From Around the Blogs

1.  On Sufficient Description, Norman Siebrasse published a post on Rovi Guides, Inc. v. BCE Inc., 2022 FC 1388.  This is well worth a read, for its discussion of, among other matters, patent holdup, the standards for awarding an accounting of profits under Canadian law, and the right to injunctive relief under Canadian law.  I previously published a short write-up on the case here. 

2. Also relating to Canada, on Law360 Jasmin Jackson published a short article on the recent Supreme Court decision in Nova v. Dow.  I published a short post on this one last week, in which I expressed agreement with the dissenting justice.  Professor Siebrasse will, I believe, provide a more detailed treatment sometime soon.

3. Over in India, the Delhi High Court recently denied Nokia an interim royalty in its SEP/FRAND dispute with Oppo.  The court holds that such relief is not available in this case, given the dispute whether any of the asserted patents are SEPs, whether they are valid and infringed, and if so what an appropriate FRAND  royalty would be.  I thank a reader for sending me a copy of the decision.  There are also write-ups on SpicyIP and on FOSS Patents, both with links to the decision.

4. Also relating to SEPs is a post by Eileen McDermott and Inna Dahlin on IP Watchdog, describing a recent panel discussion on the evolving European case law.

5. Also relating to Europe, IPKat published a post by Jan Jacobi discussing a recent Opinion of the Advocate General in a case, referred from Poland, in which the CJEU will consider under what circumstances a putative IP owner may obtain information from an alleged infringer under article 8 of the Enforcement Directive.  The case before the court involves defendants who dispute whether there is an enforceable copyright in the relevant subject matter  in dispute; the author of the post argues that the AG focuses too much on the quantum of evidence needed to establish the identity of the owner of a right, as opposed to whether the right itself exists.

6. Finally, Anders Valentin published a post on the Kluwer Patent Blog discussing a Danish High Court decision holding that a court cannot issue a preliminary injunction prior to the granting of a patent.  The case affirms the conclusion reached by the lower court, and by some other courts in Europe recently, in an ongoing multi-country dispute involving the drug Fingolimod (previously discussed on this blog here and here).    

Preliminary Injunctions Prior to Grant?

In recent weeks the Kluwer Patent Blog has published two shorts posts on the topic of whether courts may entertain a request for preliminary injunctive relief prior to patent grant.  The first post, by Matthieu Dhenne, is titled A preliminary injunction can be based on a patent application, and discusses a recent decision of the Paris High Court.  The applicant, Novartis AG,  has a pending European Patent application (EP 2 959 894) relating to the treatment of MS using fingolimod hydrochloride.  According to the post (no decision is attached), the "EPO Board of Appeal had ordered the Examining Division to grant the patent on the basis of one of the claims," but the patent has not yet issued.  The post states that the court denied the request  for preliminary relief, but "accepted its admissibility of the basis of the patent application."  The other post, by Anders Valentin, is titled Danish court dismisses application for a PI based on a patent application.  This post discusses a decision (also not attached) of the Danish Maritime and Commercial Court, involving--guess what?--the exact same patent application, on the basis of which Novartis applied for a preliminary injunction in Denmark.  According to this post, the Danish court denied the request, noting that because there is still no formal EPO decision to grant the patent, "it is uncertain that the patent will have effect in Denmark," and also that there is a possibility "the patent could still be amended." 

This is an unusual issue.  As Mr. Dhenne points out, there could be situations in which "urgency" might seem to counsel in favor of hearing such a case, though he also states that a strict reading of the text of the relevant French statute would not permit this; and there could be no opposition proceeding to challenge validity until the patent issues.  For my part, I'm inclined to think that courts shouldn't grant preliminary injunctions in advance of grant, ever, though I wonder if there might be cases in which it would be advisable to consider a preliminary injunction conditioned on subsequent grant.  Temporary stays of permanent injunctive relief, after all, are not uncommon under U.S. law, and are available (in theory, at least) under German law as well (e.g., to enable design-around or sell-off).  Still, I'm not sure this is a good route to go down in the preliminary injunction realm, because of the obvious risks to the defendant--among them, that compensation for being wrongly enjoined may be incomplete after the CJEU's Bayer v. Richter decision (see, e.g., here).

Some Recent Articles on Patent Remedies from the European Intellectual Property Review

I am slowly making my way through a backlog of European I.P. journals.  Today's post highlights three articles that I had not previously mentioned, which appeared in the European Intellectual Property Review (EIPR) in 2020.  The July 2021 issue of EIPR has a couple of additional articles I will mention in a forthcoming post.

