Federal Circuit Affirms Denial of Preliminary Injunction in Phillips v. Thales

The opinion is here.  Thales had sought a preliminary injunction prohibiting Phillips from seeking an exclusion order from the ITC.  The Federal Circuit affirms the order of the District of Delaware (where a FRAND trial is pending) denying a preliminary injunction, stating:

 

“A party seeking a preliminary injunction must establish that it is likely to suffer irreparable harm without an injunction.  .  .  .  The mere possibility or speculation of harm is insufficient.  .  .  .  Evidence of speculative harms, such as customers merely expressing concern that a potential future ITC exclusion order could affect Thales’ ability to deliver products down  the road, is insufficient to show a likelihood of irreparable harm. .  . .

 

“. . . Thales did not present any evidence that it lost customers, had customers delay purchases, or struggled to acquire new business because of the ongoing ITC proceedings. . . . Instead, it presented affidavits stating only that the threat of an ITC exclusion order caused several customers to ‘voice concerns’ and express doubt regarding Thales’ ability to deliver products. . . . And during oral argument, it characterized its alleged harm as living under the ‘cloud on the business’ of a potential exclusion order and the potential loss of business that may occur if it loses at the ITC. . . . This type of speculative harm does not justify the rare and extraordinary relief of a preliminary injunction” (pp. 4-5).

 

Not exactly a big surprise, given that the ITC last week issued its Initial Determination terminating the ITC investigation, as discussed on FOSS Patents, though the Federal Circuit doesn’t mention this.  A reversal on appeal is always a possibility, I suppose, but at this point the alleged harm does seem rather speculative. 

From Around the Blogs, Part 2

1.  On Law360, Charlotte Jacobsen, Filko Prugo, and Ryan Sullivan published an article titled Does Willful Blindness Beget Enhanced Patent Damages?  The article notes that, under the Federal Circuit's January 2020 decision in Eko Brands LLC v. Adrian Rivera Maynez Enterprises Inc., the trier of fact determines whether the infringement was "willful," a concept that "requires a jury to find no more than deliberate or intentional infringement."  Citing that case, the authors then state that if the jury finds the infringement to have been willful, then "the court must consider whether the infringer's conduct was egregious and worthy of punishment."  The question the authors address is whether "willful blindness" can substitute for knowledge of the patent.  They review the district court cases that have discussed this topic, and which have concluded that an allegation of willful blindness is sufficient to get past a motion to dismiss a request for enhanced damages.  As the authors note, however, the courts so far have not addressed whether willful blindness is enough to demonstrate egregiousness.  The authors conclude with a couple of best practices for patent litigators who have to grapple with these issues.

I may seek permission to include this article in the next revision of my patent damages casebook; it's quite informative. 

For previous discussion of the willful blindness issue on this blog, see here and here. 

2.  IPWatchdog published an interesting pair of articles taking opposite positions on whether eBay should be overruled.  Arguing in favor was IPWatchdog founder Gene Quinn (see here); arguing against, Evan Langdon (see here).    

3.  On the Kluwer Patent Blog, Anders Valentin published a post titled The Danish Maritime and Commercial High Court dismisses claim regarding preliminary injunction with extraterritorial effect.  As the author states, "the decision shows that there are strict criteria [that] must be met in order to obtain a preliminary injunction with extraterritorial effect."  For previous discussion of cross-border preliminary injunctions within the E.U., see, e.g., here; see also my comparative patent remedies book at p.253

From Around the Blogs, Part 2

1.  Sarah Burstein published a post on Patently-O titled Against the Design Seizure Bill.  As the titled suggests, the post argues against passage of a bill, the Counterfeit Goods Seizure Act of 2019, which "would allow Customs and Border Patrol (CBP) to seize goods accused of design patent infringement."  Professor Burstein contends, inter alia, that the bill would "allow design patent owners to foist their private enforcement costs onto taxpayers, under circumstances that are unlikely to result in accurate determinations of infringement," and elaborates on three specific reasons why she believes the bill is a bad idea.  The post also cites some other commentary on the bill, both pro and con, including this piece by Josh Landau.

2.  On Kluwer, Enrico Bonadio and Luke McDonagh have published a post titled 2020 is set to be a crucial year for Standard-Essential Patent litigation in Europe.  The post asserts that "a further reference to the CJEU during 2020 will have to be made in order to resolve the tensions between the German and Dutch approaches," and also discusses the pending Unwired Planet case in the U.K.

