Thursday, October 21, 2021

Cryan on Patent Marking

Bernard Cryan has now published a very interesting paper, a draft of which I previously mentioned here, titled Not All Patent Licensees Are the Same: 35 U.S.C. § 287 Should Not Require Marking by Licensees That Deny Infringement, 101 J. Pat. & Trademark Off. Soc'y 531 (2021). (This journal halted publication for a period of time from 2019-21, but is back up and running, as Dennis Crouch reported here.  The journal is not available open-access, but you can access it via Westlaw or Hein Online.)  Here is the abstract to Mr. Cryan’s article:


Current patent marking law requires all licensees--even those that deny infringement--to comply with 35 U.S.C. § 287. This requirement has several undesirable consequences such as discouraging settlement agreements. Not all licensees, however, are the same. Patent marking law fails to recognize that “no-admission licensees”--patent licensees who deny infringement and do not believe they need a license but agree to a license anyway--should be treated differently. The Federal Circuit can and should correct this flaw by (1) holding that a patentee can satisfy the “reasonable efforts” requirement under the Arctic Cat rule of reason analysis by making no efforts or minimal efforts to ensure its no-admission licensees comply with the marking requirements of § 287, or (2) holding that a no-admission licensee does not act “for or under” the patentee for § 287 purposes. Both solutions allow a patentee to provide constructive notice even if its no-admission licensees did not mark. Further, the Federal Circuit can adopt the five-factor test proposed below to distinguish between no-admission and traditional licensees. The proposed solutions leave the law undisturbed with respect to traditional licensees. Although the no-admission licensee situation may arise only infrequently, addressing the issue will help the patent system.

I should note that Mr. Cryan, one of my former students, is a recent graduate of the University of Minnesota Law School.  And another former student and graduate from a few years ago, Jasper Tran, also has an article in this same issue of JPTOS, titled Alice at Seven., 101 J. Pat. & Trademark Off. Soc’y 454 (2021).

Monday, October 18, 2021

Some Recent Articles, Posts on FRAND Issues

1. Volume LVI No.3 of les Nouvelles - Journal of the Licensing Executives Society (Sept. 2021) has a couple of FRAND/SEP-related articles that are available on ssrn.  One is by Joseph Alfred and is titled Licensing SEPs-Round 3Here is a link, and here is the abstract:


Patents that are essential to a standard must be licensed in a fair, reasonable and non-discriminatory manner. If we understand the English and legal meaning of these words, there is no wiggle room for so-called super FRAND rates nor for charging a premium for a standard essential patent (SEP). We should be able to ask three simple questions and derive a FRAND rate.

Is it fair?—is it impartial, honest, free from favoritism, prejudice and self-interest?


Is it reasonable?—is it just, moderate, fit and appropriate for the end in view?


Is it non-discriminatory?—is it free from conferring privileges on an arbitrary class?


For some licensors seeking to provide wiggle room, these questions are now phrased as follows:


Why should we treat all segments of a supply chain in the same way?

Why not charge 15 times more for a WiFi chipset in a smart car?

Why not treat smart cars differently than smartphones?


2. The other article in the aforementioned volume is titled LESI FRAND/SEP Study.  Here is a link, and here is the abstract:


FRAND/SEP litigation and licensing is of utmost practical importance in an increasingly connected world and grabbing the headlines globally. So, a good time for LESI’s Dispute Resolution Committee to provide a study comparing the current state of play (July 1, 2021) in the major jurisdictions for such disputes, namely Germany, the UK, The Netherlands, France, the United States, China and Japan. We are very grateful and thankful to all of our authors, being extremely busy top-tier patent litigators in their respective jurisdictions to have delivered a very practical and hands-on guide to Fair Reasonable and Non-discriminatory/Standard-Essential Patent (FRAND/SEP) litigation and licensing within a short time frame. Namely, many thanks to Prof. Dr. Tilman Müller-Stoy and Alexander Haertel, Bardehle Pagenberg, Germany, to Mary Foord-Weston and David Wilson, Carpmaels & Ransford, UK, to Rien Broekstra, Boukje van der Maazen and Daan de Lange, Brinkhof, The Netherlands, to Marie-Ange Pozzo di Borgo and Jean-Hyacinthe de Mitry, Gide Loyrette Nouel, France, to Doug Lumish and Alan Devlin, Latham & Watkins, USA, to Nongfan Zhu, KWM, China, and to Yasufumi Shiroyama, Anderson Mori & Tomotsune, Japan. All opinions and views expressed within the following comparative study are solely the authors’ opinions and views and do not reflect the opinions, views and beliefs of their law firms, clients and/or other third parties.


