1 Forum Shopping in patent infringement proceedings, A comparison : Germany - United Kingdom - Netherlands Dr. Sabine Rojahn Partner of Taylor Wessing

Korea / Forum Shopping in Patent Litigation Procedures A Comparison: Germany – England – Netherlands Considering the “Enforcement Directive” 2004/48 Dr. Sabine Rojahn, Munich Germany © Taylor Wessing

Korea / Forum Shopping in patent litigation procedures © Taylor Wessing page 3 Outline  European patent litigation?  Directive 2004/48 EC on the enforcement of intellectual property rights  Forum shopping in Europe  Proceeding on the merits  Provisional and precautionary measures  Damages  Duration of patent litigation procedure  Legal costs  Links

Korea / Forum Shopping in patent litigation procedures © Taylor Wessing page 4 European patent litigation?  The European Union has no harmonized invalidity and scope of protection practice nor a harmonized civil procedure code  The European Patent Convention (EPC) is an international treaty and no European law  Only the process of granting a patent is harmonized  After the grant the European Patent (EP) is a bundle of national patents  The enforcement of the EP is subject to the national laws  No harmonized national court practices in EP patent infringement cases and nullity actions, because there is no central court governing and guiding such practices

Korea / Forum Shopping in patent litigation procedures © Taylor Wessing page 5 Epilady case Patent infringed YesNo GermanyX NetherlandsX UKX ItalyX AustriaX BelgiumX FranceX Patent “helical spring” Defendant’s product “rubber roll” Apparatus for hair removal EP

Korea / Forum Shopping in patent litigation procedures © Taylor Wessing page 6 Harmonization efforts throughout the EU for the entire IP area Directive 2004/48 EU (L 195/16 of 2 June 2004) The objective of the Directive is to approximate legislative systems so as to ensure a high, equivalent and homogenous level of protection in the international market. E.g. minimum standards for  Evidence / Measures for preserving evidence  Interim injunctions  Seizure  Damages  Costs

Korea / Forum Shopping in patent litigation procedures © Taylor Wessing page 7 Forum shopping in Europe despite harmonization?  The Directives only set minimum standards; differences remain, in particular:  Proceedings on the merits  Measures for preserving evidence  Interim injunctions  Damages  Duration of patent litigation procedure  Legal costs  England, Germany and the Netherlands will be compared since all three countries have important case law on patent infringement

Korea / Forum Shopping in patent litigation procedures © Taylor Wessing page 8 Considerations when starting a lawsuit  Where are important patent courts?  What measures are available for preserving evidence?  What are the requirements to get an interim injunction?  What can patentee get from infringer (damages)?  How long will a lawsuit take?  How much will the lawsuit cost?

Korea / Forum Shopping in patent litigation procedures © Taylor Wessing page 9 Important patent courts in the EU London The Hague Mannheim (infringement) Munich Federal Patent Court (validity) Düsseldorf (infringement) Germany: validity and infringement judged before different courts England and NL: validity and infringement judged before the same court

Korea / Forum Shopping in patent litigation procedures © Taylor Wessing page 10 Proceedings on the merits EnglandGermanyNetherlands Common law system Civil law system Discovery, but more limited than in US No discovery Cross-examination at trial Witnesses will be heard at the initiative of the court + “cross examination” Extensive trial phase No extensive trial phase, preparation by comprehensive written submissions, short hearing on oral arguments No extensive trial phase, evidence primarily through affidavits submitted with written briefs, short hearing on oral arguments Independent experts but appointed by the parties Court appointed expert, statement of party expert is considered as statement of party Party experts and court appointed expert (also EPO members can be heard as experts)

Korea / Forum Shopping in patent litigation procedures © Taylor Wessing page 11 Measures for preserving evidence  Enforcement Directive Art. 7 Member States shall ensure that, [...] the competent judicial authorities may, on application by a party [...] order prompt and effective provisional measures to preserve relevant evidence in respect of the alleged infringement, subject to the protection of confidential information.

Korea / Forum Shopping in patent litigation procedures © Taylor Wessing page 12 Measures for preserving evidence EnglandGermanyNetherlands Search and seize order (formerly “Anton Piller Order”) Inspection of alleged infringing product/process in a separate procedure of taking evidence Patentee may request the court to order a preliminary hearing of witnesses, a preliminary expert report, or a preliminary visit to a certain venue Claimant/his solicitors can inspect the respondent’s premises and/or seize or copy material related to infringement, even against his will Court appoints an independent expert; alleged infringer is usually not informed, has to tolerate inspection Court can in interim judgment appoint an expert to inspect in assistance of both parties

Korea / Forum Shopping in patent litigation procedures © Taylor Wessing page 13 Provisional and precautionary measures  Enforcement Directive Art. 9: Member States shall ensure that the judicial authorities  may issue an interlocutory injunction  order the seizure or delivery up of the goods suspected of infringing an intellectual property right

Korea / Forum Shopping in patent litigation procedures © Taylor Wessing page 14 Interim procedures England GermanyNetherlands Oral hearing necessary? YesNoYes What can be achieved? Interim injunction, but rare because of -arguments re balance of convenience -cross-undertaking in damages Preliminary injunction, right to be informed, seizure, no damages Preliminary injunction, information source and size of infringement, destruction of infringing products, no damages Likelihood of success?Reasonable Little, only when infringement is obvious Very effective where no nullity is raised How long does it take to get a ct. decision? Usually immediate No oral hearing: 1-3 days oral hearing: 1-2 weeks 2-4 weeks after hearing

Korea / Forum Shopping in patent litigation procedures © Taylor Wessing page 15 Damages  Enforcement Directive Art. 13 Consideration of all appropriate aspects, such as  negative economic consequences, including lost profits  any unfair profits made by the infringer or as alternative  royalties or fees which would have been due if the infringer had requested authorization to use the intellectual property right in question Art. 9 (2)  If it is likely that the recovery of damages is endangered, a seizure of the property may be ordered.

