Gómez-Arostegui and Bottomley on Injunctions and Jury Trials

Tomás Gómez-Arostegui and Sean Bottomley have posted a paper on ssrn titled Patent Infringement Suits and the Right to Jury Trial, 72 Am. U. L. Rev. 1247 (forthcoming 2023).  Here is a link to the paper, and here is the abstract: 

This Article analyzes whether the Seventh Amendment affords a right to a jury trial in suits in which the owner of a patent seeks only equitable relief against an accused infringer. The existence of jury rights carries important consequences for litigants. Like many issues involving application of the Constitution, the availability and scope of the right to a jury depends on eighteenth-century English legal history. Current doctrine holds that litigants in equity had no right to a jury in patent cases in England c.1791 and therefore that litigants today who seek only injunctive relief possess no such right either. But as we demonstrate here, the relevant historical record shows the contrary, and thus many litigants have a constitutional right to a jury where the courts presently deny them. We reach our conclusion after undertaking the most comprehensive treatment of the subject to date, which includes marshaling hundreds of eighteenth-century records (mostly in manuscript) from the National Archives of the United Kingdom and elsewhere.

I haven’t read too far into the article yet, but this sounds very interesting.

From Around the Blogs, Part 2

1.  Dennis Crouch has published a couple of short posts recently of interest to the patent remedies community.  Earlier this week, he published a post titled A Book of Wisdom, regarding the Federal Circuit's denial without opinion of a petition for rehearing en banc in Alfred E. Mann Foundation & Advanced Bionics v. Cochlear Corp.  As Professor Crouch explains, the district court awarded the plaintiff $268 million in damages.  The petition for rehearing en banc takes issue with the lower court's application of the "Book of Wisdom," which allows the trier of fact to take into account ex post information in estimating the ex ante royalty the parties would have negotiated.  Professor Crouch expects there will be a petition for certiorari.  Norman Siebrasse and I discussed the Book of Wisdom in our article A New Framework for Determining Reasonable Royalties in Patent Litigation, 68 Fla. L. Rev. 929 (2017); see also the chapter titled  Reasonable Royalties, pp. 28-33, in Patent Remedies and Complex Products:  Toward a Global Consensus 6, 41–46 (Brad Biddle et al. eds. 2019).

Professor Crouch also noted recently that TCL has filed a petition for certiorari in the TCL v. Ericsson dispute, posing the question  "Whether a patent owner required to license its standard-essential patents on fair, reasonable, and nondiscriminatory terms has a Seventh Amendment right to a jury trial in a proceeding seeking the equitable relief of specific performance."  Readers may recall that the Federal Circuit late last year reversed Judge Selna and held that Ericsson had a right to trial by jury; for my previous post, see here.  Law360 also has an article on the cert. petition here, and the Scotus Blog page can be found here.

2.  John LeRoy has published an article on Law360 titled A Musical Solution for Negotiating Wireless FRAND Rates.  The article discusses, among other things, the debate over license-to-all versus access-to-all, and argues that Congress should (1) establish a tribunal, similar to the Copyright Royalty Board, to determine FRAND rates, and (2) authorize the USPTO to make a preliminary determination whether the claims of an issued patent read on a standard.  As I have noted previously, Professor Jorge Contreras also has proposed a  FRAND rate-setting tribunal modeled on the Copyright Royalty Board in his article Global Rate Setting: A Solution for Standard-Essential Patents?, 94 Wash. L. Rev. 701 (2019). 

While on the subject of copyright, but the way, I've been enjoying Gary Rosen's recent book Adventures of a Jazz Age Lawyer:  Nathan Burkan and the Making of American Popular Culture (U. Cal. Press 2020).  Rosen's earlier book, Unfair to Genius: The Strange and Litigious Career of Ira B. Arnstein (Oxford Univ. Press 2012) was terrific too.

