IP Enforcement in Europe (Germany and UK)

Thomas V. Miller Vice President – Intellectual Property

Motorola Mobility LLC, a Google company

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Current European Patent System European Patent Convention (EPC) allows for

centralized patent application before EPO There is no unitary patent that has multi-

jurisdictional effect – just a bundle of national patents • Must file suit in each separate EU member states to

enforce rights Significant differences between EU member

states • Litigation processes • Expertise of judges • Infringement and validity findings

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Where to File? Must have clear strategy and goal

• Injunction v. Monetary • Defendant’s market share • Patentee’s market share - backlash Key Factors in selecting a jurisdiction

• Speed • Strength of infringement and validity positions • Costs of litigation • Need for discovery – detectability • Technical complexity • Expertise of courts on patent issues • Ability to obtain an injunction

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German Patent Litigation Infringement Courts

• Munich, Mannheim, and Düsseldorf courts most active for patent actions

Process • Infringement only (nullity proceedings separate) • Stays pending nullity proceedings are rare Timeline

• Time to Trial/Hearing: • Munich: 4-6 months to prelim hearing; 9-10 months to final hearing • Mannheim: 9-10 months to final hearing • Düsseldorf: 15+ months to final hearing

• Final Judgment: 2-3 months after final hearing

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German Patent Litigation Pleadings

• Detailed written complaint (must lay out case) • Briefing extremely important Discovery

• No discovery Hearing (trials)

• Specialized IP Judges (3 Judge panels) • Written expert reports are rare • No cross examination of experts (but court can ask

questions if expert is present at hearing) • 2-3 hours

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German Patent Litigation Recovery

• Broad injunction restraining infringement of patent • Stay of judgment only granted if court believes high likelihood

claims are invalid (80%+ convinced) • Patentee must post bond to enforce injunction

• Patentee must stop selling product and marketing feature • Patentee must destroy product within its possession in Germany (if

apparatus claims found to infringe) • Patentee must send letters to customers seeking return of product

• Separate phase to determine monetary relief • Rendering of accounts

• Costs • Losing party must pay other party’s fees and costs

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UK Patent Litigation Two Courts

• High Court – more complex and higher value • Patent County Court (new) – less complex and lower

value Process

• Infringement and validity in same proceeding • Stays pending invalidity finding rare Timeline

• Time to Trial: • High Court: 9-18 months to trial • Patent County Court: 6-9 months to trial

• Final Judgment: 2-3 months after trial

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UK Patent Litigation Pleadings - Fairly brief Discovery

• Primarily document discovery • Each party must disclose documents which adversely affect or

support issues in case • No privileged documents • Must apply to court to seek further interrogatories, documents

• No depositions • Discovery significantly limited in Patent County Court Trial

• Bench trial (no jury) • Role of barristers and solicitors • Expert testimony permitted (cross examination) • 4-5 days

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UK Patent Litigation Recovery

• Separate phase to determine relief • Broad injunction restraining infringement of patent

• Typically granted (but not automatic) • Factors against injunction

(1) Injunction is oppressive (2) Patentee only interested in money (using injunction at leverage)

• Damages • Lost profits • Royalty basis-comparators • Patents County Court – limited to £500,000

• Costs • Winning party typically recovers 60-70% of costs • Patents County Court – limited to £50,000

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Summary – Selecting a Jurisdiction Speed

• UK and Germany (Munich/Mannheim) are similar Strength of infringement and validity positions

• Germany favored in strong infringement and weaker validity positions because of bifurcation of issues

Costs of litigation • Germany is less expensive Need for discovery – detectability

• UK allows for exchange of documents Technical complexity

• UK permits greater use of expert to explain technology Expertise of courts on patent issues

• UK and Germany both have experienced patent judges

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Summary – Selecting a Forum Ability to obtain an injunction

• Germany allows immediate enforcement of judgment after patentee posts bond unless high likelihood claims are invalid

• UK will review whether injunction is being used as leverage to just obtain money

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Future – EU Unitary Patent System European Parliament approved new Unitary Patent

System on December 11, 2012 • Patentees have option to given unitary effect across all

participating EU member states • 13 EU member states must ratify (could happen in 2014) Unitary Patent System

• Exclusive jurisdiction over litigation, including injunctive and revocation

• Specialized trial courts of first instance • Central division in at least Paris, Munich, London • Local and regional division in member states • Trial courts can grant pan-EU relief

• Specialized Court of Appeal in Luxembourg • Patentees can opt out of the new system with existing patent

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