ANNUAL GLOBAL PATENT LITIGATION REPORT...

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ANNUAL GLOBAL PATENT LITIGATION REPORT 2014, Patent, Trademark & Copyright Journal

Global IP Project

GLOBAL IP PROJECT:

Annual Global PatentLitigation Report 2014

G l o b a l Tr e n d s

A. Alleged Infringers Are Becoming More Proactive .... S-5

B. The Trend Toward IP-Specialty Courts Continues ... S-5

C. The Unified Patent Court (UPC) May Lead toIncreased Forum Shopping in Europe ...................... S-7

D. Litigation in China Continues To Increase andLeads a Global Movement of Patent Litigation toAsia .................................................................... S-7

E. America Invents Act (AIA) Has Given U.S.Litigation a More Bifurcated Appearance .................. S-7

F. The Negative Climate in the U.S. for Non-Practicing Entities (NPEs) and the Availability ofInjunctive Relief and Profits Damages AbroadSuggest NPEs Will Begin to Look Outside the U.S. .... S-7

G l o b a l P a t e n t L i t i g a t i o n D a t a

A. Comparison of Country Patent Litigation Systems... S-7

B. Annual Patent Litigation Filings ........................... S-9

C. Patent Owner Infringement and Validity WinRates ................................................................ S-13

D. Largest Damage Awards Globally ....................... S-13

E. Most Patent Owner-Friendly Courts in the WorldUsing Objective Metrics ....................................... S-20

F. Most Patentee Owner-Unfriendly Courts in theWorld Using Objective Metrics .............................. S-20

G. Comparative Patentee Win Rates by Country byIndustry (Infringement Win Rate Only in BifurcatedCountries) .......................................................... S-20

C o u n t r y S p o t l i g h t

A. Germany ........................................................ S-30

1. Patent Infringement and Validity Win Rates ....... S-30

2. Time From Filing to Decision on the Merits ....... S-33

3. Remedies...................................................... S-33

B. China ............................................................. S-34



3. Remedies...................................................... S-34

C. United States................................................... S-39



3. Remedies...................................................... S-42

M e t h o d o l o g y a n d D a t a S o u r c e s

Explanation ........................................................ S-42

G l o b a l I P P r o j e c t

Participating Firms and Attorneys........................... S-43

Reproduced with permission from BNA’s Pat-ent, Trademark & Copyright Journal, 89 PTCJS-5, 2/13/15. Copyright 2015 The Bureau ofNational Affairs, Inc. (800–372–1033)http://www.bna.com

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PATENT, TRADEMARK & COPYRIGHT JOURNAL ISSN 0148-7965 BNA 2-20-15

http://www.bna.com

L I S T O F E X H I B I T S

1. First-Instance Patent Litigation Filings in China ...... S-6

2. U.S. First-Instance Patent Litigation Filings ............ S-6

3. U.S. Ex Parte Reexamination Petition Filings.......... S-8

4. U.S. Inter Partes Review Petition Filings ................ S-8

5. Comparison of Country Patent Litigation Systems.. S-10

6. Annual Judicial Patent Infringement LitigationFilings 2008-2012 for Category 1 Countries (0-1000Annual Patent Litigation Filings) ........................... S-11

7. Annual Judicial Patent Infringement LitigationFilings 2008-2012 for Category 2 Countries(101-5000 Annual Patent Litigation Filings) ............. S-11

8. Annual Judicial Patent Infringement LitigationFilings 2008-2012 for Category 3 Countries (501+Annual Patent Litigation Filings) ........................... S-12

9. Busiest Court and Percentage of Cases FiledGoing Through to Decision on the Merits ................ S-14

10. Patent Owner Infringement Win Rates inFirst-Instance Patent Infringement LitigationDecisions on the Merits (2006-2012) ....................... S-15

10A. Patent Owner Infringement Win Rates inFirst-Instance Patent Infringement LitigationDecisions on the Merits (2006-2012) by Unified andBifurcated Systems .............................................. S-15

10B. Patent Owner Infringement Win Rates inFirst-Instance Patent Infringement LitigationDecisions on the Merits (2006-2012) by CommonLaw and Civil Law Systems. ................................. S-16

11. Patent Owner Validity Win Rates (2006-2012)...... S-17

12. Largest Damage Awards Globally ...................... S-18

13. Most Patent Owner-Friendly Courts in the WorldUsing Objective Metrics ....................................... S-19

14. Most Patentee Owner-Unfriendly Courts in theWorld Using Objective Metrics .............................. S-19

15. Biotechnology Patentee Win Rate ...................... S-21

16. Chemical/Materials Engineering Patentee WinRate ................................................................. S-22

17. Electrical Patentee Win Rate ............................. S-23

18. Mechanical Patentee Win Rate .......................... S-24

19. Pharmaceutical Patentee Win Rate..................... S-25

20. Medical Device Patentee Win Rate..................... S-26

21. Computer Hardware/Software Patentee WinRate .................................................................. S-27

22. Semiconductor Patentee Win Rate ..................... S-28

23. ‘‘Other’’ Patentee Win Rate............................... S-29

24. Bifurcation of Patent Infringement Cases Fromthe Dusseldorf First-Instance Court, 2012 ............... S-31

25. Bifurcation of Patent Infringement Cases fromthe Dusseldorf First-Instance Court, 2012, InventionPatents Only ...................................................... S-31

