My Two Books This Year

My new book Wrongful Patent Assertion:  A Comparative Law and Economics Analysis (Oxford Univ. Press 2026), has been available online for a few weeks now, and as of this coming Thursday also will be available in hard copies.  That makes two book I have published this year, the other being Remedies in Intellectual Property Law (Edward Elgar Publ. 2026).  My thanks for the many colleagues and research assistants whose assistance over the years made these possible; and I hope that my readers and others in the IP community find them to be both useful and engaging.  

  

Conference in Tokyo This Saturday

This coming Saturday, May 23, I will be speaking on the topic of "Extraterritoriality Under U.S. Law" at the 15th Waseda-Penn Global Patent Law Conference at Waseda University in Tokyo.  I'm looking forward to seeing some old friends and making some new ones.  Below is the conference schedule; registration is available here.

10:00 – Opening Remarks:

• Masahiko Gemma (Professor and Vice-President, Waseda University)

• The Hon. Minoru Masuda (Chief Judge, IP High Court of Japan)‍ ‍

10:15 - 13:00 - Morning Session: Interplay of Infringement and Validity Determination

Part 1a: Recent Developments in Patent Invalidity Determination

Chair: Christoph Rademacher (Professor of Law, Waseda University Faculty of Law)

Panelists:

• Sapna Kumar (Henry J. Fletcher Professor of Law, University of Minnesota Law School)

• The Hon. Todd Hughes (Circuit Judge, United States Court of Appeals for the Federal Circuit)‍ ‍

• The Hon. Atsuhiro Furuta (Administrative Judge & Division Director, Japan Patent Office)

• Christof Karl (Attorney-at-Law (Rechtsanwalt) & German and European Patent Attorney, Bardehle Pagenberg)

Coffee Break

Part 1b: Claim Construction and Amendment in Infringement Proceedings

Chair: Ichiro Nakayama (Professor of Law, Hokkaido University Graduate School of Law)

Panelists:

• The Hon. Renee Bumb (Chief Judge, United States District Court for the District of New Jersey)

• Polk Wagner (Michael A. Fitts Professor of Law, University of Pennsylvania Carey Law School)

• The Hon. Florence Butin (President, Court of First Instance of the Unified Patent Court)

• Frank-Erich Hufnagel (Attorney-at-Law (Rechtsanwalt), Freshfields)

• Kei Iida (Attorney-at-Law & Patent Attorney (Japan), Nakamura & Partners)

13:00 - 14:15 - Lunch Break

14:15 - 16:50 - Afternoon Session: Territoriality and Patent Enforcement

Part 2a: International Jurisdiction / European Courts as Global Arbitrators?

Chair: Matthias Leistner (Professor of Law, Ludwig Maximilian University of Munich Faculty of Law)

Panelists:

• The Hon. Rian Kalden (Presiding Judge, Court of Appeal of the Unified Patent Court)

• Tilman Mueller-Stoy (Attorney-at-Law (Rechtsanwalt), Bardehle Pagenberg)

• Xuting Wu (Senior Legal Counsel, Qualcomm)

• The Hon. Todd Hughes (Circuit Judge, United States Court of Appeals for the Federal Circuit)

Coffee Break

Part 2b: Cross-border Infringement

Chair: Masabumi Suzuki (Professor of Law, Waseda University Faculty of Law)

Panelists:

• The Hon. Kenji Amano (Judge, IP High Court of Japan)

• Tom Cotter (Taft Stettinius & Hollister Professor of Law, University of Minnesota Law School)

• Ralf Uhrich (Head of Patent Litigation (EMEA), Google)

• Seiji Ohno (Attorney at Law (Japan), Ohno & Partners)

16:50 - Summary and Closing Remarks:

• Christopher S. Yoo (Imasogie Professor in Law and Technology, University of Pennsylvania Carey Law School)

• The Hon. Makiko Takabe (former Chief Judge, IP High Court of Japan; Counsel, Nishimura & Asahi; Visiting Professor, Waseda University Faculty of Law)

17:00 - Post-Conference Reception @ Mori no Kaze

Federal Circuit Reverses Fee Award

The precedential decision, released this morning, is mCom IP, LLC v. City National Bank of Florida, opinion by Judge Taranto joined by Judges Dyk and Mayer.  According to the opinion, petitioner mCom owns U.S. Patent No. 8,862,508, relating to a “‘unified electronic banking system” and a method of constructing a “unified electronic banking environment’”.  A 2023 IPR resulted in most of the claims of the ’508 patent being found invalid, after which mCom filed an action against City National Bank alleging the infringement of the four remaining claims.  The district court dismissed the action, finding that these claims too were invalid “on the same obviousness grounds asserted in the IPR against the other claims of the ’508 patent, and that mCom had not adequately pleaded infringement” (p.2).  The court thereafter awarded fees and costs against mCom pursuant to 35 U.S.C. § 285, and against mCom’s attorney pursuant to 28 U.S.C. § 1927.  The Federal Circuit reverses, concluding that the evidence does not disclose that the case was “exceptional,” as required for an award of fees under § 285, or that the attorney "knowingly or recklessly pursue[d] a frivolous claim or needlessly obstruct[ed] the litigation of a nonfrivolous claim," as required under the Eleventh Circuit’s interpretation of § 1927.

