Nine years after Ebay Should German courts have discretion when deciding on injunctions in patent infringement litigations?

Transcription

1 Nine years after Ebay Should German courts have discretion when deciding on injunctions in patent infringement litigations? 21 th Annual Conference on Intellectual Property Law & Policy at Fordham IP Law Institute April, 5 th 2013, New York by Dr. Klaus Grabinski Judge at the Federal Court of Justice, Germany

2 I. US law US Supreme Court in ebay v. MercExchange (2006): The decision to grant or deny an injunction is an act of equitable discretion by the district court reviewable for abuse of discretion. Four-factor-test: The plaintiff has to demonstrate that 1) it has suffered irreparable injury 2) that remedies available at law are inadequate to compensate for that injury 3) considering the balance of hardships between the plaintiff and the defendant 4) the public interest would not be disserved by a permanent injunction. 2

3 II. EU law Directive 2004/48/EC on the enforcement of intellectual property law Art. 2 (1) Scope Without prejudice to the means which are provided for in national legislation, in so far as those means may be more favourable for rightholders, the remedies provided for by this Directive shall apply to any infringement of intellectual property rights Art. 3 (2) General obligation remedies necessary to ensure the enforcement of the intellectual property rights covered by this Directive shall also be effective, proportionate and dissuasive Art. 11 Injunctions Member States shall ensure that, where a judicial decision is taken finding an infringement of intellectual property right, the judicial authorities may issue against the infringer an injunction aimed at prohibiting the continuation of the infringement. 3

4 III. German law Section 139 (1) German Patent Act Any person who uses a patented invention in contravention of Sections 9 through 13 may, if there is a danger of repetition, be sued by the injured party for injunctive relief. This claim shall also apply If there is a danger of first perpetration. Section 242 German Civil Code An obligator has a duty to perform according to the requirements of good faith, taking customary practice into consideration. 4

5 IV. Cases 1) The Plaintiff is a NPE. What is a non-practising entity? What is the justification for a discrimination with regard to practising entities? Shall all non-practising entities be treated the same? There is some case law that preliminary injunctive relief may be denied when the plaintiff is only licensing the patent and there is no particular urgent need of the plaintiff. 5

6 IV. Cases 2) Issuing injunctive relief could endanger the life or health of third persons Did the defendant ask for a compulsory license? 3) Issuing injunctive relief could lead to insolvency of the defendant. Temporary stay of the enforcement of the injunction can be available when the enforcement would cause an irreparable harm to the defendant (Section 707 Code of Civil Procedure) However, courts are reluctant to order a temporary stay of the enforcement of an injunction. 6

7 4) The patent-in-suit is a SEP (Standard Essential Patent). Compulsory License Defence according to the Orange-Book- Standard -decision of the Bundesgerichtshof Market-dominating position of the patent owner A serious offer by the patent seeking defendant that the patent owner cannot refuse without being anti-competitive Behaviour of the patent seeking defendant as if a license contract had already been concluded (rendering account of use, paying respective royalties, etc.). European Commission State of Objections in the Samsung case of 21 December 2012 IV. Cases Seeking injunctive relief can be anti-competitive when the owner has made a commitment to license the SEP and the defendant is willing to enter a license agreement. 7

8 5) The patent is one of a multitude of patents concerning the product. IV. Cases Example: Mobile phone which concerns a multitude of patents and the infringement involves a patented invention of minor importance. When the effects of an immediate injunction would cause disproportionate harm to the defendant and the balance of hardships favours the defendant it could be contemplated whether the injunction is suspended for some time (e.g. six months) under the rule of good faith (Section 242 German Civil Code) in order to allow the defendant to sell his stocks. However, for the time being there is no case law and the concept is not clear yet. 8