3.  Miquel Montañá published a post on the Kluwer Patent Blog titled Actions Against the Threat of Patent Infringement.  Noting that TRIPS article 50.7 states that "Where the provisional measures are revoked or where they lapse due to any act or omission by the applicant, or where it is subsequently found that there has been no infringement or threat of infringement of an intellectual property right, the judicial authorities shall have the authority to order the applicant, upon request of the defendant, to provide the defendant appropriate compensation for any injury caused by these measures,” Sr. Montañá argues that this provision "presupposes that the array of remedies available to the patent owner is not limited to legal actions for patent infringement. Quite the contrary; they include legal actions against mere 'threats of infringement.'"  If I understand correctly, Sr. Montañá contends that article 9(a) of the E.C. Intellectual Property Rights Enforcement Directive, which states inter alia that "Member States shall ensure that the judicial authorities may, at the request of the applicant . . . issue against the alleged infringer an interlocutory injunction intended to prevent any imminent infringement of an intellectual property right," is at odds with this provision of TRIPS, since it only requires member states to issue preliminary injunctions based on "imminent" infringement. 

Federal Circuit Reverses TCL v. Ericsson Judgment on Jury Trial Grounds

Last week while I was in Taiwan the Federal Circuit issued a precedential decision in TCL Communication Technology Holdings, Ltd. v. Telefonaktiebolaget LM Ericsson (opinion by Judge Chen, joined by Judges Newman and Hughes.  The court reverses Judge Selna's FRAND determination from December 2017 (for previous discussion of which, see Judge Chen's thorough discussion at pp. 10-16, as well my previous blog post here), but not on the merits.  Rather, the Federal Circuit concludes that, because (1) the district court's FRAND royalty included, as one component, a release payment intended to compensate Ericsson for TCL's past infringement of Ericsson's SEPs, and (2) this release payment was a form of legal, not equitable, relief, the district court deprived Ericsson of its constitutional right to trial by jury on the amount of the release payment (see pp. 17-27).  Relatedly, the court also concludes that the statement TCL relies on in support of its theory that Ericsson waived its right to a trial by jury on the amount of the release payment did not, in fact, constitute a waiver (see pp. 24-26).  

So, back to the drawing board, apparently.  The fact that the U.S., uniquely among the nations of the world as far as I can tell, still has juries decide patent matters may well be correct under our Seventh Amendment, but it seems crazy to me as a matter of policy--particularly in FRAND cases like this one.  I really have no idea how one can expect a jury of lay people to come to a reasoned determination of something of this complexity, even if (as I think will be the case, see p.27) the jury will only determine the amount of the release payment (that is, past damages).

Federal Circuit: No Right to a Jury Trial on Awards of Attorneys' Fees Under § 285

This morning the Federal Circuit handed down an opinion, AIA America, Inc. v. Avid Radiopharmaceuticals, holding that there is no right to a jury trial on awards of attorneys' fees under § 285 of the Patent Act.  The underlying case was an action for infringement relating to two patents "directed to research technologies stemming from the discovery of the 'Swedish mutation,' a genetic mutation that is associated with early-onset familial Alzheimer’s disease" (p.2).  The district court held a jury trial on the issue of whether AIA had standing to assert its claims, which resulted in a judgment that it did not.  The Federal Circuit summarily affirmed this judgment in 2014, and the litigation then moved to the issue of whether the defendants were entitled to an award of fees under § 285 ("The court in exceptional cases may award reasonable attorney fees to the prevailing party").  The district court awarded fees in the amount of almost $4 million, and AIA appealed, arguing that it was entitled to a jury determination.  Not surprisingly, in my view, the Federal Circuit thinks not:

We first address AIA’s argument that the Seventh Amendment requires a jury trial to decide the facts forming the basis to award attorney’s fees under § 285 of the Patent Act. Specifically, AIA argues that when an award of attorney’s fees is based in part or in whole on a party’s state of mind, intent, or culpability, only a jury may decide those issues. . . .  

A litigant has a right to a jury trial if provided by statute, or if required by the Seventh Amendment. . . . 

