No CrossRef data available.
We use cookies to distinguish you from other users and to provide you with a better experience on our websites. Close this message to accept cookies or find out how to manage your cookie settings.
We use cookies to distinguish you from other users and to provide you with a better experience on our websites. Close this message to accept cookies or find out how to manage your cookie settings.
Published online by Cambridge University Press: 06 March 2019
The U.S. & German Bench and Bar Gathering, “A New Bridge Across the Atlantic,” held in Washington, DC, in May 2012, was aptly timed to discuss the developments in German and American patent law. The Federal Circuit Bar Association and the Patentanwaltskammer (German Patent Lawyers Association) brought distinguished judges and attorneys from their respective countries to discuss the current state of the two patent systems. This involved consideration of where the two systems might be converging and why the two countries have had dissimilar litigation patterns. Particularly with respect to the latter of these inquiries, much of the debate throughout the conference focused on the differences in litigation discovery and procedural rules. The conference highlighted the fact that, at the most fundamental level, these differences are a product of differing perceptions of how justice should be administered. A brief overview comparing patent litigation in Germany and the United States will help frame this report.
1 The 2012 German & United States Bench and Bar Gathering—“A New Bridge Across the Atlantic”, Bench and Bar—Federal Circuit Bar Association (May 18, 2012), https://www.signup4.net/public/ap.aspx?EID=20121754E&OID=50.Google Scholar
2 See Feldges, Joachim & Kramer, Birgit, Patent Law, in Business Laws of Germany ch. 13, § 13:9 (Thomas Wegerich ed., 2012).Google Scholar
3 See Patentgesetz [PatG] [Patent Law], Dec. 16, 1980, Bundesgesetzblatt [BGBl. I] 1, as amended by the Law of July 31, 2009, §§ 81–85a (Ger.). (discussing nullity proceedings); see also id. at §§ 139–142b (discussing patent infringement).Google Scholar
4 Eur. Patent Office, Patent Litigation in Europe, 24 (2nd ed. 2010).Google Scholar
5 Id. Google Scholar
6 Feldges, & Kramer, , supra note 2, § 13:91.Google Scholar
7 Id. § 13:87.Google Scholar
8 See Peterreins, Frank, Global Patent Enforcement Strategy: Germany 9 (2011), available at http://www.fr.com/files/Uploads/Documents/Patent%20Litigation%20in%20Germany%20-%20July%2020%20-%202011FINAL.pdf.Google Scholar
9 Birde, Patrick J. et al., The Damages Test, 177 Pat. World 10, 11 (2005).Google Scholar
10 Patentgesetz [PatG] [Patent Act], Dec. 16, 1980, Bundesgesetzblatt [BGBl.]1, as amended by § 13 of the Act of Nov. 24, 2011, BGBl. I 2302, § 139(2).Google Scholar
11 Convention on the Grant of European Patents art. 64(3), Oct. 5, 1973, 1065 U.N.T.S. 255. Since 2009, there has been a concerted effort in the EU community to address patent litigation in uniform manner. See generally Recommendation from the Commission to the Council to Authorize the Commission to Open Negotiations for the Adoption of an Agreement Creating a Unified Patent Litigation System, SEC (2009) 330 final (Mar. 20, 2009), available at http://ec.europa.eu/internal_market/indprop/docs/patent/recommendation_sec09-330_en.pdf. Whether the Council will be able to create a Unified Patent Court amidst the political storm surrounding the proposed agreements has yet to be seen. See generally Hiroshi Sheraton & Matthew Jones, Draft Agreement on a Unified Patent Court—Summary and Implications, Bloomberg L. Rep Intell. Prop., Sep. 14, 2011, at 1, available at http://www.mwe.com/info/pubs/sheraton0911.pdf.Google Scholar
12 Eur. Patent Office, supra note 4, at 24.Google Scholar
13 Id. Google Scholar
14 Peterreins, , supra note 8, at 9.Google Scholar
15 See Feldges, & Kramer, , supra note 2, § 13:92.Google Scholar
16 Id. Google Scholar
17 Leahy-Smith America Invents Act, Pub. L. No. 112–29, 125 Stat. 284 (2011).Google Scholar
