May 8 345pm international ip enforcement

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May 8 345pm international ip enforcement

  1. 1. IP Enforcement in Europe(Germany and UK)Thomas V. MillerVice President – Intellectual PropertyMotorola Mobility LLC, a Google company
  2. 2. 2Current European Patent System European Patent Convention (EPC) allows forcentralized patent application before EPO There is no unitary patent that has multi-jurisdictional effect – just a bundle of nationalpatents• Must file suit in each separate EU member states toenforce rights Significant differences between EU memberstates• Litigation processes• Expertise of judges• Infringement and validity findings
  3. 3. 3Where to File? Must have clear strategy and goal• Injunction v. Monetary• Defendant’s market share• Patentee’s market share - backlash Key Factors in selecting a jurisdiction• Speed• Strength of infringement and validity positions• Costs of litigation• Need for discovery – detectability• Technical complexity• Expertise of courts on patent issues• Ability to obtain an injunction
  4. 4. 4German Patent Litigation Infringement Courts• Munich, Mannheim, and Düsseldorf courts most activefor patent actions Process• Infringement only (nullity proceedings separate)• Stays pending nullity proceedings are rare Timeline• Time to Trial/Hearing:• Munich: 4-6 months to prelim hearing; 9-10 months to final hearing• Mannheim: 9-10 months to final hearing• Düsseldorf: 15+ months to final hearing• Final Judgment: 2-3 months after final hearing
  5. 5. 5German Patent Litigation Pleadings• Detailed written complaint (must lay out case)• Briefing extremely important Discovery• No discovery Hearing (trials)• Specialized IP Judges (3 Judge panels)• Written expert reports are rare• No cross examination of experts (but court can askquestions if expert is present at hearing)• 2-3 hours
  6. 6. 6German Patent Litigation Recovery• Broad injunction restraining infringement of patent• Stay of judgment only granted if court believes high likelihoodclaims are invalid (80%+ convinced)• Patentee must post bond to enforce injunction• Patentee must stop selling product and marketing feature• Patentee must destroy product within its possession in Germany (ifapparatus claims found to infringe)• Patentee must send letters to customers seeking return of product• Separate phase to determine monetary relief• Rendering of accounts• Costs• Losing party must pay other party’s fees and costs
  7. 7. 7UK Patent Litigation Two Courts• High Court – more complex and higher value• Patent County Court (new) – less complex and lowervalue Process• Infringement and validity in same proceeding• Stays pending invalidity finding rare Timeline• Time to Trial:• High Court: 9-18 months to trial• Patent County Court: 6-9 months to trial• Final Judgment: 2-3 months after trial
  8. 8. 8UK Patent Litigation Pleadings - Fairly brief Discovery• Primarily document discovery• Each party must disclose documents which adversely affect orsupport issues in case• No privileged documents• Must apply to court to seek further interrogatories, documents• No depositions• Discovery significantly limited in Patent County Court Trial• Bench trial (no jury)• Role of barristers and solicitors• Expert testimony permitted (cross examination)• 4-5 days
  9. 9. 9UK Patent Litigation Recovery• Separate phase to determine relief• Broad injunction restraining infringement of patent• Typically granted (but not automatic)• Factors against injunction(1) Injunction is oppressive(2) Patentee only interested in money (using injunction at leverage)• Damages• Lost profits• Royalty basis-comparators• Patents County Court – limited to £500,000• Costs• Winning party typically recovers 60-70% of costs• Patents County Court – limited to £50,000
  10. 10. 10Summary – Selecting a Jurisdiction Speed• UK and Germany (Munich/Mannheim) are similar Strength of infringement and validity positions• Germany favored in strong infringement and weaker validitypositions because of bifurcation of issues Costs of litigation• Germany is less expensive Need for discovery – detectability• UK allows for exchange of documents Technical complexity• UK permits greater use of expert to explain technology Expertise of courts on patent issues• UK and Germany both have experienced patent judges
  11. 11. 11Summary – Selecting a Forum Ability to obtain an injunction• Germany allows immediate enforcement of judgment afterpatentee posts bond unless high likelihood claims are invalid• UK will review whether injunction is being used as leverage to justobtain money
  12. 12. 12Future – EU Unitary Patent System European Parliament approved new Unitary PatentSystem on December 11, 2012• Patentees have option to given unitary effect across allparticipating EU member states• 13 EU member states must ratify (could happen in 2014) Unitary Patent System• Exclusive jurisdiction over litigation, including injunctive andrevocation• Specialized trial courts of first instance• Central division in at least Paris, Munich, London• Local and regional division in member states• Trial courts can grant pan-EU relief• Specialized Court of Appeal in Luxembourg• Patentees can opt out of the new system with existing patentportfolio

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