1. Joshua Marshall published Unjustified Threats as a Cause of Action, 42 EIPR 150-55 (2020). Here is the abstract:

This article seeks to categorise unjustified threats as a cause of action. Hitherto, unjustified threats have been treated as tortious and the threat-maker deemed a legal wrongdoer. This article argues that orthodox principles of tort law cut against the unjustified threats regime. It is suggested that it is more analytically attractive to treat the regime as a form of estoppel or as a sui generis cause of action.

I found this article very helpful, as I think through some ideas for a pending project on the various ways in which the law regulate wrongful patent assertion.

2.  In the same issue, Victor Henum and Anders Valentin published Decision from the Eastern High Court Changes Danish Practice Regarding Assessment of Recoverable Legal Costs in Patent and IP Cases, 42 EIPR 196-201 (2020).  Here is the abstract:

With its decision of 29 August 2019, the Eastern High Court of Denmark brings the Danish practice on assessing legal costs in patent and IP cases into conformity with EU law in the area. The decision is expected to substantially change the court’s former conservative practice of awarding costs in patent and IP cases.

Compare the outcome here with the outcome of a Belgian decision noted recently on the IPKat Blog, which I linked to here, indicating that Belgian practice remains out of synch with the CJEU's United Video Properties decision on recovery of costs (previously discussed on this blog here). 

3. Enrico Bonadio and Luke McDonagh published Sisvel v Xiaomi:  A SEP Dispute in the Netherlands Highlights the Global Challenge of FRAND Licensing, 42 EIPR 618-20 (2020).  Here is the abstract:

 

This comment examines the patent litigation battle over standard-essential patents (SEPs) that took place between Sisvel and Xiaomi at The Hague Court of Appeal in the Netherlands in early 2020. The case is an indicator that courts in different European jurisdictions will continue to go their own way when it comes the crucial decision of whether to grant injunctions on SEPs. The UK, which a decade ago was viewed as a jurisdiction better known for revoking patents than for issuing injunctions, appears to have become more "patentee-friendly" (at least in the case of SEP-owners). The Netherlands, meanwhile, applies an approach that appears more critical of the activities of NPEs, taking their lack of manufacturing productivity into account when determining the balance between whether to grant an injunction or not. This approach could well prove influential on other courts, and perhaps even the CJEU, if the rate of NPE litigation of SEPs increases in Europe in the years to come.

As noted elsewhere, the parties recently settled their SEP disputes.  

4. Tanguy de Haan published The CJEU Sides with IP Right Holders:  The Bayer Pharma Judgment (C-688/17) and the Consequences of the Europeanisation of Provisional and Precautionary Measures Relating to IP Rights, 42 EIPR 767-73 (2020).  Here is the abstract:

 

With its interpretation in the Bayer Pharma judgment of the concept of "appropriate compensation" under the Enforcement Directive, the CJEU did not only grant a significant protection to intellectual property right holders, but also confirmed that, as far as civil law liability is applied to intellectual property, national courts in the EU can only apply their national law provided that the latter is in line with EU law.

For previous discussion of the Bayer Pharma decision on this blog, see here.  

Danish Court Ruling on Attorneys' Fees

Victor Henum and Anders Valentin have published a paper titled Decision from the Eastern High Court Changes Danish Practice Regarding Assessment of Recoverable Legal Costs in Patents and IP Cases, 42 E.I.P.R. 196 (2020).  Here is the abstract:

With its decision of 29 August 2019, the Eastern High Court of Denmark brings the Danish practice on assessing legal costs in patent and IP cases into conformity with EU law in the area. The decision is expected to substantially change the court’s former conservative practice of awarding costs in patent and IP cases.

The Danish court's decision is intended to comply with the ruling of the CJEU in UnitedVideo Properties, Inc v Telenet NV, C-57/15, which held that article 14 of the Intellectual Property Rights Enforcement Directive requires that awards of attorney's fees should compensate "a significant and appropriate part of the reasonable costs" actually incurred, and that technical adviser fees are compensable if they are "directly and closely linked to" the judicial proceeding at issue.  (For my previous posts on this case, see here, here, and here.)  Messrs. Henum and Valentin conclude their article by stating that the Danish:

Court’s judgment . . . eases the criteria for the instances for which a successful party can have its costs for expert assistance covered. This means that successful parties can now presumably expect to have a larger part of their costs covered in the future. However, it is still unclear whether costs for patent agents’ assistance as legal counsels are recoverable, since the court solely states that expenses for patent agents are recoverable with regard to their assistance with expert statements—no other assistance was reported in this case.