18 See Trilling, David W., Recognizing a Need for Reform: The Leahy-Smith Invents Act of 2011, 2012 U. Ill. J.L. Tech. & Pol'y 239, 246 (2012); see also Robert A. Armitage, Understanding The American Invents Act and Its Implication for Patenting, 40 AIPLA Q.J. 1, 93–109 (2012) (providing an overview of the changes the AIA made to the “inventor-related provisions” of American patent law).Google Scholar
19 Tran, Sarah, Patent Powers, 25 Harv. J.L. & Tech. 595, 617–26 (2012) (listing the various expansions the AIA makes to the USPTO's power, including the discretion to expedite qualifying patent applications).Google Scholar
20 For a broad perspective of what the industry—including former Chief Judge Paul Michel of the United States Court of Appeals for the Federal Circuit—felt about the enactment of the AIA, see America Invents Becomes Law—But IP Industry Largely Unimpressed, Wealth of Ideas (Gen. Patent Corp.) Sept. 2011, available at http://www.generalpatent.com/america-invents-act-passes-ip-industry-largely-unimpressed. The American panelists at the conference addressed many of the concerns surrounding the AIA, much of which is reported below.Google Scholar
21 28 U.S.C. § 1400 (2012). See Megan Woodhouse, Shop ‘Til You Drop: Implementing Federal Rules of Patent Litigation Procedure to Wear Out Forum Shopping Patent Plaintiffs, 99 Geo. L.J. 227 (2010) (providing a discussion of forum shopping in patent infringement litigation and proposals of new rules to reign in the behavior).Google Scholar
22 28 U.S.C. § 1400(b).Google Scholar
23 28 U.S.C. § 1391(c)(2).Google Scholar
24 Fed. R. Civ. Pro. 26.Google Scholar
25 “The U.S. may be the only country in the world that uses juries to decide patent cases.” Philippe Signore, On the Role of Juries in Patent Litigation (Part 1), 83 J. Pat. & Trademark Off. Soc'y 791, 794 (2001).Google Scholar
26 35 U.S.C. § 284 (2012). But see Christopher B. Seaman, Reconsidering the Georgia Pacific Standard for Reasonable Royalty Damages for Patent Infringement, 2010 BYU L. Rev. 1661, 1673–76 (noting the decline in the use of lost profits due to evidentiary and procedural obstacles courts have imposed upon plaintiffs).Google Scholar
27 See Pretty, Laurence H., Damages and Attorney Fees, in Patent Litigation ch. 9, § 9.10 (Practicing Law Inst., Oct. 2011) (discussing what constitutes “willful infringement”).Google Scholar
28 35 U.S.C § 284 (2012). But see Christopher B. Seaman, Willful Patent Infringement and Enhanced Damages after In re Seagate: An Empirical Study, 97 Iowa L. Rev. 417, 464–71 (2012) (noting that the award of “enhanced damages” is becoming less frequent, even where willful infringement is found).Google Scholar
29 The ITC gains jurisdiction over patent claims arising out of imports through 19 U.S.C. 1337(a)(1)(B)(i) (2012). See Colleen V. Chien, Patently Protectionist? An Empirical Analysis of Patent Cases at the International Trade Commission, 50 Wm. & Mary L. Rev. 63, 78–81 (2008) (discussing the rise of the ITC as an alternative forum in patent infringement litigation).Google Scholar
30 An E-Discovery Model Order, United States Court of Appeals for the Federal Circuit, http://www.cafc.uscourts.gov/images/stories/announcements/Ediscovery_Model_Order.pdf.Google Scholar
31 William Penn and William Mead were arrested in 1670 for preaching to a public assembly. Despite significant pressure from the Lord Mayor of London—who presided as judge over the trial—the jury entered a verdict of “not guilty.” The Lord Mayor confined and starved the jury in an attempt to force a change in the verdict. The jury refused, were found in contempt of court, and imprisoned. William Penn & William Mead, The Trial of William Penn and William Mead at the Old Bailey, 1670 (Headley Bros. 1908) (providing an account of the trial, from the perspective of the accused). The jurors of Penn's trial petitioned the Court of Common Pleas for a writ of habeas corpus, which granted the writ and ruled that a jury could not be punished for the decisions it reached. See Bushell's Case, 124 E.R. 1006 (1671).Google Scholar
