Lifecycle of a smart idea | Remedies for patent infringement around the world

RON DIMOCK: Welcome to our webinar today on remedies for patent infringement around the world. My name is Ron Dimock. I'm a patent litigation partner in the Gowling's Toronto office, and your host for today. First, a few housekeeping points. We will record today's webinar. And the recording will be shared via the email that you sent us and on our website, www.gowlingwlg.com/ip.

If you have any questions, please use the Q&A icon at the bottom of your screen and we will come back to your questions at the end of the session at that time. So today's panel will discuss some of the remedies that are available for patent infringement in the United States of America, in Canada, the United Kingdom, France, and China, along with a mention of what will become available in the unified patent court in Europe.

We will mention but not elaborate on the well known remedies that are available almost everywhere around the world. Those commonplace remedies include permanent injunctions to stop further infringement. And then for past infringement, either damages that are meant to compensate the patent owner for losses suffered as a result of that infringement. Or an account and the disgorgement of the profits made by the infringing party from that infringement. And of course, costs of the litigation incurred by the patent owner. Those are the ordinary remedies.

In this webinar, however, we will elaborate on various extraordinary remedies around the world, such as in France, the court ordered seizure called the [NON-ENGLISH]. In the United States, the border order injunction, it is available from the International Trade Commission. In Canada, the special accounting of profits for infringement. In the UK, the FRAND opportunities that are available there. And in China, the administrative orders.

It has been said that without a remedy for infringement, there would be no worthwhile patent rights. I might add that without a skillful moderator, there would be no worthwhile panel. Your skillful moderator today is Huw Evans. Huw co-eds Gowling's global IP litigation practice and also heads our UK patent practice. He is also regarded as one of the top patent litigation lawyers in the United Kingdom today, with three decades or more of experience in all subject areas of patents.

Huw will introduce your panel members and lead them through an interesting discussion of remedies based on the scenario that many of you have already read. No matter, Huw will bring the scenario to life with his insightful comments and probing questions for our esteemed panelists. So now, I turn the webinar over to Huw.

HUW EVANS: So I was going to say, "Thank you, Ron," for that and for the quick overview of the available remedies. Now, my first job today is obviously to introduce you to our panel today. From our London office, I welcome Alex Brodie, co-chair of our global firm's tech sector and a highly experienced patent litigator. Her practice is focused on multinational patent infringement and licensing disputes, usually in the SEP FRAND arena but not only just there.

From France, we have our French patent litigation UPC expert, Celine Bey. Celine heads up our IP practice in Paris. She has a deep rooted understanding of French litigation procedure and advises clients on multinational patent infringement cases. From China, we welcome Ivy Liang. Ivy is based in our Guangzhou office and is expert in all IP enforcement matters.

Now, before joining us, Ivy used to be an IP judge in China, and has worked in the judiciary for more than 16 years. I should say also, Ivy, thank you so much for staying up so late with us today. So next up is Canada and I welcome our Vancouver partner, Nelson Godfrey. And I have to say, Nelson, thank you for getting up so early for us today.

Nelson heads up our IP litigation department in our Vancouver office, and he's experienced in a wide range of intellectual property disputes. So I thank you again, Nelson, for joining us. And from the US, not so early for Bill Needle. Bill has practiced patent law for almost 50 years so I'm a relative junior with just 30 years. He retired from practice a few years ago but remains active as a JAMS neutral panel member, mediating and arbitrating patent cases, and conducting and rendering recommendations on Markman or Markman hearings.

So as we once said at the start, we do not intend to focus today on a comparative exercise of all the remedies available from the various jurisdictions. Instead, we want to look at particular remedies available from jurisdictions which may be applied differently as opposed to elsewhere. But we're going to try and do it in the context of a scenario, which I will now run through.

So in our scenario, we have GlassFree Inc, which is a US based global supplier and manufacturer of glass and plastics. GlassFree has developed a clear composite material for which the main application is for the smartphone industry. Indeed, GlassFree's most profitable product is manufacturing screens for the main players in the smartphone business.

The advantage of these screens are that they're virtually unbreakable and are fully scratch resistant. Key to the product is the method of extruding and rolling the composite material that lasts for manufacture in the US. GlassFree have broad patent protection in the US, Canada, China, and EP designations. The EP and Canadian patents only granted six months ago, but all of the screen patent claims are either processed claims or product by process claims.

GlassFree's main markets are in the USA and China, where its mobile telephone customers assemble their products. In more recent years, GlassFree has become involved in developing technology within communications devices. This followed an acquisition by them of Coolants Inc, which was an R&D company focused upon antenna design and related software.