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

Preliminary Injunctions and Costs

A couple of months ago I noted with dismay the CJEU's recent decision in Bayer v. Richter, which appears to exempt patent owners from having to compensate defendants from having been excluded from the market during the pendency of a preliminary injunction that is subsequently lifted after the patent is found to be invalid or not infringed.  (See posts here and here.)   On a related--and from a policy perspective, sounder--note is a recent decision of the Danish High Court, as reported by Anders Valentin on the Kluwer Patent Blog a few weeks back.  The article, titled "Danish High Court radically changes its course on costs awards," reports a decision in which a preliminary injunction was granted but later vacated, and the defendant sought an award of costs.  According to the author, in previous cases Danish costs awards were "typically . . .  only a fraction of the costs actually incurred."  In this case, however, the Maritime and Commercial High Court awarded "legal costs in an amount reflecting those generally applicable in  the IP practice area as well as substantial and suitable amount of the fair costs actually incurred," as well as costs for expert statements and assistance from a patent agent.  According to the author, the court was persuaded to deviate from prior Danish practice, which was far less generous as to costs, in view of the CJEU's 2016 decision in United Video Properties.  In that case, which I previously discussed here, the court concluded that article 14 of the Enforcement Directive "precludes national legislation providing flat-rates which, owing to the maximum amounts that it contains being too low, do not ensure that, at the very least, that a significant and appropriate part of the reasonable costs incurred by the successful party are borne by the unsuccessful party"; and that "to the extent that the services, regardless of their nature, of a technical adviser are essential in order for a legal action to be usefully brought seeking, in a specific case, to have such a right upheld, the costs linked to the assistance of that adviser fall within ‘other expenses’ that must, pursuant to Article 14 of Directive 2004/48, be borne by the unsuccessful party."

From Around the Blogs: Patent Remedies in Canada, the U.K., and Denmark

1.  Norman Siebrasse has published a couple of damages-related posts on Sufficient Description.  The first, from January 27, is titled Inequitable Conduct by Patentee:  Defence v Reduction of Damages, and discusses a recent Canadian federal court decision in which the court concluded that some forms of inequitable conduct on the part of the patentee do not bar recovery entirely but rather may reduce the patentee's damages.  I'm inclined to think that is a sensible result, as I discussed here at pp. 750-51; one problem with the U.S. version of the doctrine, by contrast, is that is an all-or-nothing proposition.  A gradation of possible sanctions might be proportionate to the offense.  The second post, from February 5 and titled $2.9 Million Award is 30% of Actual Legal Fees, discusses a recent case in which the judge exercised his discretion and made an upward departure from the standard attorneys' fee that would have been awardable in the type of case at issue (which would have amounted to only 11% of actual fees incurred) and awarded an amount equal to 30%, which at least is closer to full compensation.

2.  The IPKat Blog on January 27 published a post titled Storm in a C Cup:  Mr Justice Carr Refuses Injunction and Account of Profits in Stretchline v. H&M Spat.  The parties had previously settled patent infringement litigation, but the plaintiff later sued the defendant for breaching that agreement by selling allegedly infringing fabric.  The court agreed that there was a breach but denied an injunction on the ground that the defendant had stopped infringing and the infringement was unlikely to recur, and also denied a request for an accounting of profits.  More recently, on February 2 the blog published a post (authored by Brian Whitehead of Kempner & Partners, which represented the plaintiff) titled Inquiry as to Damages:  No Longer a Rara Avis?, discussing a case in which the IP Enterprise Court (which handles relatively small-stakes patent disputes in England & Wales) awarded £0.5 million in lost profits just a few weeks after a December 2015 hearing.  The author concludes that "[t]his represents another means by which the IPEC improves access to justice for litigants, particularly for small and medium enterprises."  Another post on this case, authored by Emma Muncey and Rachel Mumby of Bristows LLP and titled AP Racing v. Alcon Compone, was published on EPLaw Blog on February 10, and also links to the decision itself.  

3.  Anders Valentin recently published a post on the Kluwer Patent Blog titled A Matter of Urgency--PI Application Turned Down for Lack of Urgency.  The post discusses a Danish case in which the court denied the patent owner, Minkpapir, a preliminary injunction which it applied for in 2015 despite its presumed knowledge that the defendant had been marketing an allegedly infringing product since 2011.  As I have mentioned several times before (more recently here), urgency is an important consideration for obtaining a preliminary injunction in Germany too.