Intellectual Property Litigation Research Articles

Industrial Property Arbitration in Turkey: An Analysis in Comparison with Swiss Law

Abstract Given the difficulties in international intellectual property litigation, such as jurisdictional issues, choice of law, and recognition and enforcement of foreign judgments, arbitration and other dispute resolution mechanisms may be better tailored to resolve intellectual property disputes. Under Swiss law, these disputes are arbitrable to such an extent that arbitral tribunals seated in Switzerland and state courts are equally competent to rule on the validity of industrial property rights. This paper assesses the arbitrability of industrial property disputes under Turkish law, under which there is neither a specific statutory provision nor an official decision regarding their arbitrability. The paper concludes that disputes arising from industrial property rights should be considered arbitrable under Turkish law, provided that for disputes over the validity of industrial property rights, the arbitral tribunal decides on the industrial property rights’ enforceability and the arbitral award has an inter partes effect. Although submitting industrial property disputes, especially those on employee inventions, to arbitration may in certain cases not be accepted due to the intention to protect the weaker party, employees are obliged to resort to arbitration for the resolution of their employee invention disputes under Turkish law. This paper also examines the resolution of employee invention disputes by way of arbitration from a comparative perspective.

A SAD New Category of Abusive Intellectual Property Litigation

A SAD New Category of Abusive Intellectual Property Litigation

A Review of the Improvement of the Expert Evidence System under the Criminal Procedure Act -Focused on the Case of Intellectual Property Litigation-

A Review of the Improvement of the Expert Evidence System under the Criminal Procedure Act -Focused on the Case of Intellectual Property Litigation-

Intellectual property infringement by foreign firms: Import protection through the ITC or court

This paper examines intellectual property litigation as a method of protection from patent-infringing imports. Claims against patent-infringing imports entering the United States may be filed before the International Trade Commission (ITC) or in district court. The ITC applies injunctions (import prohibitions) that would seem to provide more protection from infringing imports than the standard license fee remedy in court. Settlements prior to legal adjudication are common in both venues. Using a model with Nash bargaining and Cournot competition, we show that an ITC filing may restrict imports by less than in court. This result tends to apply if product differentiation is high and the size of the patented cost-reducing innovation is large.

Request for information as an auxiliary measure in intellectual property litigation concerning electronic works and the protection of personal data

The purpose of introducing a new procedure on intellectual property into the Code of Civil Procedure was to ensure the efficiency of the procedure and to develop uniform practices. At the same time, the solutions adopted so far in Directive 2004/48 / EC on the enforcement of intellectual property rights caused doubts and was subject of criticism. According to this solution, the competent judicial authorities may order that information on the origin and distribution networks of the goods or services which infringe an intellectual property right be provided by the infringer or any other person. It is very important to assure such protection especially in case of electronic works. The regulation of a uniform request for information in the Code of Civil Procedure has not been interpreted yet, as obtaining information on the scope of infringements simultaneously discloses information about third parties. Hence, it is justified to analyze whether it is acceptable to disclose personal data of electronic works in the light of the Directive, the jurisprudence of the Court of Justice and the current new regulation. The regulation of a uniform request for information in the Code of Civil Procedure has not been interpreted yet, as obtaining information on the scope of infringements simultaneously discloses information about third parties. Hence, it is justified to analyze whether it is acceptable to disclose personal data of electronic works in the light of the Directive, the jurisprudence of the Court of Justice and the current new regulation.