Glass Free have been exploring how they may monetize their technology, either by manufacturer of components or via licensing or a combination of both. There are a mixture of non SEPs and SEPs in Coolants patent portfolio. Now sadly, GlassFree have become aware of FranCan Telecoms.

FranCan Telecoms is a Canadian based global communications company which manufactures mobile telephones. It makes these in its manufacturing sites in China, but it's recently set up a new manufacturing sites in Canada and France to make the screens for its new range of phones, which are assembled in China and shipped around the world.

FranCan have been publishing that their screens have unbreakable and cannot be scratched. Now, GlassFree have taken a look at FranCan's mobiles and in their view think the screens on them could have only been made by using their process. And also, we've learned that FranCan have started supply screens to other mobile phone manufacturers and have recently issued press releases of significant exports coming out of Canada.

They've also made it clear that they intend to expand their French operation. So now, turning to our panel, and kicking off first with France, it would be great if GlassFree could shut down FranCan's French operation but Celine, is it a problem that we don't really know how the process is being carried out?

CELINE BEY: Thanks, Huw. Hello, everyone. So no, it's not a problem that we do not know the process yet since in France, we will be able to conduct [NON-ENGLISH]. So infringement seizure in English, by a bailiff at FranCan's premises. We would be able to obtain upfront all the information we need on the manufacturing process they use so and not only this. So what is the [NON-ENGLISH]?

There are three key things you need to know about [NON-ENGLISH]. The first one is that it is the way in France to prove infringement and damages. So there is no discovery proceedings. So the claimant is together proof of infringement before starting the action. So we almost always start patent infringement action biased.

The second thing you need to know is that it is requested ex parte to the president of the Paris Court only. So operation are conducted by surprise. It is a kind of a downgrade. And the only condition for the claimant to obtain the authorization is to show that it has a granted patent or patent application.

So of course, it does not have to prove infringement because this is the very aim of the [NON-ENGLISH]. And in our scenario, the communication by FranCan that their mobile phone is unbreakable and cannot be scratched would be enough for the president to consider that it is likely to infringe GlassFree's patents so it would give the authorization.

The third key thing to know about the [NON-ENGLISH] is that it is a very powerful tool. It can be used to find information related to the French market but not only so it's very useful. It's a tool to consider really in the type of scenario that we have when there is cross-border infringements.

Indeed, the bailiff will be able to do and search for anything that would be in the court order. And the court order is signed by the president but it is drafted by the patentee. So depending on what we're looking for, we'll draft the court order differently. Of course, it must be drafted very carefully, very precisely. Because the president can refuse some powers and he can also rewrite the order if he thinks it's too broad.

In our scenario, Huw, we would for sure authorize a bailiff to collect samples of FranCan's products at the premises in the factory. We would allow the bailiff to collect information on the distribution network. We could obtain any information on the manufacturer, importers, or intermediaries everywhere in the world. We could collect any information on the volumes of manufactured products, imported, sold products everywhere.

And for that, to do that, the bailiff would be allowed to search the computer network of FranCan and with the help of an IT expert if needed. And he can take any copies of all contractual commercial documents he will find. He can also ask questions to FranCan's representative in France, but also in Canada and in China where we've seen that FranCan has holding company or headquarters by phone or in writing if necessary.

Recently, the team conducted a [NON-ENGLISH] and we could obtain information from the holding company in Japan. So this information gathered during the [NON-ENGLISH] could be used afterwards against FranCan before the US, the UK, or Canadian courts depending, of course, on the position of these courts. And here, it will be really interesting to hear about these positions from my colleagues.

But for sure, French judge consider that these evidence that have been legally collected during the [NON-ENGLISH] can be used abroad. The only limitation I want to underline is, of course, trade secret. So if there are some information covered by trade secrets, usually, they cannot be used abroad. But for show or what is related to infringement, distribution network, volume of sales are not considered as being trade secret in France.

HUW EVANS: Thank you, Celine. I agree. That [NON-ENGLISH] sounds a particularly useful tool and I'm sure defendants hate having that exercised upon them. I can also see how you can use it to leverage a settlement. But in our scenario, let's assume that we haven't been able to get a settlement but we do now know that FranCan are infringing.

And it's great that we can use that as evidence elsewhere as well. But they are operating in France and so we must want to shut them down there. But I hear it can take a couple of years to get to trial in France by which time, our business could have been badly damaged. Is there anything that can be done to get a preliminary injunction?

