Monday, April 12, 2021

Forthcoming Book on Injunctions

Jorge Contreras and Martin Husovec have a new edited volume coming out, titled Injunctions in Patent Law: A Trans-Atlantic Dialogue on Flexibility and Tailoring (Cambridge Univ. Press).  They recently posted the table of contents and a chapter titled Issuing and Tailoring Patent Injunctions – a Cross-Jurisdictional Comparison and Synthesis on ssrn.  Here is the abstract for what they posted:


This chapter is from the edited volume "Injunctions in Patent Law: A Trans-Atlantic Dialogue on Flexibility and Tailoring" (Jorge Contreras & Martin Husovec, eds., Cambridge Univ. Press, forthcoming). It offers a unique analytical synthesis of eleven national and two regional/international descriptions of flexibilities in patent remedies authored by leading scholars in the field. This synthesis identifies a range of similarities and differences among jurisdictions, explains the principal features of these different legal systems, provides an analytical framework for comparing them, and offers observations about trends and the outlook for the future. The countries studied include Canada, Finland, France, Germany, Israel, Italy, Netherlands, Poland, the United Kingdom, and the United States, with additional commentary on the European Union and the World Trade Organization TRIPS Agreement.

 I understand the book will be available on an open-access basis.

Thursday, April 1, 2021

From Around the Blogs

I will be taking a blogging break for a week or so.  Meanwhile, here are some recent articles and posts from other sources that should be of interest to readers: 

1.  Law360 and Bloomberg Law both recently highlighted a cert petition filed by NetScout Systems, in a dispute brought by Packet Intelligence.  (For my previous post on this case, which concentrated on the patent marking issue, see here.)  Two of the three questions presented relate to patent damages, specifically enhanced damages:

1. Whether a finding of willful infringement justifying treble damages may be based solely on the defendant’s conduct following the filing of the suit.

2. If the defendant’s post-filing conduct can provide a basis for willful infringement, whether such a finding is adequately supported by evidence that (1) high-level executives did not read the asserted patents in detail but instead relied upon conversations with counsel to confirm good-faith and reasonable defenses; and (2) the defendant continued to sell the accused products while suit was pending, in reliance on its good-faith defenses.

The first question, at least, is one that would benefit from some more clarity, as would the broader issue (suggested by the rather case-specifically-drafted second question) of what sort of post-filing conduct, if any, is relevant to a finding of willfulness.  Whether the Supreme Court will be sufficiently interested in this topic to take the matter up, I don't know.

The third question presented relates to patentable subject matter.   

2.  Matthieu Klos published a post on JUVE Patent titled “Anti-suit injunctions are a road to nowhere”.  The post states that the Munich district court views an implementer's filing of motion for an antisuit injunction in China as indicating that the implementer is an unwilling licensee--and thus not entitled to raise the Huawei v. ZTE competition-law defense to a request by an SEP owner for injunctive relief.  According to Mr. Klos, "the judges probably want to put an end to the ongoing ASI spat" and "bring SEP holders and implementers back to the core of FRAND negotiations," which as I understand it would be consistent with the German courts' general reluctance thus far to set FRAND rates themselves. But is this approach consistent with Huawei v. ZTE?  The post says that Xiaomi is expected to appeal Judge Zigann's ruling (discussed here and here), so perhaps some further clarity will be forthcoming. 

3. Earlier this week Rebecca Slaughter, the Acting Chair of the Federal Trade Commission, announced (as expected) that the FTC would not be petitioning for certiorari in FTC v. Qualcomm, so the case is over.  For discussion, see articles on Law360, Bloomberg Law, and FOSS Patents.

Monday, March 29, 2021

Sztoldman on Compensation for Wrongful Enforcement

In October 2019, I published a post titled Bayer v. Richter: Worst CJEU Decision Ever?, discussing the CJEU's decision in case C-688/17.  According to my description of the decision, "the fact that the defendants's launch of their generic contraceptive product put Bayer at risk of suffering irreparable harm may mean that Bayer isn't required to pay adequate compensation to the defendants, even though the patent in suit was later invalidated, for having been wrongly excluded from the market."  Exactly what the implications of the decision are still remains to be seen, as evidenced for example from the comment to my post and from a subsequent article by Léon Dijkman (noted here).  Anyway, Dr. Agnieszka Sztoldman has published a paper titled Compensation for a Wrongful Enforcement of a Preliminary Injunction under the Enforcement Directive (2004/48/EC), 42 E.I.P.R. 721-27 (2020), and it's fair to say that she's not a big fan of the decision either.  Here is the abstract:

This article explores legal mechanisms for compensating a wrongful enforcement of a preliminary injunction under the Enforcement Directive 2004/48/EC. Special focus is given to the recent judgment of the Court of Justice of the European Union in the case of Bayer Pharma of 12 September 2019. This article argues that the test proposed by the Court of Justice in national cases for compensating for a wrongful enforcement is incorrect in the view of art.9(7) of Directive 2004/48/EC. Despite art.9(7) of Directive 2004/48/EC, which strikes a balance of competing interests of a potential infringer and the intellectual property right holder, the Court of Justice held that, when the patent was ultimately invalidated, it does not automatically follow that the preliminary injunction was unfounded. As for specific issues, this article, notably, discusses whether the test for compensating a wrongful enforcement takes into account an abuse of a preliminary injunction and the behaviour of the defendant who launched a product without first challenging the patent. This article argues that it would be contrary to the aim of Directive 2004/48/EC if the compensation of defendants could be routinely refused when they do not wait for the invalidation of the injuncted patent. Otherwise this would encourage the misuse of preliminary injunctions. Finally, this article questions the applicability of national correction instruments to assessing of damage resulting from a wrongful enforcement of a preliminary injunction, implied in the case law of the Court of Justice.

I think this may be the summer when I finally turn my attention to a project I've been mulling over for a while, on the comparative law and economics of wrongful patent enforcement.  If so, the issues raised in Bayer v. Richter will be among the leading topics to consider.