From Around the Blogs

1. On SpicyIP, Ambika Aggarwal has published two posts (here and here) concerning the Supreme Court of India’s recent decision dismissing an appeal from a 2023 Delhi High Court judgment in Ericsson v. Competition Commission of India (CCI), previously reported on this blog here, holding that the “CCI cannot exercise jurisdiction over actions of an enterprise that are in exercise of their rights as a patentee.”  Although the Supreme Court's decision is apparently not publicly available yet, it is reported that the Court dismissed the action on the ground that the parties had, in the meantime, settled their dispute.  Dr. Aggarwal argues, persuasively in my view, that the current state of affairs in India leaves a gap in antitrust oversight of SEP-related issues, and is at odds with the positions taken in other major markets including the E.U., the U.K., China, Japan, and Korea.  For discussion on ip fray as well, see here and here.

2. Enrico Bonadio has published two posts on SEP matters on the Kluwer Patent Blog.  The first, titled Judgment Without Trial:  The Erosion of Appellate Restraint in UK Patent Law, takes issue with the Court of Appeal’s decision in Optis Cellular Tech. LLC v. Apple Retail UK Ltd., [2025] EWCA Civ 552 (previously discussed on this blog here), increasing the award of global FRAND royalties from $56 million to $502 million.  Professor Bonadio contrasts this result, which he views as the appellate court improperly serving as finder of fact, with the Federal Circuit’s en banc decision in EcoFactor v. Google (previously discussed on this blog here), which after reversing the trial court for admitting expert testimony in violation of the rules of evidence remanded for a new trial on damages.   He also recently published a post titled Restoring Balance in SEPs Governance—Next Steps for the EU After the Regulation’s Withdrawal.  He argues, inter alia, that a step forward “would be a strategic referral to the CJEU that addresses the gaps and inconsistencies left by Huawei v. ZTE.”

3.  Also on Kluwer, Jiří Slavík published Substantiating Infringement (or Risk Thereof) at the UPC:  Divide & Conquer or One to Rule Them All?, discussing, inter alia, UPC decisions on whether courts may grant preliminary or permanent injunctions throughout all of the contracting member states (CMSs) and, after BHS Hausgeräte (discussed on this blog here) non-CMSs as well.

Suzuki et al. on Criminal Penalties for IP Infringement in Asia

            For the most part, criminal law does not play a large role in the enforcement of patent rights, although TRIPS article 61 does require that member states make available criminal penalties for “wilful trademark counterfeiting or copyright piracy on a commercial scale”; some free trade agreements extend the obligation to criminalize IP infringement a bit further (e.g., to anti-circumvention measures); and in some places, including the U.S., criminal penalties sometimes are imposed for trade secret misappropriation.  Some countries, moreover, make all or most types of IP infringement at least potentially subject to criminal penalties, although the criminal prosecution of patent infringement isn’t very common (though it does happen from time to time).

Anyway, I’m finishing up work on my book Remedies in Intellectual Property Law, and the last chapter deals with, among other things, criminal enforcement, so I though I would call readers’ attention to a paper that addresses the criminal enforcement of IP rights in the leading Asian jurisdictions.  The authors are Masabumi Suzuki, Su-Hua Lee, Byungil Kim, Xiuqin Lin, Prashant Reddy, Heng Gee Lim, Jyh-An Lee, and Kung-Chung Liu, and the paper is  titled Civil Follow Criminal or Criminal Follow Civil Procedure as Models to Deal with IP Infringement: Asian vis-à-vis Western Approaches, in Kreation Innovation Märkte - Creation Innovation Markets:  Festschrift Reto M. Hilty 663 (Florent Thouvenin, Alexander Peukert, Thomas Jaeger & Christophe Geiger eds., Springer 2024).  Here is a link to the ssrn version, and here is the abstract:

Art. 61 of the TRIPS Agreement of the World Trade Organization (WTO) requires members to provide criminal punishment at least for willful trademark counterfeiting and copyright piracy on a commercial scale. Sweeping criminalization of IP infringement can be observed in the West typified by Germany and many major Asian jurisdictions. However, in practice, there has been relatively rare criminal prosecution of IP infringement in the West, whereas criminal prosecution of IP infringement, excluding patent infringement, is not uncommon or even common in the seven selected Asian jurisdictions. Why is there such a difference? and what effects does it have on the overall development of IP laws in those Asian jurisdictions? These two questions among others are what this article strives to answer. It will first survey the Asian IP landscape, in the order of the introduction of IP laws into the civil law jurisdictions (Japan, Taiwan, Korea, and China), and into common law jurisdictions (India, Malaysia, and Hong Kong) respectively (2). It will then examine German experiences (3), followed by comparative study and policy analysis (4), and end with some suggestions (5).

Highly recommended!

 

  

From Around the Blogs

1. On IPKat, Anastaslia Kyrylenko published a post titled CJEU to address compatibility of Italian anticipatory measures with Enforcement Directive.  The post discusses a recent referral from the Italian Supreme Court to the Court of Justice for the European Union, M.M. Ristorazione, C-132/25 (docketed Feb. 10, 2025).  The referral is said to pose the question whether, contrary to the courts of first and second instance, an injunction granted under article 700 of Italy’s Civil Procedure Code as an “emergency measure” (provvedimenti d’urgenza) in regard to possible trademark infringement qualifies as a “provisional measure” and therefore requires the movant to file suit within 21 business days or 30 calendar days, whichever expires later, under both TRIPS and the Intellectual Property Rights Directive.

Also on IPKat, Jocelyn Bosse published a post, titled Apple variety infringement ruling sees record-breaking amount of damages in China, about a recent decision of China's Supreme People's Court awarding RMB 3.3 million (which included a punitive component) for the infringement of a protected variety of apple.  Here is a press release about the case from the SPC itself.  Neither of these sources links to the text of the actual decision, however.

2.  The difficulty of obtaining the text of some Chinese decisions is itself something of a sore point for many, including the European Union, which has complained about it in two pending WTO matters.  The first, filed in 2022,  argues that Chinese courts’ issuance of ASIs violates articles 1, 41, and 63 of the TRIPS Agreement.  See WT/DS611—China—Enforcement of Intellectual Property Rights, https://policy.trade.ec.europa.eu/enforcement-and-protection/dispute-settlement/wto-dispute-settlement/wto-disputes-cases-involving-eu/wtds611-china-enforcement-intellectual-property-rights_en.  As noted in a recent post on ip fray opining that the EU has lost the initial case, the panel released its report to the parties in February, but it has not yet been made publicly available, and the parties have agreed to arbitrate the appeal (there being no functioning WTO appellate body for at least the last five years).  Meanwhile, in January the EU commenced a request for consultation with China regarding China’s practices with regard to establishing the terms of global FRAND licenses, as in the 2023 Nokia v. OPPO dispute.  The EU contends that China’s practice violates Paris Convention article 4bis, as incorporated under TRIPS article 2.1, as well as TRIPS articles 1, 28, and 63. See WT/DS632-1—China—Measures Concerning Patent Licensing Terms:  Request for Consultations by the European Union, Jan. 22, 2025, https://docs.wto.org/dol2fe/Pages/SS/directdoc.aspx?filename=q:/WT/DS/632-1.pdf&Open=True.  Enrico Bonadio has a post on the Kluwer Patent Blog, titled The WTOdispute between China and EU over Chinese SEPs global rate-setting.

3.  On SpicyIP, Yogesh Byadwal published Injunction against Natco refused:  Public Interest Triumphs—Maybe.  The post discusses a March 24 decision of the Delhi High Court in F. Hoffman-LaRoche Ag v. Natco Pharma Ltd., in which the court invoked the public interest in denying a preliminary injunction against Natco’s production of a generic version of the drug Risdiplam.

