Müller-Stoy and Lepschy on BSH v. Electrolux

Tilman Müller-Stoy and Paul Lepschy have published an article titled Practical Implications of BSH v Electrolux for resolving global patent disputes, 7/2025 GRUR Patent 331.  Here is the abstract:

Until recently, the following practical rule applied (with a few exceptional cases in the Netherlands in interim proceedings):  39 EPC Member States — theoretic need for 39 infringement actions.  This rule changed when the UPC opened its doors on 1 June 2023 offering a one-stop-shop for patent disputes in the EU, centralizing infringement and revocation proceedings for meanwhile 18 Contracting Member States.  And it changed again in spring 2025 with the ruling of the CJEU in BSH v Electrolux offering a one-stop-shop litigation solution also for the remaining nine EU Member States, the remaining 12 non-EU members of the EPC, and in fact any third state when dealing with EU-domiciled defendants.  This article analyses practical implications of the ruling on the level of national courts as well as on the UPC level from a claimant’s and a defendant’s perspective.  Some open questions are addressed and a short outlook is provided.

The article makes a number of interesting observations, among them that an EU-domiciled defendant can now be sued for the infringement of a U.S. patent.  (According to ip fray and JUVE Patent, this has now happened in at least one case pending in Munich—a good reason, perhaps, for U.S. patent professionals who don’t already do so to start reading some of the non-U.S. commentary and journals!)  The authors also suggest that some plaintiffs may try a “split strategy” of suing for an injunction in the E.U. (which might apply eBay differently from a U.S. court—assuming that remedies are considered substantive law, I assume) and for an award of damages in the U.S. (given the possibility of treble damages for willful infringement—though as the authors also note, there might a question whether an E.U. court would refuse to award treble damages on public policy grounds).  I wonder, though, if such a split strategy would be advisable, or is even possible?  The authors also discuss whether the UPC has authority under the UPCA to determine invalidity on an inter partes basis, in a case in which that would otherwise be permitted under BSH (see p. 335).

For previous posts on this blog about BSH, see, e.g., here, here, and here.

2024 US-China Patent Valuation and Damages Workshop

A workshop report titled The 2024 Patent Valuation and Damages Workshop: A US-China Comparative Law Perspective is available on ssrn, and should be of interest to anyone following U.S. and Chinese patent and/or SEP litigation.  I remotely delivered a presentation on compensatory patent damages in the U.S. at the workshop, which was held in May 2024 and included presentations by several other U.S. and Chinese participants.  Here is a link to the report, and here is the abstract:

This report summarizes the proceedings of the 2024 Patent Valuation and Damages Workshop: A U.S.–China Comparative Law Perspective, jointly organized by the Berkeley Asia IP & Competition Law Center (BAIC), Berkeley Center for Law and Technology (BCLT), KoGuan School of Law at Shanghai Jiao Tong University, and the Institute of Intellectual Property and Competition Law. Held in Shanghai on May 28, 2024, the workshop convened leading judges, scholars, practitioners, in-house counsel, and economists from both countries to examine the evolving frameworks for patent damages and valuation. As the inaugural workshop on patent law and practice from a U.S.–China comparative perspective, pioneered by BAIC and BCLT, it explored compensatory damages (lost profits, reasonable royalties, price erosion, apportionment), punitive damages and their deterrence effects, the challenges of valuing and licensing standard-essential patents (SEPs), and the “important but limited” role of judicial rate setting in shaping technology markets. With attention to both theoretical underpinnings and practical case studies, the report highlights key similarities and divergences in practice, as well as the implications for global patent litigation and licensing. By capturing this pioneering comparative dialogue, the report provides valuable insight into the jurisprudential evolution of patent remedies and their broader policy context in the world’s two largest innovation economies.

Quintuple Damages in South Korea

As readers may be aware, China’s IP laws now authorize up to quintuple damages for the intentional or malicious infringement of IP rights that causes serious consequences.  I was not aware until just recently, however, that South Korea enacted similar legislation last year, applicable to patents (and, by extension, to utility models and plant variety rights) and to trade secrets.  The relevant provision of the patent act is section 128(8), and the current text (in Korean) can be found at https://wipolex-resources-eu-central-1-358922420655.s3.amazonaws.com/edocs/lexdocs/laws/ko/kr/kr332ko_1.pdf.  For further discussion, there are several English-language discussions by Korean IP practitioners, including here, here, and here.  Enhanced damages remain out of bounds in Japan, however, while to my knowledge Taiwan so far has stuck with at most treble damages enhancements for certain IP rights, including patents.  

