Recent German Articles on ASIs and AASIs

Horst Vissel and Christian Kau have published an article titled Rumble in the Jungle – Ein Weg aus dem (Anti)ⁿ-Suit-Injunction Dickicht? (“Rumble in the Jungle:  A Way out of the (Anti)ⁿ-Suit-Injunction Thicket?”), 7/2023 GRUR 451-57.  Here is the abstract, in my translation from the German:

 

Heavyweights sizing each other up at a “Rumble in the Jungle” have been known to land the occasional low blow.  That’s why you need a neutral arbiter to ensure a fair proceeding.  This goes not only for sporting events, but also for global commercial competition in the telecommunications industry.  Just as in boxing different associations lay claim to the right to choose the world champion, parties and courts from various countries dispute who has jurisdiction in conflicts concerning standard-essential patents.  In this regard, the availability and the conditions for granting antisuit injunctions and their opposite anti-antisuit injunctions most recently have obtained greater significance, not least in the decisions of the Munich and Düsseldorf courts.  This has revealed a certain helplessness of the parties, if the courts in certain jurisdictions avail themselves of the power to enable rules concerning their own jurisdiction, which have a direct effect on judicial proceedings being prosecuted in other countries.  Criminal law offers a possible means for taking due regard for the sovereignty of states and for conferring greater importance to domestic access to justice.

If I understand correctly, the authors argue that in cases in which a foreign litigant obtains an ASI prohibiting a patent owner from proceeding with litigation or enforcing a judgment in Germany, the German state could take over the infringement litigation by bringing criminal proceedings against the alleged infringer.  (There is also some discussion of whether the UPC will be able to grant AASIs, see pp. 452-54, a topic on which I do not yet have any special insight.  For another perspective on this topic, see  Florian Mueller’s recent post titled Unified Patent Court presumably can't order anti-antisuit injunctions, but can national courts bar defendants from seeking antisuit injunctions against UPC enforcement?.)

Also of relevance to this topic is an article by Judge Sabine Klepsch titled Setting the Scene—Anti- and Anti-Anti-Suit-Injunctions in der Praxis der deutschen Patentstreitgerichte (“Setting the Scene:  Anti- and Anti-Antisuit Injunctions in the Practice of the German Patent Courts”), 6/2023 GRUR 382-84, which I noted on this blog last month (see here).

OxFirst Webinar on FRAND Royalty Determination

OxFirst will be putting on a free webinar tomorrow (April 25) at 16:00 BST titled "FRAND Royalty Rate Determination."  Here is OxFirst's description:

 

How much to charge for the use of standard essential patents is core to business and legal decisions alike. Therefore, the question as to how determine FRAND royalty rates remains a key element of the debate on standard essential patents, and we are privileged to be joined in this webinar by two key speakers who approach it from differing angles. Dan Lang and Jeffrey Blumenfeld will offer a “point-counterpoint” discussion of some of the principles involved and some of the approaches taken to royalty rate calculation, drawing on decades of experience in this space, so to provide invaluable insights to those seeking to come to grips with the crucial question of FRAND royalty rate determination.

 Registration is available here.

 

Schnetzer on Third-Party Interests and Proportionality

As I noted on this blog a couple of months ago, there have been several commentaries recently on a July 2022 decision of the Düsseldorf Regional Court denying Gilead, maker of the hepatitis C drug Sofosbuvir, a stay of injunctive relief in a case brought by patent owner NuCana.  A new article by Karsten Schnetzer, titled Verhältnismäßigkeit und Schutz Dritter gem. § 139 Abs. 1 Satz 3 PatG—zum Urteil des LG Düsseldorf vom 7.7.2022—4 c O 18/21—Sofosbuvir (“Proportionality and Protection of Third Parties under Patent Act § 139 Para. 1 Sentence 3 PatG—on the Judgment of the Düsseldorf Regional Court of 7.7.2022—4 c O 18/21—Sofosbuvir”), Mitteilungen der deutschen Patentanwälten 3/2023, pp. 102-10, argues against the court’s holding that the relief afforded to third parties under the 2021 amendment to the German Patent Act is “subsidiary” to the compulsory licensing option under § 24.  Here is the abstract, in my translation from the German:

 In the course of the Second Patent Modernization Act (2. PatMoG), the claim for injunctive relief in § 139 Para. 1 Sentence 3 was supplemented in exceptional cases supplemented with the proportionality objection.  To the circumstances to be considered in assessing proportionality belong also the effects, which a successful claim for injunctive relief has on third parties.  The supplement was already hotly debated in the legislative proceedings in Parliament and in industry.  The Judgment of the Düsseldorf Regional Court of 7.7.2022—4 c O 18/21—Sofosbuvir appears to be the first trial court decision that expressly pulls together the legislative material with the proportionality of the claim for injunctive relief and with the aspect of hardship for third parties, and deals with the relationship between injunction and compulsory license claims.  The essay argues against the reasoning of the Regional Court.

