Monday, November 11, 2019

AIPPI Study Reports on IP Damages for Acts Other Than Sales

A few weeks back I received my copy of the July 2019 issue of A.I.P.P.I.--Journal of the Japanese Group of AIPPI, which includes (beginning at p.256) AIPPI Japan's answers to AIPPI's 2019 Study Question (General), "IP damages for acts other than sales."  I haven't read it all that carefully yet, but I was immediately drawn to question and answer 10, which asks "Should the subsequent export and sale of manufactured infringing goods change the quantification of damages?"  (AIPPI Japan's answer is no, although it further states that "damages should be available only to the extent that there is a sufficient causation between the infringing act and the loss," and that "damages cannot be recovered for the portion of the loss that is practically the same as the portion fo the loss covered by the damages already paid in relation to the manufacturing.")  This is, of course, the sort of question that is now being debated in the U.S. after the Supreme Court's WesternGeco decision last year.  (for recent discussion on this blog, see here.)  I have previously noted a couple of Japanese cases that appear more or less consistent with the principle that the patent owner can recover damages for losses suffered abroad that were proximately caused by an act of domestic infringement (see here).  Overall, I'm quite interested in this topic right now, and am planning to write something about it in the months to come; I also will be speaking on this topic at an event in Taiwan next month.  

Anyway, the article noted above then prompted me to see if other countries' responses were available on AIPPI's website, and they are (here).  I haven't looked through all of them yet but will start doing so.  I also would call interested readers' attention to AIPPI's Study Guidelines, which specifically note the extraterritorial damages issue in headings 21 and 22, as follows:
21) If the infringing activity is manufacturing, should it be assumed that all of the manufactured goods will be sold in the jurisdiction (X) where they were manufactured?
22) If it is not assumed that all of the manufactured goods are sold in the jurisdiction (X) they are manufactured in, and some proportion will be exported for sale in jurisdictions Y and Z, should it be assumed that the right holder’s loss / a reasonable royalty can be determined on the basis of:
- Manufacturing in jurisdiction X alone;
- Sales in jurisdictions Y and Z, and if so, how do two potentially different sale prices in jurisdiction Y and Z affect the calculation; and/or
- A combination of manufacturing (in X) and sales (in Y and/or Z), and if so, what combination?
The AIPPI Summary Report summarizes the members' views under heading 10 (page 7), while the  AIPPI Resolution proposes that courts should strive for "full compensation" (heading 3) and under heading 4 states that "When quantifying damages for infringing non-sales acts relating to specific products, any potential subsequent sales of the same specific products (whether infringing or non-infringing, and whether in the same jurisdiction or not) could be used as a benchmark for the quantification. The objective is to determine the economic effect of the non-sales infringement on the right holder."

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