New Papers on FRAND

I haven't read these yet myself, so I may have comments after I have done so.

1.  Alexander Galetovic and Kirti Gupta have posted a paper on ssrn titled Royalty Stacking and Standard-Essential Patents:  Theory and Evidence from the World Mobile Wireless Industry.  Here is a link to the paper, and here is the abstract: 

The royalty stacking hypothesis is based on the Cournot-complement model. It states that the royalties individually set by each standard essential patent holder (SEP holder) may add up to prohibitively high levels. We develop an equilibrium model with general log-concave constant-pass-through demand, downstream oligopoly and endogenous entry into manufacturing. Each SEP holder independently sets a linear royalty to maximize her individual profit.

The model shows that roughly 10 SEP holders suffice to significantly reduce equilibrium output; with 100 SEP holders output nearly collapses. As the number of SEP holders increases (i) the equilibrium price rises; (ii) quantity falls (iii) individual SEP holders royalties and margins fall; and (iv) downstream manufacturing concentrates.

We look for evidence of royalty stacking in the world mobile wireless industry. The number of SEP holders for the widely deployed 2G, 3G, and 4G wireless cellular standards protractedly grew from 2 in 1994 to 130 in 2013. We find no evidence of royalty stacking. Between 1994 and 2013: (i) the number of devices sold each year rose 62 times or 20:1% per year on average; (ii) controlling for technological generation, the real average selling price of a device fell between 11:4% and 24:8% per year (iii) the introductory average selling price of successive generations fell over time; (iv) neither the average gross margin of SEP holders nor of non-SEP holders shows any trend; (v) the number of device manufacturers grew from one to 43; (vi) since 2001, concentration fell and the number of equivalent manufacturers rose from six to nine.

2.  Pierre Larouche and Florian Schuett has posted a paper on ssrn titled    Here is a link to the paper, and here is the abstract:

As part of the standard-setting process, certain patents become essential. This may allow the owners of these standard-essential patents to hold up implementers of the standard, who can no longer turn to substitute technologies. However, many real-world standards evolve over time, with several generations of standards succeeding each other. Thus, standard setting is a repeated game in which participants can condition future behavior on whether or not hold-up has occurred in the past. In the presence of complementarity between the different patents included in the standard, technology contributors have an incentive to discipline each other and keep royalties low, which can be achieved by threatening to exclude contributors who have engaged in hold-up from future rounds of the process. We show that repeated standard setting can sustain FRAND royalties provided the probability that another round of standard setting will occur is sufficiently high. We also examine how the decision-making rules of standard-setting organizations affect the sustainability of FRAND royalties.

3.  Nicolas Petit has posted a paper titled The Antitrust and Intellectual Property Intersection in European Union Law, which is a chapter in a forthcoming edited volume titled Handbook of Antitrust, Intellectual Property and High Tech (Roger D. Blair & D. Daniel Sokol editors, Cambridge University Press, forthcoming).  Here is a link to the paper, and here is the abstract:

In European legal scholarship, many articles discuss the equilibrium reached in the case-law of the Court of Justice of the European Union (“CJEU”) when the EU antitrust prohibitions apply to, and restrain, the free and ordinary use of intellectual property rights (“IPRs”). We call this the antitrust-IP intersection. The most interesting feature of this literature is perhaps the common assumption that a unifying substantive perspective, vision or theory on IPR underpins the intersection point reached by the antitrust case-law. Whilst the theory of “absolutism” can be quickly disposed of, several other theories like inherency, exceptionalism or complementarity have been described as the lynchpin of the antitrust-IP intersection. Our paper offers a different reading of the case-law. It submits that the antitrust-IP intersection does not rest on any unitary theory which, in turn, bespeaks the Court’s vision of the social function of IPRs. Instead, the main feature of the CJEU case-law is that a specific methodology is applied to antitrust cases with IPR ramifications. The CJEU deals with most of such cases under a rule-based approach, instead of a standard-based approach. By rule-based approach, we refer to the ex ante setting of structured tests of liability, by opposition to ex post case-by-case resolution on grounds of a pre-determined, general standard (e.g., reasonableness, competition on the merits, efficiency, fairness, equity, etc.). As will be seen below, this approach has many virtues, not least in terms of legal certainty. But it also has a major qualification. Whilst the Court has consistently formulated rules of liability and justifiability at the antitrust and IP intersection, it has at the same time often embedded abstract standards within those rules. The implications of this mixed approach are unclear.

Discussion of Huawei v. ZTE at pp. 17-18, 23-24, 29-30.

Claims for Residual Damages Under German Law

Last month I blogged about an article by Michael Nieder titled Europäische (Bündel)Patente--Restschadensersatzanspruch adé? ("European (Bundle) Patents--Farewell to Residual Damages Claims?") in the January 2016 issue of Mitteilungen der deutschen Patentanwälte (pp. 1-3), which discusses, among other things, whether article 72 of the Agreement on a Unified Patent Court, which mandates a five-year statute of limitations for infringement claims, eliminates the ten-year statute of limitations for underlying residual damages claims under German law.  As I wrote at the time (see here): 

The author explains that, under section 199(1) of the German Civil Code, a claim for damages for the infringement of a German patent or the German portion of a European Patent normally must be brought within three years ("Unless another commencement of limitation of is determined, the standard limitation period commences at the end of the year in which . . . 1.  the claim arose and 2.  the obligee obtains knowledge of the circumstances giving rise to the claim and of the identity of the obligor, or would have obtained such knowledge if he had not shown gross negligence").  However, the second sentence of section 141 of the German Patent Act states "Where the person obliged has obtained something as a consequence of the infringement at the expense of the entitled person, section 852 of the German Civil Code shall apply mutatis mutandis," and section 852 states "If by a tort the person liable to pay compensation obtains something at the cost of the injured person, then even after the claim to compensation for the damage arising from a tort is statute-barred he is obliged to make restitution under the provisions on the return of unjust enrichment. This claim is statute-barred ten years after it arises, or, notwithstanding the date on which it arises, thirty years after the date on which the act causing the injury was committed or after the other event that triggered the loss." 