3.  On Law360, Dorothy Atkins published a post titled Baker Botts Atty Says Halo Drastically Titled Patent Trial Odds.  The article summarizes a presentation given by Wayne Stacy at the 20th Annual Berkeley-Stanford Advanced Patent Law Institute, asserting that "since Halo put the question of willfulness to jurors, there's been a shift in the plaintiff's favor when willfulness is on the verdict form, increasing plaintiff's wins from 48% before Halo to 78% after Halo."  The presentation slides are available on the Institute's webpage here.  That webpage also links to slides from a presentation by Alyssa Caridis titled Exceptional Cases - Five Years After Octane Fitness, which states inter alia that "In the last 5 years, courts deemed 200 cases exceptional and awarded fees," and that "when a court renders a decision on the merits (as compared with deferring or dismissing as moot) exceptional case filings have a 34 percent success rate"; slides from another presentation (given by Hon. Susan van Keulen and Paul Bondor, and moderated by Greg Pinsonneault) titled Damages Contentions:  Theory and Practice; and from a presentation (by DJ Healey, Celeste Savaria, LauraStorrto, and Ellisen Turner) titled FTC vs. Qualcomm and Other Recent Antitrust Developments in High Tech and Life Sciences.

4. Also on Law360, Dan Werner published an expert analysis titled Latest Daubert Cases, Econ Studies Hold IP Damages Lessons.  The article discusses four recent U.S. district court decisions addressing the use of forward citation analysis as an aid in determining patent valuation/damages.  The article also cites to an article that was published last year that I had overlooked, Peter Malaspina's Patent Citation Analysis and Patent Damages, 18 Chi -Kent J. Intell. Prop. 232 (2019).

5.  Although it's not directly relevant to patent remedies, Amy Howe's Scotus Blog post titled FTC files own petition, suggesting divide in federal government may be of interest to readers of this blog.  The post discusses some recent Supreme Court cert petitions addressing the question of whether the Federal Trade Commission Act authorizes courts to award restitution (for example, of money obtained through deceptive advertising).  Apparently the FTC and the Solicitor General are taking different positions on whether the question is ready for Supreme Court review.  Also of interest, for those interested in FTC matters, are articles on Bloomberg and Law360 discussing Axon Enterprises' recent argument before a district court challenging the constitutionality of the structure of the FTC.

Three New Papers on FRAND/SEP Issues

1.  Josh Lerner, Haris Tabakovic, and Jean Tirole have posted a paper on ssrn titled Patent Disclosures and Standard-Setting.  Here's a link to the paper, and here's the abstract:

A key role of standard setting organizations (SSOs) is to aggregate information on relevant intellectual property (IP) claims before deciding on a standard. This article explores the firms’ strategies in response to IP disclosure requirements — in particular, the choice between specific and generic disclosures of IP — and the optimal response by SSOs, including the royalty rate setting. We show that firms with a stronger downstream presence are more likely to opt for a generic disclosure, as are those with lower quality patents. We empirically examine patent disclosures made to seven large SSOs, and find results consistent with theoretical predictions.

2.  David J. Teece and Edward Sherry have posted a paper on ssrn titled Public Policy Evaluation of RAND Decisions in Apple v. Motorola, Motorola v. Microsoft, In re Innoatio, and Ericsson v. D-Link.  Here is a link to the paper, and here is the abstract:

The recent decisions in the Apple v. Motorola, Motorola v. Microsoft, In Re Innovatio, and Ericsson v. D-Link cases have offered much-needed guidance on U.S. courts’ interpretation of what constitutes F/RAND licensing terms in the standard-setting context. In this paper, we have discussed the implications of these rulings from the perspective of economics and public policy. The courts have generally relied on modified versions of the criteria used in determining “reasonable royalty” patent infringement damages. Whereas some of these proposed modifications are sensible in our view, others are inconsistent with generally accepted economic principles and are likely to have an adverse effect on incentives to innovate.

For my take on these cases, see, e.g., this paper coauthored with Norman Siebrasse. 