26. Patent Validation Rate for Invention PatentsThat Have a Patent Infringement Case Decided bythe Dusseldorf First-Instance Court in 2012 ............. S-32

27. Comparing Validation Rates Between EuropeanPatent Office (EPO) Opposition Actions and BPGCancellation Actions, in 2012 for First-InstanceInvention Patent Infringement Decisions on theMerits in 2012 .................................................... S-32

28. Procedure Duration in Different GermanJurisdictions for First-Instance Invention PatentInfringement Decisions in 2012 ............................. S-33

29. Bifurcation of First-Instance Invention PatentInfringement Cases from Beijing 1st IntermediatePeople’s Court, 2012 ............................................ S-35

30. Bifurcation of First-Instance Utility ModelInfringement Cases From Beijing 1st IntermediatePeople’s Court, 2012 ............................................ S-35

31. Patentee Infringement Win Rate in First-Instance Invention Patent Decisions on the Merits inChina, in 2012 .................................................... S-36

32. Patentee Infringement Win Rate in First-Instance Utility Model Decisions on the Merits inChina, in 2012 .................................................... S-36

33. Validation Rate in SIPO Validity Decisions onthe Merits, 2012 .................................................. S-37

34. Procedure Duration of First-Instance SIPOPatent Reexamination Board Decisions on theMerits in China in 2012 ........................................ S-37

35. Procedure Duration of First-Instance PatentInfringement Decisions on the Merits in China in2012 ................................................................. S-38

36. Bench and Jury Patentee Win Rates in MostActive U.S. Federal District Courts (By PatentInfringement Litigation Filings) ............................. S-40

37. Outcomes of PTAB Final Written Decisions......... S-40

38. Time From Filing to Termination by ContestedJudgment in the 10 Most Active U.S. District Courts(in Months) ........................................................ S-41

39. PTAB Final Written Decision Timing.................. S-41

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2-20-15 COPYRIGHT � 2015 BY THE BUREAU OF NATIONAL AFFAIRS, INC. PTCJ ISSN 0148-7965

GlobalIPProjectAnnual Global Patent Litigation Report 2014

I. Overview of Global Trends1

T oday, corporations face a panoply of options onhow and where to litigate against competitors. Pat-ent owners and alleged infringers often face off in

multiple countries with varying legal systems and con-sequent varying results. Although patents remain a na-tional property right, patent owners and alleged infring-ers must develop a global strategy for IP litigation tomaximize resources and leverage litigation results forthe best business outcome. Understanding the attri-butes of different legal systems and procedures is onlyone part of a complex process for developing a winningstrategy. Companies must also understand the costs,risks, and benefits of bringing an action in variousmarket-driven countries. As a result, the question forlitigants now is ‘‘Where in the world should I sue?’’

An early win may be crucially important, whether forthe patentee or the alleged infringer. In the Global IPProject, the term ‘‘first-strike’’ strategy is used to de-scribe the approach of trying to obtain a good first re-sult that can be leveraged to favorably resolve parallellitigation conflicts in other countries. While the pros-pect of litigating in several countries simultaneouslycan be overwhelming, winning a first litigation—a ‘‘firststrike’’—provides significant leverage in settling dis-putes globally.

This first Global IP Project Annual Report—based onanalysis and insight from practicing lawyers around theworld and objective data2—compares qualitative andquantitative information from 19 jurisdictions to pro-vide patent owners and patent challengers substantive,fact-based information to use as they decide how to bestobtain the desired business results. The Global IP Proj-ect Annual Report authors believe that the more litiga-tion strategies are based on objective metrics, thesounder the strategies will be. In the U.S., the availabil-ity of objective data is extremely high, with all 98 first-instance courts on a single electronic database acces-sible by the public. There are also multiple private andacademic database sources and sources of data analy-sis readily available. But the picture globally differs sig-nificantly, with many countries lacking centralized datacollection (e.g., Germany, Italy, China, Brazil, Spain),accessibility (e.g., Israel, South Korea), or electronicdata (e.g., Russia). The Global IP Project’s foundingpurpose was to fill this data void so that global first-strike strategies could be developed with objective data.Using the Global IP Project’s objective patent infringe-ment and validity litigation data, practitioners can intel-ligently advise clients on a forum for that crucial ‘‘firststrike’’ (inter-country and intra-country, if applicable)where they have the best chance of obtaining a favor-able result.

The context of patent litigation is ever-changing. Sig-nificant trends are developing as the world moves to a

more harmonized IP framework and emerging marketsgrow in size and importance.