Similarly, in a post I published in 2013 I noted that:

In Germany, the statute of limitations for filing an action for patent infringement is governed by article 141 of the Patent Act.  WIPO’s translation of this provision reads:

As regards the period of limitation for claims due to infringement of a patent right, the provisions of Part 5 of Book 1 of the Civil Code shall apply mutatis mutandis. If the infringer has gained something through the infringement at the expense of the entitled party, Section 852 of the Civil Code shall be applicable mutatis mutandis.

Focusing on sentence 1, the general statute of limitations for filing a patent infringement claim is three years.  See Thomas Kühnen, Patent Litigation Proceedings in Germany:  A Handbook for Practitioners ¶ 1554,at 389 (6^th ed. Frank Peterreins tr. 2013); Benkard, Patentgesetz § 141 ¶ 4, at 1504 (10^th ed. 2006).  But the second sentence provides a second opportunity to file a claim for damages, after the three-year period has lapsed.  Here is the text of the referenced section of the Civil Code (BGB § 852) (English translation can be found here, German original here):

If by a tort the person liable to pay compensation obtains something at the cost of the injured person, then even after the claim to compensation for the damage arising from a tort is statute-barred he is obliged to make restitution under the provisions on the return of unjust enrichment. This claim is statute-barred ten years after it arises, or, notwithstanding the date on which it arises, thirty years after the date on which the act causing the injury was committed or after the other event that triggered the loss.

So even after the three-year period, the patent owner may get to file a claim, but for what?  The term used for the damages the patent owner may recover under these circumstances is Restschadensersatz, or residual damages.  Prevailing opinion is that these damages consist of a reasonable royalty only.  See Benkard Patentgesetz, § 141 ¶ 6, at 1505-06.  The argument appears to be that the only benefit the infringer derived at the expense of the entitled party is the royalty it didn’t pay.  For a contrary opinion, however, see Matthias Hülsewig, Der Restschadensersatzanspruch im Patentrecht—beschränkt auf die angemessene Lizenzgebühr?, GRUR 2011, 673, arguing that the patentee should have the option of recovering the infringer’s profit or a reasonable royalty.

A few weeks back Dr.  Hülsewig kindly emailed me a copy of a 2015 opinion of the German Federal Supreme Court in a copyright matter, in which the court states that the question of whether BGB § 852 permits the recovery of the infringer's profit remains an open question.  See paragraph 34 of Judgment of Jan. 15, 2015, I ZR 148/13 (BGH)--Motorradteile, available here.  In addition, as Dr. Hülsewig pointed out, the new 11th edition of the Benkard treatise on German Patent Law now also takes the position that claims for residual damages are not limited to reasonable royalties but also may include the disgorgement of other pecuniary benefits the infringer has derived ("Daher kann der Rest-Schadensersatzanspruch nicht in jedem Fall auf die (stets geschuldete) angemessene Lizenz beschränkt werden; vielmehr können auch weitere Vermögensvorteile herausverlangt werden" (section 141, p. 1907).  So perhaps we are witnessing a change in the majority view of what claims for residual damages may include under German law--though if Nieder is correct about the effect of the Unified Patent Agreement, in cases involving European patents such claims eventually may be constrained by the five-year statute of limitations.

IP Chat Channel Webinar on Enhanced Damages After Halo

On Thursday, June 30 at 2 p.m. EST, the IP Chat Channel is presenting a webinar titled Goodbye to Seagate:  Willfulness and Enhanced Damages After Halo.  Here is a link to the webpage, and here is a description of the webinar: 

This month’s U.S. Supreme Court decision in Halo and Stryker makes it easier for a plaintiff in a patent infringement case to win enhanced damages for willfulness. But how much easier? And which of the changes to the Seagate standard – throwing out the threshold of “objective recklessness”, lessening the burden of proof, or rejecting the Federal Circuit’s tripartite framework for appellate review — will have the most impact and in what kind of situations? Our panelists are litigators involved in cases involving willfulness, including C.R. Bard v. Gore and Innovention Toys v. MGA, and PPC v. Corning. They will discuss litigation strategy going forward, and other questions, such as whether companies should reevaluate policies regarding opinions of counsel on non-infringement during product development.

Panelists will include David Caine of Arnold & Porter, Steven Cherny of Kirkland & Ellis, and Mark Davies of Orrick.

For my initial thoughts on Halo, see here.  For other discussion, see Dennis Crouch's take on Patently-O, Mike Mireles's take on IPKat, and Lisa Larrimore Ouellette's take on Written Description.

More on Damages for Moral Prejudice in Spanish Law

After composing Monday's blog post on damages for moral prejudice in Spain and elsewhere, I came across an article by Marc Simon Altaba titled Take It or Leave It--The Unclear Situation of Moral Damage Claims in Spanish Intellectual Property Law, 47 IIC 178 (2016).  The article was published in February 2016, just before the CJEU's Liffers decision, and it discusses the case law and commentary leading up to that decision.  Mr. Altaba's article discusses claims for moral prejudice in the context of copyright law and, if I am reading it correctly, views such claims largely as a means of redressing infringement of authors' moral rights (droits morals).  If this view is correct, it raises questions (in my mind, at least) about the applicability of the concept of moral prejudice at all in cases involving patents or other industrial property.  Anyway, if you're interested in the subject, the article is worth your time.  Here is the abstract:

Following the adoption of European Directive 2004/48/EC on the Enforcement of Intellectual Property Rights, a number of questions arose regarding the different methods of damage calculation proposed in its Art. 13. In particular, the transposition of its contents into the Spanish Intellectual Property Law initiated a debate among national scholars regarding the possibility or lack thereof to claim moral damages using any of the criteria given. The question arrived at the national Supreme Court this year, in a case of unauthorised use of an audio-visual work. The Court asked for a clarification from the Court of Justice of the European Union on a matter that might have important effects on the determination of the damages resulting from an infraction of intellectual property rights. This opinion seeks to offer a detailed perspective on the evolution of the case in the Spanish judicial system and the possible alternatives and consequences that a future European ruling might produce.