Renewed Interests in Geography: Implications for Innovation and Firm Strategy

Researchers have made significant progress in understanding the role of geography in innovation and firm strategy (e.g., Alcácer & Chung, 2007; Audretsch & Feldman, 1996; Porter, 1998; Saxenian, 1996; Shaver & Flyer, 2000; Sorenson and Baum, 2003). Recently, scholars have shown renewed interest in understanding how geography affects inventors and firms, paying increasing attention to its relation to issues such as gender inequality (Ghani, Kerr & O’Connell, 2013; Sorenson & Dahl, 2016), regional dynamics (Safford, 2009; Wang, Madhok & Li, 2014), intellectual property litigation (Alcácer, Beukel, & Cassiman, 2017; Beukel & Zhao, 2018), and political uncertainty (Cerqueiro, Mão-de-Ferro, & Penas, 2019; Jens, 2017). This symposium aims to extend this conversation by including four empirical studies that explore the following questions: 1) How does geography affect the inventor gender gap (i.e., female vs. male inventor activity)? 2) How do the dynamics of industry clusters (i.e., the patterns of growth or decline) affect the novelty of firm innovation? 3) Why is patent litigation so geographically concentrated across countries? and 4) How does political risk affect firms’ decision to locate in the center of power (i.e., the capital city)? We expect that this symposium will encourage cross-fertilization of ideas between different literatures in management and between literatures in management and other fields. The Role of Location on the Inventor Gender Gap: Are Women Geographically Constrained? Presenter: Mercedes Delgado; Copenhagen Business School and MIT Presenter: Luca Gius; MIT Presenter: Myriam Mariani; Bocconi U. Presenter: Fiona Murray; Massachusetts Institute of Technology Cluster Dynamics, Employee Mobility, and Novelty of Firms’ Technological Innovation Presenter: Min Jung Kim; U. of Illinois at Urbana-Champaign Presenter: J. Myles Shaver; U. of Minnesota Why is Patent Litigation Geographically Concentrated? Presenter: Minyuan Zhao; Washington U. in St. Louis, Olin Business School Presenter: Shixiang Wang; Zhejiang U. Locating in the Center of Power: Washington DC Headquarters as a Political Strategy Presenter: Jing Deng; U. of Colorado, Boulder

Damages and Recovery of Profits in Intellectual Property Litigation before Italian Courts

Abstract The purpose of the article is twofold. At a more general level, it aims to illustrate how the changes in intellectual property litigation adopted in Italy since 2005, particularly in connection with the setting of damages suffered by rights holders and the recovery of profits obtained by infringers, have been remarkably successful in increasing the overall efficacy of the protection system. At the same time, it focuses on one particular feature of the system, the newly introduced recovery of profits from innocent infringers, arguing that the adoption of this second limb of recovery is questionable from a policy viewpoint and introduces a number of difficulties in the enforcement process, several of which transpire to be intractable. Some other aspects of the actions, both with regard to damages and recovery of profits, adopted in the recent Italian legislation are examined against the background of the EU enforcement directive and of TRIPS, with a view to highlighting both the strong points and the incongruities of the rules.

Intellectual Property Infringement by Foreign Firms: Import Protection Through the Itc or Court

This paper examines intellectual property litigation as a method of protection from patent-infringing imports. Claims against patent-infringing imports entering the United States may be filed before the International Trade Commission (ITC) or in district court. The ITC applies injunctions (import prohibitions) that would seem to provide more protection from infringing imports than the standard license fee remedy in court. Settlements prior to legal adjudication are common in both venues. Using a model with Nash bargaining and Cournot competition, we show that an ITC filing may restrict imports by less than in court. This result tends to apply if product differentiation is high and the size of the patented cost-reducing innovation is large.

From litigation to innovation: Firms' ability to litigate and technological diversification through human capital

AbstractResearch SummaryWhen firms diversify technologically, they often acquire human capital from competitors. Legal challenges emerge when intellectual property (IP) safeguards are involved. We examine a firm's ability to initiate IP litigation or protect against litigation (i.e., litigation ability) as an antecedent to its technological diversification. We demonstrate that an unexpected reduction in firm's litigation ability is associated with a temporary decline in its entry into new technological domains. Furthermore, we find that the negative effect is stronger when the firm's existing inventors cannot be easily utilized in the new domain or when interfirm mobility in the new domain is low. These findings extend prior work by highlighting a proactive role of the firm's litigation ability that spans beyond protecting the firm's existing IP.Managerial SummaryTo diversify successfully, the firm often needs new knowledge that can be acquired by hiring new research personnel. However, these inventors may come from competitors and their knowledge may be protected by IP safeguards. We examine how the firm's ability to initiate and protect against IP litigation influences its technological diversification. We find that an unexpected reduction in a firm's ability to litigate temporarily reduces its expansion. The negative effect is magnified when considering expansion into domains where the firm's existing inventors cannot be utilized or where the intermobility of inventors is low. Our findings suggest that the ability to both protect IP and avoid litigation are important factors in a firm's diversification strategy.