Korea / Forum Shopping in patent litigation procedures © Taylor Wessing page 16 Damages EnglandGermanyNetherlands Lost profits Yes, requirements to prove causality between infringement and patentee’s lost profits relatively low In principle yes, but court applies strict requirements for the proof of causality Yes, requirements to prove causality between infringement and patentee’s lost profits relatively low Reasonable royalty Yes, no double or triple damages Yes, no double or triple damages Defendant’s profits Yes, but very rare, defendant can deduct overhead costs Very common since Fed Sup Court decided in 2000 that overhead costs are not deductible Yes, but defendant can deduct overhead costs

Korea / Forum Shopping in patent litigation procedures © Taylor Wessing page 17 Application of the “Overhead Costs” ruling Overview of decisions passed after the Overhead Costs ruling CourtDecision Infringed property right Infringer’s profits Damages % of damages in turnover LG Düsseldorf Schütt- vorrichtung Patent1.7 million0.7 million41 % LG Düsseldorf KlemmringPatentca. 370, , % LG MunichRasenwabePatent9 million2.1 million23 % OLG Frankfurt Vier-Streifen- Kennzeichnung Trademark220, , (20 % of profits) 12 % LG MunichFussballschalCopyright44, , (80 % of profits + contribution margin) 55 %

Korea / Forum Shopping in patent litigation procedures © Taylor Wessing page 18 Duration of patent litigation procedure * KG: Kort Geding (similar to interim proc)

Korea / Forum Shopping in patent litigation procedures © Taylor Wessing page 19 Legal costs  Enforcement Directive Art. 14 Member States shall ensure that reasonable and proportionate legal costs and other expenses incurred by the successful party shall, as a general rule, be borne by the unsuccessful party, unless equity does not allow this.

Korea / Forum Shopping in patent litigation procedures © Taylor Wessing page 20 Costs of patent litigation EnglandGermanyNetherlands Approximate costs of patent infringement litigation (1st instance, on the merits)? 750,000 – 2 Mio €50, ,000 € 60, ,000 €, often additional translation costs Who pays the litigation? Loser pays 65 – 80% of other side’s costs Loser pays it all (acc. to RVG) Each party bears its own costs. Loser must pay the court costs (marginal) What are the litigation costs based upon? Hourly rates plus disbursements of attorneys Statutory fees based on value of the matter, usually 250, Mio € Lawyers generally charge by hourly rates Hourly rates plus disbursements of attorneys; court costs are fixed by the court

Korea / Forum Shopping in patent litigation procedures © Taylor Wessing page 21 Links I.PATENT OFFICES 1.European Patent Office (EPO) a)Decisions of the EPO b)Case Law of the EPO c)European Academy (EPO) office.org/news/pressrel/2004_06_30_d.htmhttp:// office.org/news/pressrel/2004_06_30_d.htm 2.German Patent and Trademark Office 3.US – Patent and Trademark Office (US PTO) 4.(HABM) II.COURTS 1.European Court of Justice (ECJ) 2.Boards of Appeal (EPO) 3.Federal Supreme Court 4.Federal Patent Court 5.US – Supreme Court 6.US – Court of Appeal for the Federal Circuit (CAFC) III.EUROPEAN UNION 1.European Union (EU) 2.Official Journal of the European Union 3.European Parliament

Korea / Forum Shopping in patent litigation procedures © Taylor Wessing page 22 Any questions? Dr. Sabine Rojahn Taylor Wessing Isartorplatz München Tel: 089 / Fax: 089 /

Korea / Forum Shopping in patent litigation procedures © Taylor Wessing page 23 Offices of Taylor Wessing BerlinBrüsselCambridgeDüsseldorfNeuss Jägerstraße 51Trône House24 Hills RoadKönigsallee 92 aAm Krausenbaum 42 D Berlin4 Rue du Trône Cambridge CB2 1JWD DüsseldorfD Neuss DeutschlandB-1000 Brussels EnglandDeutschlandDeutschland Tel. +49 (30) BelgienTel. +44 (1223) Tel. +49 (211) Tel. +49 (2131) Fax +49 (30) Tel. +32 (2) Fax +44 (1223) Fax +49 (211) Fax +49 (2131) Fax +32 (2) Frankfurt a. M. HamburgLondonMünchenParis Senckenberganlage 20-22Neuer Wall 44CarmeliteIsartorplatz 842 Avenue Montaigne D Frankfurt a. M.D Hamburg50 Victoria EmbankmentD MünchenF Paris DeutschlandDeutschlandBlackfriarsDeutschlandFrankreich Tel. +49 (69) Tel. +49 (40) London EC4Y 0DXTel. +49 (89) Fax +49 (69) Fax +40 (40) EnglandFax +49 (89) Tel. +44 (20) Fax +44 (20) Representative offices: AlicanteShanghai Paseo Explanada de Espana No. 115th Floor United Plaza, Unit 1509 E AlicanteNo. 1468, Nanjing West Road Spanien Shanghai Tel. +34 (96) People‘s Replubic of China Fax +34 (96) Tel. +86 (21) (21)