CELINE BEY: Yes, absolutely. So two comments here. Your first concern is that it's not that long to get to trial in France. It's an average of 18 months, two years. But you will get a decision on the merit on validity infringement and damages at once. So for instance, if we compare to Germany where you can get it's through a preliminary an injunction on the merits in six month, one year. But you'll have to wait for the decision on validity almost two years. So enforcing your injunction can sometimes be an issue as well.

My second comment is that, yes, you can obtain a preliminary injunction in France and maybe more easily than you can in other countries in Europe, because the conditions are a little bit more flexible and the judges have been more flexible those past years. For example, and still the comparison with Germany is interesting.

In Germany, the president of the court will require that the validity of the patent has already been confirmed in an opposition or nullity proceedings in Germany or before the EPO before he grants a preliminary injunction. It's not the case in France. And in France, it's even more easily granted that there is no requirement for urgency. So this is really important to underline because this is really a difference.

You can apply for a preliminary injunction any time. The two criteria that the judge apply are, is the patent likely to be infringed? And is the preliminary injunction proportionate? So for infringement, the judge will conduct a preliminary assessment on validity. In our case, in our scenario, we are GlassFree's patent granted for six months.

Apparently, there is no position before the European office so the judge will probably grant a preliminary injunction for the non-standard essential patents. For the standard essential patent, and I know that Alex will give some details on what they are, probably the judge would consider that it's not proportionate.

So they do not meet the second requirement to order preliminary injunction for those type of patents because we know that there is a FRAND license issue in discussion. So for sure, a French judge would grant a PI for non standard patent but it will not grant a PI for such patents.

HUW EVANS: OK. Thank you. That's good to hear about that preliminary relief that can be obtained in France. But what about final relief? I'm assuming that you will have final injunctions from what you say. It seems implicit. But I assume you can also collect on damages and accounts of profits.

CELINE BEY: Yes, absolutely. You gather. Profits are part of the evaluation of damages in France. And of course, this idea would be useful. Because as I said, you can gather all evidence on profits of the infringer. And upon the patentee's request, if he could not get any information on volume of sales, he can also request that the judge use a royalty fee based calculation.

And in addition to injunction and damages are in our scenario, the claimant could well also obtain before French courts seizure of all the product in stock, seizure of the means of production, and also the recall of the products from the market, which is also very powerful remedy.

HUW EVANS: OK. Thank you. So certainly some good options in France. And as I said, I really like the sound of that [NON-ENGLISH]. But FranCan is, of course Canadian owned at headquarters. And it does seem most of the infringing screens are coming from Canada. So we should probably look to see if we could shut down the operation there as well.

So turning to Canada, Nelson, can we get a case off the ground there? I'm thinking perhaps we can use some of the results of the French [NON-ENGLISH] to support the theory that was going on in France is going on in Canada as well. But would be interested in your comments on that.

NELSON GODFREY: Yeah, absolutely, Huw. Thanks very much and thanks very much for joining us, everyone. There may be some hearsay considerations with respect to using the evidence obtained in the [NON-ENGLISH] proceeding directly in the Canadian proceeding. But of course, evidence obtained through the [NON-ENGLISH] proceeding would help inform the approach to discovery of the Canadian proceedings.

In terms of available discovery, Canada's federal courts where most patent cases are litigated require fulsome document production and require that each individual defendant and a representative from each corporate defendant submit themselves for fulsome examination for discovery.

So absolutely, the results of the French [NON-ENGLISH] would be helpful, but we'd still likely need to obtain direct evidence in Canada as well and we would expect that to come from the discovery process. Also helpful to us in Canada is the fact that we're dealing with product by process claims. Canada's Patent Act has a very useful statutory presumption built into the act itself when dealing with those claims.

Pursuant to that section of the act, an action for infringement of a patent for claims directed to a process for obtaining a new product, any new product that's the same as the product governed by that product by process claim shall in the absence of proof to the contrary be considered to have been produced by that same patented process. So that may be very helpful in the context.

HUW EVANS: Thanks, Nelson. So it sounds like we can get our case going. But can we get an injunction? We're here in the US. Final injunctions are not so possible and of course, Bill will talk about that in a moment. But has that principle been exported North to Canada? Can we get an injunction in Canada?

NELSON GODFREY: Yes, absolutely. A permanent injunction almost always follows a finding of infringement under Canadian law. I believe there's only one case in all of Canadian patent law where a permanent injunction was not granted in favor of successful patentee after trial and that case was very unusual and confined to very exceptional facts.

