One More Blogging Break

I will taking one more blogging break next week, to spend some time preparing for fall semester classes (which resume the following week) among other matters.  I will return the week of September 5. 

Two New Papers on the German Patent Modernization Act

1. Judith Dany and Dr. Nicholas Hohn-Hein, LLM published an article titled The Recent Reform of the German Patent Act:  Improvements and Practical Considerations for Patent Disputes, 44 EIPR 377 (2022).  Here is the abstract:

 

            This article sheds light on important aspects of the latest reform of the German Patent Act in 2021. It discusses the practical implications for pending and future patent litigation in Germany as regards the synchronisation of infringement and invalidity proceedings, the principle of proportionality and trade secret protection.

2.  Mary-Rose McGuire published an article titled Zweites Patentrechtsmodernisierungsgesetz – Offene (prozessuale) Fragen (“Second Patent Modernization Act – Open (Procedural) Questions”) in the February 2022 issue of Mitteilungen der deutschen Patentanwälte (pp.  49-58).  Here is the abstract, in my translation from the German:

 

            Since the Second Patent Modernization Act was revised during the legislative process and-–at the last minute—substantially changed, no time remained to supplement its statement of legislative purpose (Begrundung) and to examine the new law’s procedural implementation.  This essay takes a procedural look at the synchronization of nullity and infringement proceedings, the limitation on claims for injunctive relief, the status of third parties in infringement and criminal proceedings as well as the protection of confidential information in patent disputes.  For it can only be shown in practice, whether the most recent changes really will contribute to the modernization and simplification of patent law.

Also in this issue of Mitteil. is an article at pp. 58-66) by Igor Nikolic titled Lizenzverhandlungsgruppen für SEP -Kollusives Zusammenwirken von Tecnologiekäufern:  Risiken und angemessene Alternativen (“Licensing Negotiation Groups for SEPs – Collusive Collaborations of Technology Implementers:  Risks and Reasonable Alternatives”). 

As mentioned in a couple of other recent posts (see here and here), it doesn't appear that the amendment is having any impact on injunctive relief thus far.

Dani on Proportionality in Medical Device Litigation in Italy, the UK, and Germany

Martina Dani has published an article titled Proportionality in Patent Litigation on Medical Devices, 44 EIPR 570 (2022).  Here is the abstract:

           

          Italian courts have recently demonstrated a flexible approach to granting injunctions in patent litigation on medical devices, seeking to strike a balance between patent exclusivity and public health on the basis of the proportionality principle. The application of this principle varies between countries. This article gives an overview of the current approaches to proportionality adopted by Italian, German and English courts and the legal practice which is expected to be applied by the Unified Patent Court.

The article discusses, among other cases, a 2021 interim decision of the Court of Turin in Edwards Lifesciences v Meril and Viglia, in which according to the author the court found that "the continued supply of an infringing medical device is in the public interest and, therefore, applied expressly the proportionality principle under art.124(6) of IP Code in order to modulate the impact of the injunction and seizure orders issued." The court referenced the decision of the High Court of England and Wales in Edwards Lifescience v. Boston (previously discussed on this blog here and here) in which the court had ordered a 12-month stay for similar reasons.  The article also discusses another Italian case from August 2021, Illumina v Euroclone and Nuova Genetica Italiana, in which the court permitted certain entities to continue using infringing sequencing kits.  The article notes that the German case law has taken a less forgiving approach, including one case decided after last year's amendment to article 139 of the German Patent Act.  It also notes a 2020 English decision, Evalve & Abbott v Edwards Life Sciences, which sets forth a series of criteria to consider, in the context of a case denying an application for a stay.  For previous discussion of Evalve on the Kluwer Patent Blog, see here.

Some New Papers on FRAND Topics

1. Jorge Contreras has posted a paper on ssrn titled National FRAND Rate-Setting Legislation: A Cure For International Jurisdictional Competition In Standards-Essential Patent Litigation?, CPI Antitrust Chronicle, July 2022.  Here is a link to the paper, and here is the abstract:

            Courts have increasingly been asked to adjudicate disputes over the level of fair, reasonable and nondiscriminatory (“FRAND”) royalty rates that holders of standards-essential patents (“SEPs”) are permitted to charge manufacturers of standardized products. Courts making these determinations may assess FRAND rates only as to SEPs issued in their own countries (the “national FRAND approach”) or as to all SEPs worldwide that would be included in a license had it been negotiated by the parties (the “global FRAND approach”). These competing approaches are discussed below, along with some of the international jurisdictional issues that they have raised and potential legislative solutions that could address these issues.

2. Roya Ghafele has published a paper titled (F)randonomics, 20 Colorado Tech. L.J. 63 (2022).  Here is a link to the paper, and here is the abstract:

            (F)RAND royalty rates for standard essential patents (SEPs) can and have been determined by Courts around the world. The question whether it is possible to determine (F)RAND rates does not present itself. This article offers an overview of the ‘Top Down’ and the ‘Comparable License Approach’ as they have been frequently recognized by Courts across the globe. The reasoning Courts have employed when making use of the methods are described to the extent possible in a neutral manner, as to offer further insights into the two most commonly methods employed to establish a (F)RAND royalty rate. The Top Down approach conventionally begins with calculating the total aggregate royalty burden for all patents reading on a particular standard and then continues to distribute the aggregate royalty rate among the various SEPs owners. The approach does not rely on information about other licensing transactions and can hence offer insights, which the comparable licenses approach can’t offer. The comparable license approach again can be argued to be probative as to what constitutes a reasonable royalty rate as actual licenses can reflect the economic value of the patented technology in ‘real world scenarios.’ It is a fairly practical method. Both the Top Down Approach and the Comparable Licenses approach can be used as a main method or as a sensitivity check. This overview of (F)RAND royalty rates that have been determined in the context of Court proceedings is by no means exhaustive.

3. Gustav Brismark and Bowman Heiden have posted a paper on ssrn titled Licensing 2.0: How to Incentivise around the Prisoner’s Dilemma in SEP Licensing.  Here is a link, and here is the abstract:

            Licensing platforms are a clear example of a collective action problem, where groups have aligned long-term interests but misaligned short-term goals. Customised incentives can be a key way to facilitate socially desirable collective action, especially where a market or platform includes a range of different actors. Sisvel’s LIFT model for WiFi 6 uses a system of deferred payments to link royalties payments to the uptake of the licensing programme so as to encourage early adopters.