GLOBAL IP LITIGATION STRATEGIES - What to do When Defending Globally Session 212; Monday, October 16, 2017 11:45 am – 1:15 pm

STRATEGIC QUESTIONS Is speed or impact more important? Are we the IP owner, the potential infringer or both? Geography (manufacture, distribution). What do we want/fear ($$, injunction)? Language considerations. How much do we want to spend?

DEFENDING IP GLOBALLY - THE UNITED STATES Chris Burrell, Director and Senior Counsel, Samsung Electronics

Common Dispute Resolution Mechanisms Direct Negotiations Arbitration, Mediation, and other ADR District Court Offensive or Defensive Cases Declaratory Judgment Actions ITC IPRs and other PTAB proceedings

Approach Varies Depending on Situation Do parties view merits of dispute similarly? What does each party want? Money? Business resolution? What is the scope of the dispute? Limited number of patents? Large portfolio? IP rights beyond patents? Are FRAND-related patents involved? Other relevant factors

Shifting Legal Landscape

Since 2014, Supreme Court cases on . . . Alice (section 101) Octane/Highmark (attorneys fees) Halo/Stryker (enhanced damages) TC Heartland (venue) Oil States (constitutionality of IPRs) And many others

Other Changes Form 18 went away Changes to discovery rules Continued development of IPR/post-grant procedures Continued potential for congressional reforms to patent law And many others

And don’t forget non-patent IP . . . Trade Secrets – State and Federal causes of action Trademarks and Trade dress Copyright Know-how Contractual rights

DEFENDING IP GLOBALLY - EUROPE David Barron, Partner & Head of Technology Patent Litigation, Gowling WLG

The UK is good for… Specialist, technically experienced judges Discovery – especially on infringement issues Oral evidence (fact and expert), properly tested via cross- examination Speed: approximately 15 months to first instance trial Declaratory relief – non-infringement, non-essentiality, FRAND licence terms, obviousness

GERMANY is good for… Specialist judges Bifurcation of validity and infringement issues; choice of jurisdiction on infringement Speed: approximately 15 months to infringement finding (infringement courts are pro-patentee) Injunctions – even without notice NB – no discovery or cross-examination Short trials

FRANCE is good for… Specialist judges, although less established than in UK/Germany Saisie-contrefaçon - enables surprise seizure of evidence Approximately two years to first instance decision Short trials

Unitary Patent & Unified Patent Court Single patent covering most of EU Single court system for most of EU Court will have jurisdiction over (i) UPs and (ii) EPs if not opted out Transitional jurisdiction of national courts for at least the first 7 years Expected start date late 2018/early 2019

UPC AGREEMENT SIGNATORIES Contracting states of the EPC EPC extension states EPC validation states EU Member States UPC Agreement signatories

UPC MINIMUM PARTICIPATANTS IF OPERATIONAL IN 2018 Contracting states of the EPC EPC extension states EPC validation states EU Member States UPC Agreement signatories UPC minimum scope if operational in 2018

DEFENDING IP GLOBALLY - ASIA James Isbester, Partner Kilpatrick Townsend & Stockton, LLP

China: A Rapidly Shifting Forum Lots of different tools: Increasing number of IP matters in the civil courts Registration of IP with Customs to prevent import OR EXPORT Administrative remedies Generally fast and inexpensive Difficult to recover worthwhile damages Strong local flavours

Japan: The Non-Litigious Society Taiwan – 650 IP cases per year; Japan – 500 IP cases per year Bifurcated infringement and validity tracks (like Germany) Infringement handled by specialty IP Court with high expertise Real injunction remedy Article 196. An infringer of a patent right … shall be punished by imprisonment with work for a term not exceeding ten years or a fine not exceeding 10,000,000 yen or combination thereof.

Korea: High Profile IP-Related Litigation Careful how you use your IP KFTC Qualcomm Fine Trade secrets matter Applied Materials criminal trade secret case Bifurcated validity and infringement tracks Some scepticism of patent validity

Singapore: High Tech and ADR IP-intensive agreements specifying arbitration sometimes specify the Singapore International Arbitration Centre English common law origins make judicial system familiar to Western litigants Many actors in technology fields are subject to jurisdiction in Singapore Specialist IP judges Singapore is seeking to become a “hub” for Asian IP enforcement

DEFENDING IP GLOBALLY - THE AMERICAS OTHER THAN US Gillian Thackray, VP and Associate General Counsel, The Clorox Company

Brazil: major economy with historically high growth rates Mexico and other Latin American countries are the source of brands that are familiar to large Latin American populations in US Canada: large pharmaceutical industry; well-developed healthcare market (and home of Justin Bieber!)

The “Watch List” Countries: (Annual Report of the U.S. Trade Representative pursuant to Section 182 of the Trade Act (19.U.S.C. §2242)) Argentina* Chile* Venezuela* Canada Mexico Costa Rica Dominican Republic Guatemala Barbados Jamaica Bolivia Brazil Colombia Ecuador Peru * “Priority” watch list countries due to egregious obstacles to protection of IP.

DEFENDING IP GLOBALLY - HYPOTHETICALS

HYPO 1: COMPETITOR PATENT WARS Client and competitor are both pursuing the same hot new product Both client and competitor have extensive, multi-national patent estates Competitor expected to file suit in Germany soon What are the strategic considerations?

HYPO 2: TRADEMARK FREE-RIDER Client’s product is a famous brand in US Client has limited sales in Mexico Free-rider has been selling a similar product in Mexico under a look-alike brand Free-rider is now selling the look alike brand into Latino communities in US Where should Client look to enforce?

HYPO 3: INTERNATIONAL SUPPLY CHAIN Client sells specialty product used in semiconductor manufacturing Competitor introduces an infringing product – sales in US, Germany, Korea Client has patents in US, Germany, Korea, China How best to use these patents?

Thank you for your attention Chris Burrell Samsung Electronics James Isbester Kilpatrick Townsend & Stockton, LLP Gillian Thackray The Clorox Company David Barron Gowling WLG