Damages for Moral Prejudice in Spain and Elsewhere

Miquel Montañá recently published a post on the Kluwer Patent Blog about a January 15, 2016 judgment of the Court of Appeal of Madrid in a case alleging infringement of EP 860.161B1, titled "Feminine Garment with Sexual Stimulation Effect."  According to Dr. Montañá's write-up, the patent owner sued the defendant for infringing this patent, prevailed, and the defendant's liability was affirmed on appeal.  The owner sought damages under article 66 of the Spanish Patent Act, which Dr. Montañá summarizes as permitting recovery for "moral damages . . . even if the existence of an economic damage has not been proven," and article 68, which he quotes as permitting the patent owner also to "claim for indemnification for damage resulting from the loss of prestige of the patented invention caused by the infringer by producing a defective working or improper presentation of the same on the market."  (I should note that, in the new Spanish Patent Act, which goes into effect on January 1, 2017, these provisions are renumbered into articles 74(2)(a) and 76.)  On appeal, the court reversed a judgment for moral damages in the amount of €20,000, concluding that although such damages (which may include “psychological suffering or distress, which is considered to exist in a variety of situations such as psychological or spiritual shock or suffering, helplessness, worry (as a mental sensation of disquiet, sorrow, fear or foreboding uncertainty), anxiety, anguish, uncertainty, shock, affliction and other similar situations”) are in theory compensable, the patent owner had not proven the facts alleged in support of them.  On the other hand, the court affirmed a judgment in the amount of €12,500 for loss of prestige, citing evidence in the record supporting the claim that the infringing products were of lower quality, presented "in simple cardboard boxes as opposed to the luxury image attributed to the products of the complainant."

Putting aside the racy subject matter, the case raises some interesting issues about what sort of damages are recoverable in a patent infringement action.  Article 13(1)(a) of the EC Enforcement Directive states that, when judicial authorities set damages, they should "take into account all appropriate aspects, such as the negative economic consequences, including lost profits, which the injured party has suffered, any unfair profits made by the infringer and, in appropriate cases, elements other than economic factors, such as the moral prejudice caused to the rightholder by the infringement . . . ."  A few months ago I mentioned (here) an article by Nicholas Fox, Bas Berghuis, Ina vom Feld, and Laura Orlando titled Accounting for Differences:  Damages and Profits in European Patent Infringement, 37 European Intellectual Property Review 566 (2015), which discusses (among other things) how different countries in the EU interpret the term "moral prejudice."  These authors conclude (pp. 572-73):

Moral prejudice has barely any constancy between European jurisdictions even under the Enforcement Directive, and so there is no clear line to follow. All of the above-mentioned jurisdictions, with the exception of Germany, have it as an available claim, though it is rare (to an extreme) in the Netherlands, and England and Wales. In France, while theoretically tied to reputation, it appears to be used as a mechanism to adjust the quantum equitably. In Italy, moral prejudice must be demonstrated (essentially, damage to reputation), and then quantified as up to as much of 50 per cent of the loss of profits.

More recently, the CJEU in the Liffers decision (a copyright matter also arising out of Spain) concluded that IP owners can recover both reasonable royalties and damages for moral prejudice (see blog post here); and while it states in paragraph 17 that "As noted by the Advocate General in point 28 of his Opinion, moral prejudice, such as damage to the reputation of the author of a work, constitutes, provided that it is proven, a component of the prejudice actually suffered by the rightholder," it doesn't purport to state definitively what else if anything may come within the heading of moral prejudice.  In addition, the article by Charlotte Scott on damages judgments in the Intellectual Property Enterprise Court of England and Wales, which I blogged about here, indicates (consistent with Fox et al.) that damages for moral prejudice are rare in the U.K. and might be confined to cases of "acute emotional distress."  If I understand correctly, the Spanish case discussed by Dr. Montañá appears to agree that moral prejudice involves emotional harm and is distinct from harm to reputation.

My understanding is that damages for loss of reputation are in principle recoverable in U.S. patent litigation, see Lam v. Johns-Manville, 718 F.2d 1056, 1068 (Fed. Cir. 1983)--and may be relevant in determining whether the patent owner is entitled to an injunction, as discussed in Judge Reyna's concurring opinion in Apple v. Samsung, 809 F.3d 633, 647-56 (Fed. Cir. 2015)---but they are difficult to substantiate and rarely awarded.  As for emotional distress, however, there is a famous line from the Federal Circuit's decision in Rite-Hite v. Kelley, 56 F.3d 1538, 1546 (Fed. Cir. 1995) (en banc) that  "remote consequences, such as a heart attack of the inventor or loss in value of shares of common stock of a patentee corporation caused indirectly by infringement are not compensable."  

For other (brief) discussion of damages for loss of reputation or moral prejudice, see my book pp. 118 (U.S.), 256-57 (Europe), 320 (Japan).  The subject deserves further treatment.

Pai's Comments on India Discussion Paper on SEPs/FRAND

In April I published a post that linked to the India Department of Industrial Policy and Promotion (DIPP) Discussion Paper on Standard Essential Patents and Their Availability on FRAND Terms (available here), and to comments on the paper submitted by Wong-Ervin, Ginsburg, Kobayashi & Wright.  I followed up with a subsequent post linking to other comments that had been submitted to the DIPP (see here).  Professor Yogesh Pai also submitted comments and has posted them on ssrn under the title Comments on the DIPP Discussion Paper on Standard-Essential Patents and Their Availability on FRAND Terms.  Here is a link to Professor Pai's comments, and here is the abstract:

This note is submitted to the DIPP as comments on the DIPP "Discussion Paper on Standard-Essential Patents and their Availability on FRAND terms". It discusses the legal position and policy dynamics involving Standard Essential Patents. The comments highlight that caution must be exercised and more empirical based studies must be relied on before assuming that there are immediate policy changes that need to be made. It is submitted that the DIPP must exercise caution in making strong policy interventions in the very dynamic context of innovation and technical change. It is submitted that policy makers ought to defer to the prevailing statutory framework, regulatory and judicial scrutiny before making irreversible policy changes. It is the opinion of the author that such a deference thesis will help the Government of India to make the right policy changes, wherever needed, and yet save it from making incorrect policy decisions.