Following a fairly lengthy recitation of the underlying history of the litigation, the court rejects the petitioner’s appeal from the judgment of invalidity and states that, as a result, it need not address the finding of noninfringement.  There is nonetheless no basis for a fee award:  “mere invalidity is not legally sufficient to find a case exceptional.  For a patent-infringement case to ‘stand[ ] out . . . with respect to the substantive strength of a [patentee’s] litigating position’ by reason of invalidity, there must be (as the language of § 285 indicates) unusually or extraordinarily weak patent claims” (p.14).  Here, the court states, “City National made its fees argument on this issue in conclusory terms: It never explained why the asserted claims in this case—which enjoyed the statutory presumption of validity, 35 U.S.C. § 282, and which were not even challenged in the IPR—could not have been reasonably thought by mCom to have a scope materially different for obviousness purposes from the claims deemed unpatentable in the IPR, even taking that unpatentability as a starting point. . . . And because in district court a fact-dependent obviousness challenge faces a higher burden of persuasion than in an IPR, mCom could reasonably have believed that an invalidity analysis in district court could not simply take the IPR result for different claims as a starting point (based on issue preclusion) and address only patentable distinctness" (pp. 14-15).  In addition, the fact that the court had dismissed a first complaint on procedural grounds (for faulty pleading) does not go to the merits of the infringement claim; and, with respect to the respondent’s defense that it already was licensed to use the patent in suit (under a settlement agreement between mCom and NCR), the appellate court states there is an “absence of findings that a license existed or could have been discovered by mCom with reasonable diligence” (pp. 15-16).  Moreover, the district court’s reference to mCom’s having filed other suits does not disclose that these other suits were frivolous or even involved the same patent (pp. 16-17).  For much the same reasons, the court reverses the award under § 1927.

Whether fees should be awarded, as a matter of course, to the prevailing plaintiff or defendant is of course a matter upon which the world’s legal systems differ, as I discuss in chapter 4 of my new book Wrongful Patent Assertion:  A Comparative Law and Economics Analysis (hard copies of which go on sale next week).  My personal view is that the policy arguments in favor of some form of mandatory fee shifting are stronger than the arguments against; but as readers are no doubt aware, that sort of regime runs contrary to longstanding U.S. practice—hence the term “American Rule” for the default principle that each side bears its own fees.    

Chao on Real Hypothetical Negotiations

Bernard Chao has posted a paper on ssrn titled Real Hypothetical Negotiations.  Here is a link to the paper, and here is the abstract:

Patent law's prevailing method for awarding reasonable royalties relies on a "hypothetical negotiation" framework that asks what royalty a willing licensor and willing licensee would have agreed to. In practice, this approach has devolved into a battle of paid experts who manipulate the same evidence to reach dramatically different conclusions, often diverging by orders of magnitude. The current system's reliance on the unwieldy fifteen-factor Georgia-Pacific test, combined with inadequate judicial oversight and jury decision-making limitations, has transformed what should be a reliable proxy of market behavior into a stylized fiction used for strategic advocacy.

This article proposes and pilots the first empirically grounded alternative to expert driven reasonable royalty determinations. Drawing on patent law, experimental jurisprudence, negotiation theory and generative AI decisionmaking, it introduces "real hypothetical negotiations." Under this proposal, royalty rates are determined through simulated negotiation. Departing from the traditional remedial goal of strictly restoring the patentee to a pre-infringement state, this proposal prioritizes the constitutional mandate of promoting innovation. Accordingly, the briefing materials include both pre-infringement and post-infringement information to best calibrate damages to the invention’s actual economic value. 

To test this approach, the article reports results from two pilot studies based on Summit 6 LLC v. Samsung Electronics Co., where opposing damages experts reached dramatically different conclusions. Law students using the same case materials reached settlement in only two out seven of negotiations, while competing AI large language models (LLMs) using identical materials achieved settlement in all six cases. These mixed results illustrate both the challenges and promise of operationalizing this approach.

The article also describes several potential enhancements to the basic proposal: 1) blinding experts to the party that retained them, or alternatively, 2) court-appointed neutral experts to oversee the negotiation process, 3) conducting simulations multiple times to address outlier results and improve statistical reliability, and 4) using LLMs themselves as negotiators. The article concludes that real hypothetical negotiations offer valuable potential for both actual cases and controlled experiments. Future experiments could filter out value unrelated to innovation, revealing the patent’s true technical contribution and guiding damages awards toward outcomes that advance innovation.

This is a very interesting paper.  I agree with Professor Chao's assessment that "[t]he combination of vague guidance, inadequate judicial oversight, and jury limitations creates a system where reasonable royalty determinations are frequently divorced from economic reality," and I find his proposals for reform intriguing (though I suspect it might be a heavy lift to get them introduced into U.S. practice).  Still, the use of AI as a research tool to assist in negotiations could well prove beneficial, notwithstanding its potential limitations as noted in the article.  

