Wednesday, March 16, 2016

Two Recent Cases on Wrongful Enforcement from the U.K. and Japan

1.  Claire Phipps of Jones, Bristow published a post on EPLaw on February 10 about a recent decision of the Intellectual Property Enterprise Court (England & Wales) in Global Flood Defence Systems Ltd  v. Johann van den Noort Beheer BV (opinion here).  Plaintiff sued defendant for breach of a license agreement, and defendants counterclaimed for, inter alia, "groundless threats" to sue for patent infringement.  The patent at issue hadn't been granted yet but was the subject of a pending EPO application.  The court decided to stay proceedings on the groundless threats counterclaim pending the EPO's (believed to be imminent) grant of the patent, so that the plaintiff could mount a justification defense based on what the issued patent's claims actually cover.  The result that seems sensible to me. 

2.  The November 2015 issue of AIPPI-Journal of the Japanese Group of AIPPI has a summary  (at pages 422-24) by Yosuke Kurita of Tachibana Eletech Co. v. Nichia Corp., Judgment of Feb. 19, 2015, Case No. 2014 (Wa) 3119, Osaka D. Ct.  According to Mr. Kurita, Nichia holds a patent for a light-emitting diode.  Tachibana offers for sale on its website products made by a Taiwanese company, Everlight.  Nichia sued Tachibana for patent infringement (actually two cases, which were consolidated) and posted a press release about the patent infringement case on its website.  More specifically, the press release announced the filing of the patent infringement case against Tachibana; it also stated that Nichia had filed lawsuits against other companies and that another company had admitted to the infringement and discontinued sales of the products.  Tachibana then filed the present suit against Nichia, alleging unfair competition.  The Osaka District Court concluded that the press release's mere mention of the filing of the infringement lawsuit was not actionable, because it would simply "notify[ ] readers of the filing of lawsuits and explain[ ] the defendant's allegations and interpretations"; but that in combination with the other statements the press release could be interpreted as "imply[ing] that the plaintiff's act of importing and selling products manfactured by Everlight . . . constitutes infringement," and thus "would cause significant damage to the plaintiff's business.  The defendant had a duty of care and was obliged to obtain evidence by conducting a fact-finding study before posting the Press Release."  At the same time, the act of filing the patent infringement lawsuits was not an act of unfair competition, because Nichia obtained samples of Tachibana's products prior to filing the suit and its conduct was not unreasonable.  To be actionable, the filing of the infringement suit would have to be "extremely unreasonable in light of the objectives and purposes of the judicial system."

The summary does not indicate the outcome of the infringement suit.  I should think it would be very difficult or impossible for the filing of the lawsuit to be an an act of unfair competition if the patentee won that lawsuit.  I'm also not clear on why notifying the public about the infringement suit is permissible (as it should be, assuming there is a good faith basis for the lawsuit) but implying that the accused is infringing is not, since the former would seem to imply the latter.  I wonder what kind of a "fact-finding study" related to the press release the court had in mind?

This issue of the AIPPI-Japan journal also has a shorter write-up (by Yasufumi Shiroyama) of this case at p.418, as well as of the Imation case that was discussed at greater length in the September issue (see post here).

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