A. Alleged Infringers Are Becoming More Proactive Bothpatentees and alleged infringers have increasingly morejudicial and administrative options on where to launcha ‘‘first strike.’’ Traditionally, alleged infringers havehesitated to initiate defensive first strikes because of apreference not to litigate at all and to be ‘‘left alone.’’But there is a noticeable trend among alleged infringersof becoming more proactive, possibly spurred on byhigh success rates in some jurisdictions. The best globalexample of this proactive behavior is in London, wherethe patentee win rate is relatively low 27% (35/129), butthe plaintiff win rate is 54% (69/129) and the alleged in-fringer plaintiff win rate is 77% (50/65).3 Of the 129 pat-ent litigation decisions for the time period 2006-2013,51% have an alleged infringer plaintiff (66/129).4 Thebest U.S. example of this behavior is represented by thehigh rate of filings of inter partes reviews (IPRs) by al-leged infringers and third parties, where the petitiongrant rate is 77%.5 So far, the Patent Trial and AppealBoard (PTAB) has held 68% of the challenged claimsunpatentable.6

Several countries have ‘‘double-tracking’’ where apatent claim’s validity may be disputed in both a judi-cial proceeding and an administrative proceeding, insome jurisdictions even simultaneously.7 This providesalleged infringers with two forums in which to attackpatents. With the availability of comparative intra-country and inter-country data, which will soon beissue-specific because of resources such as theDARTS-IP database, it will become more apparent to al-leged infringers that the option is available for them tobring proceedings proactively to get a favorable deci-sion they can then use in negotiations with the patentee.

B. The Trend Toward IP-Specialty Courts Continues Ac-cording to the 2012 Study on Specialized IntellectualProperty Courts by the International Intellectual Prop-erty Institute (IIPI) and the U.S. Patent and TrademarkOffice (USPTO), there are already 90 different IP spe-cialty courts around the world.8 Because of the inherentcomplexity of patent cases in particular, it is expectedthat this trend will continue. Just in the last few years,Finland, France, Russia, Switzerland, and Taiwanmoved to single IP-specialty courts. In addition, inChina, on November 6, 2014, the Beijing IP court wasestablished and by the end of 2014, the Shanghai andGuangzhou IP courts will be established. Arguably, thePTAB in the U.S. is consistent with this trend because itincludes, for the first time in the U.S., a panel made upof administrative law judges with both legal and techni-cal training.9 The Unified Patent Court (UPC) in Europemarks another step toward IP-specialty courts with itsplan to have specific courts designated for specific tech-nologies (e.g., London: human necessities, chemistryand metallurgy; and Munich: mechanical engineering,lighting, heating, weapons and blasting).10

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Exhibit 1: First-Instance Patent Litigation Filings in China. Filing numbers include infringement cases for inven-tion patents, utility models and design patents. The numbers for 2010–2012 are estimates because the Chinese courtsstopped publishing the specific numbers for patent infringement litigations since 2010, and now they disclose onlythe total number of patent cases, which includes patent infringement disputes, ownership disputes, licensing disputesand others. The numbers of all types of first-instance patent cases in 2010–2012 are 5,785, 7,819, and 9,680, respec-tively.11

Exhibit 2: U.S. First-Instance Patent Litigation Filings.12The 2014 filing number represents a 17% decrease fromdistrict court patent infringement filings in 2013.

3326 3360

5000

6500

8000

3000

4000

5000

6000

7000

8000

2008 2009 2010 2011 2012

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C. The Unified Patent Court (UPC) May Lead to In-creased Forum-Shopping in Europe It is expected that datametrics will play an increasing role in European forum-shopping because of a plethora of options that will beavailable to litigants, including the ability to opt Euro-pean patents out of the new UPC system during thetransitional period, as well as the ability to choosewhere to bring an action in the UPC system (subject ofcourse to the new venue and jurisdictional require-ments) for European patents having unitary effect. In-creasingly litigants will file (when they have a choice) inthose divisions of the UPC where the data metrics aremost favorable to their case objectives. Of course, as ofJanuary 2015, the UPC is not up and running and thereare no data metrics available for any of the proposednew UPC courts. Also, the past practices of nationalcourts may not turn out to indicate how the new UPCcourts in corresponding regions or countries will act.13

D. Litigation in China Continues to Increase and Leads aGlobal Movement of Patent Litigation to Asia Patent litiga-tion filings in China have more than doubled in the last5 years to now about 8,000 annual filings.14 While thisnumber includes invention patents, utility models, anddesign patents the upward trend is clear.15 The histori-cal patentee win rate in China is very high (for all threetypes of patents), costs are low, time to termination forboth infringement and validity proceedings averagesunder one year, and a significant damage award inCHINT v. Schneider Electric Low Voltage (Tianjin) Co.Ltd. (2007) appears to reflect at least a partial accep-tance of patent infringement damages.16 The recent in-stitution of IP-specialty courts in Beijing, Shanghai, andGuangzhou is a positive development addressing for-eign concerns about the credibility and integrity of Chi-nese courts. While patent litigation filings in Japan andTaiwan have been increasing more slowly, the possibil-ity of damage awards there is attractive to patent own-ers,17 while the relatively low patentee win rate in bothcountries18 will attract alleged infringers.

