Thursday, January 20, 2022

From Around the Blogs

1.  Giulia Pasqualetto published a post on the EPLaw Blog titled IT-Providus-Lost Profits/Recovery of Profits-Supreme Court.  The post discusses a July 2021 decision of Italy’s Supreme Court on the relevance of the infringer’s profits as a remedy for patent infringement.  According to the author, the court held that, under article 125(1) of the Italian Intellectual Property Code, which implements IPRED article 13(1)(a), a court may consider the infringer’s profits when calculating lost profits damages,  but that awards of lost profits under this provision require evidence that the plaintiff “would have been able to reach the same market served by the infringer.”  On the other hand, article 125(3), which implements IPRED article 125(3), permits the recover of the infringer’s profits even if the conditions for an award of lost profits are not satisfied, and even in the absence of evidence of willful infringement or gross negligence.  As a matter of policy, I think this poses a risk of overdeterrence, though fortunately here the award was limited to the profits attributable to the patented feature—a safety device on a gas cartridges—and not the profits earned on the sale of the entire canister.

2. Gabrielle Girardello published a post on IPKat titled Urgent requests for declaration of non infringement (DNI)? Frequently DeNIed . . .  The post discusses a recent decision of the Court of Milan denying a request for a declaratory judgment of noninfringement, based on a three-pronged test used by other Italian courts, and concludes that the requirements are "rather clear (and stringent)".  

3.  Praharsh Gour published a post on the SpicyIP Blog titled Delhi High Court grants interim injunction to Novartis against Natco’s use of Revolade patent.  The post discusses a decision which, according to the author, the court “raised the bar for . . .  defendants planning to resort to the plea of invalidity to opposed application of interim injunctions,” by requiring that the interim challenge “be a ‘credible one’ and not merely one which is ‘worthy of consideration.’”  The court also noted that the defendants had not previously sought to invalidate the patent, which has been in force for several years, until they were charged with infringement.

4.  On JUVE Patent, Amy Sandys published Top10 patent cases of the year 2021, which includes brief discussions of (1) the French pemetrexed litigation, which initially resulted in a €4 million provisional damages award that was later vacated on appeal while the preliminary injunction remained in place; (2) the increasing use of anti-antisuit (or “preemptive” antitrust) injunctions in Germany, which “seem to be the new magic bullet in FRAND disputes”; and (3) the global FRAND litigation brought by Nokia against Oppo, in multiple jurisdictions.  For previous mention of the pemetrexed matter on this blog, see here and here; for discussion of, and link to, the Cour d’appel’s November decision vacating the provisional damages award while leaving the preliminary injunction in place, see PIBD 1173-III-1, Jan. 1, 2022. 

5. For recent discussions of FRAND matters, see, e.g., Florian Mueller, 2022's most interesting patent enforcement question: how to raise a successful FRAND defense in Munich and Mannheim under Sisvel v. Haier (short of § 315), FOSS Patents, Jan. 11, 2022; Konstanze Richter, Access Advance license is non-FRAND, rules Regional Court Düsseldorf, JUVE Patent, Jan. 6, 2022; Enrico Bonadio, Diana Filatova & Anushka Tanwar, The  UK Call for View on Standard Essential Patents and the Case for Arbitration, Kluwer Patent Blog, Jan. 18, 2022; Curtis Dodd & Chris Dubuc, Top 2021 FRAND/RAND Licensing Developments in the United States, Parts 1 and 2, IP Watchdog, Dec. 15, 2021 and Dec. 26, 2021; and Tim Pohlmann, SEPs in Europe and Beyond: Highlights from 2021, IP Watchdog, Dec. 30, 2021.  Since the first of the year, there also have been several posts on IP Watchdog bad-mouthing the USPTO, DOJ, and NIST Draft Policy Statement on Licensing Negotiations and Remedies for Standards-Essential Patents Subject to Voluntary FRAND Commitments.  Readers with a taste for that sort of thing will have no trouble finding them.  For my views, see here.   

Tuesday, January 18, 2022

Ohly and Stierle on Germany's 2021 Amendments to its Patent Law

Ansgar Ohly and Martin Stierle published an article in the October 2021 issue of GRUR (pp. 1229-41) titled Unverhältnismäßigkeit, Injunction Gap and Geheimnisschutz im Prozess: Das Zweite Patentrechtsmodernisierungsgesetz im Überblick (“Disproportionality, Injunction Gap, and Protection of Confidential Information in Litigation:  An Overview of the Second Patent Law Modernization Act”). Here is the abstract (my translation from the German):

The German Parliament approved the Second Law for the Simplification and Modernization of Patent Law on the evening of June 11, 2021.  By now it has been officially published.  Some of the amendments took effect as of August 18, 2021; others will enter into force on May 1, 2022.  The Law adds to Patent Law § 139(1) a disproportionality objection; envisions that the Patent Court will provide a qualified opinion under Patent Law § 83(1) within six months and transmitted to the infringement court; clarifies the protection of confidential information in litigation under §§ 16 et seq. of the Trade Secret Law as being equally applicable in patent actions and in compulsory license proceedings (Patent Act § 145a); and makes a range of smaller readjustments in patent, utility model, and trademark law.  The following essay presents an overview of the essential changes and subjects them to an initial critical analysis.

The article has an extended discussion of open questions surrounding how courts will set appropriate compensation for the interim period during which a court may stay an injunction pending sell-off or design-around (e.g., will there be an enhancement, how if at all will courts take into effect potential lock-in effects, etc.).  (If those observers who are of the opinion that this “grace period” will not be invoked very frequently are right, it may be a while before we know the answers to these.  For previous discussion on this blog, see, e.g., here.)

Update:  Florian Mueller provides a summary of his thoughts on the legislation, as expressed in a recent German-language  article,  here.     

