Friday, July 11, 2014

Some new papers and other materials on patent remedies

1.  Mark Lemley has published Taking the Regulatory Nature of IP Seriously:  Response to Ted Sichleman, Purging Patent Law of "Private Law" Remedies, in 92 Texas Law Review See Also 107 (2014), available here.  The abstract from the ssrn version of the paper reads:
Ted Sichelman’s paper in the Texas Law Review makes an important contribution by encouraging us to take the essentially regulatory character of IP seriously, arguing that public, not private, interest should determine remedies. In this comment, I both extend and critique his approach, suggesting that private law remedies may play an important role even in a patent system properly understood as public law rather than property law. Nonetheless, understanding the regulatory nature of patent remedies has some significant implications for setting those remedies, including the recognition that the optimal patent damages award will sometimes be $0.
Dan Burk and I each published a response to the same paper in Texas Law Review See Also a few weeks back, as I noted here.

Readers also may  be interested in reading Gene Quinn's recent interview of Mark Lemley on patent damages, on Gene's IP Watchdog blog.

2.  Samuel Chase Means has published a paper titled The Trouble with Treble Damages: Ditching Patent Law's Willful Infringement Doctrine and Enhanced Damages, 2013 U. Ill. L. Rev. 1999, available here.  Here is the abstract:
In a patent infringement lawsuit, a plaintiff often asserts a willful infringement claim and enhanced damages as a remedy. Under current U.S. patent laws, courts have the discretion to reject a claim for willful infringement and decline increasing damages, even if the jury returns a finding of willful infringement. This creates an unnecessary drain of resources on the court system and alleged infringers.
The enhanced damages provision in patent law is also often an unavailable remedy for plaintiffs even though plaintiffs almost always assert a willful infringement claim, often simply wasting courts’ and litigants’ financial resources. The enhanced damages provision also frustrates the purpose of the existence of patent laws, and patent owners actively avoid learning about new patents for fear that this knowledge will lead to allegations of willful infringement in the future. Finally, no other nation in the world has a remedy like the enhanced damages provision, and the existence of the remedy frustrates goals to harmonize global intellectual property laws.
This Note examines these issues presented by the enhanced damages provision. This Note analyzes alternatives for the enhanced damages remedy and considers whether abandoning the current law would appropriately deter patent infringement. Ultimately, this Note recommends that the entire enhanced damages provision and its associated willful infringement doctrine should be removed from the U.S. patent laws. 
3.  Matthew J. Silveira has published a short paper titled Getting to Zero--Proving a Patentee Is Entitled to No Infringement Damages After Apple v. Motorola in the July 1, 2014 issue of Bloomberg  BNA's Patent, Trademark & Copyright Law Daily (available here, behind a paywall).  From the introduction:
Much has been made of the U.S. Court of Appeals for the Federal Circuit's holdings in Apple Inc. v. Motorola, Inc., regarding the admissibility of expert damages testimony and the availability of injunctive relief for the infringement of standard essential patents. Another aspect of that decision has received less attention—the Federal Circuit's discussion of when, if ever, a patentee may be awarded no damages for patent infringement.
Although the Federal Circuit suggested that a finding of no damages will rarely be affirmed, particularly on summary judgment, it did not foreclose that result. Alleged infringers and patentees alike will need to address the court's reasoning when developing their damages theories to advocate for, or to avoid, an award of zero damages.
4. A few weeks back I listed some treatises that provide information on patent remedies in India (here).  One that I missed, and which Jorge Contreras has since called to my attention, is Kalyan Kankanala, Arun K. Narasani & Vinita Radhakrishnan, Indian Patent Law and Practice (Oxford Univ. Press 2010), chapter 10 (pp. 232-56).

5.  Recently the EPLaw Blog published a post with links to PowerPoint presentations from an April 2014 Young EPLaw Conference, including presentations on "Injunctions in the UPC" (Charles Tuffreau), and on damages in the U.K. (Laura Whiting), Belgium (Gunther Meyer), Germany (Stefan Richter), and Spain (Laura Cantero).   The slides provide a concise but useful resource on the subjects.

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