Monday, January 30, 2023

Stierle on Preliminary Injunctions in Germany After Phoenix Contact

A recent post, titled Two Recent Articles on Injunctions, noted a recent article by Christian Heinze discussing the diverging interpretations of the CJEU’s Phoenix Contact decision by the Regional Courts in Düsseldorf and Munich.  That article also cited a recent paper by Martin Stierle, which I have now read.  This article, titled Provisional measures and the risk of patent invalidityPhoenix Contact and the German approach to interlocutory injunctions, 17 JIPLP 962 (2022), will be helpful for English-speaking readers to get a better feel for German practice pre-Phoenix Contact, and for how German courts may apply that decision in the coming months.  Professor Stierle suggests, inter alia, that “German courts can continue to check whether a patent withstood contradictory proceedings before the interim proceedings if this aspect is just one factor among others used in a balancing test,” and he notes several other potentially relevant factors.  Here is the abstract:


            The Regional Court, Munich I referred the German practice in proceedings for interlocutory injunctive relief in cases of patent infringement to the Court of Justice of the European Union (CJEU). The referral and the preliminary ruling by the CJEU triggered a controversial discussion in the German patent community. This article explains the background to these discussions and addresses the uncertainties as to whether ‘Phoenix Contact’ will have an impact on the German practice of granting interlocutory injunctions.

The Heinze article also notes Professor Stierle’s commentary on Phoenix Contact, in German, in Mitteilungen der deutschen Patentanwälten 6/2022, pp. 277-79.  I will also note a short article by Stephan Husemann titled Aktuelle Rechtsprechung zur einstwiligen Verfügung in Marken- und Patentsachen (“Recent Case Law on Preliminary Injunctions in Trademark and Patent Cases”),    published in Mitteilungen der deutschen Patentanwälten 7-8/2022, pp. 317-20, which briefly discusses Phoenix Contact, among other matters.

Thursday, January 26, 2023

Some Recent Papers on FRAND-Related Topics

1.  Michelle Emeterio has published an article titled Antitrust Deterrence of Patent Holdup:  Refocusing on Competition as a Driver of Technological Innovation, 12 UC Irvine L. Rev. 1085 (2022).  Here is a link to the paper, and here is the abstract:


 Traditionally, antitrust law has served as both deterrent against and remedy for the monopolistic behavior known as patent holdup. Yet those who profit from patent holdup not only deny its existence but also until very recently wielded an enticing critique of the role of antitrust law in its deterrence—namely, that antitrust law (1) disincentivizes technological innovation and (2) incentivizes infringement.


After exploring patent holdup and why the modern and historical goals of antitrust law are well suited to combatting it, this Note provides direct and circumstantial evidence of the existence of patent holdup as a real-world problem. It also looks at how a sociopolitical power imbalance at work from 2017 until 2021 bolstered attempts to immunize standard-essential patents from antitrust scrutiny. Next, it covers why contract law alone is insufficient to remedy or deter patent holdup. Additionally, this Note debunks the misguided admonition that innovation will be deterred by antitrust scrutiny. Such admonition is premised on the notions that unqualified patent rights, such as the right to maximize prices and the right to exclude others from practicing one’s patent, are necessary incentives for innovation and that antitrust enforcement suppresses these incentives. This Note ends with a realistic view of the role of injunctions in the context of standard-essential patents and the conclusion that a recent governmental policy shift towards continuing to allow firms to seek injunctions while preserving the role of antitrust law is the only sensible approach to take.

2. Brian J. Love and Christian Helmers have published an article titled Are Market Prices for Patent Licenses Observable? Evidence from 4G and 5G Licensing, 24 Colum. Sci. & Tech. L. Rev. 55 (2022).  Here is a link, and here is the abstract:

Despite the pervasiveness of patent licensing in many industries, there is a dearth of publicly available information on licensing transactions. Notably, information on price–i.e., the royalty agreed upon by licensor and licensee–is purposefully kept secret. We assess to what extent “market prices” on patent licenses are observable by assembling all publicly available information on royalty amounts associated with the licensing of 4G and 5G standard essential patents (SEPs). Our data come from a range of sources including court verdicts and litigation settlements, arbitration awards, public announcements, and published licensing agreements. We show that even for a highly visible technology such as mobile broadband, the available price points are few and far between. Moreover, any comparison of the available data points, let alone their aggregation, is extremely challenging due to largely unobservable heterogeneity in the terms and scope of the underlying licensing agreements. Our results point to a lack of transparency in the market for patent licensing that might adversely affect market participants and competition more broadly.

3. Sam V. Wizon has published an article titled Anti-Suit Injunctions and FRAND:  The Law of What Land?, 64 B.C. L. Rev. 2822 (2022).  Here is a link, and here is the abstract:

A standard is the mechanism through which a recurring problem is abstracted to an easily implemented common solution. Standards encourage innovation by reducing the cost of solving common problems, and benefit consumers by creating safer, more affordable products. To encourage proliferation of standards, private consortiums require patents on standards technology to be licensed on reasonable terms. This requirement, known as the fair, reasonable, and non-discriminatory (FRAND) obligation, is vague and has been the subject of extensive litigation, particularly as standardized technologies enjoy increased adoption and create large profits. To allow society to continue harnessing the benefits of standardization, courts should refrain from using the anti-suit injunction in cases of concurrent jurisdiction over FRAND disputes. The courts' increasing use of the anti-suit injunction encourages litigants to forum shop, harms international relations, and threatens the predictability that businesses need to invest in research and development. These consequences threaten to hamper standards development as well as the benefits to consumers and society. This Note argues against the use of the anti-suit injunction in FRAND suits. Additionally, this Note argues that standard-setting organizations should import choice of law and forum selection clauses into FRAND contracts to facilitate FRAND negotiations. These clauses can remove the incentives for courts to issue anti-suit injunctions, and for litigants to request them.