“FRAND Cases in Context” Due Out in January

Jorge Contreras’ new edited volume, FRAND Cases in Context (Edward Elgar Publ.) is now scheduled for publication in January.  The book will be available on an open-access basis, and for sale in hardcover.  My chapter, on the U.S. Apple v. Motorola litigation, is one of the chapters.  As the book description states, the volume “provides concise summaries and analyses of 28 leading global cases concerning the licensing of standards-essential patents on fair, reasonable, and non-discriminatory (FRAND) terms. Cases are drawn from leading jurisdictions in global FRAND disputes across Asia, Europe, North America, and South America.”  More information is available here.

 

 

UPC Court of Appeal Invokes Proportionality in Approving Injunction Carve-Out

In the joined appeals in Meril Italy Srl et al. v. Edwards Lifesciences Corp., UPC__CoA__A464/2024 et al. (Nov. 25, 2025), Panel 1 of the UPC Court of Appeals decided several important issues, most notably relating to inventive step, in regard to a claim of infringement of EP 3 646 825, for “a system comprising a prosthetic heart valve and a delivery catheter” (p.6).  For present purposes and for brevity, I will focus exclusively on the (also very important) remedy question presented, namely whether the hardship resulting from a permanent injunction directed against certain infringing products would be disproportionate, and therefore should be subject to a carve-out.  The Court concludes that the answer is yes.

To put the matter in perspective, UPCA article 63(1) states that “Where a decision is taken finding an infringement of a patent, the Court may grant an injunction against the infringer aimed at prohibiting the continuation of the infringement,” and article 64(1) states that the court “may order . . . that appropriate [corrective] measures,” such as recall, removal, and destruction, be taken.  Article 64(4) further states that “[i]n considering a request for corrective measures pursuant to this Article, the Court shall take into account the need for proportionality between the seriousness of the infringement and the remedies to be ordered, the willingness of the infringer to convert the materials into a non-infringing state, as well as the interests of third parties.”  There is no corresponding provision in article 63.  The UPCA should be interpreted in conformity with the Enforcement Directive, however, which states in article 3(2) that “remedies shall . . . be effective, proportionate and dissuasive and shall be applied in such a manner as to avoid the creation of barriers to legitimate trade and to provide for safeguards against their abuse”—though as most readers probably are aware, it has long been a matter of debate whether this provision requires courts to consider the proportionality of injunctive relief in every case, or only certain special cases, or (as some have argued) perhaps no cases at all, as long as proportionality is guaranteed “from the functioning of the patent system as a whole.”  See, e.g., Lea Tochtermann, Injunctions in European Patent Law, 11 ZGE//IPJ 257, 265 (2019). 

Anyway, in the present matter, the Munich Local Division had concluded that one of Meril’s product lines (the Meril XL devices), though infringing, should be subject to a carve-out from permanent injunctive relief and corrective measures, because for certain patients there are no good substitutes for a product of the same size; but for Meril’s intermediate-size products, the evidence did not demonstrate any “notable enhancement in patient care” (p.46 para. 192), and thus no carve-out would be appropriate.  The Court of Appeal affirms, and in doing so actually makes it a bit easier for Meril to keep the XL devices on the market.

The Court begins its discussion of these matters by stating that “Art. 64 IPCA does not merely confer on the Court the power to grant the measures requested.  The Court has no discretion” (p.45, para. 187), and that “[t]he same applies to permanent injunctions” (p.46, para. 188).  “Accordingly, where the proprietor files an infringement action and the Court finds that an intellectual property right has been infringed or is threatened to be infringed, it shall issue an order prohibiting the continuation of the infringement unless there are special reasons for not doing so” (p.46 para. 189).  However—and this, I think, is significant:

A special reason for denying an injunction may apply if, in the circumstances of the particular case, granting an injunction does not comply with the general obligations of Art. 3 of the Enforcement Directive, in particular the obligation that the remedies shall be proportionate. In addition, the Court must ensure that the application of its power under Art. 63(1) UPCA is not in conflict with fundamental rights protected by the European Union legal order or with other general principles of EU law, such as the principle of proportionality (CJEU, judgement of 29 January 2008, Promusicae, C-275/06, ECLI:EU:C:2008:54, paragraph 68; judgement of 27 March 2014, UPC Telekabel Wien, C-314/12, ECLI:EU:C:2014:192, paragraph 46; judgement of 16 July 2015, Coty Germany, C-580/13, ECLI:EU:2015:485, paragraph 34).

 

When considering the proportionality of injunctive relief and corrective measures, the Court may take into account not only the interests of the parties to the litigation but also the interests of third parties, such as patients. The Munich Local Division correctly held that the interests of the patients justify an exception to the right to injunctive relief and corrective measures if it is established that the infringing embodiment is the sole available treatment method or represents an improvement upon the available treatment methods, resulting in a notable enhancement of patient care (id. paras. 190-91).