3.  Elizabeth I. Winston has posted a paper titled Standard Essential Patents at the United States International Trade Commission.  Here is a link to the paper, and here is the abstract:

The United States International Trade Commission (“ITC”) investigates alleged trade violations of Section 337 of the Tariff Act of 1930, as amended (19 U.S.C. § 1337) including importation of products infringing patents. This paper seeks to explore the role of the ITC in protecting domestic industry when infringement of standard essential patents is alleged. The ITC exists to protect domestic industry, and not the patent. The holder of a patent that proves injury to domestic industry must be able to obtain an exclusion order from the ITC, unless the exclusion order is contrary to the public interest, regardless of whether the patent is found subject to licensing requirements as a standard essential patent. An exclusion order is a statutory mandate that can be overcome only by evidence that the statutorily enumerated public interest factors are frustrated. A determination that a patent is a standard essential patent does not preempt the statute. The availability of an exclusion order remains critical to a continuing balance of encouraging contribution to standard setting bodies, while still allowing access to standards, preventing unfair competition and protecting our domestic industry.

For what it's worth, my own views are somewhat different, see, e.g., here.

Interesting IPKat Blog Post on U.S. Hearings on the ITC

Yesterday the IPKat Blog published a very interesting post on Thursday's hearing before the U.S. House of Representatives' Courts, Intellectual Property and the Internet Subcommittee on a bill that might make it somewhat more difficult for nonpracticing entities to proceed with investigations before the International Trade Commission (ITC).  (For readers who aren't familiar with the ITC, it's a federal agency that can investigate and adjudicate complaints involving allegedly infringing imports into the United States.  A majority of ITC investigations run parallel with patent infringement litigation in U.S. district courts; but unlike the district courts the ITC is not bound by the eBay decision, and a form of injunctive relief known as an exclusion order is the remedy the ITC usually enters with respect to infringing merchandise.)  The post has links to the various witness statements--including one filed by Professor Fiona Scott Morton asserting that "the availability of exclusion orders from the U.S. International Trade Commission (“ITC”) in cases in which an injunction would not be granted by Federal courts runs contrary to the public interest by allowing patent assertion entities (“PAEs”) to forum-shop and earn supracompetitive royalties"--and to the video of the entire proceeding (which I have not watched yet).  According to the author of the post, the subcommittee seems to favor reining in the ITC, perhaps beyond the limited steps contemplated by the draft bill that was the ostensible subject of the hearing.  For what it's worth, my own view is that the U.S. probably could do without this parallel forum for adjudicating IP disputes, as discussed here.  

Though not related to patent remedies, IPKat also has an interesting post on a recent Bloomberg.com article arguing that employee noncompete agreements inhibit innovation, which makes for an interesting compare-and-contrast with a recent paper by Barnett and Sichelman that Professor Michael Risch recently discussed on the Written Description Blog.

Federal Circuit Denies Rehearing En Banc in ClearCorrect v. ITC

This past November, a panel of the Federal Circuit held in ClearCorrect Operating, LLC v. International Trade Commission that digital data are not "articles," and thus that section 337 of the U.S. Tariff Act (which renders unlawful the importation of infringing "articles" into the United States, subject to certain conditions) does not confer jurisdiction on the U.S. International Trade Commission (ITC) to issue a cease and desist order directed against the electronic transmission of such data into the United States.  (For my post on the original panel opinion, see here.)  This morning the court denied a petition for rehearing en banc (order and opinions here).  Judge Newman filed a dissenting opinion, arguing inter alia that "Section 337 does not distinguish between infringing goods imported electronically and infringing goods imported on a physical medium," and that the ITC's interpretation of the statute (that articles do include digital data) is entitled to deference under the Chevron doctrine.  Chief Judge Prost, the author of the original panel opinion, filed an opinion (joined by Judges O'Malley and Wallach) concurring in the order denying the petition for rehearing and responding to certain points raised in Judge Newman's dissent.  

Some Upcoming Events Relating to Patent Remedies

1.  Apropos of last week's post about the Samsung v. Apple amicus briefs, the IP Chat Channel is hosting a webinar next week on design patent damages.  Here is a link, and here is the description:

Design Patent Damages: The Law As It Is Today
Thursday, January 28, 2016 2:00pm – 3:00pm ET
When the Federal Circuit last summer rejected a request for a rehearing en banc from Samsung on the damages awarded to Apple for infringement of three of its design patents, it reaffirmed what experts in design patents already knew: With design patents, the infringer’s damages are its entire profits from the article of manufacture. That formula stemmed from design patents’ has historically been used as a weapon in the fight against counterfeits and knock-offs. But the ruling in Apple v. Samsung, based on a straightforward reading of Section 289 of the Patent Act, was an eye opener even for many patent law veterans outside the design space. The Federal Circuit reiterated its stance again in September in Nordock v. Systems, when it remanded a patent design case because the lower court’s damages calculation shortchanged the plaintiff.
Our panel brings together two design-patent veterans with a damages expert to discuss the implications on design patent prosecution and litigation of the increased consciousness regarding design patent damages. Is this just a blip or will it lead to an increase in design patent litigation and prosecution, as some experts predict? How will courts define “the article of manufacture”? What are the limitations of design patent enforcement despite the possibility of 289 damages? The panelists will also consider Samsung’s certiorari petition to the U.S. Supreme Court.
Speakers:

Alan Cox, NERA Economic Consulting
Robert Katz, Banner & Witcoff
Damian Porcari, Ford Global Technologies LLC

2.  The AIPLA 2016 Mid-Winter Institute ("Enforcing IP from Creation to Monetization and Litigation") runs from January 27-30 in La Quinta, California (link here).  There is a plenary session on the International Trade Commission ("ITC—A Brave New World: Obtaining Exclusion Orders Enforcing Trademarks, Copyrights and Essential Patents") on Thursday, January 28, a session on border measures that same day, and a plenary session titled "Paying the Piper:  Fee Shifting in IP Litigation Outside the U.S." on Saturday, January 30.

3.  The ABA-IPL 31st Annual Intellectual Property Law Conference is scheduled for April 6-8 in Bethesda, Maryland (link here).  There is a session on Friday, April 8 titled High Octane Fee Shifting for Attorney Fee Awards, as well as a session earlier in the week on preliminary injunctions in trademark cases. 

Federal Circuit Affirms $6 Million Sanction for Violation of ITC Consent Order

This morning the Federal Circuit issued an opinion in DeLorme Publishing Co. v. ITC, affirming a decision by the U.S. International Trade Commission finding that DeLorme Publishing Company, Inc. and DeLorme InReach LLC (collectively, "DeLorme") violated a consent order prohibiting the sales of two devices that include certain imported components, and imposing a civil penalty of $6,242,500.  The majority opinion is by Judge Moore, with a partial dissent by Judge Taranto.

1.  Following an ITC investigation initiated in 2012, DeLorme agreed to a consent order stating that:

Upon entry of the proposed Consent Order, DeLorme shall not import into the United States, sell for importation into the United States, or sell or offer for sale within the United States after importation any two-way global satellite communication devices, system, and components thereof, that infringe claims 1, 2, 5, 10–12, and 34 of the ’380 Patent after April 1, 2013, until the expiration, invalidation, and/or unenforceability of the ’380 Patent. 

In 2013, the patent owner (BriarTek) alleged that DeLorme was in violation of the order.  In particular, DeLorme had removed the infringing components from some of its existing devices and replaced them with noninfringing (imported) components, but according to BriarTek (and the ITC) DeLorme instructed purchasers how to use the remade devices in a way that infringe two claims of BriarTek's patent.  The court agreed that this violated the consent order:

DeLorme argues that even if the devices infringed the claims, the Consent Order did not preclude DeLorme from selling domestically manufactured devices containing imported, noninfringing components. It argues that the terms of the Consent Order instead prohibited DeLorme from using imported components only if the components themselves infringed. It argues that the Commission “rewrote” the Consent Order to “prohibit not just the use of imported, infringing, components, but also the use of any imported components.” Appellants’ Br. 23. It argues that the Commission’s interpretation of the Consent Order exceeded its authority to block importation of only “articles that . . . infringe.” 19 U.S.C. § 1337(a)(1)(B)(i). 

We agree with the Commission that DeLorme violated the Consent Order by selling InReach 1.5 and SE devices containing imported components with instructions for its customers to use the devices in an infringing manner.The Consent Order provided that DeLorme could not import, sell for importation, or sell or offer for sale after importation “any two-way global satellite communication devices, system, and components thereof, that infringe claims 1, 2, 5, 10–12, and 34 of the ’380 Patent.” Consent Order ¶ 1. Under these terms, DeLorme was precluded from selling infringing devices containing imported  components with instructions to infringe.

