After attendees devoured a well-earned lunch at Columbus Circle on Thursday, the delegation reconvened for one of the afternoon's concurrent sessions. The Amerikat opted for an afternoon of remedies, trade secrets and patents. First up, remedies, moderated by Patricia Martone, who opened the session with a brief trot through US legal considerations for the granting of injunctions in eBay v MercExchange and the factors to consider for the award of damages in Georgia-Pacific.
"When the patented invention is but a small component of the product the companies seek to produce and the threat of an injunction is employed simply for undue leverage in negotiations, legal damages may well be sufficient to compensate for the infringement and an injunction may not serve the public interest."This issue would ultimately be addressed in Apple v Samsung. Armed with some statistics, Carey explained that prior to eBay permanent injunctions were granted in 95% of cases. After eBay the number went down to 72%. Although this was not a dramatic change, it was still a significant reduction. By industry, the statistics are also illuminating. In the biotechnology fields permanent injunctions were issued in 100% cases, whereas the numbers decrease to 75% and 67% for mechanical and electronics, respectively. For non-practising entities, they obtained a permanent injunction in 16% of cases as opposed to other patentees who obtained injunctions in 80% of cases.
Carey explained that the Federal Circuit court consisting of Judge Prost, O'Malley and Bryson in Apple v Samsung (Apple I) held that the district court was correct to require a showing of some casual nexus between Samsung's infringement and the alleged harm to Apple as part of the showing of irreparable harm. The Federal Circuit stated that:
"Sales lost to an infringing product cannot irreparably harm a patentee if consumers buy that product for reasons other than the patented feature. If the patented feature does not drive the demand for the product, sales would be lost even if the offending feature were absent from the accused product."Apple II amplified this and held that the patentee must show that but for a preliminary injunction being granted it will suffer irreparable harm. The patentee must also demonstrate a sufficiently strong causal nexus between the alleged harm and the infringement. In Apple III, the Federal Circuit toned down the requirement in Apple II holding that the patent does not have to be the exclusive driver, only a significant and substantial driver. Apple IV creates more uncertainty (should it remain good authority). Carey's view is that a few judges on the Federal Circuit are not happy with eBay; their view being that if you are granted a patent and are practising that patent, you should be able to use your exclusionary rights.
(1) The value that the claimed invention contributes to the accused product.In the UPC, the risk of a pan-European injunction increases these considerations. Tina suggested that a concept of an automatic one-size fits all injunction can distort how companies do business. Indeed, a concept of an automatic injunction may prioritize litigation over licensing.
(2) The value that factors other than the claimed invention contribute to [the accused product].
(3) Comparable license agreements, such as those covering the use of the claimed invention or similar technology
Annabelle Bennett, in the audience, commented that the patent is the right to exclude: "Previously, in the ordinary patent sense, people would come to court and almost automatically be granted an injunction. But, an injunction is a discretionary remedy which means you do not get an injunction in all cases. Standard essential patents (SEPs) are a classic example or where a device has 1000 patents in it. Judges are not automatons - they will fashion the remedy to the case." This will hopefully also ring true in the UPC, says Merpel.