Thursday, May 21, 2020

From Around the Blogs, Part 2

1.  Dennis Crouch has published a couple of short posts recently of interest to the patent remedies community.  Earlier this week, he published a post titled A Book of Wisdom, regarding the Federal Circuit's denial without opinion of a petition for rehearing en banc in Alfred E. Mann Foundation & Advanced Bionics v. Cochlear Corp.  As Professor Crouch explains, the district court awarded the plaintiff $268 million in damages.  The petition for rehearing en banc takes issue with the lower court's application of the "Book of Wisdom," which allows the trier of fact to take into account ex post information in estimating the ex ante royalty the parties would have negotiated.  Professor Crouch expects there will be a petition for certiorari.  Norman Siebrasse and I discussed the Book of Wisdom in our article A New Framework for Determining Reasonable Royalties in Patent Litigation, 68 Fla. L. Rev. 929 (2017); see also the chapter titled  Reasonable Royalties, pp. 28-33, in Patent Remedies and Complex Products:  Toward a Global Consensus 6, 41–46 (Brad Biddle et al. eds. 2019).

Professor Crouch also noted recently that TCL has filed a petition for certiorari in the TCL v. Ericsson dispute, posing the question  "Whether a patent owner required to license its standard-essential patents on fair, reasonable, and nondiscriminatory terms has a Seventh Amendment right to a jury trial in a proceeding seeking the equitable relief of specific performance."  Readers may recall that the Federal Circuit late last year reversed Judge Selna and held that Ericsson had a right to trial by jury; for my previous post, see here.  Law360 also has an article on the cert. petition here, and the Scotus Blog page can be found here.

2.  John LeRoy has published an article on Law360 titled A Musical Solution for Negotiating Wireless FRAND Rates.  The article discusses, among other things, the debate over license-to-all versus access-to-all, and argues that Congress should (1) establish a tribunal, similar to the Copyright Royalty Board, to determine FRAND rates, and (2) authorize the USPTO to make a preliminary determination whether the claims of an issued patent read on a standard.  As I have noted previously, Professor Jorge Contreras also has proposed a  FRAND rate-setting tribunal modeled on the Copyright Royalty Board in his article Global Rate Setting: A Solution for Standard-Essential Patents?, 94 Wash. L. Rev. 701 (2019). 

While on the subject of copyright, but the way, I've been enjoying Gary Rosen's recent book Adventures of a Jazz Age Lawyer:  Nathan Burkan and the Making of American Popular Culture (U. Cal. Press 2020).  Rosen's earlier book, Unfair to Genius: The Strange and Litigious Career of Ira B. Arnstein (Oxford Univ. Press 2012) was terrific too.

3.  .  Noting that TRIPS article 50.7 states that "Where the provisional measures are revoked or where they lapse due to any act or omission by the applicant, or where it is subsequently found that there has been no infringement or threat of infringement of an intellectual property right, the judicial authorities shall have the authority to order the applicant, upon request of the defendant, to provide the defendant appropriate compensation for any injury caused by these measures,” Sr. presupposes that the array of remedies available to the patent owner is not limited to legal actions for patent infringement. Quite the contrary; they include legal actions against mere 'threats of infringement.'"  If I understand correctly, Sr. article 9(a) of the E.C. Intellectual Property Rights Enforcement Directive, which states inter alia that "Member States shall ensure that the judicial authorities may, at the request of the applicant . . . issue against the alleged infringer an interlocutory injunction intended to prevent any imminent infringement of an intellectual property right," is at odds with this provision of TRIPS, since it only requires member states to issue preliminary injunctions based on "imminent" infringement. 

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