In addition to elaborating on the above thesis, Professor Pai states, among other things, that in India there is at present "no significant precedent to calculation of reasonable royalties except in case of compulsory licenses" (p.8), and that India does not recognize the doctrine of contracts for the benefit of third parties (p.6 n.20).  

If readers are aware of any other comments submitted to DIPP that I haven't mentioned, please send them along.  For a previous post on two of Professor Pai's other papers on FRAND, see here.

First Round of Amicus Briefs in Samsung v. Apple Design Patent Damages Case

Earlier this month I published a post on three pending patent damages matters before the U.S. Supreme Court:  the pending Halo and Stryker cases involving enhanced damages, the pending Samsung v. Apple case on design patent damages, and a cert petition filed by CSIRO in its litigation against Cisco.  (I'm thinking of getting a tee shirt that says "I was into patent damages before it was cool."  Then again, maybe not.)  Yesterday the Supreme Court issued its opinion in Halo and Stryker (see post here).  On Sunday, over at FOSS Patents Florian Mueller published a post discussing and linking to the first round of amicus briefs filed in the Samsung v. Apple case, available here.  I don't have anything to add at this point--I haven't read all of the briefs myself.  All that I can say at this point is that, if yesterday's opinion in Halo and Stryker  is any guide, there is a risk that the compelling policy arguments against awarding the infringer's entire profit will get short shrift, and that the court will instead focus on text and history--though, depending on how one interprets the text and history, I am hopeful that this might still lead to an appropriate outcome.  Perhaps the Court will conclude that courts can avoid an absurd result (awarding the entire profit earned from the sale of a device that incorporates thousands of patented features, if even one single design patent is infringed) because they have the discretion to narrowly define the term "article of manufacture" so that it isn't coextensive with the entire end product.  Heaven knows we wouldn't want a "rigid" rule, after all . . . .

U.S. Supreme Court Opinion in Halo v. Pulse, Stryker v. Zimmer: Analysis

As I reported earlier this morning, the U.S. Supreme Court today vacated the Federal Circuit opinions in Halo and Stryker, the two cases in which the Supreme Court had granted cert to determine the standards for awarding enhanced damages for patent infringement under section 284 of the U.S. Patent Act.  Opinion is here.  (For previous coverage on this blog, see, e.g., here).  Chief Justice Roberts writes for the unanimous Court, with a separate concurrence by Justice Breyer (joined by Justices Kennedy and Alito).

1.  Chief Justice Roberts begins his opinion with a discussion of the predecessor statutes and cases leading up to the enactment of section 284 in 1952, concluding that "It is against this backdrop that Congress, in the 1952 codification of the Patent Act, enacted §284. 'The stated purpose' of the 1952 revision 'was merely reorganizationin language to clarify the statement of the statutes.' Aro Mfg. Co. v. Convertible Top Replacement Co., 377 U. S. 476, 505, n. 20 (1964) (internal quotation marks omitted). This Court accordingly described §284—consistent with the history of enhanced damages under the Patent Act—as providing that 'punitive or "increased" damages' could be recovered 'in a case of willful or bad-faith infringement.” Id., at 508 . . .'" (p.4).  The Court then explains the standards the Federal Circuit had superimposed on the statute:

Under Seagate, a plaintiff seeking enhanced damages must show that the infringement of his patent was “willful.” 497 F.3d, at 1368. The Federal Circuit announced a two-part test to establish such willfulness: First, “a patentee must show by clear and convincing evidence that the infringer acted despite an objectively high likelihood that its actions constituted infringement of a valid patent,”without regard to “[t]he state of mind of the accused infringer.” Id., at 1371. This objectively defined risk is to be“determined by the record developed in the infringement proceedings.” Ibid. “Objective recklessness will not befound” at this first step if the accused infringer, during the infringement proceedings, “raise[s] a ‘substantial question’ as to the validity or noninfringement of the patent.” Bard Peripheral Vascular, Inc. v. W. L. Gore & Assoc., Inc., 776 F.3d 837, 844 (CA Fed. 2015). That categorical bar applies even if the defendant was unaware of the arguable defense when he acted. . . .

Second, after establishing objective recklessness, a patentee must show—again by clear and convincing evidence—that the risk of infringement “was either known or so obvious that it should have been known to the accused infringer.” Seagate, 497 F. 3d, at 1371. Only when both steps have been satisfied can the district court proceed to consider whether to exercise its discretion to award enhanced damages. Ibid.

Under Federal Circuit precedent, an award of enhanced damages is subject to trifurcated appellate review. The first step of Seagate—objective recklessness—is reviewed de novo; the second—subjective knowledge—for substantial evidence; and the ultimate decision—whether to award enhanced damages—for abuse of discretion. See Bard Peripheral Vascular, Inc. v. W. L. Gore & Assoc., Inc., 682 F. 3d 1003, 1005, 1008 (CA Fed. 2012); Spectralytics, Inc. v. Cordis Corp., 649 F. 3d 1336, 1347 (CA Fed. 2011) (pp. 5-6).

2.  The Court then recites the facts of Halo and Stryker, before turning to its discussion of what it views as the correct standard:

The pertinent text of §284 provides simply that “the court may increase the damages up to three times the amount found or assessed.” 35 U. S. C. §284. That language contains no explicit limit or condition, and we haveemphasized that the “word ‘may’ clearly connotes discretion.” Martin v. Franklin Capital Corp., 546 U. S. 132, 136 (2005) (quoting Fogerty v. Fantasy, Inc., 510 U. S. 517, 533 (1994)).

At the same time, “[d]iscretion is not whim.” Martin, 546 U. S., at 139. . . . Thus, although there is “no precise rule or formula”for awarding damages under §284, a district court’s “discretion should be exercised in light of the considerations” underlying the grant of that discretion. Octane Fitness, 572 U. S., at ___ (slip op., at 8) (quoting Fogerty, 510 U. S., at 534).