The Seventh Amendment preserves the right to a jury trial for “[s]uits at common law.” U.S. Const. amend. VII. The phrase “suits at common law” refers to suits in which only legal rights and remedies were at issue, as opposed to equitable rights and remedies. . . . A legal remedy requires a jury trial on demand, while an equitable remedy does not implicate the right to a jury trial. . . .  A two-step inquiry determines whether a modern statutory cause of action involves only legal rights and remedies. Tull v. United States, 481 U.S. 412, 417–18 (1987). First, we must “compare the statutory action to 18th-century actions brought in the courts of England prior to the merger of the courts of law and equity.” Id. at 417. “Second, we examine the remedy sought and determine whether it is legal or equitable in nature.” Id. at 417–18. The Supreme Court has stressed the second step of this test is the more important of the two. . . .

Turning to the first step, the nature of the claim, English courts for centuries have allowed claims for attorney’s fees in both the courts of law and equity. . . . 

As to the second step, the nature of the remedy, the fact that the relief sought is monetary does not necessarily make the remedy “legal.” . . . In the context of attorney’s fees, when attorney’s fees are themselves part of the merits of an action, they are regarded as a “legal” remedy. For example, a lawyer’s fee claim against a client is a question for the jury, Simler v. Conner, 372 U.S. 221, 223 (1963) (per curiam), and a claim for attorney’s fees under a contractual indemnification provision is a contractual “legal right” that is also a question for the jury, McGuire v. Russell Miller, Inc., 1 F.3d 1306, 1315–16 (2d Cir. 1993). By contrast, when attorney’s fees are awarded pursuant to a statutory prevailing party provision, they are regarded as an “equitable” remedy because they raise “issues collateral to and separate from the decision on the merits.” . . . 

Despite the foregoing, AIA argues that if a decision on attorney’s fees involves considerations of a party’s state of mind, intent, and culpability, then those questions must be presented to a jury under the Seventh Amendment. AIA, however, has pointed to no cases finding that once an issue is deemed equitable, a Seventh Amendment right to a jury trial may still attach to certain underlying determinations. . . .

The court also rejects AIA's arguments that the district judge was precluded from "making factual findings on issues that were not considered by the jury," and that AIA was denied its right to due process of law.  Opinion by Judge Hughes, joined by Judges Newman and Lourie.

Some Recent Scholarship on Patent Remedies

1.  Ted Sichelman's paper Purging Patent Law of 'Private Law' Remedies has now been published in 92 Texas Law Review 517 (2014), available here.  Here is the abstract:

In this Article, Professor Sichelman rejects the fundamental “private law” premise of patent law remedies that courts should always attempt to make the patentee “whole” in the event of infringement because the overarching aim of patent law is to promote innovation, not to remedy private wrongs.  Specifically, make-whole damages may thwart optimal innovation incentives when they concern small components of complex products involving high-switching costs, generate large consumer deadweight losses, result in substantial duplicated costs during the pre-invention R&D process, or create transaction costs far in excess of the value of the invention.  In other situations, a patentee should be made more than whole.  For example, inducing socially valuable innovations that do not command large profits in the private market—such as drugs for rare diseases and technologies for the disabled—may require more than make-whole compensation.
More generally, Professor Sichelman argues that the statutory remedies provisions of the Patent Act rest on a flawed foundation.  Instead of correcting for private wrongs inflicted on private parties, patent law remedies should be tailored simply to promote the types and levels of innovation that most benefit society, taking into account administrative and error costs.  As such, Professor Sichelman proposes that the patent system and its associated remedies should be viewed as part of a public regulatory regime designed to further societal goals rather than a private law system that protects individual interests.

The online companion to the Texas Law Review, called "Texas Law Review See Also," provides commentary on the paper by Dan Burk and by me.  An earlier draft of my commentary, which I blogged about here, is available here.