3. Mark Cohen published a post recently on the China IPR Blog titled Recent Translations and Comments on Laws and Cases, which includes a link to and discussion of an unofficial translation of the Supreme Court of China’s Ruling on Jurisdictional Objection Appeal in OPPO v. Sharp.


4.  Tess Waldron published an essay on Law360 titled What SEP Holders CanTake Away from UK’s Apple Ruling.  The post provides a nice summary of key aspects of Mr. Justice Meade’s recent decision in this case, previously noted here.

Saturday, October 16, 2021

Upcoming book talk

This is not related to patent remedies, but may be of interest of readers in the Minneapolis/St. Paul metropolitan area.  Professor Jorge Contreras of the S.J. Quinney College of Law at the University of Utah--who is probably best known to readers of this blog for his work on standard-essential patents--will be giving a talk on his new book, The Genome Defense: Inside the Epic Legal Battle to Determine Who Owns Your DNA,  at Valley Bookseller in Stillwater, Minnesota on Saturday, October 30, at 2 p.m. I'm hoping to attend myself; the book, about the Myriad patent litigation, sounds very interesting.

Update:  The event in Stillwater will be at Zephyr Lofts, a few doors down from Valley Books, due to space constraints at the bookstore.

Thursday, October 14, 2021

Federal Circuit Affirms Finding of Exceptionality

The case is Energy Heating, LLC v. Heat On-the-Fly, LLC , precedential opinion by Judge Prost, joined by Chief Judge Moore and Judge Stoll.  The case is before the Federal Circuit for a second time.  The first time around, the court affirmed a judgment that HOTF’s patent was unenforceable due to inequitable conduct, in particular what the court describes as the withholding of “information from the [USPTO] . . .  about substantial on-sale and public uses of the claimed invention  . . . before the patent’s critical date” (p.4).  The court remanded, however, for the district court to reconsider its decision denying attorneys' fees under 35 U.S.C. § 285.  On remand, the district court found that the case was exceptional, and the Federal Circuit now concludes that this was not an abuse of discretion.  Specifically, the court rejects HOTF’s arguments that the lower court “based its decision on an erroneous factual finding,” that it “failed to address or properly weigh the relevant factors,” and that it “failed properly to apply the law.”  On the second of these, the court states, inter alia, that “contrary to HOTF’s assertion, the district court was not required to affirmatively weigh HOTF’s purported ‘lack of litigation misconduct. . . .  In other words, while the ‘manner’ or ‘broader conduct’ of litigation is relevant under § 285, the absence of litigation misconduct is not separately of mandatory weight” (p.9; emphasis in original).  In addition:


HOTF contends that the district court misapplied the law because it “viewed an inequitable conduct finding as mandating a finding of exceptionality.” . . . Not so. The district court correctly explained that “[a] finding of inequitable conduct does not mandate a finding of exceptionality.” . . . And while the district court stated that after Octane Fitness “it appears other courts have universally” found “exceptionality if inequitable conduct is found,” the district court nonetheless appropriately considered the governing law and the facts of this case in reaching its conclusion. . . . We discern no legal error and so no abuse of discretion in the district court’s application of the relevant law (p.10).


Tuesday, October 12, 2021

Federal Circuit Issues (Very Slightly) Modified Opinion in Hyatt v. Hirshfeld

The modified opinion can be found here.  It does not alter the holding of the case, in which the court concluded that the USPTO cannot recover expert witness fees in actions brought under 35 U.S.C. § 145.  (For my blog post on the original decision from this past August, see here.)  Unless I'm missing something, the only change in today's opinion is the deletion of some words previously found in lines 1 of 2 of page 3 regarding "submarine" patents.

Monday, October 11, 2021

Recent Papers on FRAND Issues and Dispute Resolution

1. Jorge Contreras has posted on ssrn a short paper titled Anti-Suit Injunctions and Jurisdictional Competition In Global FRAND Litigation: The Case For Judicial RestraintHere is a link, and here is the abstract:

The proliferation of international jurisdictional conflicts and competing “anti-suit injunctions” in litigation over the licensing of standards-essential patents has raised concerns among policy makers in the United States, Europe and China. This article suggests that national courts temporarily “stand down” from assessing global “fair, reasonable and nondiscriminatory” (FRAND) royalty rates while international bodies develop a more comprehensive, efficient and transparent methodology for resolving issues around FRAND licensing. 