Interim Licenses in the UK, SEP Decision in India

My plan today is to complete a draft of the final substantive chapter of one of my two pending book projects, Wrongful Patent Assertion:  A Comparative Law and Economics Analysis.  I therefore will have to more to say about the two matters below next week, but I thought I should at least call them to readers' attention today. 

First, as reported earlier today by Olivia Sophie Rafferty on ip fray, this morning the Court of Appeal for England and Wales issued its decision in Lenovo Group Ltd. v. Telefonaktiebolaget LM Ericsson (Publ), [2025] EWCA Civ 182, held that a willing licensor in the position of Ericsson would enter into an interim license with Lenovo, thus expanding upon Lord Justice Arnold's decision last fall in Panasonic v. Xiaomi.  This decision, also authored by Lord Justice Arnold (Lady Justice Falk and Lord Justice Newey concurring) concludes as follows (para. 157):

For the reasons given above I conclude that: (1) Ericsson are in breach of their obligation of good faith under clause 6.1 of the ETSI IPR Policy by pursuing claims for injunctions and equivalent remedies in foreign courts and tribunals despite Lenovo having undertaken to enter into a licence on the terms determined by the Patents Court to be FRAND (subject to adjustment on any appeal) and having offered to submit to determination of FRAND terms by the EDNC; (2) a willing licensor in the position of Ericsson would enter into an interim licence with Lenovo pending that determination, and FRAND terms for that licence would be those set out in the preceding paragraph; (3) making the declaration sought by Lenovo would serve a useful purpose; and (4) the declaration should not be refused on the grounds of comity. I would therefore allow the appeal.

Second, as reported today by Praharsh Gour on the Spicy IP Blog, the Delhi High Court last week entered judgment in Koninklijke PhilipsElectronics N.V. vs. Rajesh Bansal And Ors., awarding Philips damages for the infringement of a SEP, based on a royalty rate of US$0.03 per disk, plus 12% interest and costs.  I have not taken a careful look at the decision yet, but I believe the damages are for sales within India only, not global sales (see para. 217).

More next week.

Updates:  I overlooked Olivia Rafferty's post from earlier this week on the Philips case on ip fray.  Here's a link. 

Also, the Federal Circuit issued a nonprecedential opinion today in Halo v. Pulse (yes, that Halo and that Pulse; case is 18 years old), affirming the denial of enhanced damages and fees, and remanding for recalculation of interest.  I will have a lot to blog about next week. 

Patra on Daubert and Indian SEP Litigation

At the outset of this post, I’ll note that Dennis Crouch published another very interesting post today on the pending EcoFactor en banc, in which he notes that the Federal Circuit on December 4 issued an order which states:

The court granted rehearing en banc “limited to addressing the district court’s adherence to Federal Rule of Evidence 702 and Daubert v. Merrell Dow Pharmaceuticals, Inc., 509 U.S. 579 (1993), in its allowance of testimony from EcoFactor’s damages expert assigning a per-unit royalty rate to the three licenses in evidence in this case.” Google’s argument at pages 41–58 of its brief exceeds the scope of the court’s en banc rehearing, as its footnote 11 all but recognizes. EcoFactor should not address this argument in its response brief.

Pages 41-58 address apportionment, so apparently that topic is off-limits.  Obviously it’s up to the court to decide the appropriate scope of the en banc, but still it might be helpful at some point if the court could devote some further attention to apportionment.  Anyway, I note this here as a segue to a recent article by Soumya Prakash Patra titled Applicability of the Daubert Standard to Indian SEP Litigation:  Analysing the Lava v Ericsson Case, 47 EIPR 55 (2025).  Here is the abstract:

This article demonstrates the potential benefits of using the Daubert standard in Indian Standard Essential Patent litigation. While the situation with SEP litigation and the quality of evaluation of expert witness testimonies is relatively undeveloped in the country, following the Daubert standard is likely to bring several improvements. The Daubert standard is a principle set by the US Supreme Court that provides rules by which experts’ testimonies may be evaluated. Following Daubert–like principles would improve the situation in India, as more specific and standardized criteria would be involved in assessing the reliability of expert testimonies.

