Global Enforcement

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Global Enforcement Exploitation of
Intellectual Property
David W. Hill January 23, 2007

• AIPLA IP Practice in Japan Committee

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GLOBAL PATENT LITIGATIONTHE BIG PICTURE AND
CHANGING LANDSCAPE
2001 China joins WTO Almost all jury trials More
cases settling Global courts becoming more
sophisticated/ Specialty trial courts Still no
global data WHERE IN THE WORLD TO SUE?
1975 No jury trials No CAFC No ITC No global
data WHERE IN THE U.S. TO SUE?
2006 Development of global win rate data for
30 most IP-rich countries and focus on 10 most
litigious
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GIP WIN-RATE DATA HAS GENERATED MUCH INTEREST AND
HAS ESTABLISHED VALUE IN

• Strategic global forum-shopping for patentees and
  alleged infringers
• Case valuation (determining case value for
  patentees and alleged infringers)
• Informing foreign-filing strategies
• Client development and marketing

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WHERE IN THE WORLD TO SUE?

• Four key questions for any litigant in any
  country
• How much will it cost?
• How long will it take?
• What will we get?
• How strong is our case? (what are our chances
  of success?)

GIP Project developed 4 tools to answer these 4
questions for the GIP participating countries
using a hypothetical fact scenario
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COMPARATIVE PATENTEE WIN RATE CHART, 1997-2005,
FOR MOST LITIGIOUS COUNTRIES1
1A win is defined as a case where at least one
claim was found valid and infringed in a court of
first impression. 2Indicates number is estimate
based on discussions with GIP participants. 3285
IP infringement cases (2002-04 mixed data) (what
is best est. of patent cases for 1997-2005? Need
accurate answer.)
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10 MOST LITIGIOUS COUNTRIES WITH OF PATENT
LITIGATION FILINGS (1997-2004) AND MOST ACTIVE
COURT INDICATED
Netherlands 300 Hague
Switzerland 550 Zurich
11
9
Korea ? Daejeon (KIPO invalidity actions) Seoul
District Ct. inf.
Italy 1200 Milan
8
Canada 625 Toronto/Ottawa/Vancouver
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U.K. 721 London
China 10,552 Beijing First Intermediate
Peoples Court
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2
United States 20,241 C.D.Cal.
Germany 6,850 Dusseldorf
1
Japan 1623 Tokyo
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3
4
France 2,762 Paris (75 of patent inf. cases
Australia 316 Sydney
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• Notes
• Indicates number extrapolated from 1997-01 data
  currently being verified
• est. China data includes trial court
  infringement actions only, not APPA actions.
• Indicates estimate by GIP participant based
  on number of decisions because number of cases
  filed is not obtainable

Source Finnegan Henderson
Global Patent Survey
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Decision Tree Risk Analysis
Best case scenario for patentee/plaintiff
167.1 M injunction upheld patent portfolio
Willfulness source below
KorDSL U.S. Sales ? 162.5 M
((estimated by p. counsel)
68.5 C.D.Cal. jury win rate
Worst case scenario for patentee/plaintiff
litigation costs3.5 M no injunction
compromise existing licenses
Source Kimberly A. Moore, Empirical Statistics
on Willful Patent Infringement, G.W. Law School,
March 2004 73 - Willfulness decided
67.7 - Jury finds willfulness 23 - Judge
approves trebling 17 - Judge approves
2.5X 16 - Judge approves doubling 44 -
No enhancement (despite willfulness or no
willfulness found or willfulness not decided)
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GLOBAL PATENT ENFORCEMENT STRATEGIES

• IN THEORY no res judicata effect of litigation
  outcome in one country on litigation outcome in
  another country (limited collateral estoppel)
• IN PRACTICE leverage power of first litigation
  outcome to settle disputes globally/other
  jurisdictions
• SO? Develop patent enforcement strategies
  (where sue first) with leverage in mind
• HOW? Application of 4 tools to provide objective
  framework for strategic analysis
• Developed hypothetical illustrates application
  and conclusion as to where to sue

FIRST-STRIKE STRATEGY
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EXAMPLE
UK Environmental Business Products Ltd.
Pee win rate 47
UK CybaHouse Ltd.
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David W. Hill Two Freedom Square 11955 Freedom
Drive Reston, VA 20190-5675 571.203.2735 202.408.4
400 fax david.hill_at_finnegan.com