Patent enforcement: the judicary speaks

An excited and admiring audience of IP enthusiasts convened yesterday afternoon to enjoy a stimulating presentation by the Institute of Brand and Innovation Law (IBIL), University College London. This event was a star-atudded seminar on the theme of "Patent Enforcement: Problems & Possibilities". Following an introduction by Sir Hugh Laddie, the chair was taken by Mr Justice Arnold. Speakers were Judge Randall (Randy) Rader of the US Court of Appeals for the Federal Circuit, Professor Jan Brinkhof, former presiding judge of the IP Chamber of the Court of Appeal of the Hague and Mr Justice Kitchin, senior judge of the Patents Court for England and Wales.

Judge Rader (left) spoke mainly of eBay v MercXchange (noted here by the IPKat), which clearly established that post-trial permanent injunction are a discretionary remedy. Judge Rader noted that the immediate impact of this decision has been an increased use of the International Trade Commission (ITC) where an injunction against importation is a mandatory remedy. Apparently the case load of the ITC has increased from about 30 to 80 cases per year. Judge Rader also reported that post-eBay preliminary injunctions had been granted in 8 cases and denied in 16, while permanent injunctions were granted in 29 cases and denied in 14.

Professor Brinkhof followed with a scholarly examination of harmonisation of the enforcement of European patents. This, he observed, was not a feature of the European legislative framework that was not merely desirable but necessary. In highlighting several cases in which English judges had done their best to be "good Europeans", he emphasised the desirability of harmonisation across Europe.

The presentation which provoked the most response from the "home crowd" -- if local practitioners may be so described -- was "Speed, Cost and Remedies – Striking a Balance". Here Sir David Kitchin addressed various aspects of the trial process; he also commented on the Burdon Plan for making patent litigation speedier and cheaper for litigants, twice mentioned on this blog (see here and here). Most of his talk focused on costs and on the shared responsibility of all parts of the profession, including the judges, to try to ensure costs were controlled and proportionate.

Right: the judges' hands were "somewhat tied" by Nichia v Argos. Could the "somewhat" be that a majority of non-IP judges in this decision got it wrong and our own Jacob LJ got it right ...?

He then outlined aspects of case management which should be undertaken by patent litigators, and also imposed by the Court, in order to control costs. The judges' hands were "somewhat tied" by Nichia v Argos (noted by the IPKat here) which, he considered, removed the judges' ability to apply mandatory procedural controls, such as those proposed in the Burdon Plan. He did however state his eagerness to engage in closer case management and costs control.

Sir David also commented on the flexible approach of the UK Patents Court, especially in relation to declarations, noting not only the recent Nokia case on standards (see IPKat posts here and here), but also his own decision in Merck (see IPKat post here) on alendronate, which shows the flexibility of the declaratory remedy. He also predicted closer attention to the grant of permanent injunctions, particularly where they would have a disproportionate effect, noting that the jurisdiction to grant permanent injunctions would have to be reconsidered in light of the Enforcement Directive.