With companies increasingly taking on cross-jurisdictional patent litigation, it's more important than ever to understand how the courts work and what remedies are available in different countries, according to counsel at Johnson & Johnson, Ferring Pharmaceuticals and Dentons.
Speaking at the Managing IP Life Sciences Forum last Wednesday, June 16, panellists during the session on global protection and enforcement strategies said counsel should be aware of whether injunctive relief is available and what needs to go into evidence gathering, among other things.
“A key thing you have to remember in the US, for example, is of course that defendants have a right to a jury trial,” said Paul Coletti, associate patent counsel at Johnson & Johnson in New Jersey.
Because of this, he added, there are emotions involved – something that counsel in Europe might not be familiar with.
Speakers pointed out that while preliminary injunctions are quite rare in countries such as the US, they’re much more available in Germany – which is something that US counsel take into account when choosing where to litigate.
“It’s clearly something that’s very attractive,” said Coletti. “In the US, as we all know, it’s becoming harder and harder to obtain a preliminary injunction. But Germany has kept to the idea that imminent infringement should be halted at least temporarily so the parties can have a trial.
“It’s been used by many US firms to much success,” he added.
Jesse Fecker, chief US patent counsel at biopharma company Ferring in New Jersey, agreed that preliminary injunctions such as the ones provided in Germany are critical.
“If you’re into damages, you’re already in trouble,” he added.
Coletti said that injunctions are also an excellent tool for inducing settlements.
“Sometimes you want damages, but sometimes you want peace, either through a cross licence or just a reasonable royalty. Depending on the situation, an injunction might help spur on a settlement.”
But Germany might not be the only good place in Europe to get an injunction for much longer. Loïc Lemercier, partner at Dentons in Paris, said there has been a growing trend towards preliminary injunctions in France over the past three years.
“Injunctions have been granted more frequently, especially in pharma cases,” he said. “This is good news, because it used to be quite difficult to get injunctions in France.”
Evidence in Europe
Moving on to the topic of evidence gathering, Dentons partner Constantin Rehaag noted that several of the most popular jurisdictions for patent litigation have very different systems for collecting information.
“That is also a huge difference that should have an influence on your considerations,” he said.
Lemercier agreed, pointing out that unlike in the UK or US, most European courts do not have proceedings for discovery or disclosure.
“In France, for example, we have an amazing tool called the infringement seizure, which allows you to visit a competitor to gather evidence such as gross margin and a copy of the master drug file.
“It’s an amazing weapon,” he said.
Fecker added that it’s important for counsel to consider that discovery is more complete in the US than in many places in Europe.
“You can essentially gather most of the documents there.
“But it’s still important to keep in mind, particularly in patent cases where you’re often dealing with older documents and systems that might not have retained everything, that your opponent may occasionally have a document that surprises you.”
He added: “It’s important to keep track for consistency of what’s gone into the US case versus what’s gone into a European case, particularly documents attached to declarations supplied in Europe, and that you and your opponent aren’t submitting things in Europe that aren’t part of the US record.”
Global litigation is becoming increasingly common, and as a result it’s becoming more important for counsel to understand how different jurisdictions work and – perhaps more importantly – the interplay between them.
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