E. America Invents Act (AIA) Has Given U.S. Litigation aMore Bifurcated Appearance The significant increase inpatent litigation filings in U.S. district courts from 2011to 2013 shown in Exhibit 2 perhaps reflects, in part, animpact of the new America Invents Act (AIA) joinderprovisions, which came into effect in September 2012and limits the number of defendants that can be joinedand named in the same lawsuit. The abrupt downturn in2014 filings (shown in Exhibit 2) may be driven by re-cent U.S. Supreme Court decisions and the new post-grant options offered by the AIA, including IPRs. Forexample, since they became available in September2012, there has been a rapidly rising number of IPR fil-ings, as shown in Exhibit 4. While not a direct correla-tion by any means, it is difficult not to compare the sig-nificant number of IPR Petitions filed through Octoberof 2014 with the corresponding significant decrease inU.S. district court patent infringement filings for 2014.Not surprisingly, with the new AIA post-grant proceed-ing options, there has been a 61% decrease in ex partereexamination filings from 2012 to 2013 (Exhibit 3), fur-ther supporting the conclusion that IPRs are a new driv-ing force in the litigation landscape. As a consequence,the U.S. is becoming a more ‘‘bifurcated’’ jurisdiction inappearance, where alleged infringers seem to perceive

the new PTAB as a more favorable forum in which tolitigate the issue of patentability. Factors supporting thefavorability of the PTAB forum in which to resolve pat-entability are a high success rate to date, a statutorytimeline of one year from institution, no presumption ofvalidity for the patent, a lower burden of proof and po-tentially lower costs.

More details of the impact of the AIA on U.S. patentlitigation are found on the GIP Project website, www-.globalpatentmetrics.com. It is worth noting that manyof the more than 2,000 PTAB reviews filed in the firsttwo years of the new U.S. AIA post-grant proceedingshave related district court litigation, providing a strongexample of ‘‘double-tracking.’’19

F. The Negative Climate in the U.S. for Non-PracticingEntities (NPEs) and the Availability of Injunctive Relief andProfits Damages Abroad Suggest NPEs Will Begin to LookOutside the U.S. According to the PriceWaterhouseCoo-pers 2014 Patent Litigation Study, NPE patent litigationfilings grew from 28% in 2009 to 67% in 2013.20 It is stilltoo early to tell the full impact of the AIA on NPE litiga-tion in the U.S., but recent court decisions and effortsat reforming laws in the past few years indicate the po-litical and legal climate has been unfavorable to them.While little data at this point suggests that NPEs are fo-cusing more enforcement efforts outside the U.S.,21 thefollowing factors suggest that this may change. First, inalmost all countries outside of the U.S., an injunction isnot only typically the principal objective, it is still essen-tially automatic and available to NPEs and other paten-tees.22 Moreover, unlike the U.S., many countries allowa patentee to pursue the infringer’s profits. For an NPE,this type of damage award can prove to be higher thanwhat would be available to a practicing entity’s lostprofits award. When combined with lower litigationcosts as compared to the U.S., NPEs may be encour-aged to consider litigating in those countries whereboth an injunction and the infringer’s profits are avail-able to obtain favorable monetary outcomes.

II. Global Patent Litigation Data Overview,2006-201323

A. Comparison of Country Patent Litigation Systems Thetable in Exhibit 5 shows a number of important qualita-tive and quantitative factors of the patent litigation sys-tem for each country discussed in this report.

A country is designated ‘‘unified’’ if validity and in-fringement can both be raised in a single forum or ‘‘bi-furcated’’ if the two issues must be decided by separatebodies. This is an important factor in terms of litigationstrategy, but it also indicates whether a country mayhave ‘‘double-tracking.’’ Bifurcated countries do nothave double-tracking. A further column indicateswhether double-tracking is available and the name ofthe administrative validity tribunal.

The table in Exhibit 5 also shows whether a countryoperates under common law or civil law. Among otherthings, this helps to indicate how much discovery andcross-examination will be involved, and whether a pro-ceeding will be largely based on written submissions or‘‘live’’ trial arguments.

The number of first-instance patent infringement liti-gation courts in a country identifies whether there is apossibility of forum-shopping within the country.

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http://globalpatentmetrics.com/


Exhibit 3: U.S. Ex Parte Reexamination Petition Filings as of Sept. 30, 2013.24 The drop in ex parte reexaminationcases from 787 in 2012 to 305 in 2013 represents a decrease of 61%.

Exhibit 4: U.S. Inter Partes Review Petition Filings.25 It is interesting to compare the significant number of IPR Pe-titions filed through October 2014 with the corresponding significant decrease in U.S. district court patent infringe-ment filings for 2014.

511

643 643680 650 650

780 759 787

305

0

100

200

300

400

500

600

700

800

900

2006 2007 2008 2009 2010 2011 2012 2013

30

675

2205

0

500

1000

1500

2000

2500

Oct. 2012 Oct. 2013 Oct. 2014

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A specialized court or judge is one with technical aswell as legal training.