2.  Kung-Chung Liu has published a short paper titled Arbitration by SSOs as a Preferred Solution for Solving the FRAND Licensing of SEPs?, 52 IIC 673-76 (2021).  The author argues that the competition agencies of the U.S., E.U., Taiwan, South Korea, and the People's Republic of China should "form a consortium to oversee the self-regulation of SSOs, including [an] arbitration service, in a way that best addresses the three drawbacks" the author perceives to be "associated with traditional arbitration."  For Lord Justice Richard Arnold's proposal for mandatory arbitration of SSO disputes, see here.   

3.  Not directly relevant to dispute resolution, as such, but of interest to followers of FRAND/SEP matters are these recent blog posts:  (1) Curtis Dodd & Arty Rajendra, Allegedly 'Late' Disclosure of IP Rights Does not Make Patents Unenforceable in the U.S. or U.K., IP Watchdog, Sept. 23, 2021 (discussing U.S. decisions in Core Wireless/Convesant Wireless v. Apple and Optis v. Apple, and the recent English decision in Optis v. Apple (UK) (previously noted here and here); (2) Tim Pohlmann, The Role of Standard-Essential Patents in the Auto Industry, IP Watchdog, Sept. 27, 2021; and (3) a two-part series by Mark Selwyn, Tim Syrett, and Alix Pisani titled Opinion: Skirting FRAND requirements under the guise of promoting innovation and efficiency, IPKat, Sept. 24 & Oct. 7, 2021.  Also of considerable interest is a post by Nick Fischer and Graham Burnett-Hall on EPLaw, titled UK-Optis Cellular v. Apple Retail, discussing and providing a link to Mr. Justice Meade's September 27 opinion in  the  U.K. Apple SEP dispute; I will probably have more to say about this after I have had some time to digest the opinion myself.

Friday, October 8, 2021

"Enjoin" or "Injunct"?

Not the most pressing question, perhaps, but I have noted over the past few years that judges and commentators from the U.K. often use the verb "injunct", rather than "enjoin", to refer to what a court does when it orders a party to cease infringing a patent--that is, when it enters an injunction.  In my experience, one rarely encounters the word "injunct" in the United States, which is perhaps one reason why, to my ear, "injunct" sounds wrong.  (The other is simply a dislike of verbs unnecessarily formed from nouns--e.g., "incentivize" from "incentive"--when there are other, less bureaucratic-sounding, words such as "induce" or "encourage" that in most situations work just as well.)  Curious, I looked the words up in the Oxford English Dictionary--and guess what?  According to the OED, while "enjoin" can be traced all the way back to Middle English (e.g., Wycliffe, Langland) as derived from medieval French and, ultimately, Latin, the use of the word "injunct" as a verb dates back to nineteenth-century American English, though it made its first documented entry in British English not long after, in 1890.  (In case you're wondering, the OED traces the word "injunction" to the early sixteenth century.  It also has an entry for "enjoinment"--basically, a synonym for "injunction"--the first documented use of which was by Sir Thomas Browne in 1636, and the last by Robert Browning in 1868.  Let's not revive that one, please.)  One source the OED cites, an 1872 book titled Americanisms:  The English of the New World, refers to the past tense form of the verb ("injuncted") as one of a class of "violent contractions derived from well-known and well-formed words."  Though I share the author's distaste for the word itself, his reaction itself seems a bit off the charts, since the word is neither a contraction--at least not in the sense we typically use that term today, though maybe it had a broader meaning in 1872--nor, in any meaningful sense, a "violent" one.  

Moving along, a Google N-Gram search reveals that in both countries "enjoin" is used a lot more frequently than "injunct."  As of 2019, if I am understanding this correctly, the word "enjoin" showed up in both American and British English about once every 25,000 words, and "enjoined" a bit more than twice every 25,000 words.   In American English, "injunct" showed up roughly once every 300,000 words and "injuncted" about once every 10,000,000, whereas in British English "injunct" shows up about once every 10,000,000 words and "injuncted," surprisingly, is more common, showing a bit more than once every 2,500,000 words.  Nevertheless, it's fair to say that both British and American speakers of English prefer "enjoin" and "enjoined" to "injunct" and "injuncted"--the one exception, based on my own anecdotal experience, being British patent lawyers and judges.  Perhaps if someone were to inform them that the words are American in origin, they would be encouraged--or should I say, incentivized?--to revert back to "enjoin" and "enjoined."