So in this case, our successful patentee would absolutely be able to expect that an injunction would be granted. And with respect to costs, Canada's a loser pays jurisdiction and costs awards can be pretty significant in Canada. Canada's federal courts have demonstrated a preference for lump sum awards rather than expensive tariff based assessments. And these lump sum awards can range from 25%25 to 40%25 of the actual legal fees spend plus 100%25 of disbursements being awarded to successful patentee as a measure of cost after the fact.

HUW EVANS: Good news. But how long is it going to take us to get that injunction, Nelson?

NELSON GODFREY: Yeah. They go through a full trial and obtain an injunction. Typically, takes around two to three years from the date the claim is filed though it depends on the progress of the proceeding obviously. I will say, though, that summary determination is very much in favor and in vogue in Canadian courts in recent years, owing to a couple of Supreme Court of Canada decisions that have really pushed the mandate for courts to use summary resolution wherever possible.

So if we feel we have a strong enough case, we can proceed in a summary basis. And without oral evidence at a full trial, we could move much more quickly in a case. In such a case, we could obtain a permanent injunction in around 9 to 12 months from filing.

HUW EVANS: OK. So if we can use that process, we can get to trial quite quickly but if we can't use that process, then we're looking at a potentially long time that the defendant FranCan could be infringing for. So is there any glimmer you can give us that we can at least grab some decent compensation for those infringing years?

NELSON GODFREY: Yes, absolutely. So in terms of monetary remedies that may be awarded for infringement, as in many jurisdictions, Canada offers patentees an election between accounting or profits and damages. The election can be made any time up until trial. So what patentees will typically do is conduct fulsome discovery of the defendant's operations, evaluate the different forms of compensation with experts, and then elect the best and most lucrative remedy.

Damages can be awarded as either lost profits and lost sales, or a reasonable royalty in lieu of actual damages but I'll focus on accounting of profits for the purposes of this presentation. So because accounting and accounting is an equitable remedy, it's the court's discretion whether they'll allow the plaintiff to elect profits in lieu of damages. But while it's ostensibly discretionary, in practice, the court will almost always allow a patentee to elect profits in lieu of damages if it so wishes.

In a profits analysis, the patentee has the burden to prove the defendant's revenues, which it typically does through information obtained in the discovery process. And the defendant has the burden to prove their relevant expenses. So I think we'd very likely want to consider an accounting of profits here.

Fulsome discovery of the relevant financials and close collaboration of experts would be necessary. And increasingly, in Canada, we're seeing that awards of accounting of profits can be very large indeed. In a recent Supreme Court of Canada decision, a majority of the Supreme Court of Canada upheld the calculation of approximately $650 million Canadian in a Canadian patent case and refused to reduce that calculation based on the infringement proposed non-infringing option, which the majority deemed irrelevant.

Majority of the Supreme Court of Canada in that case also confirmed that the profits awarded included profits that were gained after the patent expired, which are sometimes called Springboard profits. Thus under Canadian law, post expiry profits are not automatically excluded from a disgorgement or profit calculation and they may be included when they're causally linked to the pre expiring infringement.

The other remedy-- a possible remedy on a monetary side I'll briefly mention is reasonable compensation. So given that the relevant patents only issued six months ago, another potentially relevant source for a remedies for us here is pre issue compensation. Those are for acts taken during the publication period while the application is still pending.

If the patentee can prove that the defendant carried out acts during the publication period, which if carried out after issuance would have been considered infringement, the defendant is liable to pay reasonable compensation in addition to damages or profits for acts taken during the publication period. Typically, this takes the form of a reasonable royalty and is similar to the form of reasonable royalty that's awarded if that's what's elected by the patent.

HUW EVANS: Thank you. Of course, it hasn't escaped our notice that FranCan is Canadian owned as well. Can we use the Canadian courts to grab some compensation in respect of their global sales?

NELSON GODFREY: Yeah. There will absolutely some avenues to explore here because we're dealing with Canadian defendant with operations in multiple jurisdictions. So if there are products being exported or sales being made from Canada and going abroad, those would be considered infringements in Canada.

And in terms of damages and profits for acts carried out abroad, under the direction of the Canadian entity, there's not a lot of Canadian law on that subject. But if there's profit being earned in Canada and benefit being realized in Canada by a Canadian company for acts being carried out elsewhere, that would be part of the plaintiff's case on profits. And the amount of revenue earned on that infringement would likely be considered as part of the overall revenues in the context of Canadian proceedings.

HUW EVANS: Thank you. And thank you for that, Nelson. We're going to leave North America for a moment. We will come back. But we should not forget the FranCan activities in China. After all, they're using the new screens there when assembling their phones for the world. Ivy, you've personally been involved in many patent cases in China, both as a judge and as a practitioner. Should GlassFree be looking to China? And what can we expect by way of remedies in China?