The number of trials to determine the issues of valid-ity, infringement, and damages is important to know interms of having a realistic comparison of time and costsbetween countries. In the U.S., for example, first-instance litigation is expensive relative to other coun-tries, but all three issues may be resolved in a singletrial. By contrast, in Germany, there will be one pro-ceeding for infringement, one for validity and a sepa-rate hearing on damages, if required. The column show-ing whether damages are usually tried or settled in eachcountry indicates the likelihood of facing a damageshearing. As a practical matter in Europe, there are veryfew damages trials because the principal patentee ob-jective is usually an injunction and in most cases theparties settle after the issues of validity and/or infringe-ment have been decided by the court. This is discussedin the German context in Section III. In Asia, the issueof damages is often decided by the court, and Japan,Taiwan and South Korea have, on occasion, had rela-tively large awards. In Brazil, China, Russia and India,the number of damage awards is generally very smalland where damages have been decided, the awardshave usually been very low. It is expected that the num-ber of damage awards outside the U.S. will increase as(1) the law of damages becomes more developed glob-ally; (2) courts become more familiar with resolvingdamage disputes; and (3) if NPEs begin to enforce pat-ents globally, all of which currently appear to be chang-ing slowly.

Of the 19 countries discussed in this report, only 5,namely, Brazil, China, Germany, Russia and South Ko-rea are bifurcated (shaded in Exhibit 5). Of the 14 uni-fied countries, only Argentina and Australia do not have‘‘double tracking.’’26 The issue of damages is usuallysettled in 11 countries without a trial; tried in 5 coun-tries; a little of both in 2 countries (Argentina and Ja-pan), and typically ‘‘not sought’’ in South Korea. The 6common law countries are Australia, Canada, England,India, Israel and the U.S. In general, and not surpris-ingly because of the typically more extensive discoveryin common law, those countries, excluding India, areamong the most expensive.

B. Annual Patent Litigation Filings The Global IP Proj-ect uses annual patent litigation filings to rank coun-tries from ‘‘most active’’ to ‘‘least active’’ jurisdictions.Three broad categories emerge: countries with fewerthan 100 filings annually (Category 1), countries with100-500 (Category 2), and countries with 500+ (Cat-egory 3). Switzerland is not included in these charts be-cause of the insufficient filing data for its new court, es-tablished January 1, 2012. In 2012, there were 9 patentinfringement litigations filed. Unfortunately, mostcountries do not provide data on the actual number ofpatent litigations filed annually. Accordingly, in those

countries, the data are based on estimates, and oftenshown as straight lines in the relevant exhibits.27

Category 1 (fewer than 100 filings annually) includesArgentina, Australia, Brazil, Canada, Finland, Israel,Netherlands and South Korea. For the bifurcated coun-tries, Brazil and South Korea, these filing numbers rep-resent infringement litigations only.

Category 2 (100-500 filings annually) includes Eng-land, France, India, Italy, Japan, Russia and Taiwan.For the bifurcated countries, Russia and Taiwan, thesefiling numbers represent infringement litigations only.

Category 3 (more than 500 filings annually) includesChina, Germany, and the U.S., currently the 3 most ac-tive patent infringement litigation countries in theworld by patent litigation filings. As such, those 3 coun-tries are highlighted and compared in Section III below.For the bifurcated countries, China and Germany, thesefiling numbers represent infringement litigations only.Accordingly, when one attempts to compare the winrate of unified countries, where the issues of both valid-ity and infringement are tried in the same court, as inthe U.S., with the infringement issue-only win rate in bi-furcated countries like China and Germany, the com-parison is obviously incomplete, or one of ‘‘apples andoranges.’’ In an attempt to develop the comparative winrate data between bifurcated and unified countries, theGIP Project has chosen to represent the validity and in-fringement win rates in bifurcated countries separately.In part this is a necessary consequence because the winrate data must be obtained from different tribunals. It isalso necessary, however, because to date, the Global IPProject has been unable to obtain parallel validity andinfringement data from the different courts for thesame litigated patents. This is considered in greater de-tail below because the DARTS-IP database is now de-veloping procedures to track the same patent in bothvenues in bifurcated systems.

Historically, the U.S. was the most litigious countryin the world when it came to patent infringement. As of2008, China has had the greatest number of annual pat-ent litigation filings in the world. But this comparison isnot totally accurate because more than 65%28 of Chi-nese patent infringement litigation involves design andutility model patents, most of which were not examinedprior to issuance while U.S. patent litigation almost en-tirely involves invention patents. Clearly, in terms ofnumbers of cases filed and market size, China has be-come the proverbial ‘‘elephant in the global IP room.’’On the other hand, while Germany remains the mostpatent infringement active country in Europe and thethird most active country in the world, the estimatednumber of annual filings appears to be relatively con-stant. Furthermore, German courts often follow a prac-tice of issuing separate case numbers for each patentwhen multiple patents are asserted by the same paten-tee in the same case, while other countries assign onecase number no matter how many patents are asserted.

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Country Unified/Bifurcated

Common law/Civil law

Number of first-instancepatent infringementlitigation courts29

Specializedcourts/judges?

