Friday, October 29, 2021

Blogging Break

I'm going to take a blogging break this coming week, to catch up on a ton of other work.  I expect to return to the blogosphere the week of November 8.  Meanwhile, Happy Halloween!

Thursday, October 28, 2021

Two Recent Articles on Injunctions

1.  Burton Ong and Marissa Chok have published Patent injunctions, standard essential patents and patents essential to de facto standards: European, German and Korean perspectives, 43 EIPR 417-31 (2021).  Here is the abstract:

Patent injunctions against unlicensed defendants who implement a patented technology standard may produce exclusionary effects that are anti-competitive. Should it make a difference whether the patent in question (1) involves a technology standard developed under the auspices of a standard-setting organisation (i.e. a standard essential patent or SEP); or (2) covers an invention that is incorporated into technology standard without going through this standard-setting process (i.e. a patent that is essential to a de facto standard or "de facto essential patent")? The potential anti-competitive effects are the same in both categories of patents, yet the legal frameworks of jurisdictions that have considered these legal issues appear to differentiate between them. This article examines the validity of distinguishing between these two groups of patented standards, using examples from various jurisdictions to illustrate the bifurcated approach that has been taken towards placing limitations on the patent holder’s freedom to seek injunctive relief. 

2.  Peicheng Wu and Charlie Xiao-chuan Weng have published Old wine in a new bottle? Assessing the injunction remedy for intellectual property disputes in China, 11 Queen Mary Intellectual Property Law Journal 295-313 (2021).  Here is the abstract:

The landmark eBay case in the US has noticeably influenced Chinese judicial practices concerning intellectual property injunctions. The injunctive relief in intellectual property infringement cases in China has witnessed a change from a traditional automatic-granting approach to a more equitable approach. However, there are still some issues, namely: the standards of awarding injunctive relief in intellectual property cases are unclear; the civil law tradition and procedure can create issues when applying for injunctions; and the scope of the injunction could be disproportionate in certain cases. In order to address these concerns, China needs to publish judicial interpretations to clarify that the eBay test can be applied to both preliminary injunctions and permanent injunctions. China should further polish up its civil procedure legislation to enable a permanent injunction to be effective immediately, even at the first instance, and to allow the parties to an intellectual property contract to have agreements on conditions of applying for injunctive relief. Additionally, Chinese courts should adopt a proportionate method in determining cases regarding intellectual property injunctions. 

Monday, October 25, 2021

From Around the Blogs

1. EPLaw published a brief write-up of a Dutch decision in a case between Ericsson and Apple, holding that Ericsson was not entitled to a "freezing measure" pending a hearing.  According to the write-up, Ericsson had asked for the measure based on the possibility that Apple would file an antisuit injunction otherwise, but the court denied the request for lack of a concrete threat on Apple's part.  In particular, Apple's refusal to commit itself to not seeking an antisuit injunction was not a sufficient threat to justify the proposed measure.  (Compare with the position taken by the courts in Munich, which arguably view a failure to make such a commitment as tantamount to being an "unwilling licensee" (and all that flows from that), as discussed here.)

Update (10-26-2021):  More on this case on FOSS Patents this morning, suggesting that the differences between the Dutch and German courts' approach may not be all that substantial after all.

2. FOSS Patents has a three-post series (here, here, and here) on a recent conference on the amendment to Germany's patent law relating to injunctive relief (previously  noted, e.g., here).  The bottom line, according to these posts, is a depressing one:  don't expect German judges to be any more willing to deny or stay injunctions than they were before. 

3. Also relevant to injunctions in Germany, on IPKat Anselm Gripp recently provided a recap of a September 2021 program sponsored by GRUR on Germany's injunction gap (that is, the time, often a year or more, in between a court's finding of infringement and a decision by the Bundespatentgericht (BPatG) on validity).  The author notes that, in theory, the two proceedings could "be synchronized, either in terms of duration or in terms of outcome"--for example, by speeding up the BPatG's proceedings, having infringement courts grant stays more frequently, or by authorizing those courts themselves to determine validity (as is the case in many countries).  According to the author, speakers endorsed a range of possible responses or reforms; but if I'm understanding correctly, they didn't seem too confident that a recent amendment to the German Patent Act, requiring the BPatG to provide a non-binding indication (Hinweis) within six months of the initiation of the invalidation action, will have a huge impact on the stay rate.

4. On Law360, Joel Wacek and Brynna Smith published an article titled Fed. Circ. Micron IP Ruling Raises Damages Disclosure Bar.  The article discusses the August Federal Circuit decision in MLC Intellectual Property, LLC v. Micron Technology, Inc. holding that, as the authors put it, "the plaintiff's failure to disclose in its interrogatory responses certain documents and quantitative considerations related to the evaluation of license agreements merited the exclusion of its expert's reasonable royalty opinion."  The authors recommend the use of supplementary interrogatory responses to avoid problems down the road.  (I previously blogged about the August decision here, though I didn't focus on the discovery issue in that post.)

5. Both Patently-O and IP Watchdog have had some coverage of a pending bill that, inter alia, would prevent the owner of an assigned patent from recovering enhanced damages if the assignment was not recorded in a timely fashion.  I believe that encouraging the recordation of assignments would be a good thing, in that it would assist accused infringers of understanding the relationship between the original owner (which may still have some sort of beneficial interest in the patent or in the outcome of litigation) and the patent-asserting party--particularly in light of the fact that NPE suits, according to a recent RPX report as discussed on Law360, have increased substantially this year.

6. On Sufficient Description, Norman Siebrasse published a short post titled NOC s 8 Regime Is Still a Complete Code, discussing a Canadian decision which agrees with other Canadian case law that a generic drug manufacturer who fails in its bid to invalidate a drug patent and therefore recover damages under Canada's patent linkage law cannot recover damages, if the patent is subsequently invalidated in some other proceeding, by asserting some other type of claim.

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.