Imitator to Innovator: China’s Two-Pronged Approach to Intellectual Property

In a globalized world where the free-flow of creative thinking and new ideas carries a price tag, intellectual property (IP) plays a pivotal role. To lay ground rules and standardize intellectual property rights, members of the global community have devised international bodies like the World Intellectual Property Organisation (WIPO) and agreements, such as the Trade-Related Aspects of Intellectual Property Rights (TRIPS), to protect and monopolize these ideas in the form of intellectual property laws. However, countries like China, for the longest time, have deviated from a normative path to a self-serving ideal, and have counterfeited commodities while lagging in ensuring stringent intellectual property laws. Known as the imitator or copycat for the longest time, China has slowly developed itself into an innovator in multiple fields utilizing its dual approach to intellectual property. The need to slowly build trust and reputation among foreign investors as Foreign Direct Investment (FDI), a major chunk of China’s economy is dependent upon it. Thus to achieve this idiosyncratic aim, the normative approach towards the Intellectual Property Litigation System is appropriated by China. Through this mechanism, China has been able to portray a more welcoming stance to the western world in search of new investment opportunities. Meanwhile, the true nature of China's renewing IP policy stems from a self-centric and protectionist place. Understanding China from a single point-of-view would deem weak, as they have crafted a very sound portrayal accepting a standardized intellectual property framework. The article identifies both normative and idiosyncratic approaches by China in the development of their Intellectual Property Framework.

Patent network analysis in agriculture: a case study of the development and protection of biotechnologies

ABSTRACT Plant biotechnology has consolidated itself as a radical agricultural innovation, boosting the patenting activities of universities, biotechnology firms, and seed & agrochemicals corporations. We use patent citations networks to study the appropriability efforts that affected the emergence and dynamics of the technological trajectories (TTs) of the genetically modified organisms. Our methodological contribution consists of combining new procedures to identify TTs with the study of the characteristics of scale-free networks. This paper also proposes legal enforcement indicators that attempt to assess the economic importance of patents that make up citation networks. We identify two TTs that include patents on biotech traits and enabling technologies. These patents were both effective in collecting royalties from farmers and deterring potential entrants, particularly through intellectual property (IP) litigation. The results also show that these litigated patents have impacted merger and acquisition activity in seed industry. We conclude that IP lawsuits may have contributed to delaying the R&D investments of new entrants, thus preserving the monopolistic position enjoyed by the pioneering company and restricting the scope of crop innovations.

IP Litigation in United States District Courts: 1994 to 2014

This article undertakes a broad-based empirical review of Intellectual Property (IP) litigation in United States federal district courts from 1994 to 2014. Unlike the prior literature, this study analyzes federal copyright, patent and trademark litigation trends as a unified whole. It undertakes a systematic analysis of more than 190,000 individual case filings and examines the subject matter, geographical and temporal variation within federal IP litigation over the last two decades. This article makes a number of significant contributions to our understanding of IP litigation. It analyzes time trends in copyright, patent and trademark litigation filings at the national level, but it does much more than simply count the number of cases; it explores the meaning behind those numbers and shows how in some cases the observable headline data can be positively misleading. Exploring the changes in the distribution of IP litigation over time and their regional distribution leads to a number of significant insights, these are summarized below. Just as importantly, one of the key contributions of this article is that it frames the context for more fine-grained empirical studies in the future. Many of the results and conclusions herein demonstrate the dangers of basing empirical conclusions on narrow slices of data from selected regions or selected time periods. Some of the key findings of this study are as follows: First, the rise of Internet file-sharing has transformed copyright litigation in the United States. More specifically, to the extent that the rate of copyright litigation has increased over the last two decades, that increase appears to be entirely attributable to lawsuits against anonymous Internet file sharers. These lawsuits largely took place in two distinct phases: the first phase largely consisted of lawsuits seeking to discourage illegal downloading; the second phase largely consists lawsuits seeking to monetize online infringement. Second, in relation to patent litigation, the apparent patent litigation explosion between 2010 and 2012 is something of a mirage; however there has been a sustained patent litigation inflation over the last two decades the extent of which has not been fully recognized until now. The reason why this steady inflation was mistaken for a sudden explosion was that the true extent of patent litigation was disguised by permissive joinder.Third, in relation to the geography of IP litigation, it appears that filings in copyright, patent and trademark litigation are generally highly correlated. The major exceptions to that correlation are driven by short term idiosyncratic events in copyright and trademark litigation — these are discussed in detail — and by the dumbfounding willingness of the Eastern district Texas to engage in forum selling to attract patent litigation. The popularity of the Eastern District of Texas as a forum for patent litigation is a well-known phenomenon. However, the data and analysis presented in this study provides a new way of looking at the astonishing ascendancy of this district and the problem of form shopping in patent law more generally.