OxFirst Webinars on Injunctions in Brazil and Korea

OxFirst has two free webinars coming up that may be of interest to readers of this blog.  The first, on May 13 at 15:00 UK Time, is titled Injunctions — Perspectives from the Judiciary of Brazil, and features Judge Victor Diz Torres of the Tribunal de Justiça do Estado do Rio de Janeiro.  According to the promotional materials, Judge Diz Torres "will examine the role of injunctions in Brazilian patent litigation, with a particular focus on when Brazilian courts grant injunctive relief, how such orders are enforced in practice, and how courts balance exclusivity, market access, and proportionality in innovation-driven disputes," as well as Brazil's emerging FRAND jurisprudence.  Registration information is here.  The second will be on Friday, May 22, at 10:00 U.K. Time, and is titled Injunctions — Perspectives from the Judiciary of the Republic of Korea.  It features Judge Dr Jiyoung Yi and Judge Kisu Kim.  According to the website, the webinar will "explore[ ] Korea’s newly established SEP Working Group, led by the judiciary, and its efforts to develop SEP guidelines. It also addresses global issues such as injunctions and anti-suit injunctions, highlighting international developments and the need for greater cross-border cooperation."  Registration is available here.  These both sound pretty interesting.

Update:  The date of the Korea program has been changed to May 28. 

As Many as Three Incompatible FRAND Judgments Before Breakfast

Within the past week, there have been three judgments rendered in the ongoing FRAND dispute between ZTE and Samsung.  (For discussion on this blog of earlier proceedings in this dispute, see here.)  On Friday, Mr. Justice Meade issued his decision in Samsung Elecs. Co. v. ZTE Corp., [2026] EWHC 999 (Pat.) (Eng.).  In this action for a declaratory judgment, brought by net licensee Samsung, the court determines that a court-determined global FRAND license pertaining to ZTE’s and Samsung’s portfolios would (1) cover both 4G and 5G technology, (2) run for five years, and (3) require a net payment from Samsung in the amount of $392 million.  This number is derived from one comparable, the 2020 SEP license between ZTE and Apple.  Because ZTE negotiated this license from a position of comparative weakness, in part due to U.S. sanctions levied against the firm, the court effectively increases the inferred amount by 21%, which results in a net amount of $392 million.  Meanwhile, it has been widely reported that on the very same day the Chongqing court, in which a parallel global FRAND rate determination has been ongoing, issued a decision applying a top-down methodology and awarding ZTE the full amount it had sought for a six-year license, namely $731 million.  Then today the ip fray blog reports that the Munich Regional Court issued a written decision (apparently not yet publicly available), following up its oral decision last week that ZTE was entitled to an injunction, in which the court states that in its view a five-year global FRAND royalty based upon a top-down methodology would be in the amount of $640 million.  The report indicates that the court urged the parties to settle.

Settlement would seem the most likely course to me at this juncture; but settlements occur in the shadow of the law, and so the question arises . . . well, what exactly is the law here?  In other words, if the parties don’t settle, what happens?

Without the text of the Chongqing decision, the answer to this question is necessarily somewhat speculative—and even with it, I’m not sure I know the answer, but I will hazard a few possibilities nonetheless.  First, since the English decision is (at this stage) only for a declaratory judgment, I think Samsung would have to follow up with a request for injunctive relief (within the U.K.) and/or specific performance, if it wanted to force ZTE to accede to Mr. Justice Meade’s terms.  But then the question would arise whether, if ZTE didn’t accede (or perhaps even if it did?), other jurisdictions would feel themselves bound to recognize the judgment.  I suspect the Chinese courts would not, particularly in view of the recently-published Regulations of the People's Republic of China on Countering Foreign States' Unlawful Extraterritorial Jurisdiction Measures (which have been reported on elsewhere, and which may be the subject of a separate forthcoming blog post); and perhaps the German courts wouldn't either.  As for the Chongqing decision, if Samsung were to refuse to accede, I suspect that that court might enter an injunction against Samsung and/or permit the judgment to be levied against whatever assets Samsung has in China. Whether courts outside of China would enforce or recognize the judgment, however, remains to be seen; as readers are probably aware, the EU has a pending WTO complaint targeting China’s practice of establishing global FRAND royalties.  The German decision, if I understand correctly, would appear to force Samsung products off the market in Germany unless and until a license (covering at least whatever domestic SEP or SEPs are at issue in the Munich litigation) is concluded, but the court’s reported statements about the terms of a global FRAND license would not, in and of themselves, force Samsung to accede to those terms.  Whether other courts are persuaded by the Munich court's reasoning would be up to those courts.

These are all topics to which I will be giving a good deal of thought over the summer, as I work on an essay on IP and extraterritoriality.  I’m hoping as well that some of the well-regarded voices on private international law—that is, on general private international law not limited to the IP context, people such as Professors Bill Dodge and Curtis Bradley--will have something to say about this morass, and possibly how to resolve it.