2.  As for the penalty, 19 U.S.C. section 1337(f)(2) provides that:

Any person who violates an order issued by the Commission under paragraph (1) after it has become final shall forfeit and pay to the United States a civil penalty for each day on which an importation of articles, or their sale, occurs in violation of the order of not more than the greater of $100,000 or  twice the domestic value of the articles entered or sold on such day in violation of the order. Such penalty shall accrue to the United States and may be recovered for the United States in a civil action brought by the Commission in the Federal District Court for the District of Columbia or for the district in which the violation occurs. . . .

The court notes that the amount of the penalty is determined in light of six factors:

The Commission based its penalty determination in this case on the six “EPROM factors” adopted by this court: (1) the good or bad faith of the respondent, (2) the injury to the public, (3) the respondent’s ability to pay, (4) the extent to which the respondent has benefited from its violations, (5) the need to vindicate the authority of the Commission, and (6) the public interest. Comm’n Op. at 27, 42–50 (citing, e.g., Certain Erasable Programmable Read Only Memories (EPROMs), Inv. No. 337-TA-276 (Enforcement), Comm’n Opinion (July 19, 1991)); see also San Huan, 161 F.3d at 1362. The Commission noted that the penalty was slightly more than a quarter of the statutory maximum of $100,000 per day. See 19 U.S.C. § 1337(f)(2). It found that the penalty was “appropriately proportionate to the value that the violative InReach devices bring to DeLorme” and consistent with the Commission’s policy of deterring future violations while not driving DeLorme out of business. Comm’n Op. at 50 (citing, e.g., San Huan, 161 F.3d at 1364). . . .

The Commission did not abuse its discretion in imposing a civil penalty of $6,242,500. The penalty—which amounted to $27,500 per day for 227 violation days—was substantially less than the statutory ceiling of $100,000 per violation per day. See 19 U.S.C. § 1337(f)(2). The Commission took into account the EPROM factors and we see no clear error in its fact findings or error in its  application of the law. DeLorme has not shown, for example, that there was clear error in the Commission’s findings regarding DeLorme’s bad faith or that the violative sales greatly benefited DeLorme. We conclude that the Commission did not abuse its discretion in its penalty determination.

3.  One final wrinkle:  while the ITC matter was pending, DeLorme filed a declaratory judgment  action against BriarTek in the Eastern District of Virginia, arguing that certain claims of BriarTek's patent were invalid.  The district court agreed, and in a separate opinion today the Federal Circuit summarily affirmed.  Nevertheless, DeLorme is not off the hook for the civil penalty:

We conclude that the Consent Order unambiguously resolves the question of the impact of an invalidity decision on the enforcement of the Consent Order. The Consent Order bars certain sales and importations “until” one of three events occurs: “expiration, invalidation, and/or unenforceability of the ’380 Patent.” Consent Order ¶ 1. Additionally, it explains that the Consent Order ceases to apply when the patent claim at issue has “expired or been found or adjudicated invalid or  unenforceable . . . provided that such finding or judgment has become final and non-reviewable.” Consent Order ¶ 4. Thus, the Consent Order identifies three events which will cause it to no longer apply. When one of these events occurs the Consent Order will no longer apply, and DeLorme will no longer be constrained by its terms. Until one of these events occurs, however, the Consent Order is binding upon DeLorme.

In this case, the Consent Order applied to DeLorme at the time it committed the acts found to violate the order. The Consent Order applied to DeLorme even at the time the enforcement decision with the civil penalty issued. . . . DeLorme argues in its supplemental briefing that the subsequent district court invalidation of the claims retroactively eliminates the Consent Order such that we can no longer affirm the civil penalty properly adjudicated by the Commission. This argument is inconsistent with the plain language of the Consent Order itself. . . .

Finally, DeLorme argues that our recent decision in ePlus, Inc. v. Lawson Software, Inc., 789 F.3d 1349 (Fed. Cir. 2015) requires that the Commission’s civil penalty in this case be reversed. In ePlus, we (1) vacated an injunction after the U.S. Patent and Trademark Office cancelled the only patent claim on which the injunction was based, id. at 1355–56, and (2) set aside the civil contempt sanction imposed for violation of the vacated injunction, id. at 1361.