In other (albeit somewhat related) news, I am pleased to note that I have now turned in the manuscripts of my two pending book projects, Wrongful Patent Assertion:  A Comparative Law and Economics Analysis, and Remedies in Intellectual Property Law (the former to OUP, the latter to Elgar).  I now plan to take a work and blogging break for the next two weeks, with the blog resuming on or about July 7.  

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.

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.  

News from China

I hope to have something to say about InterDigital v. Lenovo soon, but until then, here is a post on some recent publications relating to China.

1.  Ling Yu and You Zuo have published Coping with the standards wars:  the practice of the Chinese court, 18 JIPLP 18-29 (2023).  Here is a link (you may need a subscription, however), and here is the abstract:

 

Over the past decade, disputes regarding the enforcing and licensing of standard-essential patents (SEPs) have been the subject of litigation worldwide, leading to cross-jurisdictional standards wars. Since 2013, when a dispute on the licensing of SEPs was litigated in China for the first time, the Chinese courts have been proactive in seeking the effective resolution of such disputes.

 

This article introduces the practice of Chinese courts developed in the face of the emergence and prevalence of the standards war. For infringement issues, the Chinese courts are conservative with regard to the granting of injunctive relief to SEP owners and are lenient towards promoting adequate negotiations between the parties. For royalty issues, the Chinese courts support the judicial determination of licensing conditions and are prudent towards the application of anti-suit injunctions.

2. Professor Yu also has published an article titled Permanent injunction on intellectual property rights:  judicial experiences in China, 45 EIPR 154-60 (2023).  The article discusses IP cases (including but not limited to patents) in which Chinese courts have declined to enter permanent injunctive relief in favor of the prevailing plaintiff.  Here is the abstract:

 

In China, permanent injunction is categorised as one type of civil liability, different from preliminary injunction as procedure institution. Once determined to constitute an infringement of intellectual property rights, the Chinese court supports in principle the request for a permanent injunction by the right holder. In recent years, judicial policy and judicial practice have broken the inherent model, but the restriction of the application of permanent injunction is still an exception. Based on the Chinese courts’ judgments of the past 10 years, this article analyses the application conditions of the permanent injunction, the reasons for the restrictions of the application, and its alternative measures.

3. Also worth noting is Tian Lu’s recent blog post on IPKat titled Supreme Court of China casted punitive damages upon post-settlement agreement repeated patent infringement.  The post discusses a recent decision of the Supreme People’s Court ordering a defendant who violated a settlement agreement, under which it agreed to pay RMB 30,000, to pay punitive damages doubling the award, if I understand correctly, for continuing to infringe.  The post sets forth provisions of the SPC’s “Interpretation on the Application of Punitive Damages in the Trial of Intellectual Property.”  The author also notes that she has a chapter, titled Punitive damages for intellectual property rights infringement in China, in a forthcoming edited volume to be published by IPKat.  I will make sure to get a copy.

Zhang on Characteristics of LItigated Patents in China

Huiyan Zhang has posted a paper on ssrn titled Characteristics of litigated patents in weak intellectual property rights regimes: Evidence from China (link here).  This (very interesting) paper is relevant to damages law, as you can see by reading the abstract below.

 

            This paper investigates characteristics of patents involved in infringement lawsuits in weak intellectual property rights (IPR) regimes. Weak IPR regimes usually feature weak patent enforcement, such as relatively low level of compensation to infringement loss or damage awards being capped by an upper bound. I build a dynamic model to show how these low-enforcement features lead to patterns of litigated patents that are not documented in the Western countries. I compile a new dataset comprising 17,331 Chinese litigated patents and their counterparts- 306,898 non-litigated patents. I find that valuable patents are less likely to be litigated than patents with lower values among invention patents while this pattern does not hold among utility models- the type of patents inferior to invention patents. I also document that China’s patent infringement litigation rate is extremely low by international standards, and it has been decreasing sharply over time. Litigated patents tend to concentrate in technological areas and industries in which litigation rates are relatively low in Western countries. These empirical patterns suggest that weak IPR regimes might create a “lemon market” for patent protection in which truly valuable patents are “crowded out” by their counterparts with lower value. Enhancing patent enforcement by eliminating the cap to damage awards might be a feasible solution.