Fordham IP Institute

27th Annual Conference Begins

DAYS HRS MNS SECS

IP Remedies

Patent Session 2C

Moderator:

Nicholas Groombridge

Paul, Weiss, Rifkind, Wharton & Garrison LLP

Speakers:

Hon. Mr. Justice Birss

Chancery Division, High Court, London
Role of Judicial Discretion in Crafting Appropriate IP Remedies
This will look into the role of discretion relating to injunctions (from outright refusal, stays on terms, standards essential patents, and springboard injunctions cf eBay Inc. v. MercExchangeShelfer v City of London Electric Lighting and Vestergaard v Bestnet). It will also look at web blocking orders (Cartier v BSkyB) and publicity orders (Apple v Samsung).  The question is whether judges rather than the legislators can or should take the lead in crafting appropriate remedies. Presentation

Richard Vary

Bird & Bird, London
IP Courts for Individuals and Small Claims
Do IP cases need lawyers? This talk looks at how in the UK individuals can bring and defend some types of IP claims themselves, and how it works in practice.

Jill (Yijun) Ge

Allen & Overy LLP, Shanghai
Patent damages in China – “Crossing the river by feeling the stones”
Possibly the most significant trend for IP enforcement in China is that the courts have shown willingness to enhance damages awards and to properly compensate patentees.  In particular, where evidence supports greater damages, the IP courts now are willing to award them.  Courts have also used procedural measures to mitigate the lack of discovery in China.  Notably, in the recent WatchData case, the Beijing IP Court awarded damages of RMB 49 million.  The next issue for the Chinese courts is how they would exercise scrutiny of the damages assessment.  Questions need to be raised as to whether any damages estimate proposed by a patentee is economically sound and evidentiarily reliable.  Otherwise it could result in overcompensation. Presentation

Penny Gilbert

Powell Gilbert LLP, London
Arrow declarations re-visited: FKB v AbbVie
“There is a public interest in commercial certainty in patent matters as in any others. Business needs to know where it stands” – Arrow v Merck (2007) Ten years on, the UK courts have reviewed the extent of their jurisdiction to grant declaratory relief to alleviate the commercial uncertainty arising from cascading divisional applications that threaten product launch. On what basis did the court exercise its discretion in the recent case concerning Humira and will Arrow declarations become more widely available in future – or not? Presentation

Panelists:

Andrew Bowler

Bristows LLP, London

Massimo Sterpi

Jacobacci & Associati, Rome
Fordham IP Institute