The author argues that the court's holding that the provision at issue is "subsidiary" to the defendant's attempting to obtain a compulsory license, as well as its weighing of interests which effectively conditioned the availability of a stay for the benefit of third parties on the defendant’s attempt to obtain a voluntary license, contradicts the intent of the German Parliament as evidenced in the legislative record.

Some Recent Papers on Damages, Injunctions

1.  Catherine J. Canby has published a note titled Pushing the Boundaries:  Extraterritoriality, Patent Infringement Damages, and the Semiconductor Industry, 101 Tex. L. Rev. 955 (2023).  It’s available on Westlaw but is not yet up on the Texas Law Review’s website.  Here is the abstract:

 

 Boundaries are a foundational characteristic of patent systems across the globe. However, the extent to which the territorial boundaries reach remains an open question. It is a long-held tenet of patent law that patent owners may recover against infringers. But in considering patent damages and extraterritoriality, two basic principles of U.S. patent law are seemingly placed in juxtaposition: first, that patent owners are entitled to full recovery, and second, that patent rights are fundamentally domestic in nature.

 

An extraterritorial application of law is the extension of a country's law to conduct outside the territorial confines of that country. Recently, the Federal Circuit considered a trilogy of cases addressing extraterritoriality in the context of patent damages. In these decisions, the Federal Circuit relied heavily on the presumption against extraterritoriality, emphasizing a rigid view of territoriality in determining damages for patent infringement. In all three of the cases, the court declined to award lost profits for foreign sales. Flowing from a domestic act of infringement.

 

Opening the aperture slightly, the Supreme Court held in 2018 that a patent owner can recover "lost foreign profits" arising from an act of infringement under 35 U.S.C. § 271(f). Under this provision, a patentee may recover damages when an infringer supplies or exports components of a patented invention originating in the United States with the intent that the components be combined in an infringing manner abroad. This Note considers the extent to which the Court's decision can be applied to infringement under other provisions, such as §271(a), which defines direct infringement of a U.S. patent. Although various scholars have debated this topic, this Note extends beyond the current literature by exploring the impact of these judicial decisions on the U.S. semiconductor industry. An extension of patent damages would augment domestic policy designed to stimulate U.S. competitiveness in the global semiconductor arena. Using the semiconductor industry as a paradigm, this Note ultimately concludes that allowing patent owners to recover damages for extraterritorial losses arising from infringement under § 271(a) will likely lead to more benefit than harm.

2. George Derpanopoulos, Jaci Overmann, and C. Paul Wazzan published an article titled The Use of Conjoint Analysis in High-Stakes Litigation:  A Historical Review up to Navarro et al., v. Procter and Gamble, Which Withstood a Rigorous Daubert Challenge, 102 J. Pat. & Trademark Off. Soc’y 526 (2022).  Here is the abstract, and here is a link to the paper on the website of BRG, the firm that employs one of the authors:

The use of conjoint analysis has become increasingly common in litigation including in, among others, patent infringement cases (for example, how much does the patented feature increase the value of the overall product), deceptive advertising cases (for example., how much demand was driven by the representation of a product as “organic”), copyright infringement cases (for example, how much profit was driven by the use of a copyrighted image on product packaging), product liability cases (for example, how much of a car’s overall sales are driven by the inclusion of antilock brakes), and data privacy cases (for example, how much do users value their personal information). As the use of conjoint analysis has increased, so have the incidences of courts rejecting these types of analyses. This article: (1) reviews the mechanics of conjoint analysis; (2) briefly summarizes recent matters where the approach was used and accepted (or rejected) by the courts; (3) draws some inferences based on these cases; and (4) concludes with a detailed presentation of a recent case where conjoint analysis was successfully used resulting in a detailed court opinion that is summarized here. The objective of this article is to provide the reader with a comprehensive overview of the current state of the art in the use of conjoint analysis in litigation.

I was not aware of the article until the other day, when James Nieberding published an essay on Law360 titled How Willingness to Pay Informs Damages Methodology, citing the article.

3. Matthieu Dhenne has published a comment titled Preliminary Injunctions Based on a Patent Application:  A Justified Solution? (Fingolimod Case), 45 EIPR 236 (2023).  Here is the abstract:

In a decision of June 3, 2022, opposing NOVARTIS and BIOGARAN, the Tribunal Judiciaire de Paris ("Paris High Court") accepted the admissibility of a request for provisional measures based on a European patent application. This solution, however surprising it may seem at first sight, could nevertheless be justified.

For previous discussion of this issue, which has come up in other European jurisdictions in cases involving the same pharmaceutical product, see the materials cited on this blog here.

4. Menglin Sun published a note titled The Jury’s Role in Granting Reasonable Royalty:  Right or Wrong?, 50 AIPLA Q.J. 335 (2022).  The article, which is available to AIPLA members on AIPLA’s website but is not yet up on Westlaw or on Hein Online, argues that under 35 U.S.C. § 284, the determination of a reasonable royalty is a matter for the jury (in a jury trial), not an equitable remedy to be determined by a judge.  Although this is consistent with U.S. practice, the author discusses the arguments for and against this interpretation, before concluding that current practice is legally correct.