Thursday, January 13, 2022

OxFirst Webinar on Noninfringing Alternatives in Canadian Patent Law

On Thursday, January 27, OxFirst will be hosting a free webinar titled The Non-Infringing Alternative in Monetary Remedies in Canadian Patent Law.  The webinar will run from 15:00-16:00 GMT (16:00-17:00 CET, or 9:00-10:00 a.m. Central Time in the U.S.).  The speaker will be one of my long-time coauthors, Professor Norman Siebrasse of the University of New Brunswick.   Here is the webinar description:


This webinar addresses the role of the “non-infringing alternative” in assessing damages and an accounting of profits in Canadian patent cases. This doctrine permits an infringer to argue that it would have been able to compete with the patentee as well, or almost as well, by using an non-infringing alternative, so that damages (or the profit to be disgorged) may be reduced, in some cases to zero. The webinar will show how the the doctrine is based in traditional principles of “but for” causation; illustrate its application in some of the leading case; discuss some of the main objections; and discuss some of the fine points that have been emerged from the Canadian caselaw.

Registration is available here.

Monday, January 10, 2022

Paris Court of Appeal Affirms Jurisdiction over Global FRAND Dispute

Three recent posts by European commentators—one by Matthieu Dhenne on the Kluwer Patent Blog, one by Konstanze Richter on the JUVE Patent Blog, and one by  Grégoire Desrousseaux, Océane Millon de La Verteville, and Abdelaziz Khatab  for the August Debouzy firm—reference the twin decisions of the Paris Court of Appeal in Xiaomi v. Philips, handed down on December 7, 2021.  (So far I have not seen the decisions themselves on the court’s website, but I’m sure they will be available before too long in some format.)  Readers should consult the sources above, but to summarize, the court affirmed the lower court’s decision that it has jurisdiction to hear Xiaomi’s contract-based claim, asserted against Philips and ETSI, that it should order Philips to fulfill its obligation to offer a FRAND license or, in the alternative, to set such a license itself.  Moreover, if I understand correctly, the decision contemplates that a French court could determine a global FRAND rate.  If this decision stands, France would join the U.K. and China as potential forums for a global FRAND determination, at least where an ETSI standard is at issue.  This reminds me a bit of the proposal made by Tsang and Lee that I referenced last week, that SSOs should require members to agree to an exclusive forum for deciding disputes, specifically “the jurisdiction that is home to the law specified in the choice of law clause (e.g., French courts for ETSI).”  This could be a pretty significant development.

Thursday, January 6, 2022

Papers on Antisuit Injunctions

Last month I mentioned the Chinese University of Hong Kong's December 16 workshop on antisuit injunctions and FRAND litigation.  Here are abstracts and links to the two papers that were discussed:

1.  The first was Dicky King Fung Tsang & Jyh-An Lee, The Ping-Pong Olympics in Antisuit Injunction in FRAND, 28 Mich. Tech. L. Rev. __ (forthcoming 2022).  Here is the abstract:

In the past two years, antisuit injunctions (ASIs) and subsequent legal proceedings associated with standard-essential patents (SEPs) subject to fair, reasonable, and nondiscriminatory (FRAND) commitments have proliferated in multiple jurisdictions. This phenomenon reveals not only the transnational nature of technical standards and FRAND-encumbered SEPs but also the jurisdictional tension between different national courts. This Article explains the emergence of ASIs in FRAND scenarios and recent developments in six jurisdictions with major interests in standard development and adoption. Countries have developed different approaches to ASIs based on their own domestic rules and interests. We argue that to preserve the efficiency of technical compatibility and international comity, a pressing challenge at the policy level is to facilitate the legal compatibility between jurisdictions. Currently, courts in multiple jurisdictions are competing to grant ASIs and anti-anti-suit injunctions (AASIs), leading to fragmented decisions and significant costs for global standardization. We propose to include an exclusive forum selection clause in the policy documents of standard-setting organizations (SSOs) to reduce undesirable transaction costs stemming from ASIs and subsequent legal actions. Our proposal is more realistic and cost-effective than others concerning FRAND dispute resolution. 

For anyone who's interested, here are the slides of my comments on this paper.

2.  The second was Peter K. Yu, Yang Yu & Jorge Contreras, Transplanting Anti-suit Injunctions, 71 Am. U. L. Rev. ___ (forthcoming 2022).  Here is the abstract:

When adjudicating high-value cases involving the licensing of patents covering industry standards such as Wi-Fi and 5G (standards-essential patents or SEPs), courts around the world have increasingly issued injunctions preventing one party from pursuing parallel litigation in another jurisdiction (anti-suit injunctions or ASIs). In response, courts in other jurisdictions have begun to issue anti-anti-suit injunctions, or even anti-anti-anti suit injunctions, to prevent parties from hindering their own legal proceedings. Most of these activities have been limited to the United States and Europe, but in 2020 China emerged as a powerful new source of ASIs in global SEP litigation. The adoption by a jurisdiction of a foreign legal concept or procedure is referred to as transplantation, and the ASI mechanism in China represents a new form of legal transplant from Western legal systems. This Article analyzes the transplantation of the ASI to China—a development that can be viewed as both surprising, given China’s civil law tradition, and predictable, considering the country’s prominence in global technology markets. Equally predictable have been the strong reactions of foreign courts and policymakers to China’s recent use of this procedural mechanism at a pace that outstrips that of any other country. This Article traces the emergence of ASIs in China by examining how the Chinese legal system has adapted a procedural mechanism that has been repeatedly used in the United States and other jurisdictions. The Article further elucidates the internal and external forces that led to the rapid adoption of this procedural mechanism in China. It sheds new light on the process of legal transplantation in the twenty-first century as well as its global ramifications.