English Court May Determine Global FRAND Rate

Yesterday, the Court of Appeal for England and Wales denied an appeal brought by Huawei and ZTE in Huawei Technologies Co. v. Conversant Wireless Licensing S.A.R.L.  (Hat tip to Jorge Contreras, who brought this decision to my attention.)  The facts, briefly, are that Conversant owns a portfolio of allegedly standard-essential patents.  In 2017, it sued Huawei and ZTE in the U.K. for infringement of the U.K. SEPs, and has sought a declaration of the terms of a global FRAND license (as in Unwired Planet v. Huawei).  In April 2018, Mr. Justice Carr denied the defendants' motions to stay the matter on the ground of forum non conveniens, principally on the ground that it was unclear that China (where the bulk of the defendant's products are made and sold) would be an alternative forum for determining a global FRAND rate.  Yesterday the appellate court rejected the defendants' appeal, so presumably the matter will proceed at some point to trial in England (though Conversant has stipulated that if the four U.K. patents are all found to be invalid or not infringed, it will withdraw the request that the English court make a global FRAND determination.  For a somewhat more detailed discussion of the case, Bristows (counsel for ZTE) has published a short write-up (available here), as has IPKat.  I'll be sure to add this development to the presentations I'll be giving next week in Japan.

For previous mention on this blog of Mr. Justice Carr's April 2018 decision, see here and here.

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Also of interest in today's news is a post by Simon Michels on the Kluwer IP Blog titled German Federal Patent Court outlines detailed guidelines for royalty rates.  The author discusses the November 21, 2017 decision of the German Federal Patent Court in the Isentress compulsory licensing saga (for previous discuss of which on this blog, see here, here and here), detailing the factors to consider in determining the reasonable royalty rate. 

Upcoming Talks on Extraterritoriality and Patent Remedies

On February 7, I will be speaking at Waseda University in Tokyo, and on February 8 and at a conference organized by the Graduate Schools of Law of Nagoya University and Hokkaido University, to be held in Nagoya.  My presentation at both venues is titled Is Territoriality Dead?  I don't have a draft paper yet, but here is the abstract of what I intend to present: 

Nations traditionally have viewed patents as territorial rights:  a U.S. patent is enforceable in the United States, for example, but not in Japan, and vice versa.  Recent developments nevertheless challenge this understanding of the territorial nature of patent rights, to some degree.  One set of challenges arises primarily in cases involving commitments to license standard-essential patents (SEPs) on fair, reasonable, and nondiscriminatory (FRAND) terms.  By way of example, in Unwired Planet v. Huawei an English court established the terms of a global license for the use of Unwired Planet’s SEP portfolio, even though the majority of those SEPs were granted—and most of Huawei’s accused devices made, used, and sold—outside the U.K.  Courts in the U.K. and U.S. also have been willing to grant antisuit injunctions restricting the owners of FRAND-committed SEPs from proceeding with parallel litigation in foreign tribunals.  In addition, courts in the U.S. and Canada recently have awarded damages for extraterritorial injuries stemming from acts of domestic infringement, although the precise scope of the entitlement to such damages remains unclear.  

I will argue that these developments, though perhaps inevitable and even desirable as a matter of policy, nevertheless call for caution in their application, both to reduce abuses on the part of patent owners and accused infringers, and to avoid unwarranted interference with the practice of other nations.  To this end, I propose that courts and regulators throughout the world should consider (1) developing a set of best practices for deciding under what circumstances domestic courts should stay or dismiss pending litigation, in deference to a foreign tribunal; (2) generally limiting antisuit injunctions, in the present context, to cases in which enforcement in another jurisdiction would frustrate the domestic court’s ability to render judgment; and (3) permitting damages for extraterritorial injuries subject to limitations grounded in principles of proximate causation, the relevance of noninfringing alternatives, and the avoidance of duplicative recoveries. 