The article discusses the use of expert economic and technical evidence in Lava v. Ericsson, a case I blogged about here, in which the Delhi High Court awarded Ericsson a global FRAND royalty, covering a portfolio of FRAND-committed SEPs for the period 2011-20, plus costs, totaling approximately USD $30 million.  Professor Patra states that under current law Indian judges have considerable discretion in deciding what evidence is admissible, and suggests that departing from this “flexible, context-based reception of expert testimony” would meet resistance; but that, nonetheless, more rigorous scrutiny of whether expert testimony is scientifically valid would improve decisionmaking, as would better training for judges “in examining complex technical and economic evidence.”  The author also briefly discusses the use of expert testimony in EU and Chinese SEP cases.  

Of course, as the introduction to this post indicates, it almost goes without saying that simply having something like a Daubert standard in place leaves open many important questions about how to apply it, so that parties have a fair opportunity to present their cases but unreliable evidence is excluded from consideration.

Aggarwal and Sircar on the Indian Ericsson v. CCI Judgment

Ambika Aggarwal and Anindya Sircar have published a paper titled Jurisdictional Changes in Indian Patent Enforcement—Comment on the Ericsson v. CCI Decision, 55 IIC 954 (2024).  The paper discusses a July 2023 decision of the Delhi High Court which, as I noted last year, held that the Competition Commission of India (CCI) lacked jurisdiction to consider whether patent holders Ericsson and Monsanto abused their dominant position by charging excessive royalties, in violation of sections 3 or 4 of India’s Competition Act.  Here is the abstract:

            The jurisdiction of the Competition Commission of India in all matters concerning patent law has recently been extinguished by the Delhi High Court in the case of Telefonaktiebolaget LM Ericsson (Publ) v. Competition Commission of India. In a rather sharp distinction to its counterpart agencies in other advanced markets, such as the European Commission, the Indian antitrust authority can no longer assess any claims related to patent licensing. This power has been shifted to the office of the Controller of Patents. The intent of the court might have been to refine the dispute resolution mechanism. However, in paying heed only to rules of statutory interpretation, the division bench has left unresolved several substantive implications arising from this ruling. This new perspective ignores the accommodation made in competition law for intellectual property carve-outs as well as Indian competition law policy fashioned after foreign jurisdictions. It deepens the discord in inter-regulatory communication, reduces the choice of forum for future litigants, consequently also curbing their choice of remedy. Since compulsory licensing is not a favourable remedy in technical standardisation disputes, and it remains the only remedy that the IP Office can grant, it is likely that, as a consequence of the this judgement, disputing parties will view judicial venues as the sole viable venues for SEP dispute resolution even when the content of their dispute attracts antitrust penalties.

I understand that the decision is now on appeal to the Indian Supreme Court.

Kaushal on Bank Guaranties in Indian FRAND Litigation

Tejaswini Kaushal has published a post on SpicyIP titled Secrets and Standards:  Analysing Pro-tem Securities in InterDigital v. Oppo [Part II].  As the title suggests, this is the second installment of a two-part post relating to the InterDigital v. Oppo FRAND litigation in India, the first addressing confidentiality and disclosure of license agreements.   The second post addresses the use of bank guarantees to secure interim relief to the SEP owner pending trial, which the Delhi High Court recently approved.