Number of trials todetermine validity,infringement, and

damages

Damagesusually triedor settled

Administrative Validity challengeforum

Double-tracking

available?30

Argentina U CI 11 No 1 mixed No

Australia U CO 1+ De facto 2 settled No

Brazil B CI27 state (infringement)

5 federal (validity)Yes 2 tried

usually federal courts of Rio deJaneiro

Canada U CO 1+ De facto 1 or 2 settledCanadian Intellectual Property Of-

ficeYes

China B CI127 (infringement)31

1 (validity)Yes 2 settled State Intellectual Property Office

England U CO 2 Yes 2 settledEPO for EP(UK)-designated pat-

ents, UKIPO for EP(UK)designated-patents and GBs.

Yes

Finland U CI 1 Yes Usually 1 triedFinnish Patent and Registration Of-

ficeYes

France U CI 1 Yes 1 tried EPO for France-designated patents Yes

Germany B CI 12 (infringement) 1 (validity) Yes 3 settled

Federal Patent Court (BDG); EPOfor Germany-designated patents;

German Patent Office for nationalpatents

India U32 CO5 High Courts/

600 District CourtsNo 1 settled

Intellectual Property AppellateBoard

Yes

Israel U CO 6 No Usually 2 settledIsraeli Patents and Trademarks Of-

ficeYes

Italy U CI 21 Yes/No 1 settled EPO for Italy-designated patents Yes

Japan U CI 2 Yes 1 both Japan Patent Office Yes

Netherlands U CI 1 Yes 1 settledEPO for Netherlands-designated

patentsYes

Russia B CI 81 (infringement) 1 (validity)Yes for appeal/

Yes2 tried

Chamber for Patent Disputes, Rus-sian Federal Service for Intellectual

Property

South Korea B CI 12 (infringement) 1 (validity) Yes 2Not usually

soughtKorean Intellectual Property Office

Intellectual Property Tribunal

Switzerland U CI 1 Yes 1+ settled EPO for Swiss-designated patents Yes

Taiwan U CI 1 Yes 1 tried Taiwan Intellectual Property Office Yes

U.S. U CO 94 +2 No 1 settled U.S. Patent and Trademark Office Yes

Exhibit 5: Comparison of Patent Litigation Systems of Countries Addressed in this Report.

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Exhibit 6: Annual Judicial Patent Infringement Litigation Filings 2008-2012 for Category 1 Countries.33 The Cat-egory 1 countries for which accurate data exists are Australia and Canada, both common law countries. Data for Bra-zil, Finland, Israel, Netherlands and South Korea are estimates because annual data on judicial patent infringementlitigation filings is not available. In Canada actual patent infringement filing data as reported by the Federal Court ofCanada is shown as well as the number of annual Patented Medicines (Notice of Compliance) Filings (PM(NOC)) fil-ings. PM(NOC) is a special litigation procedure for pharmaceutical patents in Canada. The filing trend in each issimilar until 2012 when the PM(NOC) filings increased while the litigation filings continued downward.

Exhibit 7: Annual Judicial Patent Infringement Litigation Filings 2008-2012 for Category 2 Countries.34 The Cat-egory 2 countries for which accurate data is available are England, Japan and Taiwan. Regionally, Japan has had thelowest historic patentee win rate, until the emergence of the new specialty IP court in Taiwan, which, somewhat sur-prisingly, has had even lower patentee win rates in recent years. Data for France, India, Italy and Russia are esti-mates because annual data on judicial patent infringement litigation filing is not available. It is believed that the ac-tual number of patent infringement litigations in India is on the rise primarily because of more recently streamlinedprocedures after decades of protracted proceedings that generated few final judicial decisions on the merits. As indi-cated earlier, while both Italy and Russia are becoming more transparent, accurate data extraction is a problem.

111111130 1

65

183 183 160

350 350 350 350 350

200 200 200 200 200 200 200 200

250 250 250 250 250

150 150175

200 200200200202022

230

187

100 100 100 100 1000100 00100 100 100 100 100

28

131 131 168

133

0

50

100

150

200

250

300

350

400

2008 2009 2010 2011 2012

England

France

India

Italy

Japan

Russia

Taiwan

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Exhibit 8: Annual Judicial Patent Infringement Litigation Filings 2008-2012 for Category 3 Countries.35 Statisticsfor Germany are estimates because annual data on judicial patent infringement litigation filing is not available. TheGerman system is slowly becoming more transparent and the numbers, while not complete, represent an estimate bythe Global IP Project. Filing numbers for China include infringement cases for invention patents, utility models anddesign patents. The numbers for 2010–2012 are estimates, because the Chinese courts stopped publishing the spe-cific numbers for patent infringement litigations in 2010, and now they disclose only the total number of ‘‘patent’’cases, which includes patent infringement disputes, ownership disputes, licensing disputes, and others. The numbersof all types of first-instance patent cases in 2010-2013 are 5,785, 7,819, 9,680 and 9,195 respectively.

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Exhibit 9 shows the busiest court in each country (bypatent litigation filings), as well as the percentage ofcases filed going through to decision on the merits. Thebusiest court may be important information in a coun-try with more than a single court and the possibility offorum-shopping. There are many factors that drive liti-gants to a particular court. Among them are the patentexperience of the judges, quick time to termination,large damage awards, and/or a court’s location with re-spect to economic activity.

