Friday, September 4, 2015

Friday Miscellany: Damages Issues in Canada, Validity Challenges in France, Interim Injunctions in India

1.  Norman Siebrasse has published three very interesting recent posts on damages issues.  On August 28, he published a short post titled Deduction for Fixed Costs in an Accounting Denied, discussing a recent Federal Court (Canada) case denying a deduction for the infringer's fixed costs.  As Professor Siebrasse notes, "On the one hand, fixed costs would have been incurred in any event and so are not costs caused by the infringement, but on the other hand a business cannot run profitably without covering its fixed costs."  This is a tough issue, as I discuss in my book (see pp. 206-08).  Perhaps most famously, the German Federal Supreme Court in the Gemeinkostenanteil decision of 2000 concluded that fixed costs should not be deducted (see my book pp. 271-72).  It will be interesting to see if Canada's Federal Supreme Court takes up the issue, which Professor Siebrasse believes they will do at some point.  

In addition, Professor Siebrasse published two posts (here and here) on the recent Apotex Inc v Merck & Co, Inc / Lovastatin Damages  matter, which I also blogged about here.  Professor Siebrasse discusses the question of whether a noninfringing alternative, which the court has now recognized is relevant tot he recovery of lost profits, must be one that (1) was instantaneously available on the market, and (2) the infringer actually would have used (as opposed to doing something else with its resources).  I think his analysis of both issues is correct.

2.  Last month Isabelle Romet published a post on Kluwer Patent Blog titled Patent Revocation Actions in France:  Which Slot?, discussing some recent French decisions two of which I previously blogged about (see here) addressing the statute of limitations for challenging patent invalidity under French law.      

3. The June 17, 2015 issue of Bloomberg BNA's World Intellectual Property Report includes an article by Madhur Singh titled Indian patent attorneys Question frequency of Injunctions; Call for Speedier Resolution of Cases (available here, but behind a paywall).  The article discusses some of recent cases and presents differing views on whether Indian courts are granting interim injunctions too readily.  The author cites complaints on the part of some practitioners involving, among other things, the availability under some circumstances of ex parte and quia timet injunctions, as well as forum shopping, the length of time that some injunctions remain in place pending trial, and the "widely varying standards" in determining whether to grant an injunction.  According to Swaraj Barooah (editor of the SpicyIP Blog), although the criteria for granting interim injunctions are the familiar ones (prima facie case, likelihood of irreparable injury if the defendant is not enjoined, balance of conveniences, and the public interest), these criteria have not "been conceptually clarified by Indian courts."  Barooah also states that "a majority of patents that have been challenged in recent years have been revoked, and argues that "in cases where the patent has been challenged, the interim phase should be dismissed and the case should proceed to trial."  On the other hand, some practitioners defend the current system, stating that injunctions bring defendants to the bargaining table and may be necessary given the relatively short patent term, and noting some recent instances in which litigants have been able to speed the process along.

For previous discussions of interim injunctions in India on this blog, see here and here.  

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