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.

Stief on Preliminary Injunctions Prior to Grant

The issue of whether courts in EPO member states have authority to grant preliminary injunctions on the basis of pending patent applications has recently been litigated in a number of European countries (see previous mentions on this blog here, here, here, and here).  Marco Stief has now published two papers, one in German and one in English, on the topic, noting that such injunctions appear to be permissible in some countries, albeit in several of them only in exceptional cases.  His more recent contribution is Fingolimod—(no) injunction before patent grant, J. Intell. Prop. L. & Prac. __ (forthcoming 2024).  Here is the abstract:

This article analyses the position of European courts on the availability of preliminary injunctions on the basis of a patent application, reviewing several national decisions in the fingolimod litigation. The decisions handed down by the Düsseldorf Regional Court, the Tribunal Judiciaire de Paris, the Danish Maritime and Commercial Court, the District Court of The Hague and the Barcelona Commercial Court show that the courts, with limited exceptions, reject provisional legal protection on the basis of a mere patent application on the grounds of absence of legal certainty.  The analysis identifies four (minimum) prerequisites that must be fulfilled for the courts to consider the possibility of issuing an injunction before a patent is granted.

The corresponding German article is (Keine) Unterlassungsverfügung:  Zugleich Besprechung von LG Düsseldorf „Fingolimod‟ unter Berücksichtigung von Parallel-Verfahren in anderen Jurisdiktionen, ("No Preliminary Injunction:  As Well as Case Law from the Düsseldorf Regional Court in "Fingolimod" in Consideration of Parallel Proceedings in Other Jurisdictions"), 23/2023 GRUR 1651-60.

For a different point of view, see Matthieu Dhenne’s article Preliminary Injunctions Based on a Patent Application:  A Justified Solution? (Fingolimod Case), 45 EIPR 236 (2023), previously noted here, and his more recent post FINGOLIMOD or the Hesitation Blues: can preliminary injunctions be based on a patent application under French law?, Kluwer Patent Blog, Dec. 19, 2023, which updates the French case law discussed in his earlier article and in the two Stief articles.

From Around the Blogs

1.  In December 2021, the UKIPO published a call for views "to gather evidence on whether the ecosystem around SEPs is functioning efficiently and effectively and strikes the right balance for all entities involved."  In March 2023, it published a supplementary questionnaire "aimed at small and mid-cap businesses that are involved in standardisation and licensing of SEPs."  It has now published summaries of the responses to both calls, which are available here.  The responses show, perhaps not surprisingly, a considerable division of views on issues such as how well the system is currently working, whether holdup or holdout is more of a problem, the need for greater essentiality checking and for greater transparency, etc.  For now, the UKIPO itself is not expressing any views; rather, it states, “Given the breadth of issues raised and the divergence of the views on whether there is a case for government intervention, the IPO has decided that it will require a further period to assess the issues and, as appropriate, consider the merits of the proposals submitted.”  The summaries are themselves summarized in commentaries on IPKat, IP Watchdog, and JUVE Patent.

2. On IPKat, Henry P. Yang published Unpacking IDC v Lenovo (Part I): The approach on unpacking and comparing prior licence agreements.  As the title suggests, a second installment is contemplated.  Meanwhile, Florian Mueller published a post titled Mr Justice Mellor declares Lenovo the overall winner of FRAND dispute with InterDigital, awards fee-shifting but InterDigital is awarded interest of $46 million.  For my thoughts on the decision, see here.

3.  There has been some discussion of a bill, the Advancing America's Interests Act, pending in the U.S. House of Representatives that would tighten the requirements for nonpracticing entities to seek relief from the U.S. International Trade Commission (ITC), by inter alia limiting the ability of licensing companies to claim that they are “domestic industries” unless they actually transfer technology.  Seems like an excellent idea to me, to prevent NPEs from circumventing eBay.  For discussion on Patently-O and Bloomberg Law, see here and here.

4.  On Sufficient Description, Norman Siebrasse published a post titled Misleading the Court as a Basis for Punitive Damages, discussing a recent decision of Canada’s Federal Court awarding punitive damages in the amount of $200,000 (on top of lost profits damages of $150,000)

5.  Also on IPKat, Anna Maria Stein published Non-infringement declaration for alleged design infringement in Germany:  not in Italy, says Italian Supreme Court, discussing an Italian Supreme Court decision concluding, on the basis of the Brussels Regulation (Recast), that Italy lacked jurisdiction where the allegedly infringing goods were made in Italy but sold in Germany, and the German patent owner sent a warning letter to the German seller.  

From Around the Blogs

1. On Law360, David Kappos and Jonathan Barnett published an article titled Enhanced Damages Necessary in No-Injunction Patent System.  The authors argue that Congress amend the Patent Act to provide that, in any case in which the patent owner prevails but the court denies an injunction, the "court must grant a multiplier," up to treble damages.  The article appears to be a shorter version of a paper they posted on ssrn last year, which I blogged about at some length here.  

2.  Enrico Bonadio published a post on the Kluwer Patent Blog titled How to Avoid Jurisdictional Clashes on Standard Essential Patents—A Short Summary of Some Proposals.  The post discusses various proposals—including the establishment of an international tribunal, an international convention setting forth best practices, or the use of SSO choice-of-law rules—for adjudicating global FRAND disputes.  Nice overview of some competing ideas. 