DeLorme’s argument that ePlus controls this case is incorrect. ePlus held that a civil contempt  sanction can be set aside when the underlying injunction, upon which the sanction is based, is still itself non-final or reviewable. As we explained in ePlus, “The rule for civil contempt for violating a provision of an injunction that is not final, i.e., that is still subject to litigation over the propriety of its issuance, is that ‘[t]he right to remedial relief falls with an injunction which events prove was erroneously issued.’” 789 F.3d at 1356 (quoting United States v. United Mine Workers of Am., 330 U.S. 258, 295 (1947)). In ePlus, we determined that the injunction was not final (it was still subject to appellate review) at the time we were reviewing the civil contempt sanction and thus when the patent claims were cancelled, both the injunction and civil contempt sanction had to be vacated. Id. at 1361. In this case, in contrast, there is no question that the underlying Consent Order was final and not appealable. The Consent Order itself states that “DeLorme shall be precluded from seeking judicial review or otherwise challenging or contesting [its] validity.” Consent Order ¶ 2. Neither party has argued that the Consent Order in this case, like the injunction in ePlus, was not final or appealable.

4.  Judge Taranto dissents on this last point, writing that he "would remand this matter to the Commission for it to consider the effect of the invalidation on enforcement of the civil penalty for pre-invalidation violations of the Consent Order."

5.  Putting the legal doctrine to one side, I can certainly sympathize with DeLorme.  The analogous issue of whether one should be obligated to pay damages (or, alternatively, should be entitled to get back damages already paid) if the patent in suit is later declared to be invalid, is one that divides the world's major patent systems, as I have written about before (see here).  Arguably a case like this also highlights the oddity of having two separate forums in the U.S.--the ITC and a federal district court--in which the same patent and the same parties can fight parallel actions (something that few other countries' patent systems contemplate).

6.  In other news, in Align Technology, Inc. v. ITC, a case related to the ClearCorrect case the court decided the other day, the Federal Circuit summarily "vacated and remanded for further proceedings in light of our decision in ClearCorrect Operating, LLC v. International Trade Commission, No. 2014-1527."

U.S. Tariff Act Section 337 Does Not Prevent Electronic Transmission of Data Into U.S.

Section 337 of the U.S. Tariff Act renders unlawful the importation of infringing "articles" into the United States, subject to certain conditions.  This morning in ClearCorrect Operating, LLC v. International Trade Commission, the Federal Circuit held that digital data are not "articles," and thus that section 337 does not confer jurisdiction on the U.S. International Trade Commission (ITC) to issue a cease and desist order directed against the electronic transmission of such data into the United States.  

The patents in suit claim methods for fabricating dental appliances based on digital data sets representing a patient's initial and repositioned tooth arrangements.  The ITC had previously held, first, that ClearCorrect US directly infringed one of the patented methods by its conduct in the U.S., but that such purely domestic conduct does not implicate section 337; and second, that ClearCorrect Pakistan practiced the steps of another patented method abroad and contributed to ClearCorrect US's conduct in the U.S. by exporting the digital data sets into the U.S., and that the importation of the digital data into the U.S. violated section 337.  On appeal, Judge Prost, applying administrative law's Chevron doctrine, concludes that the ITC's interpretation of the term "articles" is contrary to the literal text of the statute and thus not entitled to deference; rather, section 337 comes into play only when "articles" in the sense of "material things" are imported into the U.S.  In so ruling, the court distinguished the Federal Circuit's en banc ruling from this past August in Suprema, Inc. v. ITC, 796 F.3d 1338 (Fed. Cir. 2015)--a case in which the court upheld the ITC's interpretation of a different statutory term under Chevron--stating that in Suprema

the respondent violated 19 U.S.C. § 1337 by inducing a direct patent infringement that did not occur until after a tangible item was imported into the United States. Our opinion turned exclusively on the term “infringe” as used in 19 U.S.C. § 1337(a)(1)(B)(1). Conversely, here we are exclusively looking to the meaning of the term “articles.” Furthermore, the “articles” in question in Suprema were physical objects, and thus do not inform the question now before the court. Indeed the analysis in Suprema supports the decision here, as discussed infra. 

 Judge O'Malley concurs and Judge Newman dissents. 

For discussion of the oral argument in this case from last August, see this post by Professor Sapna Kumar on Patently-O.  Professor Kumar's article pointed to a misquotation of the 1922 Tariff Act in the ITC's opinion, which Judge Prost now notes in the Federal Circuit majority opinion at pp. 33-34 (referring to the ITC's "omission of the phrase 'in the importation of goods'" as "highly misleading"). 