As noted, the Court agrees that the XL devices may remain on the market, but disagrees with the Munich Local Division in one respect:

As far as Meril’s XL devices are concerned, the Munich Local Division acknowledged a legitimate interest in their availability. It established that there may be patients who can only be adequately treated with Meril’s XL devices, in view of inter alia the fact that Edwards’ products are not recommended for native annulus sizes of more than 28 mm. It therefore exempted XL devices that were scheduled for implementation in an individualized patient by 15 November 2024 from the injunction and the corrective measures. This part of the judgment is not challenged on appeal.

 

In respect of XL devices not scheduled for implementation, the Munich Local Division held that the interest in their availability is adequately addressed through Edwards’ Medical Request Portal. Via this online portal, practitioners can upload relevant patient data. A team of doctors at Edwards review the data and determine whether use of Edwards’ product is an option. If the doctors find that using Edwards’ products is not an option, Edwards will grant an exception to the injunction.

 

The Court of Appeal agrees with Meril India and Meril Germany that Edwards’ portal does not adequately address the legitimate interest in the availability of Meril’s XL devices. The availability of these products should not depend on the willingness of Edwards to maintain the portal or on the assessment by Edwards’ team of doctors. A notification of an intention to use Meril’s XL device by a physician confirming that such product is the only available treatment option for a particular patient should be sufficient. The Court of Appeal will therefore amend the injunction and orders for corrective measures accordingly and maintain them on the basis of an auxiliary request which the parties have drafted in common accord during the oral hearing in the appeal proceedings.

 

Under the amended orders, the making, offering, placing on the market and use of Meril’s XL devices, and the importing and storing of the products for those purposes, are not covered by the injunction and corrective measures, provided that a physician has submitted the required notification. Contrary to the concerns put forward by Meril India and Meril Germany, this implies that the injunction does not prohibit them from making doctors aware of the availability of the XL devices where it is the only treatment option for a particular patient (p.47, paras. 194-97).

The Court concludes this section of the judgment by noting that, although the Munich Local Division “regarded Meril India and Meril Germany as unwilling licensees,” its “findings were not decisive for the Court’s decision to grant the injunction and the corrective measures” with respect to the intermediate-sized products.  The Court of Appeal therefore does not need to review the “unwilling licensee” issue.  It also permits Edwards to publish the decision and amends the costs award.

Alba, Helmers and Love on Octane Fitness’ Effect on PAEs and Innovation

Tommaso Alba, Christian Helmers, and Brian J. Love have posted a paper on ssrn titled A Tale of Trolls and Fees:  The Role of Fee-Shifting in Patent Litigation.  Here is a link to the paper, and here is the abstract:  

Patent Assertion Entities (PAEs) are often viewed as taxing innovative activity; we show how fee shifting in patent litigation can effectively deter their more frivolous assertions, increasing exposed firms' R&D, innovation output, and startup success. Our identification relies on the U.S. Supreme Court's 2014 ruling in Octane Fitness v. ICON Health & Fitness, which broadened courts' discretion to award attorneys fees against exceptionally weak infringement claims. Using a quasi-regression discontinuity design comparing cases pending at Octane's release with those filed and decided before or after, we find that the decision increased defendants' willingness to contest weak claims and prompted plaintiffs, especially PAEs, to file stronger ones. Pending cases saw more fee awards and lower settlement as well as plaintiff success rates; subsequent PAE cases involved stronger patents and higher success rates. A difference-in-differences analysis further shows that Octane boosted innovation: public firms that were particularly exposed to PAE assertions prior to Octane increased R&D and patenting in response, and private startup firms performed better in venture capital markets.

On a somewhat related note, the Federal Circuit last week affirmed a judgment awarding fees in EscapeX IP, LLC v. Google LLC, precedential opinion by Judge Stark joined by Judges Taranto and Stoll.  The court found no abuse of discretion in view of the district court’s finding—“well-supported in the record and . . . part of the totality of circumstances,” that "EscapeX failed to conduct an adequate pre-suit investigation” (p.8).  The court also affirmed additional fees and an award pursuant to 28 U.S.C. § 1927, in connection with the patentee’s Rule 59(e) motion to amend the judgment.

My Book "Remedies in Intellectual Property Law" Is Now Available for Pre-Order

My book Remedies in Intellectual Property Law (Edward Elgar Publ. 2026) is now available for pre-order.  Publication expected sometime in January!  Details here.  I understand that there will be an eBook available as well.

 

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.

Conference on the Intellectual Property Rights Enforcement Directive

Tomorrow and Friday, the Faculty of Law, Economics and Finance at the University of Luxembourg will be presenting a conference titled Equality of Arms: Revisiting the IPR Enforcement Directive.  Here is the description:

Directive 2004/48/EC on the enforcement of intellectual property rights (IPRED) marked its 20th anniversary last year. Originally adopted to harmonise national enforcement regimes and strengthen the position of right holders, IPRED has had a significant impact across the EU—particularly in combating piracy and counterfeiting. Nevertheless, enforcement practices still vary widely among Member States. Moreover, the Directive’s right holder-centric focus has raised concerns about a potential lack of balance in the enforcement framework. In response, the European Commission (DG GROW) has launched a study on the implementation of IPRED, which also considers possible legislative amendments.

