Thursday, January 27, 2022

OxFirst Webinar on Damages Calculations in Patent Infringement Actions in the USA

On Thursday, February 24, OxFirst will be hosting a free webinar titled Damages Calculations in Patent Infringement Actions in the USA.  The webinar will run from 15:00-16:00 BST (16:00-17:00 CET, or 9:00-10:00 a.m. Central Time in the U.S.).  I will be the speaker.  Here is the webinar description:


Professor Thomas Cotter discusses the key tenets of damage calculations in patent infringement cases in the U.S.A. Professor Cotter is widely published in the field of comparative legal remedies and in this talk will reflect most recent case law in the area of IP valuation and damage calculation in the United States. 

Registration is available here.  

Monday, January 24, 2022

Paris Court of Appeal Affirms Denial of Preliminary Injunction

I thought I might blog about the Federal Circuit's nonprecedential opinion this morning in Masimo Corp. v. True Wearables, Inc., which affirms the entry of a preliminary injunction; but it is almost entirely about trade secret, not patent law, so I will hold off for now at least while I give some thought to the court's application of substantive trade secret law.  Also of some interest to readers of this blog might be the U.S. Supreme Court's decision this morning to hear a case, Axon Enterprise, Inc. v. Federal Trade Commission, presenting the question "[w]hether Congress impliedly stripped federal district courts of jurisdiction over constitutional challenges to the Federal Trade Commission’s structure, procedures, and existence by granting the courts of appeals jurisdiction to ‘affirm, enforce, modify, or set aside’ the commission’s cease-and-desist orders." 

As it is, however, I will blog today instead about a matter I came across over the weekend as I try to work my way through a backlog of European I.P. journals:  specifically, a write-up by Emmanuel Py, titled Les conditions de mise en œuvre des mesures provisoires de l’article L.615-3 du CPI (“The conditions for implementing provisional measures under article L.615-3 of the Intellectual Property Code”) in the September 2021 issue of Propriété Industrielle, pp.20-21.  The article discusses a June 15, 2021 decision of the Cour d’appel de Paris, No. 21/12617, affirming the denial of requested preliminary measures in an action brought by Allergan and Allergan France against Mylan concerning EP 1 757 434 for an enhanced bimatoprost ophthalmic solution.  According to the article, Allergan is the owner of the patent and authorized Allergan France to distribute in France a product incorporating the patented invention, under the brand name “Lumigan.”  The defendant Mylan launched a competing product, prompting Allergan and Allergan France to file suit for infringement and also to move for the entry of a preliminary injunction requesting, inter alia, the withdrawal of the Mylan product from commercial channels.  The court of first instance denied the request, and the plaintiffs appealed.

In pertinent part, L 615-3 reads as follows:

Toute personne ayant qualité pour agir en contrefaçon peut saisir en référé la juridiction civile compétente afin de voir ordonner, au besoin sous astreinte, à l'encontre du prétendu contrefacteur ou des intermédiaires dont il utilise les services, toute mesure destinée à prévenir une atteinte imminente aux droits conférés par le titre ou à empêcher la poursuite d'actes argués de contrefaçon. La juridiction civile compétente peut également ordonner toutes mesures urgentes sur requête lorsque les circonstances exigent que ces mesures ne soient pas prises contradictoirement, notamment lorsque tout retard serait de nature à causer un préjudice irréparable au demandeur. Saisie en référé ou sur requête, la juridiction ne peut ordonner les mesures demandées que si les éléments de preuve, raisonnablement accessibles au demandeur, rendent vraisemblable qu'il est porté atteinte à ses droits ou qu'une telle atteinte est imminente. . . .

My unofficial translation would be something like this:


Any person with a right to assert a claim for infringement may commence an emergency civil proceeding to obtain, if necessary under compulsion, against an alleged infringer or the intermediaries whose services it uses, any measure intended to prevent an imminent harm to the rights conferred by this act or to cease alleged acts of infringement.  The competent civil court may also order any such urgent measures ex parte when the circumstances demand that they be taken without opposition, especially when any delay may be of a type to cause irreparable harm to the movant.  In either case, the court should order the requested measures only if the elements of proof, reasonably accessible to the movant, make it probable that it is suffering an injury to its rights or that such an injury is imminent. . . .

