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

2. 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?

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

4. 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

5. 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

6. Shifting Legal Landscape

7. 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

8. 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

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

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

11. 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

12. 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

13. 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

14. 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

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

16. 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

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

18. 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

19. 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.

20. 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

21. 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

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

23. 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!)

24. 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.

25. DEFENDING IP GLOBALLY - HYPOTHETICALS

26. 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?

27. 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?

28. 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?

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