IVY LIANG: Yeah. Thank you, Huw. And hello, everyone. So at this stage, I can think of at least three remedies for addressing this patent infringement issues in China. Those are evidence preservation order, injunctions, and customs protection. So as a first step, since there's no discovery system in China, it is in France. So it is very crucial to gather and fix evidence in order to establish a solid foundation for subsequent actions.

In parallel, it would be worth consider seeking an injunction as quickly as possible to prohibit the continuous sale of these infringing products in China and to seek protection from China's customs to prevent the export of infringing products abroad as soon as possible. So I will explain in detail.

First, for fixing the evidence in China similar to the [NON-ENGLISH] procedure just mentioned by Celine, in China, the patentee is entitled to apply to the court for the evidence preservation order, requesting the court to preserve and fix the necessary evidence in the first place. And then so I think under this situation, for GlassFree, it will be very necessary to apply for such evidence preservation order because it is difficult for them to collect the evidence by their own.

So secondly, after fixing the evidence, GlassFree then can consider applying for injunctions. Under the Chinese patent law, before a trial, a patentee may ask for exact preservation order which is to prevent the infringer's disposal of their assets, and an act preservation order which is to request the infringer to suspend selling of the infringing products.

So generally, a preservation order as they will not easily grant it. But the new Chinese patent law, which was effective from 2021, has made it much more structured and assessable. And also, we can make use of this pre-trial preservation orders as a useful tool as the infringers may feel more pressure and be more open to an out-of-court settlement.

And finally, GlassFree can seek protection from the Chinese customs, of course, because GlassFree in my mind, should in the first place, try in every way to request for detention of the infringing products at the Chinese customs. But GlassFree should be extremely mindful of the interconnection between customs protection and judicial proceedings.

Because Chinese customs can only detain the suspected infringing products for 20 working days and the preservation order should be safe from the court to continue to detain these infringing products until the final civil decision has become effective.

HUW EVANS: Thank you for that, Ivy. And I wasn't aware of those new developments in Chinese patent law so that's good to know. So what about remedies in China, which are other than just civil litigation?

IVY LIANG: Yeah, absolutely. The patentee can also resort to the administrative route. This means that a local administrative body can take direct action against the infringers. The administrative parties responsible for patent infringement are the local AMR. We call it AMR meaning administration for market regulation.

The AMR is entitled to inquire the relevant parties, investigate the suspected illegal acts, conduct on site inspections of the premises, and then examine the products. So if the infringing products are found, they should be detained and ultimately destruction may be ordered. And the AMR also has the jurisdiction to impose a fine against this infringers.

So the advantage of the administrative rule is that it is relatively quick compared to the often prolonged litigation process as we all may know. And this supplemental resolution is fast, comparatively cost saving, and convenient for pendency to shut down the infringing activities in a timely manner.

I would say what is even better is that any infringing evidence collected during a raid by the AMR can then be used in subsequent civil or criminal actions. And also another benefit for the administrative complaint is that if the infringer continues the acts of infringement after being investigated or fined by the administration, the patentee can then go to the court and ask for punitive damages of up to five times the determinant damages.

I would say this is a significant change in a new Chinese patent law also because the law compensation among has long been criticized and this issue has been addressed in the new law.

HUW EVANS: OK. Thank you, Ivy. That was really helpful. And plainly, we need to be thinking about China in our enforcement strategy. But I said we would return to North America. And we know there were a lot of sales in the US. And we know that it's a major market for both GlassFree and FranCan. It would be great to shut FranCan out of the USA but Bill, as I mentioned earlier, I understand it's not as easy as it once was in having the court grant injunctive relief to prevent further infringing activity in the US. Am I right?

BILL NEEDLE: Yes, you're right. And hello to everyone. You are correct about the not impossibility but the harder attempt to get a permanent injunction in a district court case if the complaint in GlassFree would be considered to have a valid and infringe patent.

It used to be that the injunction would be granted absent exceptional circumstances. However, after a 2006 Supreme Court case, the eBay case came along. The courts now have to apply a four factor sort of equitable review of the evidence and circumstances in order to then issue an injunction. And as a result, the number of permanent injunctions have fallen in district court cases.

HUW EVANS: OK, thanks. Well, that's also helpful but is there an alternative forum in the US for bringing a patent infringement action which is more injunction friendly than the district courts?

