Thursday, June 13, 2013

Thursday Miscellany: Some New Works Worth Reading

In the Wall Street Journal this morning is a story about the $2.15 billion settlement of patent infringement litigation between Pfizer and Takeda (plaintiffs) and Teva and Sun (defendant generic drug companies).  The damages trial had begun on Monday.  See also coverage here.

I've been working my way through a stack of materials on patent remedies, FRAND, and related issues, some of which I have been accumulating since my book came out.  Here, in no particular order, are some items worth taking a look at:

 1. Saisie-Contrefaçon (Pierre Véron ed., 3d ed. 2012).  Véron et Associés was kind enough to send me a copy of their edition of this treatise on the saisie-contrefaçon, an pretrial order used in France to obtain evidence of infringement (briefly discussed in my book at p.230).  The treatise provides a wealth of detail on the use of this procedure in various types of cases, along with statutory and case law annexes.  Anyone interested in IP enforcement in France will want to have this book as a reference.  In French.

2.  Tom Carver, UK Patent Disputes:  Damages, China IP, Jan. 2013, available here.  A good overview of relevant legislation and case law in the U.K.

3.   The Exercise of Essential Patents for Standards, 21 IIP Bulletin 1 (2012), available here.  This is "an English translation of the summary of a FY2011 Institute of Intellectual Property (IIP) research study report" on issues relating to standard essential patents (SEPs) in Japan, including whether a FRAND commitment constitutes a binding contract for the benefit of third parties and whether SEP owners should be able to obtain injunctions.  I hope that some of the articles summarized, in particular those by Ryuta Hirashima, Sadao Nagaoka, and Yoshiyuki Tamura, will be at some point be translated in full.

4.  Marc Grunwald, Der Kartellrechtlichte Zwangslizeneinwand:  Muss der Lizenzangebot einen Kündigungsvorbehalt für den Fall enthalten, dass der Lizenzsucher das Klagepatent angreift?, Mitt. Heft 11/2012, 492.  In German, obviously.  My translation of the title:  "The Competition Law Compulsory License  Objection:  Must a License Offer Include a Cancellation Provision in the Event the Prospective Licensee Challenges the Patent?"  The question is whether the Orange-Book-Standard defense requires the prospective licensee of a standard essential patent to agree not to challenge the patent.  The author argues to the contrary.  In somewhat the same vein, also worth looking at is Daniel Hoppe-Jänisch's commentary (also in German) following the excerpt from LG Düsseldorf, Decision of Mar. 21, 2013, 4 b O 104/12, 2013 GRUR-RR 196, 200 (the case referring questions about the Orange-Book-Standard framework to the CJEU).

5.  I haven't read this yet, but the idea sounds interesting:  an article by Jonathan Masur and Anup Malani, forthcoming in the Georgetown Law Journal, arguing for higher penalties for the losing party (plaintiff or defendant) in patent litigation.   Professor Masur's guest post on the Written Description blog summarizes the paper, which can be downloaded from ssrn. 

6.  Roger G. Brooks & Damien Geradin, Interpreting and Enforcing the Voluntary FRAND Commitment, 9 Int'l J. IT Standards & Standardization Res. 1 (2011), available here, and Dennis W. Carlton & Allan L. Shampine, An Economic Interpretation of FRAND, available on ssrn.  Two different and interesting perspectives on how to interpret FRAND commitments made to SSOs.   

And this just in:  U.S. Supreme Court holds that isolated DNA is not patentable subject matter, cDNA is.  Here's the opinion in Association for Molecular Pathology v. Myriad Genetics, Inc. 


  1. Apparently there is a new decision from the French Supreme Court on saisie-contrefaçon: Decision of February 12 2013, 11-26361, Vetrotech Saint Gobain International AG v ISG Interver Special Glass. I haven't read it.

    1. Thanks for bringing that to my attention. Here's a write-up on the case from Stanislas Roux-Vaillard:

  2. Re the Malani & Masur piece, the arguments for increased rewards to a successful patentee and a successful challenger are independent. Re the successful patentee, the basic argument is simply that sometimes the courts will wrongly invalidate a good patent, and the way to maintain proper incentives is to increase the reward in cases where the patent is upheld. The obvious counter-argument is that this will increase the risk to the challenger, and so make it less likely that even bad patents are challenged. Their response to this (which they don’t go to until 2/3 of the way through), is that the public should pay victorious patentee’s a premium when the validity of a patent is upheld. This increases the reward to the patentee without increasing the risk to the challenger. The difficulty is that the size of the reward depends on the error rate, but the whole problem is that we don’t know which patents are wrongly invalidated, so how do we know the error rate? They address this central problem in a few short paragraphs that end by saying “In either event, a panel of outside experts should be tasked with reviewing a random sample of completed patent cases and determining courts’ error rate” (57). This is not an answer at all. I don’t see how “outside experts” are going to be any better than appeal court judges. In principle, I would expect them to be worse, because presumably the resources devoted to this administrative review are less, per patent, than the resources devoted to litigation.