2.  The final version of my essay Reining in Patent Remedies:  Three (Increasingly Immodest) Proposals also is now out, in 30 Santa Clara Computer & High Technology Law Journal 1 (2013) (available here).  Here is the abstract:

This essay, which builds on my recent work on the law and economics of comparative patent remedies, presents three proposals relating to the enforcement of domestic patent rights. The first, which may be close to being adopted in the United States, is for the courts and the International Trade Commission (ITC) to adopt a general presumption, grounded in patent law and policy, that patent owners who have committed to license their standard essential patents (SEPs) on fair, reasonable, and nondiscriminatory terms are not entitled to permanent injunctions or exclusion orders, but rather only to a damages in the form of an ongoing royalty calculated on the basis of what a reasonable licensor and licensee would have agreed to prior to the adoption of the standard in question. Countries such as Germany that have addressed the issue of remedies for the infringement of SEPs within the context of competition law, while otherwise leaving in place an almost-automatic entitlement to permanent injunctive relief, have in my view taken the wrong tack.
Second, I argue that Congress should amend Patent Act Section 289, which permits design patent owners to recover the infringer’s profits, so as to require that such awards reflect only the profit derived from the use of the infringed design (and not the entire product of which the design is a part). Such apportionment is the norm in other countries (and in U.S. copyright and trademark law). By contrast, the archaic U.S. design patent rule threatens substantial overdeterrence and overcompensation, as reflected in the recent jury award in Apple v. Samsung.
My third suggestion—really more of a thought experiment inspired by Judge Posner’s opinion in Apple v. Motorola than a serious proposal for reform—is to consider whether it would be possible to eliminate the unique U.S. practice of trial by jury in a wide swath of U.S. patent cases by statutorily recasting awards of reasonable royalties as a form of equitable restitution rather than as compensation.

3.  A couple of student papers on patent remedies that I supervised have now been published as well.  One is Jaimeson Fedell's A Step in the Right Direction:  Patent Damages and the Elimination of the Entire Market Value Rule, 98 Minnesota Law Review 1143 (2014), available here.  The other is George David Kidd's Accuracy or Efficiency:  Has Grain Processing Made a Difference?, 15 Minnesota Journal of Law, Science & Technology 653 (2014).

4. Samuel Bray's paper The Myth of the Mild Declaratory Judgment has been published in volume 63 of the Duke Law Journal, available here.  I blogged about an earlier draft of this paper in November, here.  At that time, I described the paper as making some persuasive points about the relationship between declaratory judgments and injunctions, while also noting that I found a few of the things the author said about declaratory judgments involving patents questionable.  The final version of the paper responds to some of these latter points, and overall (as I said before) the paper is definitely worth a read.

5.  I'd also like to call attention to a blog I discovered only last week, Patent Damages.  The blog is maintained by Chris Marchese and Justin Barnes of Fish & Richardson, and the blog appears to concentrate on U.S. patent damages cases.  I've added it to my list "Other Blogs of Interest" in the left-hand column of this page, and will be consulting it regularly.

6.  As reported on IPKat, over at the Journal of Intellectual Property Law and Practice (JIPLP) Blog Darren Smyth has a write-up on the Patents Court (Eng. & Wales) decision on springboard injunctions in Smith & Nephew Plc v. Convatec Technologies Inc., [2013] EWHC 3955.  I blogged about this decision in January, here, noting among other things that the springboard injunction does not appear to be a viable option under U.S. law.

7.  Last but not least, I came across a few other interesting announcements recently.  One is for a book published in 2011, Robert Resis's Preliminary Relief in Patent Infringement Disputes.  The publisher is the Intellectual Property Law Section of the American Bar Association and the relevant information can be found here.  Another is for a book titled Criminal Enforcement of Intellectual Property: A Handbook of Contemporary Research (Christophe Geigner ed., Edward Elgar 2012); information available here.  In addition, I discovered a service called Docket Navigator that publishes U.S. patent litigation statistics; website here.  I noticed that this service reports 6,020 new U.S. district court patent cases in 2012, which is higher than the figure (5,189) reported by PriceWatershouseCooper in its report for 2013, available here.  There must be some differences in methodology; Docket Navigator states that "Transferred, consolidated, coordinated, or bifurcated actions may contribute to the number of cases counted."     

