Thursday, April 15, 2021

Thursday Miscellany

1. Roya Ghafele has published two posts on SEP valuation recently, on the Kluwer Patent Blog () and the IPKat Blog (A view of valuation and licensing of standard essential patents), respectively.  Both discuss the top-down and comparables approaches, and argue that the latter approach in particular would benefit from greater transparency with regard to licensing terms.  (I agree; see here.)

2. There has been a good deal of discussion of the pending Ericsson v. Samsung appeal of Judge Gilstrap's entry of an anti-antisuit injunction relating to Samsung's parallel litigation in China.  For discussion and links to the various briefs, see recent posts by Florian Mueller on FOSS Patents (here, here, here, here and here), and by Dennis Crouch on Patently-O (here).   FOSS Patents also has an interesting post titled Pursuit or threat of antisuit injunction gives rise to strong presumption of implementer's unwillingness to take FRAND license: Munich I Regional Court, and cites to a recent paper by Damien Geradin and Dimitrios Katsifis titled The Use and Abuse of Anti-suit Injunctions in SEP Litigation: Is There a Way Forward?  Here is the abstract for the paper, which is definitely worth a look:

Cross-border litigation over Standard Essential Patens (“SEPs”) entered into a new phase when the English courts decided in Unwired Planet v Huawei they have the power to set the terms of a global license within the context of national patent infringement proceedings. Unwired Planet appears to have unleashed a global race to the bottom and a race to the courthouse, with litigants racing to seize their preferred forum to set global rates while trying to prevent their opponent from bringing proceedings elsewhere through “anti-suit injunctions”, a type of relief traditionally granted by common law jurisdictions, but now increasingly so by other jurisdictions such as China. Yet this is now rarely the end of the matter, with litigants applying for anti-anti-suit injunctions or even anti-anti-anti-suit injunctions.

The purpose of this paper is to explore the new realities in SEP litigation post-Unwired Planet, with a focus on the use of anti-suit injunctions and the corresponding turf war between national courts. After discussing the legal test for granting such relief in various legal systems, the paper discusses the worrying proliferation of anti-suit injunctions across major jurisdictions, noting how this trend wastes judicial resources and may undermine international comity. It considers that in the absence of some form of international coordination, a satisfactory solution is unlikely to emerge in the short term. As a first step, it proposes that governments consider establishing “best practices” on SEP licensing dispute resolution, including on jurisdictional issues such as the scope of licenses fashioned by national courts.

3.  Toshiyuki Kono, Pedro de Miguel Asensio, and Axel Metzger have published a post on Conflict of Laws.Net titled ILA “Kyoto Guidelines on Intellectual Property and Private International Law” published with comments. The post briefly discusses these recently-concluded Guidelines (also referenced in the Geradin & Katsifis paper noted above), and notes that the "Guidelines have now been published with extended comments as a special issue of the Open Access journal JIPITEC:"  I have started reading through them, and have noted that they address among other matters extraterritorial damages for IP infringement--a subject of some of my recent work, more about which next week.   Axel Metzger also has published a write-up on the guidelines on IPKat, here.

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