Awards of enhanced damages under the Patent Act over the past 180 years establish that they are not to be meted out in a typical infringement case, but are instead designed as a “punitive” or “vindictive” sanction for egregious infringement behavior. The sort of conduct warranting enhanced damages has been variously described in our cases as willful, wanton, malicious, bad-faith, deliberate, consciously wrongful, flagrant, or—indeed—characteristic of a pirate. See supra, at 2–5. District courts enjoy discretion in deciding whether to award enhanced damages, and in what amount. But through nearly two centuries of discretionary awards and review by appellate tribunals,“the channel of discretion ha[s] narrowed,” Friendly, Indiscretion About Discretion, 31 Emory L. J. 747, 772 (1982), so that such damages are generally reserved for egregious cases of culpable behavior (pp. 7-9).

3.  The Court then notes that Seagate reflects some of these concerns, but (surprise!) it is "unduly rigid":

The principal problem with Seagate’s two-part test is that it requires a finding of objective recklessness in every case before district courts may award enhanced damages. Such a threshold requirement excludes from discretionary punishment many of the most culpable offenders, such as the “wanton and malicious pirate” who intentionally infringes another’s patent—with no doubts about its validity or any notion of a defense—for no purpose other than to steal the patentee’s business. Seymour, 16 How., at 488. . . .

The Seagate test aggravates the problem by making dispositive the ability of the infringer to muster a reasonable (even though unsuccessful) defense at the infringement trial. The existence of such a defense insulates the infringer from enhanced damages, even if he did not act on the basis of the defense or was even aware of it. . . .

But culpability is generally measured against the knowledge of the actor at the time of the challenged conduct. . .(pp. 9-10).

4.  On the other hand, a finding of willfulness doesn't necessarily mean that the court must award enhanced damages:

Section 284 allows district courts to punish the full range of culpable behavior. Yet none of this is to say that enhanced damages must follow a finding of egregious misconduct. As with any exercise of discretion, courts should continue to take into account the particular circumstances of each case in deciding whether to award damages, and in what amount. Section 284 permits district courts to exercise their discretion in a manner free from the inelastic constraints of the Seagate test. Consistent with nearly two centuries of enhanced damages under patent law, however, such punishment should generally be reserved for egregious cases typified by willful misconduct (p.11).

Editorial comment here:  Although this paragraph helpfully points out that enhanced damages are not required in every case of willful infringement, it also doesn't provide any guidance for exercising that discretion (though presumably the Read v. Portec factors will still apply); and that word "generally" in the last clause might give rise to problems, as plaintiffs will seek to show why their case, in which the infringement may not have been egregious, nevertheless is different from the norm and deserves an enhancement.

5.  The Court also doesn't approve of the Federal Circuit's standard of proof and standard of appellate review:

The Seagate test is also inconsistent with §284 because it requires clear and convincing evidence to prove recklessness. On this point Octane Fitness is again instructive. There too the Federal Circuit had adopted a clear and convincing standard of proof, for awards of attorney’sfees under §285 of the Patent Act. Because that provision supplied no basis for imposing such a heightened standard of proof, we rejected it. See Octane Fitness, 572 U. S., at ___ (slip op., at 11). We do so here as well. . . .

Finally, because we eschew any rigid formula for awarding enhanced damages under §284, we likewise reject the Federal Circuit’s tripartite framework for appellate review (p.12).

The Chief rejects the argument that Congress approved of the Seagate standard in enacting the America Invents Act in 2011 (pp. 13-14).

6.  Finally, the Court gets to policy, but doesn't find it dispositive:

At the end of the day, respondents’ main argument for retaining the Seagate test comes down to a matter of policy. Respondents and their amici are concerned that allowing district courts unlimited discretion to award upto treble damages in infringement cases will impede innovation as companies steer well clear of any possible interference with patent rights. They also worry that the ready availability of such damages will embolden “trolls.” Trolls, in the patois of the patent community, are entities that hold patents for the primary purpose of enforcing them against alleged infringers, often exacting outsized licensing fees on threat of litigation.

Respondents are correct that patent law reflects “a careful balance between the need to promote innovation” through patent protection, and the importance of facilitating the “imitation and refinement through imitation” that are “necessary to invention itself and the very lifeblood of   a competitive economy.” Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U. S. 141, 146 (1989). That balance can indeed be disrupted if enhanced damages are awarded in garden-variety cases. As we have explained, however, they should not be. The seriousness of respondents’ policy concerns cannot justify imposing an artificial construct such as the Seagate test on the discretion conferred under § 284 (pp. 14-15).

7.  In his concurring opinion, Justice Breyer notes three important caveats,  before himself turning to policy:

First, the Court’s references to “willful misconduct” do not mean that a court may award enhanced damages simply because the evidence shows that the infringer knew about the patent and nothing more. . . .

Second, the Court writes against a statutory background specifying that the “failure of an infringer to obtain the advice of counsel . . . may not be used to prove that the accused infringer wilfully infringed.” §298. The Court does not weaken this rule through its interpretation of § 284. . . .

Third, as the Court explains, enhanced damages may not “serve to compensate patentees” for infringement-related costs or litigation expenses. Ante, at 3–4. . . .

I describe these limitations on enhanced damages awards for a reason. Patent infringement, of course, is a highly undesirable and unlawful activity. But stopping infringement is a means to patent law’s ends. Through a complex system of incentive-based laws, patent law helps to encourage the development of, disseminate knowledge about, and permit others to benefit from useful inventions. Enhanced damages have a role to play in achieving those objectives, but, as described above, that role is limited.