     

Friday Miscellany: Reasonable royalites, NPEs, FRAND, and other topics

1.  Christopher S. Marchese, Michael E. Florey, and Juanita R. Brooks have published Retooling Patent Damages Law for NPE Cases, 14 Sedona Conference Journal 47 (2013).  The authors propose abolishing use of the Georgia-Pacific factors in cases in which NPEs are plaintiffs, and instead allowing NPEs to recover either (1) an established royalty, if there is one, or (2) "a fully-paid up lump sum award of reasonable royalty damages," which would be "based on the value of the patented invention over the next best noninfringing alternative (NBNA) at the time the defendant adopted the patented invention," split as the parties themselves would have split it.  The authors would also permit enhanced damages in cases in which the lump-sum award is insufficient.  There's much to agree with here, though like Durie & Lemley I think that a proper application of Georgia-Pacific requires that the factors be used only as relevant to the overarching question of what the willing licensor and willing licensee would have agreed to ex ante.  I also don't disapprove altogether of the use of ex post evidence (the book of wisdom) or royalties paid in settlement, as these authors do, though I think courts should be very careful in using such evidence to shed light on what the ex ante royalty would have been.

2. Bernard Chao & Jonathan R. Gray have published a short paper, A $1 Billion Parable, 90 Denver U. L. Rev. 185 (2013), arguing that a $1 billion judgment awarded to Monsanto in a 2012 trial was excessive, even though consistent with the law it comprised a lump-sum royalty based on expected sales (which never occurred; the defendant DuPont made, but wound up never selling, any infringing seed).  The authors argue that "No company . . . would pay one billion dollars to license an untested product under development."

3. Greg Sivinski of Microsoft has published Patently Obvious:  Why Seeking Injunctions on Standard-Essential Patents Subject to a FRAND Commitment Can Violate Section 2 of the Sherman Act, CPI Antitrust Chronicle 2013(1).  I disagree with the author's conclusion that U.S. antitrust law has a major role to play in this space, for reasons expressed here, but I'm sure that some readers will disagree with me on this.

4.  I recently met Martha Gooding of Jones Day at the Fifth Annual Patent Law & Policy Conference at Georgetown.  She has published four very interesting articles in Bloomberg BNA's Patent, Trademark, and Copyright Journal (PTCJ):  Early Patent infringement Damages Evaluation:  Case Management Techniques (with William C. Rooklidge), 86 PCTJ 310 (June 7, 2013), which discusses, among other things, "reverse bifurcation" of the sort Judge Holderman employed in the Innovatio case (see my thoughts on this, here and here); Analyzing the "Analytic Method" of Calculating Reasonable Royalty Patent Damages, 84 PCTJ 78 (May 11, 2012); Patent Damages Mulligans?  What Happens When the Patentee Fails to Sustain Its Burden of Proving a Reasonable Royalty?, 83 PCTJ 875 (Mar. 9, 2012); and Reasonable Royalty Patent Damages and the "Smallest Salable Patent-Practicing Unit" Dicta, 86 PCTJ 771 (Aug. 9, 2013).  I have some disagreement with the last of these, which argues that "the smallest salable infringing unit may be an appropriate starting point for the royalty base analysis," but that if it "contains unpatented components or features, the patentee still must apportion the damages claimed between the patented and unpatented technology".  In my view, if we must use a royalty base and a royalty rate to calculate a reasonable royalty, the base and rate ideally should be the ones the parties themselves likely would have chosen.  On this view, the base could be the entire end product, if that's what the parties would have chosen (say, for convenience), as long as it's multiplied by an appropriately small royalty rate.  The problem is that in the U.S. juries usually make these determinations, and the fear is that if a jury hears evidence about an enormous royalty base, it will award an inflated royalty because it's hard to process the idea of using a minute rate (e.g., 0.00001%).  So the "smallest salable patent practicing unit" is a way to keep such evidence away from the jury, except in cases in which the patented feature drives the demand for the product (in which case you get to use the "entire market value" as the base).  On this view, "smallest salable patent practicing unit" is simply a way to control juries; we should focus on its function rather than on formalities.  As long as the base is small enough to avoid the risk that juries will unduly swayed to over-reward, that should suffice, in my view; the judge should then exercise discretion to keep expert testimony focused on an appropriate royalty rate.  But we'll see how the law develops.