For readers who may be able to attend, here is the Nagoya conference agenda:

Conference on “Patent Law from an International Perspective” and

“IP and the Public Domain”

1.     Time and Place

Time: February 8, 2019, Friday, 10:30-17:30

February 9, 2019, Saturday, 10:00-17:30

Place: Asian Community Forum, Asian Legal Exchange Plaza, Nagoya University, JAPAN

http://en.nagoya-u.ac.jp/upload_images/map2017_en.pdf (C5-3 on the map)

2.     Organizers

Organizer: Graduate School of Law, Nagoya University (supported by JSPS KAKENHI Grant Number 17H00963) (TBC)

Co-organizer: Graduate School of Law, Hokkaido University (supported by JSPS KAKENHI Grant Number 18H05216) (TBC)

3.     Program  * Titles are tentative.

Day 1: February 8, 2019, Friday
Time	Sessions
10:30-10:35	Welcome and Opening Remarks Masabumi Suzuki, Dean/Professor, Graduate School of Law, Nagoya University
10:35-12:25	PART I: Patent Law from an International Perspective Session 1: Patent System and Territoriality Moderator: Christoph Rademacher, Associate Professor, Waseda University, Japan  10:35-11:20 Thomas F. Cotter, Professor, University of Minnesota Law School, USA　 Is Territoriality Dead?  11:20-12:05 Masabumi Suzuki, Professor, Nagoya University, Japan Cross-border Patent Infringement under Japanese Law 12:05-12:25 Discussion
12:25-13:30	Lunch Break
13:30-15:20	Session 2: Patent System and Policy Moderator: Irene Calboli, Professor, Texas A&M University, USA 13:30-14:15 Yoshiyuki Tamura, Professor, Hokkaido University, Japan Looking at Patent System from an Institutional Perspective 14:15-15:00 Ichiro Nakayama, Professor, Kokugakuin University, Japan Patentable Subject Matter in Japan 15:00-15:20 Discussion
15:20-15:35	Coffee Break
15:35-17:25	Session 3: Patent and other IP in Specific Fields Moderator: Branislav Hazucha, Associate Professor, Hokkaido University, Japan 15:35-16:20 Nari Lee, Professor, Hanken School of Economics, Finland Patent and Trade Secret Trade-off - a Case of Personalised Medicine 16:20-17:05 Su-Hua Lee, Associate Professor, National Taiwan University, Taiwan Mitigating the Impacts of Pharmaceutical Patent Linkage on Access to Medicine: Comparisons between the USA and Asian Countries 17:05-17:25 Discussion
17:30-	Reception Lobby on the Second Floor of ALEP (in front of the room for the conference)

Day 2: February 9, 2019, Saturday
10:00-11:50	PART I: Patent Law from an International Perspective (Cont’d) Session 4: Patent Enforcement from a Comparative Perspective Moderator: Su-hua Lee, Associate Professor, National Taiwan University, Taiwan 10:00-10:45 Christoph Rademacher, Associate Professor, Waseda University, Japan Dancing with Biotech Patents – is Japan ready for a new enforcement system? 10:45-11:30 Hao-Yun Chen, Assistant Professor, National Taipei University, Taiwan A Comparative Study of Damages for Patent Infringement in Japan and Taiwan - In the Context of Exclusive Licensing 11:30-11:50 Discussion
11:50-13:00	Lunch Break
13:00-14:50	PART II: IP and the Public Domain Session 1: General Theory; Patent and the Public Domain Moderator: Yoshiyuki Tamura, Professor, Hokkaido University, Japan 13:00-13:45 Branislav Hazucha, Associate Professor, Hokkaido University, Japan Concept of Public Domain in IP Discourse 13:45-14:30 Li Yang , Professor, Sun Yat-Sen University, PRC Patent and the Public Domain 14:30-14:50 Discussion
14:50-15:05	Coffee Break
15:05-17:40	Session 3: Trademark/Copyright and the Public Domain Moderator: Nari Lee, Professor, Hanken School of Economics, Finland 15:05-15:50 Irene Calboli, Professor, Texas A&M University, USA Mutant Rights: Trademark Protection for Copyrighted Works and the Negative Impact on the Public Domain 15:50-16:35 Takeshi Maeda, Associate Professor, Kobe University, Japan Introduction of "Flexible" Copyright Limitations in Japan: An Alternative to Fair Use 16:35-17:20 Masabumi Suzuki, Professor, Nagoya University, Japan Restriction on IP for Public Policy Purposes: An Assessment on the Case of Tobacco Plain Packaging Measures 17:20-17:40 Discussion
17:40-17:45	Closing Remarks Yoshiyuki Tamura, Professor, Hokkaido University, Japan
18:15-	Dinner