New Evidence on Determinants of Intellectual Property Litigation: A Market-Based Approach

We contribute to the economic literature on patent litigation by taking a new perspective. In the past, scholars mostly focused on specific litigation cases at the patent level and related technological characteristics to the event of litigation. However, observing intellectual property (IP) disputes suggests that not only technological characteristics may trigger litigation suits, but also the market positions of firms, and that firms dispute not only over single patents but often over portfolios. This paper examines the occurrence of IP litigation cases in Belgian firms using the 2013 Community Innovation Survey with supplemental information on IP litigation and patent portfolios. The rich survey information regarding firms’ general innovation strategies enables us to introduce market-related variables such as sales with new products, as well as sales based mainly on imitation and incremental innovation. Our results indicate that when controlling for firms’ IP portfolios, the composition of sales in terms of innovation and imitation has additional explanatory power regarding litigation propensities. Firms with high sales from innovations are more likely to become plaintiffs in court. Contrastingly, firms with high sales from incremental innovation and imitation are more likely to become defendants in court and, moreover, are more likely to negotiate settlements outside of court.

Intellectual property jurisdiction strategies

‘On the surface of the earth all places are not equivalent; there are some that you must flee, and others that must be the object of your research; all must be perfectly known to you’.1 Before engaging in any litigation each practitioner should ask himself where and how to initiate a dispute. The choice of jurisdiction will have an impact on the applicable law, which itself can be an essential element to win a case. It will determine the litigation venue, the language of procedure as well as logistics such as translation of documents which are also essential for comfort and time and cost management. All in all, the choice of jurisdiction might be decisive for the plaintiff and the defendant if they know how to use it to their advantage. The book Intellectual Property Jurisdiction Strategies explores the different procedural strategies when rightholders and practitioners are litigating on the basis of a national or a unitary title. With the development of complex intellectual property portfolio strategies involving several titles in different countries, jurisdiction tactics have become highly topical and timely for intellectual property litigation in Europe and elsewhere. With the creation of the European Union Trade Mark and Community Design systems, practitioners in the European Union have been used for more than a decade to set up strategies depending on the unitary or the national nature of the rights at issue. The creation of the unitary patent and the Unitary Patent Court will also expand the playing field of patent practitioners and will offer them new parameters to explore innovative litigation strategies. Already today, one of the most striking example of jurisdiction strategies has occurred in the field of patents, notably in the dispute between Apple and Samsung, with Samsung successfully choosing to bring an action for a declaration of non-infringement against Apple in the UK, where it had domiciliation and where courts have unrestricted jurisdiction.

Research and Enlightenment of Intellectual Property Insurance

Insurance is a tool for diversifying risks and reducing losses, and is also a reasonable means for risk management under market economy conditions. In daily life, individuals and companies are also exposed to infringement or litigation risks when they exercise intellectual property rights. This will bring huge economic burdens to individuals or businesses. Currently, intellectual property infringement cases in China are on the rise every year. Intellectual property insurance is an insurance system established for the purpose of infringement of intellectual property rights, compensation for intellectual property litigation costs and damages. At present, intellectual property insurance is practiced in many countries. The author introduces foreign intellectual property insurance legal system such as United States, Britain and Japan, also the present situation of intellectual property insurance in China, especially a series of practices in intellectual property insurance field in China. Therefore, under this background, the studies and analyzes current situation of intellectual property insurance of these countries are necessary for China to establish a legal system, which will help China to form a protective system of intellectual property rights of legal relief, administrative arbitration and economic compensation, it has some advantages, it should be as an important part of China’s intellectual property strategy.

