This week in IP: China patent law praised, Led Zeppelin rehearing requested, HTC wins royalties reprieve

China becoming major IP player with new law, say in-house counsel

China’s new patent law is proof that the country is becoming a major intellectual property player and a fairer place to litigate, according to in-house counsel.

Passed on October 17, the fourth amendment to the law includes several changes such as an increase in damages for infringement and an obligation to disclose evidence. The law won’t come into effect until June 2021.

Oliver Pfaffenzeller, principal IP counsel for Siemens in Germany, tells Managing IP that the increase in potential damages awards is a particular improvement and the most interesting part of the new law.

“This is something that has been on the rise in Chinese law, and the threshold of five times the original damages is a clear indicator that the courts are expected to give rulings with a higher award,” he says.

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Other Managing IP stories we published this week include:

COVID: pharma says IP waivers won’t boost vaccine access

US election 2020: five IP stories from the year

In-house: PTAB filers must be faster and smarter to evade Fintiv

Delhi High Court patent rules give hope for speedier trials

Brexit explainer: how IP is changing on Jan 1 2021

Podcast: Brexit, D&I, and a 'return to normalcy'

Counsel must educate juries on US FRAND rates

Trademark parody petition at SCOTUS is 'no joke', say counsel

Hatch-Waxman venue limited to location of ANDA filing actions

The US Court of Appeals for the Federal Circuit ruled in Valeant v Mylan yesterday, November 5, that Hatch-Waxman cases must be brought in districts where actions on the submission of an abbreviated new drug application occur.

Rejecting Valeant’s arguments, the court decided that an ANDA case could not be brought in all locations where the distribution of a generic drug was planned or likely to occur, affirming the first-instance decision of the District Court for the District of New Jersey.

In the published precedential opinion, Judge Katherine O’Malley wrote that while the court was sympathetic to the loss of judicial efficiencies that innovators might experience following the ruling, it was compelled by the plain language of US patent venue law to rule how it did.

The judgment comes after the District of New Jersey departed from the District of Delaware’s and its own case law in August 2019 when it held that New Jersey was not the proper venue for Mylan.

The court had previously ruled in Celgene v Hetero Labs that the Hatch-Waxman Act’s focus on future patent infringement following a generic drug's approval made it appropriate to include an alleged infringer’s future acts in a venue analysis.

Unless it is appealed, the Federal Circuit’s ruling should resolve the question of whether an ANDA application, which is not a literal act of infringement, should be brought under Section 1400b in Title 28 of the US Code (which concerns patent venue) and thus be subject to post-TC Heartland venue rules.

England and Wales: HTC will pay royalties on UK-only sales

On Wednesday, November 4, the England and Wales High Court struck out a claim that infringement damages for a UK standard essential patent should be calculated based on device sales outside of the UK, because the foreign sales were not caused by the UK infringement.

In his judgment in IPCom v HTC, Mr Justice Colin Birss set out that SEP damages should not be approached on the same basis as fair, reasonable and non-discriminatory licensing terms, and that Taiwanese phone maker HTC should pay royalties for infringing sales only in the UK.

By contrast, the UK Supreme Court ruled in Unwired Planet v Huawei that the patent holder's ETSI undertaking empowers the UK courts to determine FRAND licence terms of a patent portfolio including foreign patents.

Katie McConnell, partner at Hogan Lovells and counsel for HTC, said: “This decision provides welcome clarification that damages for SEP infringement do not follow the global, portfolio approach of FRAND licensing.

“The judgment is a victory for common sense, avoiding the possibility that a single instance of UK patent infringement will necessarily result in damages liability for global sales for the life of that UK patent, even though no infringement of foreign patents has been proven.”

IPCom sued HTC in 2011 for infringing its UK patent (EP1841268). In 2017, the England and Wales Court of Appeal found the patent to be valid, essential, and infringed by HTC's original devices, but not by devices that implemented a workaround, which had been court-approved in earlier litigation between IPCom and Nokia.

IPCom pursued damages in 2019, shortly before its patent expired in February 2020.

Daimler loses two more disputes in Germany

Over the past week, the Munich Regional Court has ruled against German car maker Daimler twice for standard essential patent infringement. It found in favour of Nokia on Friday, October 30, and sided with Conversant Wireless on Wednesday, November 4, in their claims that Daimler was an unwilling licensee.

These are the latest losses in Germany for Daimler, which has faced a number of proceedings against various patent holders for infringing mobile technology for connected cars. Its argument that any licensing should take place in the supply chain has been rejected multiple times now.

In response to Nokia’s win, a spokesperson from the company said: “Two German courts have now concluded that Nokia has acted in a fair and reasonable way and Daimler is using our inventions without authorisation.

“The time has come for Daimler to do the right thing and agree a licence on the same fair terms as many other car companies. There is more to gain if we work together to bring innovation to consumers rather than fight in the courts.”

Speaking on the Conversant victory, Christof Höhne, partner at EIP and counsel for Conversant, said: “We are very happy with the judgment by one of Germany's most active courts in electronics cases. The decision highlights obligations of parties in SEP licensing negotiations and, in effect, sanctions practising hold-out.”

Skidmore pursues second chance of SCOTUS hearing Led Zeppelin copyright case

On Friday, October 30, a man embroiled in a copyright dispute with Led Zeppelin filed a petition for rehearing in response to the US Supreme Court's denial of his petition for writ of certiorari.

In his original petition, Michael Skidmore requested that SCOTUS overturn a March 2020 decision from the Court of Appeals for the Ninth Circuit, which ruled that Led Zeppelin’s classic song Stairway to Heaven did not infringe Taurus, a track written by Randy Wolfe in 1967.       

Skidmore is the trustee for the Randy Craig Wolfe Trust.      

SCOTUS rejected his petition along with several other key intellectual property-related petitions, including that in TCL v Ericsson, on October 5.

The high court has yet to announce whether it will accept the petition for rehearing.

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