. . . Amici explain that some of those firms generate revenue by sending letters to “‘tens of thousands of people asking for a license or settlement’” on a patent “‘that may in fact not be warranted.’” Brief for Internet Companies as Amici Curiae 12; cf. Letter to Dr. Thomas Cooper (Jan. 16, 1814), in 6 Writings of Thomas Jefferson 295 (H. Washington ed. 1854) (lamenting “abuse of the frivolous patents”). How is a growing business to react to the arrival of such a letter, particularly if that letter carries with it a serious risk of treble damages? Does the letter put the company “on notice” of the patent? Will a jury find that the company behaved “recklessly,” simply for failing to spend considerable time, effort, and money obtaining expert views about whether some or all of the patents described in the letter apply to its activities (and whether those patents are even valid)? These investigative activities can be costly. Hence, the risk of treble damages can encourage the company to settle, or even abandon any challenged activity.

To say this is to point to a risk: The more that businesses, laboratories, hospitals, and individuals adopt this approach, the more often a patent will reach beyond its lawful scope to discourage lawful activity, and the more often patent-related demands will frustrate, rather than “promote,” the “Progress of Science and useful Arts.” . . . Thus, in the context of enhanced damages, there are patent-related risks on both sides of the equation.That fact argues, not for abandonment of enhanced damages, but for their careful application, to ensure that they only target cases of egregious misconduct.

One final point: The Court holds that awards of enhanced damages should be reviewed for an abuse of discretion. Ante, at 12–13. I agree. But I also believe that, in applying that standard, the Federal Circuit may take advantage of its own experience and expertise in patent law. Whether, for example, an infringer truly had “no doubts about [the] validity” of a patent may require an assessment of the reasonableness of a defense that may be apparent from the face of that patent. See ante, at 9. And any error on such a question would be an abuse of discretion. . . . 

*                  *                 *

My initial take:  the result is not a surprise in light of the Court's patent cases over the past decade, in which it routinely castigates the Federal Circuit for its "rigid" bright-line rules.  I actually think some bright (or brightish) line rules are not a bad idea, particularly when it comes to calculating damages--as I discuss in my paper (soon, I hope, to be on ssrn) Patent Damages Heuristics.  Moreover, while I am happy that the Court seems to recognize the potential abuses that may follow from having too open-ended a standard for awarding enhanced damages, I am less sanguine that the standard the Court adopts will be up to the task of eliminating those abuses.  (If knowledge of a plausible defense at the time of the infringement is now relevant, for example, how does that apply when the infringement is ongoing?  Does the infringement go from being willful to nonwillful if the defense seems more sound, though ultimately unsuccessful, later in time?) 

For my part, as a matter of policy I believe that enhanced damages serve a legitimate purpose only in a few narrowly circumscribed cases, such as when compensatory damages alone (1) would leave the plaintiff worse off than it would have been but for the infringement (perhaps because certain harms are not susceptible to quantification); or (2) would leave the defendant in a better position than a willing licensee (perhaps because the infringer avoids certain risks that a licensee normally would shoulder); or (3) would be necessary to achieve adequate deterrence (perhaps because the infringing act was of a type that often would go undetected, or the defendant has deliberately driven up litigation costs to discourage an impecunious patentee from filing suit). On the other hand, I would be more generous in awarding the prevailing party its attorney fees, and I believe courts should always award the prevailing patentee postjudgment interest, compounded, to enable full compensation.

Depending on how the new standard evolves, I suppose it is conceivable that Congress may amend the statute to recalibrate the balance in some regard , though I wouldn't hold my breath.

Breaking News: U.S. Supreme Court Vacates Federal Circuit Holdings in Halo, Stryker

These are the cases on the standards for awarding enhanced damages for patent infringement.  Opinion here.  (For previous discussion on this blog, see, e.g., here.)  I'll be reading it and blogging about sometime later today.  Opinion by the Chief Justice in which all members of the Court join, with a separate concurrence by Justice Breyer joined by Justices Kennedy and Alito.

Last Week's Patent Damages Conference at the University of Texas

On June 9-10 the University of Texas School of Law hosted the patent damages conference I mentioned earlier here.  Over on the Written Description Blog, Professor Lisa Larrimore Ouellette has an interesting write-up on the twelve paper presentations.  I understand that all or most of the papers will eventually be published in either the Texas Intellectual Property Law Journal or the Review of Litigation.

Infringer's Profits as a Proxy for Plaintiff's Lost Profits in Japan

As I note in my book (p.309),  article 102(2) of Japan's Patent Act states that 

"[w]here a patentee or an exclusive licensee claims against an infringer compensation for damage sustained as a result of the intentional or negligent infringement of the patent right or exclusive license, and the infringer earned profits from the act of infringement, the amount of profits earned by the infringer shall be presumed to be the amount of damage sustained by the patentee or exclusive licensee." . . .  The presumption therefore establishes awards of infringer’s profits as a proxy for compensatory damages, rather than as having their basis in some other theory such as unjust enrichment or deterrence (though, presumably, they may serve these latter purposes as well).  For reasons discussed in earlier portions of this book, a presumption of this sort is difficult to justify on economic grounds; and its weaknesses have not been lost on Japanese commentators.

One thing that such a presumption does have going for it, though, is that it simplifies damages calculations and thus (presumably) conserves on adjudication costs.  As I discuss in the paper I will be presenting at the University of Texas on Friday (and hope to post on ssrn before too long), though I am doubtful of the merits of this particular presumption I am of the view that some such presumptions or other simplifying heuristics sometimes may be justified, particularly where (as Professor John Golden points out in some of his recent work) the stakes of the dispute are low and/or the defendant has intentionally infringed.  

I bring these matters up here to place in context a recent Japanese case discussed by Yusoke Kurita in the March 2016 issue of AIPPI-Journal of the Japanese Group of AIPPI (pp. 84-86), SPIN Inc. v. Cinefocus Corp., Judgment of Aug. 25, 2015, Case No. 2014 (wa) 25858 (Tokyo District Court).  The plaintiff, the exclusive licensee of a patent for a "device for displaying moving images in the background of a stage," prevailed on its claim that one of the defendant's two devices infringed the patent.  Although the defendant was not manufacturing the infringing device "at this moment," the court awarded an injunction based on the defendant's previously having manufactured the device outside Japan.  As for damages, the plaintiff invoked articles 709 of the Civil Code ("“A person who has intentionally or negligently infringed any right of others, or legally protected interest of others, shall be liable to compensate any damages resulting in consequence”) and 102(2) of the Patent Act, quoted above (which, as I discuss in my book at pages 307-08, is intended to alleviate the difficulties of proving damages under article 709 alone).  According to Mr. Kurita's brief write-up, the court "accepted the plaintiff's claim for payment of 500,000 yen as damages as well as delay damages accrued thereon" (p.86).