Why the Ninth Circuit's <I>Antonick v. Electronic Arts</I> Case Is an Ideal Vehicle for Addressing the Circuit Split Over Admissibility of Expert Testimony in Software Copyright Cases

This paper contends that unless the Supreme Court grants certiorari in Antonick v. Electronic Arts, the Ninth Circuit’s bar on admissibility of expert testimony in software copyright cases will result in absurd trial procedures in the most significant region for software development and litigation. In a shocking departure from the decisions of every other circuit that has confronted software copyright infringement litigation, the Ninth Circuit reaffirmed and applied an anachronistic bar on expert testimony—originating in Krofft Television Prods., Inc. v. McDonald’s Corp., 562 F.2d 1157, 1164 (9th Cir. 1977)—to all copyright disputes, including those involving highly technical works. As the Oracle v. Google and Cisco v. Arista Networks litigations demonstrate, intellectual property disputes relating to computer software often involve both patent and copyright infringement claims. Therefore, the Ninth Circuit’s Antonick ruling creates a case management nightmare. Patent case management appropriately allows jurors to learn the technology with the aid of expert witnesses. But under the Ninth Circuit’s Antonick holding, the district judge will need to empanel separate juries to hear the copyright issues lest they be “tainted” by hearing competent testimony from qualified experts about the contents of the computer code. Software intellectual property litigation will only increase as the digital revolution unfolds. The Antonick case provides an ideal vehicle to correct the Ninth Circuit’s “nutty,” anachronistic, and illogical interpretation of copyright law.

Nash Bargaining Solution in Intellectual Property Litigation; VirnetX and Analysis of the Court's Decision

I explain the Nash Bargaining Solution and its generalizations. I discuss their pros and cons in the context of intellectual property litigation. I then provide a description and analysis of the Court’s decision in VirnetX from this perspective.

Intellectual Property Litigation at the Court of Session: A First Empirical Investigation

Scotland is said to enjoy an economy rich in intellectual property (“IP”), but reported decisions from the Court of Session in IP matters are rare. This article analyses a new dataset of Court of Session IP actions compiled from court records for the period from 2008 to 2014, alongside a survey and interviews conducted among Scottish legal practitioners working in the field of IP. The research provides insights into the Court of Session's IP caseload, parties and their sectors, the subject matter of claims and remedies sought. This article discusses key themes emerging from the research data against the broader context of civil justice reform and jurisdictional competition between the Scottish, English and other courts.

API Copyrightability Bleak House: Unraveling and Repairing the Oracle v. Google Jurisdictional Mess

Like Dickens’ tale of Jarndyce and Jarndyce, the Oracle v. Google litigation has droned on for what seems like generations in the software industry with no clear end in sight. The litigation is on an especially wasteful and perilous course due to its peculiar jurisdictional posture. As a result of patent infringement allegations lodged in the complaint, the Federal Circuit has exclusive appellate jurisdiction notwithstanding that neither party appealed the rejection of the patent causes of action. Hence, the only issues presented to the Federal Circuit were copyright issues governed by Ninth Circuit, as opposed to Federal Circuit, jurisprudence. The Federal Circuit misinterpreted Ninth Circuit (and general) copyright law, thereby steering the case into a needless fair use retrial. Congress did not provide a mechanism short of Supreme Court review for ensuring that the Federal Circuit properly interpreted regional circuit law. After tracing the history of the Oracle v. Google litigation and critiquing the Federal Circuit’s analysis, this article evaluates a range of potential reforms to the appellate jurisdictional mess presented by software intellectual property litigation and proposes several solutions to this Dickensian predicament.

API Copyrightability Bleak House: Unraveling and Repairing the <I>Oracle v. Google</I> Jurisdictional Mess

Like Dickens’ tale of Jarndyce and Jarndyce, the Oracle v. Google litigation has droned on for what seems like generations in the software industry with no clear end in sight. The litigation is on an especially wasteful and perilous course due to its peculiar jurisdictional posture. As a result of patent infringement allegations lodged in the complaint, the Federal Circuit has exclusive appellate jurisdiction notwithstanding that neither party appealed the rejection of the patent causes of action. Hence, the only issues presented to the Federal Circuit were copyright issues governed by Ninth Circuit, as opposed to Federal Circuit, jurisprudence. The Federal Circuit misinterpreted Ninth Circuit (and general) copyright law, thereby steering the case into a needless fair use retrial. Congress did not provide a mechanism short of Supreme Court review for ensuring that the Federal Circuit properly interpreted regional circuit law. After tracing the history of the Oracle v. Google litigation and critiquing the Federal Circuit’s analysis, this article evaluates a range of potential reforms to the appellate jurisdictional mess presented by software intellectual property litigation and proposes several solutions to this Dickensian predicament.