5.  On Sufficient Description, Professor Siebrasse has an interesting post on the disparity, in Canada, between attorneys' fees awarded in litigation and actual attorneys' fees incurred.

5.  PatLit has an interesting post from October 31 titled "Patent Litigation Statistics:  A Task for Do-It-Yourself Enthusiasts?.  Bottom line is that the U.K. IPO does not keep statistics on median patent damages awards and the like.

6.   IPKat has an interesting two-part discussion of a recent conference in London on Standards, FRAND, NPEs, and Injunctions, see here, here, and here. The Kat also links to a recent article by Professor Phillip Johnson titled 'Damages' in Euyropean Law and the Traditional Accounts of Profits, Queen Mary J. Intell. Prop. 296 (2013), which I will read and perhaps blog about sometime soon.

7.  Update.  Florian Mueller has a couple of patent damages-related posts up on Foss Patents today:  German Court Stays Google-Apple FRAND Rate-Setting Case, Invites EU Commission to Participate, available here, and Judge Conditionally Bars Samsung from Pointing Next Week's Jury to the Apple-HTC Settlement Deal, available here.

8.  Further Update.  IPKat has a post today on a recent debate on whether the U.K. should adopt criminal penalties for design infringement, available here.

Revised Versions of Two of My Recent Papers

A mildly revised version of my paper The Comparative Law and Economics of Standard-Essential Patents and FRAND Royalties, which I posted a month ago and blogged about here, is now available, here.  I made a few changes in response to comments by Norman Siebrasse and the various commentators at the University of Florida workshop where I presented the paper.  (I also live-blogged that event, which featured papers by Dennis Carlton, Keith Hylton, and other luminaries; links are here, here, here, here, here, here, and here.)  In addition, I benefited from Katherine Bryan's cite-checking and Matt Hu's translation of portions of the Samsung v. Apple Korea decision (see new version of paper, footnotes 29, 67, and 122); Katherine is fluent in German, Matt in Korean.  Finally, I've updated a few things that to take into account developments within the last month. I understand that all or most of the participants in the Florida workshop will be presenting their papers again at the University of Texas School of Law on February 21, 2013, and that my paper and the others will be coming out at some point in the Texas Intellectual Property Law Journal.

A very slightly revised version of another paper of mine, Reining in Remedies in Patent Litigation:  Three (Increasingly Immodest) Proposals, can be found here.  This paper was prepared for a symposium at Santa Clara and will be published in the Santa Clara Computer and High Technology Law Journal.  The abstract goes like this:

This essay, which builds on my recent work on the law and economics of comparative patent remedies, presents three proposals relating to the enforcement of domestic patent rights. The first, which may be close to being adopted in the United States, is for the courts and the International Trade Commission (ITC) to adopt a general presumption, grounded in patent law and policy, that patent owners who have committed to license their standard essential patents (SEPs) on fair, reasonable, and nondiscriminatory terms are not entitled to permanent injunctions or exclusion orders, but rather only to a damages in the form of an ongoing royalty calculated on the basis of what a reasonable licensor and licensee would have agreed to prior to the adoption of the standard in question. Countries such as Germany that have addressed the issue of remedies for the infringement of SEPs within the context of competition law, while otherwise leaving in place an almost-automatic entitlement to permanent injunctive relief, have in my view taken the wrong tack. Second, I argue that Congress should amend Patent Act § 289, which permits design patent owners to recover the infringer’s profits, so as to require that such awards reflect only the profit derived from the use of the infringed design (and not the entire product of which the design is a part). Such apportionment is the norm in other countries (and in U.S. copyright and trademark law). By contrast, the archaic U.S. design patent rule threatens substantial overdeterrence and overcompensation, as reflected in the recent jury award in Apple v. Samsung. My third suggestion — really more of a thought experiment inspired by Judge Posner’s opinion in Apple v. Motorola than a serious proposal for reform — is to consider whether it would be possible to eliminate the unique U.S. practice of trial by jury in a wide swath of U.S. patent cases by statutorily recasting awards of reasonable royalties as a form of equitable restitution rather than as compensation.