U.S. ITC to Review FRAND Issues

I'm still catching up on things after returning from Japan, and only today came across this post from Friday's Essential Patents Blog titled "ITC grants partial review of ALJ Essex’s decision concerning FRAND issues (337-TA-613)."  I don't have anything to add at this point, other than to concur in blogger David Long's statement that "These questions and the ITC’s ultimate resolution of the issues promises to result in one of the most important ITC decisions in litigating SEPs in the ITC, and perhaps elsewhere."

For previous mention of this case on this blog, see here and here.

Ferguson and Schneider on Enforcement of IP Rights in Africa

Vanessa Ferguson and Marius Schneider have published a paper titled Enforcement of Intellectual Property Rights in Africa in the April 2015 issue of the Journal of Intellectual Property Law & Practice, pages 269-79.  Here is a link to the article, and here is the abstract:

This article provides an overview of enforcement measures that are available to intellectual property right-holders on the African continent. Africa is rising—with comparatively high growth rates and a rising number of consumers—and so is the anti-counterfeiting challenge. There are, however, particularities when it comes to enforcing intellectual property rights in Africa which right-holders and practitioners will have to take into account.

The article examines the law and practice in relation to enforcement of intellectual property rights in the following countries and territories: Morocco, Algeria, Egypt, the African Intellectual Property Organization (OAPI), Nigeria, Ghana, Tanzania, Kenya, Uganda, Mauritius and South Africa.

The authors conclude that the enforcement of intellectual property rights in Africa remains a very complex issue, due to the absence of harmonisation of standards and procedures in relation to anti-counterfeiting measures. However, thanks to the efforts and the goodwill of right-holders, practitioners and law enforcement authorities, steady progress is being made when it comes to successful enforcement of intellectual property rights in Africa. 

Although most of the article focuses on measures against counterfeiting, there is also some discussion of border measures, preliminary measures, and civil and criminal penalties for infringement of IP rights generally, including under the Bangui Agreement to which the 17 OAPI states are members.

Monday Miscellany: Saisies-Contrefaçon, Border Measures, Design Crime, and Noninfringing Alternatives

1.  Pierre Langlais and Deborah Dayan have published a paper titled Saisie-Contrefaçon:  points de vigilance -- Panorama de Jurisprudence (juin 2013 - septembre 2014) in the November 2014 issue of Propriété Industrielle at pages 8-13.  The abstract reads as follows (my translation from the French):

The saisie-contrefaçon is a fundamental method of proof in regard to infringement.  Because of its extraordinary character, the saisie-contrefaçon procedure is subject to strict rules, and decisions calling saisies into question are myriad.  2013 and 2014 have been richer still in teachings in this regard.  The retrospective table below has for its objective the presentation of a panorama of cases in order to call to the attention of litigants the different risks tied to the saisie-contrefaçon. 

2.  In the October issue of GRUR (pp. 921-24), Thomas Kühnen published  the second installement of his Die Haftung wegen unberechtigter oder zu Unrecht unterbliebener Grenzbeschlagnahme nach der VO (EU) Nr. 608/2013 ("Liability for unauthorized or unenforced border measures under Regulation (EU) No. 608/2013).  For my post on Part 1, see here.  Here is the abstract:

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.  In connection with Part 1 (GRUR 2014, 811), which addresses the liability of Customs Authorities, Part 2 follows up with the liability of movants and of persons entitled to dispose of the property. 

3.      David Musker has published Design crime: back to the future or forwards to the past?, in 9 Journal of Intellectual Property Law & Practice No. 12, pp. 976-84 (2014).  Here is a link to the paper, and here is the abstract:

The Intellectual Property Act 2014 has controversially created new criminal offences, and magistrates will therefore find themselves dealing with design infringements.  This is not, however, the first time:  the magistrates' courts also had jurisdiction over registered design piracy between 1842 and 1883, and many of the concerns recently raised during passage of the Intellectual Property Act were played out before them.  This article examines some of the cases as reported through the eyes of the Victorian press.

Readers may recall that Professor Sarah Burstein published a guest post here on the new UK design crime law. 

4.  Finally, over at Sufficient Description Norman Siebrasse recently published two very good posts (here and here) relating to the relevance to patent damages of noninfringing alternatives, in the context of a critique of the recent Canadian case of Eli Lilly v. Apotex.  (I blogged about the case recently here.)  He also has a (more favorable) post on the Canadian court's handling of the compound interest issue here.