Anyway, one of the questions presented—though it does not appear to be dispositive of the outcome here—was whether the court of first instance would be competent to order the recall of products already in the hands of third parties, such as pharmacies.  Reading article L.615-3 in the light of article 9b of the Enforcement Directive, the Court of Appeal (if I am understanding correctly) concludes that the lower court is competent to consider the proportionality of the measures requested in view of the alleged injury.  A second, procedural, question was whether Allergan France was a proper party, since it was not a formal licensee.  The court concluded that Allergan France was a proper party, given that Allergan clearly authorized Allergan France to distribute the patented product in France, even if the authorization was merely verbal.  Third, the court concluded that it was correct for the lower court to deny the requested relief in view of the fact that the validity of the patent was seriously contested (for lack of inventive step), which excludes the characterization of a probable infringement of rights and would, in addition, render the sought-after measures disproportionate.

Thursday, January 20, 2022

From Around the Blogs

1.  Giulia Pasqualetto published a post on the EPLaw Blog titled IT-Providus-Lost Profits/Recovery of Profits-Supreme Court.  The post discusses a July 2021 decision of Italy’s Supreme Court on the relevance of the infringer’s profits as a remedy for patent infringement.  According to the author, the court held that, under article 125(1) of the Italian Intellectual Property Code, which implements IPRED article 13(1)(a), a court may consider the infringer’s profits when calculating lost profits damages,  but that awards of lost profits under this provision require evidence that the plaintiff “would have been able to reach the same market served by the infringer.”  On the other hand, article 125(3), which implements IPRED article 125(3), permits the recovery of the infringer’s profits even if the conditions for an award of lost profits are not satisfied, and even in the absence of evidence of willful infringement or gross negligence.  As a matter of policy, I think this poses a risk of overdeterrence, though fortunately here the award was limited to the profits attributable to the patented feature—a safety device on a gas cartridges—and not the profits earned on the sale of the entire canister.

2. Gabrielle Girardello published a post on IPKat titled Urgent requests for declaration of non infringement (DNI)? Frequently DeNIed . . .  The post discusses a recent decision of the Court of Milan denying a request for a declaratory judgment of noninfringement, based on a three-pronged test used by other Italian courts, and concludes that the requirements are "rather clear (and stringent)".  

3.  Praharsh Gour published a post on the SpicyIP Blog titled Delhi High Court grants interim injunction to Novartis against Natco’s use of Revolade patent.  The post discusses a decision which, according to the author, the court “raised the bar for . . .  defendants planning to resort to the plea of invalidity to opposed application of interim injunctions,” by requiring that the interim challenge “be a ‘credible one’ and not merely one which is ‘worthy of consideration.’”  The court also noted that the defendants had not previously sought to invalidate the patent, which has been in force for several years, until they were charged with infringement.

4.  On JUVE Patent, Amy Sandys published Top10 patent cases of the year 2021, which includes brief discussions of (1) the French pemetrexed litigation, which initially resulted in a €4 million provisional damages award that was later vacated on appeal while the preliminary injunction remained in place; (2) the increasing use of anti-antisuit (or “preemptive” antitrust) injunctions in Germany, which “seem to be the new magic bullet in FRAND disputes”; and (3) the global FRAND litigation brought by Nokia against Oppo, in multiple jurisdictions.  For previous mention of the pemetrexed matter on this blog, see here and here; for discussion of, and link to, the Cour d’appel’s November decision vacating the provisional damages award while leaving the preliminary injunction in place, see PIBD 1173-III-1, Jan. 1, 2022. 

