Session 3 - Focus Arbitration WIPO Case Example: Multi-Party Pharma Patent License Arbitration

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WIPO Conference on IP Dispute Resolution in Life Sciences Bonn, 10 November 2016 Session 3 - Focus Arbitration WIPO Case Example: Multi-Party Pharma Patent License Arbitration Philipp Groz

Overview > Case example > Facts and legal issues > Procedural issues > Advantages of arbitrating IP disputes in Life Sciences > Enforceability Session 3 - Focus Arbitration WIPO Case Example: Multi-Party Pharma Patent License Arbitration 10 November 2016 Page 2/13

Case Example: Facts and Legal Issues (1) > Parties > 2 Claimants based in different jurisdictions; one corporate group > 2 Respondents based in different jurisdictions; one corporate group > Patent license agreement ( Agreement ) > Concluded between predecessors of one Claimant (licensee) and one Respondent (licensor), alleged assignment to Claimants > Applicable law > Agreement: Swiss law > But alleged invalidity/non-infringement of a U.S. patent > Dispute resolution clause > Negotiations (involving management meeting) > Followed by WIPO Arbitration seated in Switzerland Session 3 - Focus Arbitration WIPO Case Example: Multi-Party Pharma Patent License Arbitration 10 November 2016 Page 3/13

Case Example: Facts and Legal Issues (2) > Dispute > Claimants sought (in WIPO arbitration): > Declaration of invalidity/non-infringement of licensed U.S. patent > Declaration that Claimants owe no further royalty payment > Reimbursement of royalty payments previously made > Arbitral Tribunal > Claimants and Respondents each (jointly) nominated one arbitrator > Party-appointed arbitrators nominated presiding arbitrator in consultation with the Parties (list procedure) > Strategic considerations? Session 3 - Focus Arbitration WIPO Case Example: Multi-Party Pharma Patent License Arbitration 10 November 2016 Page 4/13

Case Example: Facts and Legal Issues (3) > Procedural issues included > Challenge to party-nominated arbitrator (Art. 28 WIPO AR); arbitrator resigned > Confidentiality and public reporting duties (Art. Art. 75(a)(ii) WIPO AR) > Request for assistance (Art. 3 IBA Rules on the Taking of Evidence) both Parties (successfully) filed 28 U.S. Code 1782 requests Session 3 - Focus Arbitration WIPO Case Example: Multi-Party Pharma Patent License Arbitration 10 November 2016 Page 5/13

Case Example: Facts and Legal Issues (4) > Issues in dispute > Does Tribunal have jurisdiction over all Parties? / do both Claimants have standing to sue? > Is the licensed U.S. patent invalid? > applicable law: U.S. law (lex loci protectionis) > What are the consequences of patent invalidity? > For the future: Will the licensee have future obligation to pay royalties once the Tribunal declares patent invalid? > For the past: Is licensee entitled to recover past royalty payments under the Agreement? Session 3 - Focus Arbitration WIPO Case Example: Multi-Party Pharma Patent License Arbitration 10 November 2016 Page 6/13

Case Example: Facts and Legal Issues (5) > Analysis under contract and under Swiss law: > Does Agreement provide for consequences of patent invalidity? > Disputed in the present case > Contract interpretation (true and common intent?) > Does patent invalidity render Agreement void? Ex tunc? Ex nunc? > No royalty payment obligation for the future, but when does obligation exactly end? > Can past royalties be recovered if licensee was de facto protected from competitors and benefited from apparent existence of patent (Scheinpatent)? Session 3 - Focus Arbitration WIPO Case Example: Multi-Party Pharma Patent License Arbitration 10 November 2016 Page 7/13

Case Example: Facts and Legal Issues (6) > 8-day hearing in Zurich scheduled > Parties settled on the first day of the hearing > Termination order Session 3 - Focus Arbitration WIPO Case Example: Multi-Party Pharma Patent License Arbitration 10 November 2016 Page 8/13

Advantages of Arbitration (1) > General observations > Less coordination: only one set of proceedings, one team of counsel/experts on each side, all in English, one procedural schedule > More flexibility: Possibility to design arbitral process > Qualified decision-makers: Parties can choose arbitrators with different legal, technical and/or industry backgrounds > Duration of arbitration compared to domestic or cross-border IP-litigation? > Multi-jurisdictional IP cases in particular > Cost and complexity of running parallel litigations > Risk of contradictory outcomes Session 3 - Focus Arbitration WIPO Case Example: Multi-Party Pharma Patent License Arbitration 10 November 2016 Page 9/13

Advantages of Arbitration (2) > Administered WIPO arbitration > Established and specialized set of arbitration rules > Going into dispute, parties too adversarial to agree on workable ad hoc rules > Confidentiality: > Existence of arbitration (Art. 75 WIPO AR) > Disclosures made during arbitration (Art. 76 WIPO AR) > Arbitral award (Art. 77 WIPO AR) > Special measures of confidentiality protection (Art. 54 WIPO AR) > WIPO electronic case facility (ECAF) Session 3 - Focus Arbitration WIPO Case Example: Multi-Party Pharma Patent License Arbitration 10 November 2016 Page 10/13

Enforceability (1) > Award must be enforced if losing party does not comply > Most awards are voluntarily complied with > Enforcement under New York Convention: > More than 150 contracting states > Obligation of contracting states to enforce awards > Enforcement may be refused only on limited, enumerated grounds Session 3 - Focus Arbitration WIPO Case Example: Multi-Party Pharma Patent License Arbitration 10 November 2016 Page 11/13

Enforceability (2) > Refusal of enforcement of award in IP disputes? > IP issues not arbitrable? > Determined based on law of enforcement jurisdiction (Art. V(2)(a) NYC) > General trend to a more liberal approach to arbitrability of IP issues > Validity of IP rights? Parties can request decision on validity with inter partes effect only (cf. 35 U.S. Code 294(c)) > Violation of public policy? > Determined based on law of enforcement jurisdiction (Art. V(2)(b) NYC) > Violation of competition law? (cf. Opinion AG Wathelet, Genentech v. Hoechst, Sanofi-Aventis Deutschland, CJEU, Case C-567/14) Session 3 - Focus Arbitration WIPO Case Example: Multi-Party Pharma Patent License Arbitration 10 November 2016 Page 12/13

Thank you for your attention. Philipp Groz philipp.groz@swlegal.ch Schellenberg Wittmer Ltd / Attorneys at Law Löwenstrasse 19 / P.O. Box 2201 / 8021 Zurich / Switzerland T +41 44 215 5252 / F +41 44 215 5200 www.swlegal.ch ZURICH / GENEVA / SINGAPORE Session 3 - Focus Arbitration WIPO Case Example: Multi-Party Pharma Patent License Arbitration 10 November 2016 Page 13/13

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