The Changing Battlefields of Patent Litigation: TC Heartland, the PTAB, UK and Germany

Transcription

1 OCTOBER 31, 2017 NOVEMBER 1, 2017 The Changing Battlefields f Patent Litigatin: TC Heartland, the PTAB, UK and Germany Deepak Gupta, Jim Day, David Knight, Ben Grzimek Farella Braun + Martel LLP and Fieldfisher

2 Patent Litigatin in Germany and the UK Ben Grzimek and David Knight Octber 31/Nvember 1, 2017

3 Agenda Curt System in Germany Parties Subject matter Curt System in the UK Duratin/Csts 2

4 Abut us 770+ lawyers peple Offices in 14 cities 240+ Partner Offices in 9 cuntries Wrldwide netwrk 3

5 Offices wrldwide Silicn Valley Lndn Amsterdam ZAHLEN & DATEN Birmingham Brussels Manchester Paris Milan Turin Venice Blgna Hamburg Düsseldrf Munich Beijing Shanghai 4

6 Patent litigatin in Germany

7 Curt System in Germany Jurisdictin: 13 specialized curts (per Bundesland / state) particularly Dusseldrf and Mannheim (infringement) any US District Curt, ITC Judges: n jury necessary in sme cases Appeals: (almst) unlimited access t 2nd instance Frum Shpping: nly available t patentee DJ actins mre f a threat in the US 6

8 Curt System in Germany First Instance District Curt Prceedings may be stayed while nullity actin r ppsitin pending Judgment Appeal Actin dismissed Actin successful (=> injunctin etc.) Further Appeal - t be allwed - Higher Reginal Curt Federal Supreme Curt 7

9 Parties & subject matter Plaintiff: Exclusive licensee may als sue Defendant: CEOs may be sued needs express cnsent frm patentee Infringement: Injunctins are autmatic and may be suspended nly under exceptinal circumstances Validity: Bifurcatin: infringement curt may nt invalidate patents, separate validity attack necessary stay f infringement litigatin pssible German bifurcated system generally favrs patentees Damages: Separate actin necessary 9

10 Duratin Fairly predictable in bth the first and secnd instances multiple mtins may delay prceedings N discvery/very limited access t ppnent s dcuments Expert evidence used in less than 20% f the cases Stay pending validity attack in less than 10% f first instance prceedings Main trial lasts less than ne day (as ppsed t 3-60 days in the US) Germany generally prvides a fast and reliably inexpensive way t enfrce patents 11

11 Duratin (infringement prceedings) Frum Actins started (2016) Duratin Düsseldrf District Curt Düsseldrf Curt f Appeal apprx If nt stayed mnths - If nt stayed mnths District Curt usually decides withut expert reprts Pstpnement f trials very rare Estimated settlement rate: % (higher after judgment issued) 12

12 Duratin (nullity prceedings) Frum Federal Patent Curt Fedral Curt f Justice Duratin apprx mnths apprx. 2 4 years 13

13 Csts Fr patentee, cst risk is a knwn quantity (reimbursement f statutry curt and ppnent s attrneys fees nly) Fr infringer, much mre is at stake: Injunctin will prbably shrink market share Design-arund (if at all pssible) can be cstly Damages may amunt t a cnsiderable share f prfits made with attacked embdiments 14

14 Patent litigatin in the UK

15 Curt System Jurisdictin: Specialized curt UK Patents Curt (part f the UK High Curt), r in smaller cases (damages cap US$650k) the IPEC, bth in Lndn Judges: One technically-qualified judge, n jury Appeals: Leave will be granted in many cases Frum Shpping: The IPEC prvides a streamlined, cheaper prcedure hwever, in large cases, nly the Patents Curt will have jurisdictin 17

16 Curt System First Instance Patents Curt (High Curt) In rare cases, stay pending ppsitin Judgment Actin dismissed Actin successful (=> damages, etc.) Appeal - ften allwed- UK Curt f Appeal Further Appeal - rarely allwed - UK Supreme Curt Nte Interim rders frm the IPEC are appealed t the High Curt, while final rders frm the IPEC are appealed t the Curt f Appeal. 18

17 Parties Claimant (Plaintiff): Exclusive licensee may als sue - des nt need cnsent frm patentee Defendant: Cmpany directrs may in sme cases be liable as jint trtfeasrs 19

18 Subject matter Infringement: Standard remedies are damages r (at the patentee s ptin) accunt f prfits Injunctin can be granted, but nt mandatry, Defendant can apply fr negative declaratry relief Validity: Infringement and validity are heard tgether Damages: Separate prcedure after trial. If apprpriate, FRAND terms may als be determined in separate prcedure after trial 20

19 Pre-actin cnsideratins Minr risk that a freign declaratry judgment actin (Italian Trped) is filed Unjustified threats cnstitute a cause f actin Therefre, warning letters shuld be drafted carefully Initial pleadings d nt typically cntain much detail the arguments nly crystallize n exchange f expert reprts (typically arund 2 mnths befre trial) 21