32 See, e.g., Keeler, Ian, Is a Jury Composed of People Having Ordinary Skill in the Art? Reasons Why the United States Should Change Its Approach to the Obviousness Question in Patent Litigation, 21 Ind. Int'l & Comp. L. Rev. 253, 287–30 (2011).Google Scholar
33 See Alison, John R., The Role of Juries in Managing Patent Enforcement: Judge Howard Markey's Opinions and Writing, 8 J. Marshall Rev. Intell. Prop. L. Sp. 41, 44–45 (2009). See also Jeanne C. Fromer, Patentography, 85 N.Y.U. L. Rev. 1444, 1449 (2010).Google Scholar
34 See, e.g., Wells, Catherine P., Tort Law as Corrective Justice: A Pragmatic Justification for Jury Adjudication, 88 Mich. L. Rev. 2348, 2393–410 (1990).Google Scholar
35 See, e.g., Brodin, Mark S., Accuracy, Efficiency, and Accountability in the Litigation Process—The Case for the Fact Verdict, 59 U. Cin. L. Rev 15, 90–105 (1990); Indraneel Ghosh, The Road to Transparency: Abolishing Black-Box Verdicts on Patent Obviousness, 26 Berkeley Tech. L.J. 171, 190–93 (2011); Kimberly A. Moore, Juries, Patent Cases, & a Lack of Transparency, 39 Hous. L. Rev. 779, 797–801 (2002);Google Scholar
36 Whatever that means.Google Scholar
37 See Alison, , supra note 33, at 44. Judge Markey conducted informal surveys of all sitting trial judges, asking: The percentage of times the judge agreed with a verdict; the percentage of disagreed upon verdicts the judge found “plainly reasonable;” and the percentage of times judicial action was taken where a verdict was not “plainly reasonable.” As Alison notes, the results of those inquiries were, roughly and respectively: 90%, 50%, and 50%. These figures imply an unreasonable verdict requiring judicial intervention occurs around 2.5% of the time for all trials. Id. Google Scholar
38 See Gugliuzza, Paul R., Rethinking Federal Circuit Jurisdiction, 100 Geo. L.J. 1437, 1498 (2012).Google Scholar
39 See Fromer, , supra note 33, at 1458Google Scholar
40 See Gugliuzza, , supra note 38, at 1459.Google Scholar
41 See Fromer, , supra note 33, at 1458 (citing MedImmune, Inc. v. Genetech, Inc., 549 U.S. 118, 126–37 (2007) and eBay Inc. v. MercExchange, LLC, 547 U.S. 388, at 391–94 (2012) as examples of such ruling from the Federal Circuit).Google Scholar
42 Fed. R. Civ. Pro. 16 (allowing for judicial scheduling and management of proceedings before the court).Google Scholar
43 See Moore, Kimberly A., Forum Shopping in Patent Cases: Does Geographic Choice Affect Innovation?, 79 N.C. L. Rev. 889, 930 (2001) (noting that patent holders consider a variety of factors when choosing a litigation forum).Google Scholar
44 See Nguyen, Xuan-Thao, Justice Scalia's “Renegade Jurisdiction”: Lessons for Patent Law Reform, 83 Tul. L. Rev. 111, 156 (2008); see also Graham E. Taylor, Protecting Innovative Technology: Global Patent Strategies: The Big Picture, 32 Can.-U.S. L.J. 117, 129 (2006) (describing one strategy of litigating a patent issue in Germany because of perceived advantages that did, indeed, pay off).Google Scholar
45 See generally Paul, Angelique M., Turning the Camera on Court TV: Does Televising Trials Teach Us Anything About the Real Law?, 58 Ohio St. L.J. 655 (1997) (offering comments and critiques of televising courtroom proceedings, including the televised trial of O.J. Simpson).Google Scholar
46 I hold the mildly cynical view that the Apple-Samsung feud is more of a marketing ploy—played out in the drama of a courtroom and motivated by the personalities of the boards of both companies (most notably that of the late co-founder Steve Jobs)—rather than significant legal inquiries. For a summary of the events leading up to litigation and the strategies involved at trial, see Poorrnima Gupta & Dan Levine, Analysis: How Apple Overwhelmed Samsung's Patent Case Tactics, Reuters (Aug. 27, 2012), http://www.reuters.com/article/2012/08/27/us-apple-samsung-legal-idINBRE87Q02K20120827.Google Scholar
You have
Access