In many countries, the percentage of cases filed go-ing through to a decision on the merits is not tracked sothe relevant data is estimated by the Global IP Project.When the annual filing data is not known, the percent-age necessarily has to be an estimate. But percentage ofcases filed going through to a decision on the merits isanother important factor to know before decidingwhether and where to litigate. In the U.S., for example,fewer than 4% of the cases filed go through to a deci-sion on the merits. That means it is highly likely that aU.S. case will terminate by settlement. Generally speak-ing, the percentage of cases going through to a decisionon the merits is lower in common law countries than incivil law countries, and the percentage is higher incountries where IP law is still maturing, e.g., India, Rus-sia. For bifurcated countries (shaded), the number indi-cated is for infringement litigation filings only.

C. Patent Owner Infringement and Validity Win RatesAmong global litigation metrics, the patent owner winrate is often considered to be one of the most important.Exhibit 10 shows the win rates in first-instance patentinfringement litigation decisions on the merits for 2006-2012. The Global IP Project defines a ‘‘win’’ as a caseterminated with at least one claim found both valid andinfringed. The percentage is calculated bywins/wins+losses. Because the U.S. is the only countryin the world where summary judgment (SJ) is impor-tant, the above definition of a win gives an artificiallyhigh U.S. win rate. This is so because in the U.S. fewerthan 4% of all filed cases go to trial. It is estimated thatapproximately 12% of all cases filed are decided by SJ.Accordingly, in the U.S. it is necessary also to provide awin rate for ‘‘contested decisions,’’ including the sum-mary judgment decisions that are case dispositive andnever proceed to a trial on the merits. While not dis-cussed in detail here, the bottom line U.S. statistic isthat if a patent case survives summary judgment, thepatentee’s chances for success at trial almost double.36

It is also necessary in the U.S. to include a third winrate, namely the overall win rate that takes into accountboth default and consent judgments, which obviouslyresult in a higher win rate because all consent and de-fault judgments result in wins for the patentee. Thenumbers for the U.S. in Exhibit 10 are national aver-ages. The patentee win rates in the 94 federal districtcourts vary dramatically.

For bifurcated countries (shaded), the data in Exhibit10, represents the infringement win rate only. Thesecountries will have a separate validity win rate.37 Thepatentee win rates range from a low of 15% for inven-tion patents in Taiwan (unified country) to a high of86% (on the issue of infringement only) for design pat-ents in China (bifurcated country). In some countries,the data sample is bigger and provides a more robustand statistically reliable number, but even when the

sample size is small, the win rate number is still consid-ered instructive.

For validity challenges, in either bifurcated countriesor unified countries where ‘‘double tracking’’ exists,there are usually three possible outcomes reported:claims maintained without change (a ‘‘win’’ for the pat-ent owner), claims all canceled (a ‘‘loss’’ for the patentowner), and a third category of either amended claimsallowed or partially valid. This third category is a grayarea where it is not clear if the patent owner won: yes ifthe amended claim/remaining claim still covers the al-legedly infringing product, no if the amended claim/remaining claim no longer covers the allegedly infring-ing product. To resolve this and permit the calculationof an ‘‘estimated’’ win rate, one-half of the decisions inthe gray area are considered a win and one-half a loss.The calculation of the patentee win rate for validitychallenges, therefore, equals the percentage of allclaims maintained without change + 1⁄2 (percentage ofdecisions with at least one claim amended).

The validity win rate formula applies in bifurcatedcountries where the issue of validity is tried separatelyfrom infringement. It also applies in unified countries tovalidity decisions of administrative proceedings, where‘‘double tracking’ is available. For example, the U.S.,Japan and Taiwan are countries with a unified system(both validity and infringement may be determined inone judicial proceeding), and an administrative validitychallenge route (in the national patent office) is alsoavailable.

It is questionable whether, in bifurcated countries,the two win rates should be multiplied to come up witha single, combined win rate as in unified countries.While this could apply if the same patent was at issue ininfringement and validity proceedings in a bifurcatedcountry, not every patent involved in one proceeding isinvolved in the other. For a historical win rate, there-fore, it may only be appropriate to multiply the two winrates together with some sort of weighted factor to ac-count for the likelihood of being involved in both.DARTS-IP is beginning to link infringement and valid-ity proceedings in bifurcated countries, discussed fur-ther in Section III. At this preliminary stage, we refrainfrom multiplying the two win rates together and believeit most instructive to report the win rates separately.

It should be noted that most of the win rate data isextracted from national patent office reports or compa-rable sources for the particular forum. The Global IPProject is collaborating with DARTS-IP to improve thisdata going forward, particularly in the joint effort tolink both the patent infringement and validity decisionswherever possible, as discussed further in Section III.