Some new papers of mine on patent remedies

Professor Ted Sichelman will be publishing a paper in a forthcoming issue of the Texas Law Review titled "Purging Patent Law of ‘Private Law’ Remedies".  The review solicited a response from me in its online supplement, "Texas Law Review See Also."  I don't think that a current version of the Sichelman paper is available on ssrn (though I assume the print version will be out very soon), but my short response--titled "Make No Little Plans: Response to Ted Sichelman, Purging Patent Law of ‘Private Law’ Remedies"--is available on ssrn, here.  Here is the abstract of my response:

This essay responds to Professor's Ted Sichelman's forthcoming article, Purging Patent Law of "Private Law" Remedies, 91 Tex. L. Rev. __ (2013), which argues that courts should abandon the conventional view of patents as private rights for which private-law remedies are appropriate, and instead should award damages and injunctions only when, and to the extent that, doing so serves the public interest for which patents are granted in the first place. Although some of Sichelman’s specific recommendations are well within the mainstream of contemporary patent scholarship, in particular some of his recommendations relating to permanent injunctions and enhanced damages, he also argues that courts should award monetary relief for patent infringement so as to align ex ante incentives with ex post rewards; this could mean awarding either more or less than would be necessary to restore the patentee to the position it would have occupied but for the infringement (the traditional benchmark for compensatory damages). Although I remain skeptical that such a system could ever work in the real world, Sichelman defends his thesis with aplomb – and recognizes its practical infeasibility in the near term. In addition, his analysis suggests that at least in industries in which patents are unlikely to play a major role in inducing invention, disclosure, or commercialization, efforts to ensure that defendants restore patentees to the position they would have occupied, but for the infringement, may not be worth the candle; some risk of undercompensation may be more tolerable than is commonly assumed. I will suggest that this implication, if valid, possibly could have some practical payoff even in the short run.

I also posted an undated version of a symposium piece that will be coming out in the Santa Clara Computer & High Technology Law Journal, here.  (The updates are pretty modest, so if you've read the previous version there's probably no good great urgency to reading this version.)  Here is the abstract:

           This essay, which builds on my recent work on the law and economics of comparative patent remedies, presents three proposals relating to the enforcement of domestic patent rights. The first, which may be close to being adopted in the United States, is for the courts and the International Trade Commission (ITC) to adopt a general presumption, grounded in patent law and policy, that patent owners who have committed to license their standard essential patents (SEPs) on fair, reasonable, and nondiscriminatory terms are not entitled to permanent injunctions or exclusion orders, but rather only to a damages in the form of an ongoing royalty calculated on the basis of what a reasonable licensor and licensee would have agreed to prior to the adoption of the standard in question. Countries such as Germany that have addressed the issue of remedies for the infringement of SEPs within the context of competition law, while otherwise leaving in place an almost-automatic entitlement to permanent injunctive relief, have in my view taken the wrong tack. Second, I argue that Congress should amend Patent Act § 289, which permits design patent owners to recover the infringer’s profits, so as to require that such awards reflect only the profit derived from the use of the infringed design (and not the entire product of which the design is a part). Such apportionment is the norm in other countries (and in U.S. copyright and trademark law). By contrast, the archaic U.S. design patent rule threatens substantial overdeterrence and overcompensation, as reflected in the recent jury award in Apple v. Samsung. My third suggestion — really more of a thought experiment inspired by Judge Posner’s opinion in Apple v. Motorola than a serious proposal for reform — is to consider whether it would be possible to eliminate the unique U.S. practice of trial by jury in a wide swath of U.S. patent cases by statutorily recasting awards of reasonable royalties as a form of equitable restitution rather than as compensation.