 

With a particular focus on the concept of “equality of arms”, this working conference examines whether the Directive provides a sufficiently harmonised and balanced enforcement regime—or whether its design requires reform. Bringing together leading figures from academia, legal practice, and the judiciary across multiple jurisdictions, the event will explore key issues addressed in the Commission’s study, including dynamic blocking injunctions and proportionality. It will also discuss important yet underexplored topics, such as the award and calculation of damages and unjustified enforcement of IPRs.

I have a scheduling conflict, or I would be there myself—looks like a terrific event!  For further information, see here.

Federal Circuit Vacates Lost Profits Award

The case is Inventist Inc. v. Ninebot Inc. (USA), nonprecedential opinion (released last Friday) by Judge Dyk, joined by Judges Hughes and Stark.  The patent in suit (the ’250 patent) “discloses an electrically powered self-balancing unicycle” (p.2).  The patentee alleged that two generations of defendant’s products infringed.  The district court, construing the claims, concluded that the first generation infringed as a matter of law (and the defendant “does not challenge this ruling on appeal, p.4 n.2), but that the second generation did not.  The case went to trial on damages, and a jury awarded $835,220 in lost profits and $29,593 as a reasonable royalty.  Both parties appeal certain aspects of the lower court’s judgment.  The Federal Circuit affirms the finding that the defendant’s second generation product did not infringe, but vacates the damages award; given the subject matter of this blog, I will focus on the latter.

As for damages, the defendant argues, first, that it is entitled to a new trial “because the evidence was insufficient to establish marking of Inventist’s products in compliance with 35 U.S.C. § 287(a)” (pp. 8-9); but the Federal Circuit concludes that it lacks jurisdiction to consider this argument, because the defendant “did not amend its notice of appeal to include the district court’s later ruling on the new trial motion” (p.9).  Similarly, the defendant argues that “the lost profits award cannot be sustained because “the district court’s acceptance of Inventist’s flawed lost profit theory was unsupported by the evidence and contrary to well established law,” but the appellate court says it can’t consider this issue either because the defendant “did not file a [Federal Rule of Civil Procedure] Rule 50(b) motion after the verdict, nor did it file a motion for new trial on this ground” (p.10).  However, the defendant did preserve its third damages argument, that “the district court improperly excluded evidence of noninfringing substitutes” (id.), and the Federal Circuit agrees:

            The district court excluded “any proposed evidence” of “[n]on-infringing substitutes not on sale during period of infringement” and did not instruct the jury about the second Panduit factor [absence of acceptable noninfringing substitutes]. . . . Under our precedent in Grain Processing Corp. v. American Maize-Products Co., 185 F.3d 1341, 1349 (Fed. Cir. 1999), the noninfringing substitutes need not be on sale. Evidence of “available alternatives—including but not limited to products on the market”—may be used “to preclude lost profits damages.” Id. We held that under Panduit, “[t]he ‘but for’ inquiry . . . requires a reconstruction of the market, as it would have developed absent the infringing product, to determine what the patentee would . . . have made.” Id. at 1350 (internal quotation marks omitted; second omission in original). This means that just as a patentee engages in a “hypothetical enterprise” to construct its lost profits model, “alternative actions the infringer foreseeably would have undertaken had he not infringed” must also be taken into account. Id.at 1350–51. Thus, “an available technology not on the market during the infringement can constitute a noninfringing alternative.” Id. at 1351 (citing Slimfold Mfg. Co. v. Kinkead Indus., Inc., 932 F.2d 1453 (Fed. Cir. 1991)) . . . . We agree with Ninebot that the district court erred in applying the wrong legal standard. Indeed, Inventist conceded at oral argument that the district court applied the wrong legal standard. . . .

 

However, Inventist contends that under the correct standard, Ninebot did not show that its proposed noninfringing substitute could be readily commercialized, as required by Grain Processing. In its summary judgment motion, Ninebot argued that first-generation models could be modified to become noninfringing through a “simple design change, namely removing the pads from the lateral side cover,” and referred the Court to its later unicycle models. . . . In the first joint pretrial statement, Ninebot offered several witnesses who would testify:

 

[P]urpose of protruding pad was just a battery cover. Cost of wheel cover was minimal. About $20.00–30.00 US.

 

. . . . Contrary to Inventist, no more detailed offer of proof was required. . . . . This evidence, if credited by a jury, could have been sufficient to establish the existence of noninfringing substitutes, which would have defeated the lost profits claim, and Ninebot is entitled to a new trial (pp. 11-12).

The decision doesn’t indicate how many units the defendant sold or what the plaintiff's profit margin would have been on the lost sales--and I haven't looked into the underlying record--but if the trier of fact credits the defendant’s evidence, one might imagine that the lost profits awards could be substantially reduced on appeal.