5. For recent discussions of FRAND matters, see, e.g., Florian Mueller, 2022's most interesting patent enforcement question: how to raise a successful FRAND defense in Munich and Mannheim under Sisvel v. Haier (short of § 315), FOSS Patents, Jan. 11, 2022; Konstanze Richter, Access Advance license is non-FRAND, rules Regional Court Düsseldorf, JUVE Patent, Jan. 6, 2022; Enrico Bonadio, Diana Filatova & Anushka Tanwar, The  UK Call for View on Standard Essential Patents and the Case for Arbitration, Kluwer Patent Blog, Jan. 18, 2022; Curtis Dodd & Chris Dubuc, Top 2021 FRAND/RAND Licensing Developments in the United States, Parts 1 and 2, IP Watchdog, Dec. 15, 2021 and Dec. 26, 2021; and Tim Pohlmann, SEPs in Europe and Beyond: Highlights from 2021, IP Watchdog, Dec. 30, 2021.  Since the first of the year, there also have been several posts on IP Watchdog bad-mouthing the USPTO, DOJ, and NIST Draft Policy Statement on Licensing Negotiations and Remedies for Standards-Essential Patents Subject to Voluntary FRAND Commitments.  Readers with a taste for that sort of thing will have no trouble finding them.  For my views, see here.   

Tuesday, January 18, 2022

Ohly and Stierle on Germany's 2021 Amendments to its Patent Law

Ansgar Ohly and Martin Stierle published an article in the October 2021 issue of GRUR (pp. 1229-41) titled Unverhältnismäßigkeit, Injunction Gap and Geheimnisschutz im Prozess: Das Zweite Patentrechtsmodernisierungsgesetz im Überblick (“Disproportionality, Injunction Gap, and Protection of Confidential Information in Litigation:  An Overview of the Second Patent Law Modernization Act”). Here is the abstract (my translation from the German):

The German Parliament approved the Second Law for the Simplification and Modernization of Patent Law on the evening of June 11, 2021.  By now it has been officially published.  Some of the amendments took effect as of August 18, 2021; others will enter into force on May 1, 2022.  The Law adds to Patent Law § 139(1) a disproportionality objection; envisions that the Patent Court will provide a qualified opinion under Patent Law § 83(1) within six months and transmitted to the infringement court; clarifies the protection of confidential information in litigation under §§ 16 et seq. of the Trade Secret Law as being equally applicable in patent actions and in compulsory license proceedings (Patent Act § 145a); and makes a range of smaller readjustments in patent, utility model, and trademark law.  The following essay presents an overview of the essential changes and subjects them to an initial critical analysis.

The article has an extended discussion of open questions surrounding how courts will set appropriate compensation for the interim period during which a court may stay an injunction pending sell-off or design-around (e.g., will there be an enhancement, how if at all will courts take into effect potential lock-in effects, etc.).  (If those observers who are of the opinion that this “grace period” will not be invoked very frequently are right, it may be a while before we know the answers to these.  For previous discussion on this blog, see, e.g., here.)

Update:  Florian Mueller provides a summary of his thoughts on the legislation, as expressed in a recent German-language  article,  here.     

Thursday, January 13, 2022

OxFirst Webinar on Noninfringing Alternatives in Canadian Patent Law

On Thursday, January 27, OxFirst will be hosting a free webinar titled The Non-Infringing Alternative in Monetary Remedies in Canadian Patent Law.  The webinar will run from 15:00-16:00 GMT (16:00-17:00 CET, or 9:00-10:00 a.m. Central Time in the U.S.).  The speaker will be one of my long-time coauthors, Professor Norman Siebrasse of the University of New Brunswick.   Here is the webinar description:


This webinar addresses the role of the “non-infringing alternative” in assessing damages and an accounting of profits in Canadian patent cases. This doctrine permits an infringer to argue that it would have been able to compete with the patentee as well, or almost as well, by using an non-infringing alternative, so that damages (or the profit to be disgorged) may be reduced, in some cases to zero. The webinar will show how the the doctrine is based in traditional principles of “but for” causation; illustrate its application in some of the leading case; discuss some of the main objections; and discuss some of the fine points that have been emerged from the Canadian caselaw.

Registration is available here.