20 UK prceedings the basics Cases typically last 12 t 15 mnths frm claim frm t first-instance trial Appeals typically add anther mnths Discvery rdered in many cases, but much mre limited than in the US Infringer typically prvides prduct / prcess descriptin in lieu f disclsure Technical experts used in all cases Each side retains their wn expert witnesses Stay pending EPO ppsitin in very few cases Main trial typically lasts 3 t 10 days, depending n the number f issues and their cmplexity Well reasned Judgments fllw a few weeks later The UK Patents Curt is speedy and well-regarded by ther curts in Eurpe 22

21 UK prceedings the trial Trial cnsists f the fllwing stages: Opening speech frm claimant (defendant des nt pen) Claimant s witnesses evidence in chief (typically just an affirmatin f their witness statements / expert reprts) and crss-examinatin Defendant s witnesses evidence, as abve Claimant s clsing speech Defendant s clsing speech Hearings are in public, unless the curt directs therwise (which it is typically reluctant t d) 23

22 Csts Fr first instance trial typically USD 300k t 2m Csts fr the IPEC are typically much lwer In the event f a win, csts are recverable frm the ther side (usually arund 70% t 80% f csts), BUT In the event f a lss, the ther side s csts must be reimbursed (again, typically arund 70% t 80%) In IPEC csts recvery capped at US$65k Nte that a claimant based utside the EU may be required t prvide security against its csts liability 25

23 Essentiality t standard as evidence The UK Curt has the pwer t grant (r, f curse, t refuse) declaratins f essentiality The patentee s wn declaratins f essentiality in the standard-setting prcess is nt relevant A declaratin f essentiality inherently means that either (a) the defendant is nt cmplying with the standard, r (b) the defendant is infringing the patent 26

24 Eli Lilly v Actavis A new dctrine f equivalents Nw much brader N file wrapper estppel 26

25 The UPC latest develpments Germany: Cmplaint with Federal Cnstitutinal Curt against natinal laws ratifying the Unitary patent package Brexit Establishment f curts by an internatinal entity Appintment f judges Language f the prceedings Rle f the Curt f Justice f the Eurpean Unin 26

26 Cntact Benjamin Grzimek Partner David Knight Partner Fieldfisher (Germany) LLP Grünstr Düsseldrf Germany Fieldfisher LLP Riverbank Huse, 2 SwanLane, Lndn, EC4R 3TT United Kingdm +44 (0) david.kinght@fieldfisher.cm Belgium / China / France / Germany / Italy / Netherlands / UK / USA Silicn Valley

27 Cntractin Of Patent Litigatin In the Federal Curts ebay v. MercExchange (2006) KSR v. Teleflex (2007) Bilski v. Kapps (2010) Unilc v. USA (2011) Alice Crp v. CLS Bank (2011) TC Heartland v. Kraft Fds (2017)

28 Big Change in the Venue Rules

29 Patent Venue frm 1990 t 2017 It is true that 1391(c) is a general venue statute and that 1400(b) is a specific ne. But the general rule that a specific statute is nt cntrlled r nullified by a general statute des nt gvern the present situatin. VE Hlding Crp. v. Jhnsn Gas Appliance C. (1990) Federal Circuit read the wide-reaching 1391(c) definitin f crprate residence int the specific patent venue statute Expanded patent venue t any district in which the defendant wuld be subject t persnal jurisdictin

30 Patent Venue frm 1990 t 2017 Frm

31 Cases Brught in E.D. Tex. (1990 t 2017) Befre TC Heartland: Nearly half (44%) f all patent cases natinwide brught in E.D. Tex. in 2015 Frm 7 ttal cases in 1991 t 2558 ttal cases in 2015 Frm

32 TC Heartland: What Changed The current versin f 1391 des nt cntain any indicatin that Cngress intended t alter the meaning f 1400(b) as interpreted in Furc As applied t dmestic crpratins, reside[nce] in 1400(b) refers nly t the State f incrpratin. TC Heartland LLC v. Kraft Fds Brand Grup LLC (2017) 1391 was nt intended t be read int the definitin f residence in 1400(b) 8-0 decisin: Overturned Federal Circuit s VE Hlding and upheld the Supreme Curt s Furc

33 Effect n Patent Litigatin Strategies January 2017 (Befre TC Heartland) July 2017 (After TC Heartland) E.D. Tex. All ther districts E.D. Tex. All ther districts Frm

34 Effect n Patent Litigatin Strategies 350 Mtins t Transfer r Dismiss in E.D. Tex. after the TC Heartland decisin Fewer number f new patent infringement suits brught in E.D. Tex. Frm 25.7 NPE defendants per week t 7.9 after decisin Mre suits in District f Delaware and Nrthern District f Califrnia Prjected: D. Del: 230% increase N.D. Cal: nearly 300% increase

