1. Patent Remedies in Global Perspective Thomas F. Cotter Briggs and Morgan Professor of Law University of Minnesota Law School cotte034@umn.edu February 22, 2013

2. Introduction My written materials provide an overview of some of the most important contemporary issues in patent remedies, as well as a comparison with how other major patent systems deal with similar issues. Some of this material is adapted from my book Comparative Patent Remedies: A Legal and Economic Analysis (Oxford University Press 2013). Focus today will be on three specific topics of particular relevance to the mobile devices patent wars: –The availability of permanent injunctions in the face of FRAND commitments –Judge Posner’s opinion in Apple v. Motorola –The availability of awards of defendant’s profits for design patent infringement.

3. Are permanent injunctions available if the patentee made a FRAND commitment? So far, the district courts are saying no: –Microsoft Corp. v. Motorola, Inc., No. C10–1823JLR, 2012 WL 5993202 (W.D. Wash. Nov. 30, 2012). –Apple, Inc. v. Motorola, Inc., 869 F. Supp. 2d 901, 913-15 (N.D. Ill. 2012) (Posner, J., sitting by designation). As are the DOJ, FTC, and USPTO: –See USDOJ and USPTO, Policy Statement on Remedies for Standards- Essential Patents Subject to Voluntary F/RAND Commitments (Jan. 8, 2013), available at www.justice.gov/atr/public/guidelines/290994.pdf.www.justice.gov/atr/public/guidelines/290994.pdf –See also Consent Orders in Motorola Mobility LLC and Robert Bosch GmbH. Probably right as a matter of doctrine, after eBay. Probably right as a matter of policy as well, because the risk of patent holdup is very high. ITC exclusion orders?

4. Are permanent injunctions available if the patentee made a FRAND commitment? In the U.K., the Patent Court denied a permanent injunction in an infringement action brought by IPCom against Nokia, reportedly on the ground that the patent in suit was standard-essential. –See UK High Court Denies a Patent Injunction Against Nokia in Light of a FRAND Commitment, Foss Patents (May 30, 2012), available at http://www.fosspatents.com/2012/05/uk-high-court-denies-patent-injunction.html. http://www.fosspatents.com/2012/05/uk-high-court-denies-patent-injunction.html –Nokia NYJ v. IPCom GmbH & Co. KG, [2012] EWHC 3545 (Pat) (Pats. Ct. 2012) (Eng.). In Germany, injunctive relief remains the norm, subject only to the Orange-Book- Standard exception. An infringer may not be enjoined if: –It proves it “made an offer, ready for acceptance, on contractual conditions, which the patent holder cannot refuse without thereby treating the party seeking a license unequally without good cause as compared with similar enterprises or impeding him inequitably” in violation of German competition law; and –It “behaves as if the patent holder had already accepted his offer” by paying “the consideration that the licensee would be obliged to pay according to a non- discriminatory or non-obstructive licence contract.” –BGH May 6, 2009, GRUR INT. 747, 2009 (Ger.), English translation available at 41 IIC 369-75 (2010).

5. Apple, Inc. v. Motorola, Inc., 869 F. Supp. 2d 901 (N.D. Ill. 2012) A bold decision: –No injunction because each party claimed that damages were ascertainable. –No damages, however, because the parties failed to proffer competent evidence on their amount. –No right to proceed to trial for nominal damages. A decision like this probably wouldn’t happen anywhere else: –Liability and damages often bifurcated. –Courts may have greater leeway to estimate damages on their own. –Plaintiffs have the option of recovering the defendant’s profits attributable to the infringement. In the U.S., we eliminated this remedy for utility patent infringement in 1946. The only area of patent law in which we retained the remedy of accounting of profits is for design patent infringement.... and we do it wrong.

6. Recovery of defendant’s profits for design patent infringement Patent Act § 289: –Whoever during the term of a patent for a design, without license of the owner, (1) applies the patented design, or any colorable imitation thereof, to any article of manufacture for the purpose of sale, or (2) sells or exposes for sale any article of manufacture to which such design or colorable imitation has been applied shall be liable to the owner to the extent of his total profit, but not less than $250, recoverable in any United States district court having jurisdiction of the parties [emphasis added]. Congress enacted the predecessor to § 289 in 1887, to overrule Dobson v. Dornan, 118 U.S. 10 (1886). In the typical design patent case, maybe it doesn’t matter very much... but Apple v. Samsung? Any way around?