Again, let me state that, in principle, I'm not wild about the idea of presuming that the plaintiff's lost profit equals the defendant's profit.  (Whether awards of defendant's profits can be justified on other grounds, such as deterrence, is another matter.)  But if one were going to indulge such a presumption nonetheless, perhaps this is the sort of case in which it makes sense:  though it isn't 100% clear from the write-up whether the defendant's infringement was intentional, the stakes of the case certainly appear to have been low (500,000 yen equals, as of today, U.S. $4,690).  Moreover, by virtue of the presumption, the plaintiff doesn't have to disclose its own internal profit margin (often a disincentive in some countries to plaintiffs seeking lost profits awards).  Nevertheless, the write-up doesn't indicate where the 500,000 yen figure comes from--whether that was that the profit the defendant earned from sales of the infringing device over what it could have earned using the next-best available noninfringing alternative, etc.  Overall, from a policy perspective the question is whether the method the court used is "good enough" to achieve the goals of patent law at acceptable cost.  Perhaps in a case involving such low damages the answer is yes, but I would be cautious about extending the presumption to matters where substantially more money is at stake.    

2016 PricewaterhouseCoopers Patent Litigation Study Is Now Out

Here is a link; the study's methodology is set forth on p.21.  Some highlights from the report:

1.  The number of patents granted and the number of infringement actions filed in 2015 each dropped by about 2% from 2014 (p.1).  Jury trials predominate (p.2).

2.  Focusing on district court decisions, the median patent damages award in the U.S. in 2015 was $10.2 million, the highest in ten years (p.4).  Median jury awards from 2011-15 were $10.1 million while median bench trial awards were $0.6 million (p.5).  As reported in years past, reasonable royalties are awarded much more frequently than lost profits (p.6). The median award to nonpracticing entities (NPEs) from 1996-2015 has been consistently higher than the median for practicing entities (PEs), with the figures for 2011-15 being $13.3 million for NPEs vs. $4.9 million for PEs) (pp. 10, 11).  PEs nevertheless have had an overall higher success rate from 1996-2015 (pp. 9, 11), and the overall success rate for all patentees from 1996-2015 has been 33% (p.14).

3.  Fee awards have become more prevalent since the Supreme Court's 2014 decisions in Octane Fitness and Highmark.  According to the report (p.7):

To study trends in the awarding of attorneys’ fees, and the impact of these decisions, PwC analyzed patent decisions between January 1, 2013 and December 31, 2015 that reference 35 U.S.C. 285 (as reported by LexisNexis). This provided a relatively balanced data set prior to (about 16 months) and after (about 20 months) the Octane and Highmark decisions. We focused solely on those cases where a decision on the merits of awarding attorneys’ fees was made (as opposed to analyzing all requests, including open and dismissed claims).

Since April 29, 2014 (the date of these twin Supreme Court decisions), there has been a significant rise in both the percentage of attorneys’ fees awards granted under 35 U.S.C. 285, and the total number of times attorneys' fees are awarded. As indicated by the charts, the percentage of attorneys’ fees awards granted in the 16 months prior to Octane and Highmark was 26%, which jumped significantly in the subsequent 20 months to 41%. The average number of fees award decisions also increased from about 4 per month to 7 per month.

Our data indicates that the median attorneys’ fees awarded was approximately $0.3 million post-Octane and Highmark while the maximum amount awarded in fees during this time frame was $12.5 million. Furthermore, post-Octane and Highmark, the median attorneys’ fees awarded represented 82% of the median amount requested.

4.  There are also data on specific industries, forums and judges, and appeals.

Patent Damages Conference at the University of Texas Next Week

The University of Texas School of Law is hosting a patent damages conference next week (June 9-10).  I will be one of several speakers addressing various aspects of patent damages law, and I hope to post my paper Patent Damages Heuristics on ssrn at some point in the next few weeks.  Here is a link to the conference announcement on the website of the Review of Litigation, and here is a link to an updated conference schedule.  Anyone interested in attending should contact Judy Winter at jwinter@law.utexas.edu.  I understand that the price is $100 to attend the conference without the Thursday night reception and dinner, and $200 for the full conference with the Thursday night reception and dinner.  Should be a terrific event!

Samsung's Supreme Court Brief

As a follow-up to yesterday's post, here is a link to Samsung's Supreme Court brief addressing the question of whether section 289 of the Patent Act requires the disgorgement of the defendant's total profit from sales of design patent infringing products, or only the profit attributable to the infringing component.  As expected, it makes the points I mentioned in yesterday's post.  It also discusses the legislative history of, and some possible background assumptions that Congress might have had in enacting, the predecessor statute to section 289--though how much that legislative history will influence the Court's interpretation of the text remains to be seen.  (The brief notes that one member of Congress, when asked "'[t]o what particular kinds of designs' the bill applied," mentioned "that '[i]t applies to designs for carpets, oil-cloth, wallpaper, &c." (p.41), but of course the statute on its face isn't limited to such designs.  Whether the legislative history read in its entirety, to the extent it is relevant at all, supports Samsung's argument or not will I imagine be a contested issue between the parties.)  In any event, Samsung makes a powerful case in its introduction (pp. 2-3), as well as later in the brief, as to why the disgorgement rule as applied here is absurd as a matter of policy:

The Federal Circuit’s automatic entire-profits rule would have disastrous practical consequences that Congress surely did not intend. The rule would create extreme asymmetry between design patents and utility patents, which are governed by ordinary rules of causation and proportionality. By making the most trivial design patent worth exponentially more than the most innovative utility patent, the rule would distort the patent system and harm innovation and competition. The rule would encourage companies to divert research and development from useful technologies to ornamental designs. It would encourage design-patent holders to litigate even weak infringement claims in a quest for outsized awards. And it would encourage non-practicing entities to use design patents as the next big thing for extracting holdup value from targeted businesses, with such extortionate demands posing especially grave threats to small businesses for whom a single design misstep could be an existential threat. Congress could not have intended any of these results.

