Some New Papers on IP Remedies

1.  Marketa Trimble has published The Territoriality Discrepancy Between Intellectual Property Rights Infringement Claims and Remedies, 23 Lewis & Clark L. Rev. 501 (2019).  Here 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 mentioned an earlier draft of the paper here.

2.  Jason Reinecke has published a note titled Lost Profits Damages for Multicomponent Products: Clarifying the Debate, 71 Stan. L. Rev. 1621 (2019).  Here is a link to the paper, and here is the abstract:

In Mentor Graphics Corp. v. EVE-USA, Inc., the Federal Circuit determined that the “but for” compensatory damages test applies to the calculation of lost profits damages in patent infringement cases involving multicomponent products. The court rejected defendant Synopsys’s argument that because multicomponent products necessarily have many important features beyond the one or two that are infringing, the plaintiff should only be awarded the portion of the compensatory damages apportionable to the infringing features. Although some scholars have supported the decision, many believe that the Mentor Graphics rule will overcompensate patentees, and that an apportionment rule is preferable.

This Note offers a comprehensive economic framework for implementing the Mentor Graphics “but for” compensatory damages scheme in scenarios that were not before the court in Mentor Graphics but which will arise in the future. By exploring the implications of this framework, this Note provides needed clarity to the Mentor Graphics debate. First, it shows that a properly constructed compensatory damages rule and the apportionment rule advocated for by Synopsys and many scholars operate far more similarly than commentators currently believe.

Second, this Note shows that if the proposed framework is adopted, then each of the concerns expressed by scholars over the Mentor Graphics rule would either be alleviated, overstated, or in need of some revision. It concludes by clarifying exactly what might still remain concerning about the Mentor Graphics rule.

I previously mentioned this paper here. 

3.  Veena Tripathi has published a note titled Halo from the Other Side: An Empirical Study of District Court Findings of Willful Infringement and Enhanced Damages Post-Halo, 103 Minn. L. Rev. 2617 (2019).  Here is a link, and here is the abstract:

The United States patent system is designed to reward inventors and patent holders who contribute novel, impactful, and non-obvious work. To maintain this system, Congress authorized damages as a remedy for infringed inventions. Whether compensatory or punitive, the system’s main goal is to prevent the proliferation of unwanted “infringing” behavior. Outside of that guidance, there is little definition of what qualifies as egregious behavior, thereby leaving lower courts significant discretion to decide how much to award in damages. Integral to the allocation of damages is the standard by which courts evaluate egregious, or “willful,” behavior. This standard has changed several times over the past few decades. With its 2016 decision in Halo Electronics v. Pulse Electronics, the Supreme Court provided further guidance to lower courts on how to evaluate claims of infringement. However, critics of Halo argue that the decision did not make a difference in the outcome of cases and the subsequent award of damages. As of yet, there are no comprehensive studies that evaluate the effect of the Halodecision on findings of willfulness and enhanced damages.

This Note fills that void by conducting the first comprehensive empirical study of willfulness and enhanced damages post-Halo. It examines cases from two years before and two years after the Halo decision and asks the question: did Halo matter? Ultimately, the study concludes that findings of willfulness are distinctly different before and after Halo. Additionally, the standard has led to increased findings of enhanced damages. This study concludes by discussing the various implications of the new standard and areas for future research.

I was pleased to supervise Ms. Tripathi's paper during her second year of law school, and to have her as a student in both my patents and patent remedies courses.  Good luck with the bar exam next week!