3. Also on the Kluwer Patent Blog, Rik Lambers published a post on the titled πάντα ῥεῖ.  (The title comes from Heraclitus, and means “Everything flows.”).  The post discusses a recent decision of the Court of Appeals of the Hague, Novartis v. Pharmathen, mostly affirming a lower court decision granting a cross-border injunction.  The court held that the defendant, Pharmathen Global, as a controlling parent company, was a direct infringer of the patent in suit and that the Dutch court could enjoin it from infringing throughout the E.U., including in Greece (where an earlier motion for a preliminary injunction, directed against the Greek subsidiary, had been denied).  The court could not enjoin the Greek subsidiary or direct the parent to instruct the sub not to infringe, but the author describes this as a Pyrrhic victory for the defendants.  

Also of relevance to cross-border injunctions are several posts discussing a 2022 decision by France’s Cour de cassation, Hutchinson v. Tyron, finding that article 8.1 of the Brussels Regulation (Recast) and article 14 of the French Civil Code authorized a French court to assert jurisdiction over parties who were infringing the national portions of a European Patent in France, Germany, and the U.K.  For discussion, see posts by Matthieu Dhenne and by the HoygRokh Moneiger firm, and an article by Anne-Catherine Chiariny titled Contentieux transfrontière en contrefaçon: competence extraterritoriale du juge français!, in the December 2022 issue of Propriété Industrielle,

4. Aparajita Lath published a post on SpicyIP titled Bill to decriminalise IP offences misses the mark and dilutes significant provisions.  The post criticizes, among other things, a bill that would remove criminal penalties for false statements to the Copyright Office (while leaving intact a provision that permits copyright infringement generally to be prosecuted as a criminal offense, without distinguishing ordinary infringement from piracy; would reduce the penalties for failure to work one's patent; and that would increase the penalties for false patent marking tenfold (leading, the author states, to “disproportionately large penalties”).  Thankfully, the America Invents Act put an end to the U.S. experiment (from 2009-11) with disproportionately large penalties for false patent marking, as I have previously noted here. 

Also on SpicyIP is a post by Prahash Gour titled Delhi High Court Imposes Costs worth INR 2 Cr. for Disobeying Interim Injunction. 2 Crore is equal to about US$250,000.  The court found the defendant in contempt of an injunction ordering it not to sell the accused pharmaceutical product.  The author states, however, that "the court has not elaborated on the reasoning as to how it fixed INR 2 Crore as the costs in the present matter, which could have been a good guiding principle for the courts in the future.

5. Florian Mueller published a post on FOSS Patents titled Burgeoning IP and antitrust jurisdiction: Brazil's Superior Court of Justice allowed Ericsson to enforce preliminary injunction against Apple over FRAND-pledged standard-essential patent.  In addition to discussing the Ericsson/Apple case referenced in the title, the post also mentions some other patent and tech matters in Brazil.  

6. Giulia Pasqualetto published a post on the EPLaw Blog titled IT – Court of Appeal decision touches on filing new prior art documents / generic decision for damage compensation.  The post discusses a decision of the Court of Appeal of Milan, in which the author states the court held that the court of first instance should have granted the plaintiff's request for an order that the defendant provide information relevant to the plaintiff's damages.  In a case like this, where "the court lack[s] the evidence necessary to quantify the damage,"  it is appropriate to issue "a generic decision for damage compensation" accompanied by an order "that the proceedings continue to gather the evidence necessary to quantify the damage suffered" by th plaintiff.    

Sobol on Court-Appointed Experts in Italian IP Litigation

Agata Sobol has published an article titled Italian Supreme Court: importance of the court expert in litigation: GA and GE v Veneto Banca SpA, 45 EIPR 51-55 (2023).  The article discusses an unreported decision of the Italian Supreme Court, dated February 1, 2022, which the author states includes a 50-page (!) discussion of the role of court-appointed experts in Italian litigation.  Here is the abstract:

This is not a judgment issued in an IP case, but it has important consequences for IP litigation in Italy. This judgment concerns the powers of court experts appointed in civil cases. Such court experts are frequently appointed in IP cases in order to assess validity and/or infringement of an IP right (in case of patents), its existence and/or misappropriation (in case of trade secrets) as well as in order to calculate damages suffered due to the alleged infringement. The Italian judge will usually base the decision of the IP case on the evaluation of the facts object of the case made by the court expert. The Supreme Court’s decision at issue confirms that the investigative powers the appointed court experts enjoy, especially with reference to the accounting analysis, are very broad, which is interesting for IPRs holders.

Applying the principles set forth in the decision to IP cases, the author concludes that "assessing damages due to infringement in a litigation in Italy where a court expert can search for data not filed by the parties and can investigate the accuracy of the data received, provides IP right owners with good tools."  She also notes that the forthcoming UPC system will permit court-appointed experts, but on a more limited basis than is now possible in Italy.

Court-appointed experts are used in other jurisdictions to varying degrees, but we don't use them much in the United States, however, despite the fact that Federal Rule of Evidence 706 permits the practice.  Long ago, Learned Hand asked, in his famous decision in Parke-Davis & Co. v. H.K. Mulford Co.,189 F. 95 (C.C.S.D.N.Y. 1911),  "How long shall we continue to blunder along without the aid of unpartisan and authoritative scientific assistance in the administration of justice?”  Former Supreme Court Justice Stephen Breyer also endorsed the use of court-appointed experts, as did Judge Richard Posner--who made use of them himself in some patent cases in which he sat as a district court judge.  Most U.S. judges nevertheless remain pretty reluctant to appoint experts, probably in part because it creates more work for the judges themselves, and probably in part because U.S. lawyers and judges tend to view court-appointed experts as an affront to our (hyper-) adversarial system.