If for whatever reason the Court doesn't see fit to interpret the statute in an economically rational way this time around, let's hope that some future Congress will see fit to amend the statute.

Some Pending U.S. Supreme Court Patent Damages Matters

1.  The Court will be issuing opinions this coming Monday June 6 and the following three Mondays (June 13, 20, and 27).  One of these four days will be the day it decides the Halo and Stryker cases on the standard for awarding enhanced damages; for previous discussion on this blog, see, e.g., here.

2.  Earlier this week on FOSS Patents, Florian Mueller posted an interesting discussion of the Samsung v. Apple design patent dispute now pending before the U.S. Supreme Court.  (For previous discussion on this blog, see, e.g., here.)  Samsung's brief was due yesterday (June 1), and as soon as it becomes available electronically I'll post a link.  In case you're coming to this late, the issue is whether the district court and Federal Circuit were correct to award Apple Samsung's entire profit from the sale of certain devices that were found to infringe Apple design patents.  In U.S. patent law, this disgorgement remedy is available only for design patents and is governed by § 289  of the Patent Act, which states: 

Whoever during the term of a patent for a design, without license of the owner, (1) applies the patented design, or any colorable imitation thereof, to any article of manufacture for the purpose of sale, or (2) sells or exposes for sale any article of manufacture to which such design or colorable imitation has been applied shall be liable to the owner to the extent of his total profit, but not less than $250, recoverable in any United States district court having jurisdiction of the parties.  

Nothing in this section shall prevent, lessen, or impeach any other remedy which an owner of an infringed patent has under the provisions of this title, but he shall not twice recover the profit made from the infringement.  

On one reading, the statute is clear and unambiguous:  The statute states that the owner of a design patent is entitled to recover the infringer’s total profit, which in the present case would mean the entire profit Samsung earned from sales of infringing devices—even though much, surely most, of that profit must be attributable to other features.  As others have pointed out, however (none of the arguments below are original to me) on another reading the statutory text is not so clear.  First, the statute uses the term “article of manufacture” but doesn’t define it, thus leaving open the possibility that the relevant article of manufacture could be something other than the entire end product (such as the exterior of a phone without any of the functional components).  Another possible textual strategy would be to focus on the second sentence of § 289, where it says “he shall not twice recover the profit made from the infringement.”  Arguably this suggests that the owner is entitled to recover only profits made from the infringement, and not profits attributable to other sources of value such as the phone’s functional features.  Finally, on a policy basis, awarding the owner the defendant’s entire profit seems like overkill.  From an economic standpoint, the value of a patented invention is its contribution to profit or cost-reduction in comparison with the next-best available noninfringing alternative; moreover, it stands to reason that most of the value of a smartphone is attributable to features other than the product’s nonfunctional design.   And what if a product infringes multiple design patents owned by different firms:  does the defendant potentially have to disgorge the same profit multiple times?   

The case will not be argued until this fall, so it will be a while before we know whether the Court adopts the literal interpretation of § 289 or finds one of the alternative interpretations more persuasive..

3.  On Patently-O, Dennis Crouch has a short discussion of a cert petition recently filed by CSIRO in its litigation against Cisco (link here).  The question presented is "Is the Federal Circuit’s promulgation of rigid legal rules to control the weight to be given by the trier of fact to evidence of patent infringement damages proper under 35 U.S.C. § 284?"  (The word "rigid" seems almost de rigueur these days if you're trying to coax the Supreme Court to overrule the Federal Circuit.)  CSIRO argues, among other things, that the Federal Circuit has erred in rejecting the use of licenses that are not sufficiently comparable, in requiring adherence to the smallest salable patent practicing unit (SSPPU) rule, and in requiring that royalties not reflect the value of standardization (pp.14-18).  For my write-up on the Federal Circuit decision from this past December, see here.   

Revised Version of "The Value of the Standard" Now Available on SSRN

A revised version of my paper with Norman Siebrasse, The Value of the Standard, is now available on ssrn, here.  We've benefited immensely from feedback received at several conferences over the past year, including conferences in Tokyo and Fukuoka in which I participated last June; the IEEE's 9th Annual Conference on Standardization and Innovation in Information Technology last fall in Silicon Valley; the Tilburg Law and Economics Center's Conference on Competition, Standardization and Innovation in Amsterdam this past December; and most recently the American Law and Economics Association’s 2016 Annual Meeting at Harvard Law School.  Here is the abstract:

Standard-setting organizations (SSOs) often require member firms to license their standard-essential patents (SEPs) on undefined “fair, reasonable, and nondiscriminatory” (FRAND) terms. Courts and commentators in turn have proposed various principles for calculating FRAND royalties, among them that the royalty should not reflect “the value of the standard.” As we show, however, this principle could be understood to mean any or all of three distinct concepts, namely that the royalty should not reflect the implementer’s sunk costs; that the patentee should not be able to extract any of the value resulting from network effects; or that the royalty should be proportionate to the patent’s contribution to the standard.  

This Article proposes, as an alternative benchmark, that a FRAND royalty should reflect the incremental contribution of the patent to the value of the standard to the user. This principle combines two related ideas: first, that royalties should reflect the hypothetical bargain the parties would have struck ex ante (prior to incurring sunk costs), in view of the incremental value of the technology over unpatented alternatives as revealed ex post; and second, that multiple patents reading on a standard should be valued in proportion to their marginal contribution (“ex post Shapley pricing”). Our proposal would prevent patentees from extracting sunk costs or a disproportionate share of standard value, but (contrary to some approaches) it would enable them to draw some of the increased value resulting from network effects. We show that our approach is more consistent with sound innovation policy, and suggest some practical applications.