BILL NEEDLE: Yes. It sounds like it's similar to the AMR but there is in the United States a administrative agency called the International Trade Commission or the ITC. Where a GlassFree's could seek to initiate an investigation by the ITC to determine whether or not there was infringement of GlassFree's US patent.

And if GlassFree was successful, then the commission would issue what's called exclusionary orders, which would stop the importation at the border of the United States. And if there were articles of the infringement that were already in the United States, then they would issue-- ITC would issue what's called cease and desist orders, which would stop the sale of those articles already in the United States.

HUW EVANS: Can those ITC proceedings order damages as well?

BILL NEEDLE: Unfortunately, no. The ITC, being an administrative agency, does not award damages. But what most complainants, and that's what they're called in the plaintiff's position in the ITC proceeding, most complainants such as GlassFree would file simultaneously with an ITC case, a district court case. And there, of course, you would be seeking damages. And that district court case would be stayed most likely while the ITC case was proceeding.

HUW EVANS: Thank you for that. I mean, are there sort of any other differences you would mention between in patent litigation between the district courts and the ITC?

BILL NEEDLE: Yes, something created by the government is never simple. So with the ITC, the complainant, GlassFree in this case, would have to demonstrate that it has a domestic industry, something in the United States that is related to the patented articles. And that is satisfied in two ways.

One are they call it the technical prong, which is to say that the articles that GlassFree is selling in the United States actually infringe one or more claims of each of the asserted patents. So that the articles have to fall within at least one claim of each asserted patent.

The other is an economic prong where GlassFree would have to satisfy certain economic criteria to show that they have this industry going on in the United States. That is one thing before you can even proceed successfully through the ITC.

But one caveat that if the complainant, GlassFree, was relying only on the sales and marketing revenue and expenses to demonstrate its domestic industry, that alone would fail. They would have to show other indicia of economic activity in the United States, such as manufacturing plants, personnel, research and development, etc.

Also the ITC cases, unlike the district court cases, are very rapid. They are usually completed within 15 18, 19 months to reach a decision versus in the district court cases. It usually takes at least two to three years to get some resolution. So those are the significant differences.

HUW EVANS: I'll see if there's one more you can mention as well, Bill. Anything else?

BILL NEEDLE: Sure. Saving the best for last. It's one of the differences I consider to be exceptional and dear to my heart is this whack a doodle component of an ITC proceeding. And that is that there is a staff attorney from the Office of Unfair Import Investigations that is attached, if you will, to almost all of the cases that go through the ITC.

That staff attorney is considered to be a third party, a neutral third party. He or she is there to represent the ITC, and the public, and is active throughout the case. Sitting in depositions, questioning witnesses, present at the hearing, and can also question witnesses there.

And it is highly recommended that a potential complaint like GlassFree would actually contact and work with the staff attorney to make sure that the pleadings that they were going to initially file, the complaint, met the criteria for showing, for instance, that there was a domestic industry.

So all meetings with the staff attorney are considered to be confidential. But as you can see with regard to re investigation activities by the staff attorney, they are there to help both sides. So that is one of the most unusual aspects of an ITC case.

HUW EVANS: Certainly. Thank you. I mean, just very briefly, do you want to just touch on damages and perhaps also just cover off the point that we sometimes hear about the so-called triple damages in the US as well?

BILL NEEDLE: The damages, in this case, are in the ITC case-- excuse me, the district court case-- excuse me, are the same as in most jurisdictions. They're based either on the lost profits of the plaintiff or a reasonable royalty.

However, the icing on the cake in the US District Court matters is that the court in its discretion can triple those damages if it finds that there was an exceptional case. And it also can award attorney's fees.

But in the attorney's fees situation, the statute says they're awarded to the prevailing party which means that if the plaintiff was a bad actor and the court felt that this case was trivial and should not have been brought, then the defendant who might have won the case-- who had won the case could get his or her attorney fees.

HUW EVANS: Thanks, Bill. That's all helpful. And we can still lie awake at night worrying about willful infringement and triple damages. But Alex, certainly, we don't see anything like the ITC in the UK. And so far, we've been looking at the process patent for the making of the screens. But of course, we shouldn't forget the patents relating to the antennae technology. Alex, how would you suggest we could deploy those?

ALEX BRODIE: Thanks, Huw. Yeah, this is a really useful portfolio because it's looking at standard essential patents and the uninitiated standard essential patents are patents where if you're working a standardized technology, then you're bound to be infringing the patent because it's essential to the standard. So the UK is particularly good forum for these sorts of disputes. Because if you're held to be infringing a valid essential patent, then the defendant immediately has a choice.

