Attention points on issuing of injunction against SEP infringement in the practice in the U.S.A.

Cathy Ann BENCIVENGO Judge United States District Court for the Southern District of California

The 2020 International IP Court Conference an international exchange event of the professionals in the IP field consisting of five sessions which are status of international trials high technology and patent eligibility major issues in design litigation cross-border patent infringement and mock trials has been ended successfully on November 12.

In the session 1 the first program in the conference the discussion on ‘Recent Trends and Direction of Development on International IP Trials’ enacted among the speakers from the UK Germany Australia China and Korea.

Cathy Ann BENCIVENGO Judge United States District Court for the Southern District of California attending as a speaker was appointed as a judge in 2012.

Before her appointment she has worked as magistrate Judge in Southern District of California since 2005 and as an IP specialized lawyer in a law firm before becoming a judge.

She is currently serving as the Secretary/Treasurer of the Ninth Circuit District Judges Association and as a Judicial Advisor for the San Diego Chapter of the Federal Bar Association and the Sedona Conference and we can meet her at the 2020 International IP Court Conference on 11th November in 2020.

Q : Please give an outline of the factors considered important in practice when deciding whether to grant an injunction against licensees using a SEP without a license agreement.

A : In the context of SEPs there is much focus on whether a FRAND commitment and a prior history of licensing FRAND committed patents make it difficult for an SEP holder to demonstrate irreparable harm and that monetary damages are inadequate to compensate for the infringement. The Federal Circuit has held that a FRAND commitment is strong evidence that a patent holder would not be irreparably harmed absent issuance of an injunction particularly where prior SEP licenses have been granted and the standard has become widely implemented in the industry. Motorola 757 F.3d at 1332. Similarly a FRAND commitment suggests that money damages are adequate to fully compensate the patent holder for any infringement by standard-compliant products. Id. at 1331.

If however an accused infringer refuses a FRAND royalty or unreasonably delays negotiations a court may find irreparable harm due to price erosion loss of goodwill damage to reputation and loss of business opportunities. If a defendant routinely does not negotiate reasonably and in good faith a court may find the patent holder forced to litigate will not be compensated by monetary damages.113 Additionally if the implementer is a competitor with a large market share and is determined to be unilaterally refusing a FRAND royalty that factor may weigh in favor of injunctive relief.

This conference held on November 12 2020 was held at the Grand Hyatt Hotel in Seoul under the theme of Court IP and Globalization with the method using parallel online and offline to prevent the spread out of COVID-19.

Focusing on IP5 which are United States China Japan and Germany about 300 IP related professionals from 8 nations around the world participated online and offline to share and progress IP issues with various cases.

The 2020 International IP Court Conference was ended in great success raising the status of the IP international trial in Korea covering five sessions and mock trials.

Cathy Ann BENCIVENGO Judge United States District Court for the Southern District of California giving a presentation at the 2020 International IP Court Conference

2020 International IP court conference commemorative photo

Website: : https://www.wip-news.com/news/articleView.html?idxno=5908