New Book: Patent Law Injunctions

Wolters Kluwer recently published a new book, titled Patent Law Injunctions and edited by Rafal Sikorski.  (Professor Sikorski is also one of several co-authors of two chapters in the forthcoming edited volume Patent Remedies and Complex Products:  Toward a Global Consensus (Brad Biddle, Jorge L. Contreras, Brian J. Love & Norman V. Siebrasse eds., Cambridge Univ. Press), which I have mentioned before (see here, with links to drafts of all of the chapters).)  Here is a link to the website, and here is the book description:

Patent Law Injunctions is a comparative work on injunctive relief in patent law in major jurisdictions around the world. It contains an extensive analysis of the United States, the European Union (EU), selected EU Member States (Germany, France, the Netherlands, Belgium, the United Kingdom and Poland), China, India, Japan and South Korea. It covers both preliminary (interim) and permanent injunctions. In numerous jurisdictions, courts have realized that injunctive relief should not be available automatically in case of patent infringement. Particularly in the wake of the US Supreme Court decision in eBay v. MercExchange, it has become clear that granting an injunction may in some cases enable abuse by patent holders in order to obtain royalties exceeding significantly the value of the patent-protected invention or that it may be manifestly against the public interest.

What’s in this book:

Recognizing that patent disputes have become truly global disputes and responding to the growing need to provide a comprehensive and flexible framework for the application of injunctive relief, twelve patent law experts, both academics and well-known practitioners familiar with practice in their particular jurisdictions, offer analyses of such elements of patent law injunctions as the following:

access to SEPs;

operations of patent assertion entities;

trolls and patent privateers;

equitable nature of injunctive relief as a source of flexibility;

abuse of right and competition law defences to injunctive relief as sources of flexibility;

analysis of EU instruments that could be used in the interpretation of Member State implementing laws;

conditions for the application of tools such as equity, competition law or general doctrines such as abuse of rights;

circumstances when injunctions should be denied to patentees even though a valid patent was infringed;

complex products cases where patents protect minor parts of the technologies; and

advantages and disadvantages of various approaches to injunctive relief.

A proposal for an optimal model of granting injunctions is also included.

How this will help you:

Given that there is a growing consensus as to the circumstances in which injunctions should be available to the patentees and the circumstances when injunctions should be denied, a comprehensive analysis of the various legal doctrines that justify a more flexible approach towards injunctive relief is warranted. This book will give patent law practitioners and in-house counsel the opportunity to draw from the experience of other jurisdictions where courts faced similar problems. Policymakers, patent office officials, academics and researchers in intellectual property law will also welcome this approach.

Authors of the individual chapters include several people I've mentioned on this blog before, including Professor Sikorski, Jorge Contreras, Trevor Cook, Amandine Léonard, Yogesh Pai (whose chapter can be viewed on ssrn here), and Christoph Rademacher, as well as Piotr Andrzejewski, Matt Heckman, Yoonhee Kim, Arno Riße, Piotr Ruchala, Hui Jin Yang, and Liguo Zhang.

 Update:  Professor Contreras's paper is also available on ssrn, here.