And the choice is elect the usual patent remedies so permanent injunction, payment of damages, typically based on a reasonable royalty. Account profit costs interest, that kind of thing. And crucially, those remedies go back six years in terms of financial compensation.

Or the defendant gets to choose whether to take a FRAND license. And if it's the FRAND license, then you're looking at full recovery for past, which is a powerful remedy and under the Unwired Planet action, that the FRAND license can be global in scope. So what I would say is, that's why you want to be in the UK because you've got this global FRAND license opportunity available to you.

And just picking up on a couple of things the others have said, permanent injunctions at the end of a trial in the UK were the defendants to elect that, they are a discretionary remedy but they pretty much follow as a right. And you don't need to consider things like urgency or compensate by financial payments or anything like that.

HUW EVANS: Thanks, Alex. I mean, it's interesting that point about the English court making those global FRAND determinations. But Ivy, I understand the Chinese courts will do the same too.

IVY LIANG: Oh, yes. That's right. And I would say that in 2021, the intellectual property tribunal of the Supreme People's Court upheld a first instance ruling stating that the Chinese courts also have jurisdiction over the licensing rates for standard essential patents while. So that's the position for the Supreme People's Court here.

HUW EVANS: Great. Thank you. So we've got a little bit of healthy competition here. Now, is there one category of parties that may favor one jurisdiction over another? And I'll ask Alex that one first.

ALEX BRODIE: Thanks, Huw. And as you rightly identify as any two jurisdictions in the world at the moment, they'll settle you a global FRAND license. That may change but currently it's China or the UK. To date, the trend has been that patentees bring their cases before the UK courts and implementers before the Chinese courts.

And that may give you some indication of how the industry itself perceives the two jurisdictions. But that trend is starting to move a little. For example, there's a recent case, Kigen and Thales, where Kigen is the implementer and it's brought the rate setting case before the UK courts. So we will see.

IVY LIANG: Yeah, very interesting to know that Alex. And Huw, I tend to agree with Alex. And generally speaking, due to different levels. My opinion is that due to the different levels of economic development and differences in IP legal regimes in different countries, it is definitely possible that patentees and implementers may choose to bring actions in different countries to seek global licensing decisions. Indeed, it would be very interesting to see how it goes.

HUW EVANS: Yeah. And I think that's probably these topics are going to just run and run and they're issues that probably deserve a webinar of their own. So we'll leave it there for the moment. But just going back to Alex, assuming that GlassFree do go for that SEP Fran determination in the UK, would you be concerned at all if there were other pending infringement cases that were being-- they were bringing as well, say, in respect of the rolling process patent or the non set antennae patents?

ALEX BRODIE: No, I wouldn't be concerned at all, Huw. Even where the other patent cases, the non SEP FRAND patent cases read on to the same products. And the reason for that is firstly, patents and national rights, and they can be enforced if you use in sense without the consent of the patentee. There's nothing. And the court rules of the patent acts that say unless you've got a parallel set FRAND case.

So first of all, no concerns. And also, until the implementer has in fact entered into the license, no license exists. So it may be that the judge gets a bit annoyed with you and you progress risk on costs in a relevant jurisdiction. Or you might be giving the implementer a good case to seek a stay of proceedings from relevant courts. But Huw, yourself, I don't think you're at any risk at the moment of being held to be anti-competitive in UK.

And the courts have recently considered this very issue actually in Nokia and OPPO, where Nokia were asserting non SEPs as well as SEPs against the same products. And the judge did do a bit of grumbling about the use of court time and strongly encourage the parties to resolve their dispute commercially. But crucially, didn't stop the cases and didn't make any findings that Nokia in any way misbehaving or acting improperly so no concerns.

HUW EVANS: OK. Thank you for that. And we've actually now heard from all of our panel on various features of their respective jurisdictions. But of course, in Europe, from the 1st of June will have a new supranational court in the form of the UPC. In terms of industrial remedies we may see, I wonder, Celine, if you could cast some light on that for us?

CELINE BEY: Yes, Huw, of course. Yes. As you said, you are not less than three months away from the launch of this new supranational court in Europe. So it's true that we are really excited about it here in Europe. And so from 1st of June, in our scenario, GlassFree will have the choice to litigate either before the French court or to enforce their European Patent before this new unified patent court.

So before the UPC, the rules are strongly inspired by the European directives. So all remedies available today in different European jurisdictions, including France and mentioned earlier, will be available before the UPC. Including the [NON-ENGLISH] because the UPC was strongly influenced by the [NON-ENGLISH].