The basic idea, as I describe it in a project I am currently working on, is that in some jurisdictions court sometimes permit defendants to post a guaranty, or to actually deposit interim royalties, to avoid being preliminarily enjoined.  In recent years, Indian courts have employed this procedure in FRAND cases, as the post above discusses.  Both IPRED and the UPC also authorize this practice.  See IRPED art. 9(1)(a) (stating that member states shall ensure that courts may condition the continuation of an infringement "subject to the lodging of guarantees intended to ensure the compensation of the rightholder"); UPCA art. 62(1) (authorizing the court “to prohibit, on a provisional basis and subject, where appropriate, to a recurring penalty payment, the continuation of the alleged infringement or to make such continuation subject to the lodging of guarantees intended to ensure the compensation of the right holder”); and it is mentioned as a possibility in the European Commission’s draft regulation on SEPs, in recital 35 and in articles 1(4) and 35(4).  (Huawei v. ZTE also mentions, in its elaboration on the “FRAND dance,” that “where the alleged infringer is using the teachings of the SEP before a licensing agreement has been concluded, it is for that alleged infringer, from the point at which its counter-offer is rejected, to provide appropriate security, in accordance with recognised commercial practices in the field, for example by providing a bank guarantee or by placing the amounts necessary on deposit” (para. 67). This is not necessarily a court-ordered procedure, but rather part of the implementer's responsibility to show that it is a willing licensee, though I suppose it also would have the effect, discussed below, of reducing or eliminating the interim harm facing the SEP owner and thus should be relevant to whether the owner is entitled to a preliminary injunction.)  On the other hand, article 12 of the Provisions of the Supreme People’s Court on Several Issues Concerning the Application of Laws in Adjudication of Action Preservation Cases Involving IP Disputes (Jan. 1, 2019) (China), states that preliminary injunctions granted by Chinese courts “are generally not cancelled because the respondent provides a guarantee, except with the applicant's consent”); and, as I noted in a post ten years ago titled Setting the Amount of an Injunction Bond (and a Brief Digression about the Wright Brothers), this does not appear to be an authorized practice under U.S. law, although there are some old cases (including one, you guessed it, involving the Wright Brothers of airplane fame) in which federal district courts employed it.  (I should mention as well that Hui Zhang’s very informative 2019 Kluwer Patent Blog post on the Chinese Provisions noted above states that the practice is authorized under German law.  I imagine that must be the case, since IPRED requires it, but if readers can provide me with a citation to any cases in which this procedure has been employed, in Germany or for that matter anywhere else, I would appreciate it.)

If I understand correctly, the effect of the court’s or plaintiff’s acceptance of a bank guaranty or the payment of interim royalties in this context would be to render some of the patent owner’s allegedly irreparable harm—such as the risk of the defendant’s insolvency, or of a final damages judgment failing to properly account for the time value of money or other advantages accruing to the defendant from delay—reparable, and thus would provide a doctrinal basis for denying the preliminary injunction.  (In this regard, I would also note that the InterDigital decision discussed in the SpicyIP post states (at para. 99) that normally the court must first determine that the plaintiff has a prima facie case.  The logic, I think, would be that there is no need to calibrate the effect of a guaranty on the balance of hardships if there is no prima facie case.)  Theoretically, I would imagine that the practice also could enable a defendant who believes the court has erroneously balanced the relative hardships in favor of the plaintiff to “repair” some of the plaintiff’s allegedly irreparable harm by compensating the plaintiff for harms that otherwise would be, at least as a practical matter, non-compensable under governing law, such as harm to reputation or moral prejudice—though I would expect such cases to be extremely rare, perhaps nonexistent.  Again, though, if readers have any further insights on these issues, I would be interested in hearing from you. 

On a somewhat related note, Gregory Bacon and Aida Tohala published a post on the Kluwer Patent Blog last week about a decision of the Hague Local Division of the UPC, Abbott Diabetes Care Inc. v. Sibio Technology Limited, granting a preliminary injunction notwithstanding the defendant's undertaking to withdraw its allegedly infringing product from Germany, France, and the Netherlands.  The court was not persuaded that the undertaking would be effective, because Abbott "was able to purchase the contested device and have it delivered in Germany and the Netherlands, even after the undertakings were given," and because of the "lack of commitment as to penalty in the event of breach."