Thursday, October 10, 2013

Revised Versions of Two of My Recent Papers

A mildly revised version of my paper The Comparative Law and Economics of Standard-Essential Patents and FRAND Royalties, which I posted a month ago and blogged about here, is now available, here.  I made a few changes in response to comments by Norman Siebrasse and the various commentators at the University of Florida workshop where I presented the paper.  (I also live-blogged that event, which featured papers by Dennis Carlton, Keith Hylton, and other luminaries; links are here, here, here, here, here, here, and here.)  In addition, I benefited from Katherine Bryan's cite-checking and Matt Hu's translation of portions of the Samsung v. Apple Korea decision (see new version of paper, footnotes 29, 67, and 122); Katherine is fluent in German, Matt in Korean.  Finally, I've updated a few things that to take into account developments within the last month. I understand that all or most of the participants in the Florida workshop will be presenting their papers again at the University of Texas School of Law on February 21, 2013, and that my paper and the others will be coming out at some point in the Texas Intellectual Property Law Journal.

A very slightly revised version of another paper of mine, Reining in Remedies in Patent Litigation:  Three (Increasingly Immodest) Proposals, can be found here.  This paper was prepared for a symposium at Santa Clara and will be published in the Santa Clara Computer and High Technology Law Journal.  The abstract goes like this:
This essay, which builds on my recent work on the law and economics of comparative patent remedies, presents three proposals relating to the enforcement of domestic patent rights. The first, which may be close to being adopted in the United States, is for the courts and the International Trade Commission (ITC) to adopt a general presumption, grounded in patent law and policy, that patent owners who have committed to license their standard essential patents (SEPs) on fair, reasonable, and nondiscriminatory terms are not entitled to permanent injunctions or exclusion orders, but rather only to a damages in the form of an ongoing royalty calculated on the basis of what a reasonable licensor and licensee would have agreed to prior to the adoption of the standard in question. Countries such as Germany that have addressed the issue of remedies for the infringement of SEPs within the context of competition law, while otherwise leaving in place an almost-automatic entitlement to permanent injunctive relief, have in my view taken the wrong tack. Second, I argue that Congress should amend Patent Act § 289, which permits design patent owners to recover the infringer’s profits, so as to require that such awards reflect only the profit derived from the use of the infringed design (and not the entire product of which the design is a part). Such apportionment is the norm in other countries (and in U.S. copyright and trademark law). By contrast, the archaic U.S. design patent rule threatens substantial overdeterrence and overcompensation, as reflected in the recent jury award in Apple v. Samsung. My third suggestion — really more of a thought experiment inspired by Judge Posner’s opinion in Apple v. Motorola than a serious proposal for reform — is to consider whether it would be possible to eliminate the unique U.S. practice of trial by jury in a wide swath of U.S. patent cases by statutorily recasting awards of reasonable royalties as a form of equitable restitution rather than as compensation.

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