35 Federal Circuit s Venue Test in In re Cray Venue test frm the Federal Circuit s decisin in In re Cray: (1) there must be a physical place in the district; (2) it must be a regular and established place f business; and (3) it must be the place f the defendant If any statutry requirement is nt satisfied, venue is imprper under 1400(b) Rejected E.D. Tex s pst-tc Heartland fur factr test

36 Physical Place The district curt erred as a matter f law in hlding that a fixed physical lcatin in the district is nt a prerequisite t prper venue. The statute requires a place, i.e., [a] building r a part f a building set apart fr any purpse r quarters f any kind frm which business is cnducted. A virtual space r electrnic cmmunicatins between peple in the district d nt cnstitute a physical place under 1400(b) In re Cray (2017)

37 Regular and Established Place f Business A business may be regular, fr example, if it perates in a steady[,] unifrm[,] rderly[, and] methdical manner In ther wrds, spradic activity cannt create venue. In re Cray (2017) Business must be carried n regularly and nt temprarily The ding f a single act pertaining t a particular business is nt sufficient t create venue

38 Place f the Defendant Cannt slely be the place f the defendant s emplyee Advertising a place f business r setting up an ffice is nt sufficient Must cnduct actual business frm the lcatin If a small business perates frm a hme, that can satisfy the 1400(b) requirement [W]hether the defendant wns r leases the place, r exercises ther attributes f pssessin r cntrl ver the place is relevant

39 America Invents Act: First Five Years

40 Patent Office Litigatin Inter Partes Review (IPR) Cvered Business Methd (CBM) Applicable all patents nly certain financial patents Pst-Grant Review (PGR) nly new patents Defenses nly prir art patents and publicatins mst defenses mst defenses Timing n mre than 1 year after being sued any time after being sued nly first 9 mnths Estppel raised r culd have been raised actually raised raised r culd have been raised Claim Cnstructin bradest reasnable interpretatin bradest reasnable interpretatin bradest reasnable interpretatin Burden f Prf prepnderance prepnderance prepnderance 15

41 Petitins Filed ,737 1, , , IPR CBM PGR FY2012 FY2013 FY2014 FY2015 FY2016 FY

42 Institutin Rates Frm

43 Stay f Litigatin Pending IPR While curts are under n bligatin t stay prceedings pending parallel litigatin in the PTAB judicial efficiency and the desire t avid incnsistent results may, after a careful cnsideratin f the relevant factrs, cunsel in favr f a limited stay, even befre the PTAB has acted n a petitin fr IPR. Delphix Crp. v. Actifi, Inc., 2014 WL (N.D. Cal. Nv. 13, 2014) N.D. Califrnia E.D. Texas 62% stay rate 32% stay rate

44 Svereign Immunity and Legal Creativity Dec Jan Sept Sept PTAB institutes IPR n Allergan patents fr Restasis PTAB decides that state svereign immunity applies t IPRs, barring a challenge t a patent wned by a state university Allergan sells Restasis patents t the St. Regis Mhawk Tribe in NY with license-back St. Regis Mhawk Tribe mves t dismiss IPRs based n svereign immunity

45 Are IPRs Uncnstitutinal?

46 Are IPRs Uncnstitutinal? Whether inter partes review an adversarial prcess used by the Patent and Trademark Office (PTO) t analyze the validity f existing patents vilates the Cnstitutin by extinguishing private prperty rights thrugh a nn-article III frum withut a jury. a case that has the patent wrld n the edge f its seat The prceedings nt surviving is a pssibility that has the patent cmmunity hyperventilating. Oil States Energy Services v. Greene s Energy Grup

47 Are IPRs Uncnstitutinal? Whether inter partes review an adversarial prcess used by the Patent and Trademark Office (PTO) t analyze the validity f existing patents vilates the Cnstitutin by extinguishing private prperty rights thrugh a nn-article III frum withut a jury. patents are private prperty U.S. Cnstitutin, Article III Seventh Amendment Oil States Energy Services v. Greene s Energy Grup

48 Or Are IPRs Cnstitutinal? patents are public rights Article III des nt apply s Seventh Amendment des nt apply either Where Cngress has acted fr a valid legislative purpse pursuant t its cnstitutinal pwers under Article I, it may delegate even a seemingly private right t nn- Article III curts if the right is s clsely integrated int a public regulatry scheme as t be a matter apprpriate fr agency reslutin. Slicitr General Br. in Opp. t Pet.

49 What Wuld Blackstne Have Thught? When a suit is made f the stuff f the traditinal actins at cmmn law tried by the curts at Westminster in 1789, the respnsibility f deciding that suit rests with Article III judges in Article III curts. Oil States Br. The Seventh Amendment guarantees federal litigants a jury [i]n suits at cmmn law, preserv[ing] the right t jury trial as it existed in Oil States Br.

50 What s Next? What s ging t happen? What shuld yu d?

51 QUESTIONS? Jim Day Deepak Gupta THANK YOU!