Thursday, June 17, 2021

OxFirst 6th Annual IP and Competition Forum: The Future of FRAND

OxFirst will be putting on its 6th IP And Competition Forum, titled "Standard Essential Patents & FRAND," next week, June 23-25, from 13:00 BST – 18:00 BST each day. Registration is available here.  Information below:

Day 1: June 23


    Where in the Supply Chain should one take a license?  
    Updates on Recent FRAND Disputes
    Essentiality Perspectives on SEPs              

    Key Presenters

    CEO of the UKIPO
    Mr Vajda QC, Monckton chambers, visiting Professor in King’s College London, previous Judge at CJEU
    Representatives from Nokia & Audi…

Day 2 : June 24


    The FRAND Defense  
    Anti-suit Injunctions
    Propotionality of injunctions            

   Key Presenters:

    Madame Sabotier, Head & Judge, 3rd chamber Civil Court and Head of 3rd Chamber
    Dr Zigann, Presiding Judge, Landgericht Munich
    Professor Picht, University of Zurich
    Representatives from Siemens, Deutsche Telekom…

Day 3: June 25


    Standard essential patents & AI
    Should the mandate of Standard Setting Organisations be expanded?
    International perspectives on FRAND

   Key Presenters:

    Sir Nicholas Forwood, White & Case, Counsel & former Judge at CJEU
    Lord Justice Arnold, Judge at the Court of Appeal of England and Wales
    Representatives from IBM, Philips and Panasonic…

Tuesday, June 15, 2021

My Law360 Article on Alternative Methods for Calculating FRAND Royalties

Law360 has published my article, titled Transparency More Crucial Than New FRAND Royalty Methods.  It is available on Law360's website, as well as here.

Monday, June 14, 2021

Helmers, Lefouili, Love & McDonagh on Fee Shifting

Christian Helmers, Yassine Lefouili, Brian Love, and Luke McDonagh have posted a paper on ssrn titled The Effect of Fee Shifting on Litigation: Evidence from a Policy Innovation in Intermediate Cost Shifting, American Law & Economics Review (forthcoming 2021).  Here is a link to the paper, and here is the abstract:

We study the effect of fee shifting rules on litigation. First, we build a model to study the theoretical effect of a change in cost-recovery rules on case filings, (post-filing) settlement, win rates, and plaintiffs' average litigation expenditures. We then undertake an empirical analysis of the introduction of an intermediate cost shifting rule that falls between the English and American Rules: a reform that limits the size of fee awards to successful litigants in cases decided by the Intellectual Property Enterprise Court (IPEC), one of two venues where IP cases may be filed in England and Wales. Our empirical analysis takes advantage of heterogeneity among case types and compares IPEC cases with intellectual property cases litigated at the High Court of England and Wales, which was not subject to this reform. We find that patent case filings increased following the IPEC’s shift from a pure English Rule to a rule that caps costs awards. Consistent with our model's predictions, we also find evidence that smaller plaintiffs both won less often and settled more often post-reform, as well as evidence that larger plaintiffs spent less on litigation post-reform.

The paper has already been the subject of guest post on Sufficient Description.  It is an important theoretical and empirical contribution to the literature on fee-shifting.  Highly recommended.

Friday, June 4, 2021

Blogging Break

I will be taking a blogging break next week.  If you're looking for something to read while I' m away, check out today's Kluwer Patent Blog post by Enrico Bonadio, Luke McDonagh, and Anushka Tanwar, titled for an informative discussion of Koninklijke Philips v. Rajesh Bansal and Koninklijke Philips v. Bhagirathi Electronics and InterDigital v Xiaomi.

Thursday, June 3, 2021

German Legislature Set to Approve Amendment to Patent Act Relating to Injunctions

Sources inform me that the German legislature is now poised to enact an amendment to section 139 of the German Patent Act, relating to injunctions.  Here is the wording that will pass into law:

„Der Anspruch ist ausgeschlossen, soweit die Inanspruchnahme aufgrund der besonderen Umstände des Einzelfalls und der Gebote von Treu und Glauben für den Verletzer oder Dritte zu einer unverhältnismäßigen, durch das Ausschließlichkeitsrecht nicht gerechtfertigten Härte führen würde. In diesem Fall ist dem Verletzten ein angemessener Ausgleich in Geld zu gewähren. Der Schadensersatzanspruch nach Absatz 2 bleibt hiervon unberührt.“

I would translate this as follows:

"The claim [for injunctive relief] is excluded insofar as, on account of the special circumstances of the case and the obligation of good faith, its utilization would result in disproportionate hardship, not justified by the nature of the exclusive right, to the infringer or third parties.   In this case, reasonable monetary compensation is to be awarded to the infringed party.  The claim for damages under paragraph 2 is unaffected."

The reference to the interests of third parties is, if I remember correctly, a departure from previous drafts.  I stand corrected--I am informed that the October 2020 proposal did refer to third party interests.

Update:  Here is Florian Mueller's take on the amendment.

Wednesday, June 2, 2021

OxFirst Webinar on IP Valuation

OxFirst will be putting on a free webinar on June 11 from 14:00 to 15:00 GMT titled "IP Valuation."  Here is OxFirst's description:

The recent 1.2 billion trademark backed loan American Airlines obtained, the valuation of Michael Jackson’s ‘name and likeness’ for tax purposes, as well as the commitment of UK Courts to offer a valuation of FRAND royalty rates are good examples of the various goals an IP valuation can support.


In this webinar we discuss the nexus between IP valuation and reporting systems and assess the elements needed to uncover the economic potential of IP. The traditional legal and accounting tick-boxes commonly ignore the valuation of intellectual property and are a relic of an industrial age that is not fit for an era dominated by intellectual property. Failing to keep pace with innovation and considering the economic contribution of IP risks undermining today’s entrepreneurship.


This webinar is the first step to advance the debate.


Join in and discuss!

Speakers include Lord Justice Richard Arnold, Zeeger Vink, and Professor Roya Ghafele.  Registration is available here.

Tuesday, June 1, 2021

Nokia, Daimler Settle

Press release hereJUVE Patent and FOSS Patents both believe that this will terminate the referral to the CJEU on the issue of component-level licensing (see, e.g., here, here), though FOSS believes that another decision or decisions may lead to a referral down the road.

Update:  Further discussion can be found on Bloomberg Law and Law360.