 2012 paper When the World Wide Web Becomes the World Wild Web: PIPA, SOPA, OPEN Act, CISPA and the 'Internet Revolution' of interest as well.  Here is a link to the paper, and here is the abstract:
    It is not a secret anymore: digital technology is transforming copyright, for better and for worse. Infringement is widespread and this situation needs to change. An attempt has already been made in the past. In 1998, congressional enactment of the “anti-circumventions” provisions of the Digital Millennium Copyright Act (DMCA) was a remarkably forward-looking effort to stop copyright infringers and balancing interests of intellectual property (IP) holders and potential innovators. Since then, the Internet has evolved. The creation of a DMCA II was welcome. Instead of going through this “safe” next step, the United States Congress has embarked on a particularly slippery slope. As a result, bills are so repressive today and they may dictate the way the next technologies are going to operate, in whole or in part. The current reality that laws are incapable of catching the development of new technologies, based on the American comedy-drama film “Catch Me If You Can”, is perhaps not a fiction anymore. But not at any price, especially when it affects the Internet democracy.
    In fact, the creation of a global legal framework for intellectual property right protection, particularly for (digital) copyright, needs to meet at least three challenges: the fact that laws change, that laws differ between countries, and that laws are open to interpretation. More precisely, cyberspace “demands a new understanding of how regulation works. It compels us to look beyond the traditional lawyer’s scope – beyond laws, or even norms. It requires a broader account of “regulation”, and most importantly, the regulation of a newly salient regulator.” SOPA and PIPA demonstrate how difficult it is for an established democracy to protect both intellectual property and the fight for the intellectual freedom on the Internet.
    This research paper will be devised in five parts. The first part will analyze the legal issues of these controversial bills and more precisely the sections concerning copyright infringement. The second part will address how the OPEN Act might be a respectable middle in comparison to SOPA and PIPA and what are the legal solutions proposed in this bill. The third part briefly concerns the new method to prevent cyber-attacks, through CISPA, with its impact on intellectual property rights. The fourth part will discuss the recent developments in Europe with ACTA, namely the issues concerning the European ratification and the future of ACTA in the world. Finally, the fifth part will be devoted to the online and offline Internet revolution/Internet blackout that occurred in January and February 2012.   

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