Fordham International Intellectual Property Conference, Patent Panel: Injunctive Relief
[Moderator: Gonzalo Ulloa y Suelves]
[Speakers/Panelists: Prof. Johm M. Golden, Edward Nodder, Felix Rodiger, George Badenoch, Hon. Justice Floyd, Marleen van der Horst]
– Not a verbatim transcription —
[5:25] John Golden: Opening it up by surveying the current state of injunctive relief in US patent law.
Problems with patent rights: Costs to eliminating the rebuttable presumption of irreparable harm:
Alienability of rights suffers
Makes the patent rights more valuable for entrenched industry players vs. startups
[5:33] Felix Rodiger: Germany is known as a place to get a quick injunction, not as the place to get high damages. That’s because Germany has a dual court system where injunctions are handled in a separate court. This means you don’t have to deal with invalidity claims while filing for an injunction.
[5:42] Edward Nodder: Talking about UK and comparison to patent law around Europe. Prelim injunctions (PIs) are VERY important to patent holders. Ex. Pharma industry does a LOT of PI litigation. Many disputes are won or lost on the PI and nothing else. If you get the injunction, you survive, if not, the market collapses and you are done. PI situations are very muddled across the EU. No standards.
Ex parte PI; Inter Partes PI; Time to inter parte decisions, Quid Pro Quo for PI – the standards for these issues are completely different in different EU countries. Ex. <7 days for PI in UK, vs. almost 7 months in Italy.
ECPC is a great opportunity to harmonized EU patent law. The long goal: unified patent litigation system as the US. The benefit is that it would be a combined patent market as large as the US. A single court would lead to a similar level of research, case development etc, as in the US system. Helps EU patent based industries. What test would be applied by ECPC in granting a PI?
Takeaway: When working on a unified EU patent system (ECPC) don’t forget to think about how PIs will be implemented.
[5:52] (Gonzolo to George Badenoch):
1) How important is PI?
Answer: PIs can be be very important. But eBay case was correctly decided. When you give an injunction, you are fixing a value on the future use of patent. Often when you don’t grant an injunction, you undervalue the future of the patent. But sometimes when you grant it, you OVERvalue its future use.
Balance of hardships in eBay case is there so that you don’t make a $20 patent worth $1M.
Justice Flyod: The only reason we need PIs is that the Law is slow to react, so you need an immediate fix while the law works out who’s at fault. Worried that putting robust PI rules in the EU patent system would allow most cases to be bogged down unless the procedure was very quick and reserved for cases with REAL urgency.
Marleen: Fast PIs could be fine, but why not use “Accelerated Proceedings on the Merits”? (i.e., decision within the year) Also, re:harmonization – she would favor it for clients, but there are situations where interests at stake are so high that clients lose in one jurisdiction but can hedge their losses by winning in another.
Moderator: Not clear from JD to JD whether a PI is an ordinary or extraordinary measure.
George Badenoch: There are cases where if you don’t do an immediate PI, then the alleged infringer could get established/build a factory. Doesn’t think that PIs are abused much in the US these days.