So [NON-ENGLISH] could be conducted in any member states as from the 1st of June, so not only in France. And what will change with the UPC, of course, is that compared to current patent proceedings where GlassFree would have to go and litigate in every member state where there are acts of infringement, France, if they were Germany, the Netherlands.

With the UPC, they will be able to litigate in only one country, before one court, and obtain a remedy-- remedies, injunction, damages that will apply and be enforceable before all the member states, that would have at the time of the decision ratified the agreement.

So today, there are 17 member states that have ratified the UPC. So as from 1st June, will be able to get for patentees, injunction in only one proceeding. So for sure, it will be more time and cost efficient for the patentees that what we know today in Europe.

HUW EVANS: Thanks, Celine. And I have to say, still with a heavy heart that is, of course, that the UK is out of the UPC. And that's very disappointing for us personally here. But Alex, can you shed any bright light for us? What are the UK courts doing to try and make themselves look more attractive?

ALEX BRODIE: Well, I share your misgivings, Huw. But actually, the position in the UK is pretty healthy. We've got a new head of patents court, Judge Mr. Justice Meade. And he is a reform minded judge. He's focused on speedy cost efficient justice. So in addition to the full patents court forum, we've also got the shorter trial scheme for more streamlined cases. That's going to be quicker and cheaper.

There's cost capping and budgeting proposals available to parties should they wish to do that. So that can keep the costs under control. And further focus on strict timelines. And that's all in addition to the long established intellectual property enterprise court or IPEC. And also in recent years, it's been quite encouraging to see the courts embracing a creative approach to relief. To craft relief so better fits the situation before it. And I think that's a big advantage of common law jurisdiction.

So for example, looking at a case and going, "Yeah, pre-action disclosure is appropriate here." Or new forms of injunctive relief, such as the FRAND injunction. Summary assessments of very significant sums to enable cost recovery to occur faster. Mr. Justice Meade was to put strict time limits on one form of order hearings must take place and other steps within the litigation. So we have a reforming judge heading up the UK courts and he's got a firm eye on the jurisdiction remaining attractive and competitive within the advent of the UPC. So things are looking good.

HUW EVANS: OK. Thank you for that, Alex. Now, we've got just a few minutes left and I would like to go to members of the panel, well, two in particular who have been quiet for the last 10 minutes or so just to see if they have any final comments as to global enforcement strategy. They may recommend for last three having heard what they've heard this afternoon. So Nelson, I'm going to pick on you first.

NELSON GODFREY: Yeah, great. Thanks very much, Huw. So certainly, I think as one might gather from the way the scenario has been constructed, I think this matter certainly merits a global enforcement strategy. While FranCan is based in Canada, given the many jurisdictions involved and the different procedures and measures that are available in different jurisdictions, and we've discussed today, proceeding only one jurisdiction might lead your patent holder with much more limited remedies that might otherwise be available.

And so while several the individual jurisdictions we've discussed have attractive aspects, the best results would likely be obtained from a global strategy and perspectives from lawyers in the different jurisdictions to discuss all the measures available. So it seems to me here that a good approach would be to go through early discovery procedures such as the [NON-ENGLISH] procedure in France.

Assess the volume of infringing products that may be relevant in different jurisdictions, assess the remedies and options available, of course, with your discovery evidence in hand and in consultation with your experts. And then tailor your enforcement measures accordingly.

HUW EVANS: Thank you for that, Nelson. I couldn't put that better myself. But I would like to give the final word on this actually to Bill. So you've heard some systems from up North with your colleagues in Canada and some systems from over the seas as well. I don't know whether you've got some final comments for us.

BILL NEEDLE: Well, two things stand out. One is with regard to the safety operation that Celine mentioned in France. It seems like the bailiff and maybe the closest thing that I've heard to the staff attorney, which I still go back to for the ITC as far as third party being involved in the case.

Obviously, the bailiffs and the French action is doing something entirely different. But there is that third party involved. And then the AMR that Ivy mentioned in China sounds very relevant and very closest of proceeding to the ITC that I've heard. So those are two takeaways for me.

HUW EVANS: OK. Thank you, Bill. So that actually more or less concludes our webinar this afternoon. I want to first of all thank Ron for the introduction and all our panelists. Now, the full video of the webinar will be posted on our website within the next week if you want to hear any aspect again or if you want to share it with any colleagues within your organizations.

Our next webinar in this series is set for 26th of April, and we'll be looking at brands and patents in the metaverse. So look out for the invitation for that which should be going out soon. Now, just leads me then to thank everyone who's attended this afternoon for your kind attention and for taking the time as we continue to explore the life cycle of a smart idea. Thank you very much, everyone.