Below:  A poster from a recent, not particularly good, film about the creation of the Oxford English Dictionary.  Would Mel Gibson say "enjoin" or "injunct"?

The Professor and the Madman (film).png

Wednesday, October 6, 2021

Some New Cases on Extraterritorial Damages

A recent Law360 article by Daniel Moffett, Karina Moy, and Golda Lai, titled Overlooked Patent Cases:  Foreign Activity, Liability, Damages, alerted me to a couple of U.S. District Court decisions that were decided since I completed my article Extraterritorial Damages in Patent Law, 39 Cardozo Arts & Enter. L.J. 1 (2021).  If I am understanding the facts correctly, both cases are consistent with my thesis that the logic of the Supreme Court's decision in WesternGeco LLC v. ION Geophysical Corp., 138 S. Ct. 2129 (2018), leads to the conclusion that, where an act of domestic infringement in violation of 35 U.S.C. § 271(a) is the cause-in-fact and proximate cause of some further activity in another country, a U.S. court should award damages reflecting the loss the patent owner suffers as a result of that foreign activity.  The two cases are Centripetal Networks Inc. v. Cisco Systems Inc., ___ F. Supp. 3d ___, 2021 WL 1030286, at *11-12 (E.D. Va. Mar. 17, 2021), and ArcherDX, LLC v. QIAGEN Sciences LLC, C.A. No. 18-1019 (MN), 2021 WL 3857460 (D. Del. Aug. 30, 2021).  The court in Centripetal wound up entering a damages award totaling $2.7 billion, including an enhancement and prejudgment interest, and an appeal is pending.  (See discussion of a recently-filed amicus brief, addressing the enhanced damages issue, on Law360 here.)  Whether the Federal Circuit will weigh in on the extraterritoriality issue, or decide the case on other grounds, of course remains to be seen. 

Readers may recall that I also have a draft paper, which should be published sometime early next year, titled Extraterritorial Damages in Copyright Law, 73 Fla. L. Rev. __ (forthcoming 2022).  I hope to talk a bit about this topic at UIC John Marshall Law School's upcoming 64th Annual Intellectual Property Law Conference, scheduled to take place (virtually) on November 13.  

Monday, October 4, 2021

Berkeley Center for Law & Technology to Host Event on China and SEPs

This by way of Mark Cohen's China IPR Blog:  the Berkeley Center for Law and Technology will be putting on an event on Wednesday, October 6, at 4:30 p.m. Pacific time, titled "Toward A Deeper Understanding: Berkeley Asia IP SEP Talk Series 2021, Talk III - The Role of Antitrust."  Here is the description:


Among the issues to be discussed: What are the legal provisions under Chinese Antimonopoly Law (“AML”) that may be used to regulate SEP licensing? What are the legislation history and political economy dynamics behind these provisions? How likely will these provisions be misused? The empirical research testing the underlying patent hold-up and royalty stacking theory – how does the outcome inform the AML enforcement in China? The decades long domestic debate between industry policy and competition policy – how did this influence the AML enforcement?

Registration link is here.

Friday, October 1, 2021

OxFirst Webinar on Patent Damages Under English Law

OxFirst is presenting a free webinar next Tuesday, October 5, from 15:00-16:00 GMT (that’s 11:00 a.m. Eastern time), titled "Damage Calculations in Patent Infringement Cases under English Law."  From the description:


In this webinar we discuss the key tenets of damage calculations in patent infringement cases, assess opportunities and limitations under the current law and offer an outlook on potential developments in a Post Brexit era.


In the United Kingdom, the calculation of damages is undertaken after patent infringement has been demonstrated. The patentee can choose between damage awards or account of profits. Damage awards can be described as a monetary compensation that seeks to put the injured party in the same position as if infringement had not happened (the status quo ante). Account of profits again assess the infringer’s profits that can be associated with the infringed patent. In that respect a patentee is allowed limited access to the infringer’s financial statements.

Chairing the event with be Professor Enrico Bonadio.  Speakers include Patrick Cantrill and Professor Roya Ghafele.  Registration here.