D. Largest Damage Awards to Date Globally The amountof damages a patent owner could receive upon a find-ing of infringement plays an important role in decidingwhether and where to sue. Awards are significantlylower in countries outside of the U.S. In most countries,particularly in Europe, an injunction is the patent own-er’s primary objective. The largest damage awards todate for some of the most litigious countries outside ofthe U.S. is reflected in Exhibit 12 (each reported in U.S.$M). As shown in Exhibit 12, the largest damageawards in Europe are generally lower than elsewhere inthe world.

S-13


Country (Commonlaw/Civil law)

Annual patent litigations filed(2006-2012) Busiest Court Percentage of cases going to

trial (decision on the merits)Argentina (CI) 20 (2009-2013) (federal courts of Bue-

nos Aires only)Nacional Court on Civil and Commer-

cial Federal Matters, Buenos Aires100% (est.)

Australia (CO) 280 (est.) Federal Court Sydney/Melbourne/Canberra

15% (est.)

Brazil (CI) 480 (est., infringement only) State Court Rio de Janeiro 90% (est.)

Canada (CO) 493 Federal Court Primarily Toronto/Ottawa 6% (28/493)

China (CI) 30,000 (est.) Intermediate People’s Court Design:Guangdong Guangzhou

Invention: Shanghai1st Utility Model: Guangdong Guang-

zhou

≈33%

England (CO) 807 Patents Court London (95%) 13% (105/807)

Finland (CI) 130 Market Court Helsinki (100%) 60% (est.)

France (CI) 2,390 (est.) Tribunal de grande instance de ParisParis (100%)

≈17% (412/2,390 est.)

Germany (CI) 10,000 (est.) Patent Chamber (Patentstreitkammern)of the Regional Court (Landgericht)

Dusseldorf

50% (est.)

India (CO) 1,225 (est.) Delhi High Court Delhi n/a

Israel (CO) 70 (est.) District Court Tel Aviv 20% (est.)

Italy (CI) 1,325 (est.) Corporate Court Milan 33% (est.)

Japan (CI) 1,265 Tokyo District Court Tokyo ≈40% for all IP-related cases (21%,259/1,265)38

Netherlands (CI) 360 (est.) District Court Specialized Patent Cham-ber The Hague

54% (193/360 est.)

Russia (CI) 700 (est.) (infringement only) Commercial Court Moscow 90% (est.)

South Korea (CI) 420 (est.) (infringement only) Seoul Central District Court IntellectualProperty (IP) Panel

50% (est.)

Switzerland (CI) 9 (2012 only) Federal Patent Court St. Gallen (100%) 10% (est.)

Taiwan (CI) 1,088 (est.) Intellectual Property Court Taipei(100%)

50-60% (est.)

United States (CO) 23,014 Eastern District of Texas 3.1% (720/23,015)

Exhibit 9: Busiest Court and Percentage of Cases Filed Going Through to Decision on the Merits.

S-14


Country Patentee win rate on first-instance patent infringement litigation decisions on the merits(2006–2012)

Argentina 50% (4/8) (2009-2010 only) (federal courts of Buenos Aires only)

Australia 54% (25/46)

Brazil (infringement only) 41% (14/34)

Canada 46% (19/41)

China (infringement only) (2007–2013) Invention patents 68% (231/340); Utility models 72% (381/531); Design patents 86% (1,093/1,278)

England & Wales 27% (35/129) (2006-2013)

Finland New court established Sept. 1, 2013; insufficient data so far

France 39% (161/413)

Germany (infringement only) 66% (534-812) (Dusseldorf Regional Court) (2009-2013)

India Preliminary injunction grant rate39 (2002–2010): 45% (14/31)

Israel 33% (1/3) (2011–2012)

Italy 40% (37/92) (2011-12 only)40

Japan 22% (58/259)

Netherlands 36% (48/133)

Russia (infringement only) 42% (183/434) (2009–1st half of 2013)

South Korea (infringement only) 26% (106/406) (2000–2009)41

Switzerland The historical patentee win rate is 44% (2002–2011). Insufficient data to assess win rate under new patent court.

Taiwan (2009–2011) Design patents 36% (4/11); Invention patents 15% (8/52); Utility models 16% (16/97)

United States42 overall 59.4% (7,924/13,340); contested 24% (987/4112); combined trial win rate (bench and jury) 60.4% (696/1152)

Exhibit 10: Patent Owner Infringement Win Rates in First-Instance Patent Infringement Litigation Decisions onthe Merits (2006-2012).

Exhibit 10A: Patent Owner Infringement Win Rates in First-Instance Patent Infringement Litigation Decisions onthe Merits (2006-2012) by Unified and Bifurcated Systems. The average patentee win rate in bifurcated countriesfor infringement is 49%. The average patentee win rate in unified countries is 39%. Switzerland is not included be-cause the new court does not have sufficient data yet. The time periods represented by the patentee win rates aregenerally 2006-2012, except for the following countries where the reported time period is Argentina 2009-2010; China2007-2013, England 2006-2013; Germany 2009-2013; India 2002-2010; Israel 2011-2012; Italy 2011-2012, Netherlands2006-2011, Russia 2009–1st half of 2013; South Korea 2000-2009; Taiwan 2009-2011; and the U.S. 1991-2014.

Chi

na (i

nven

tion

pate

nts)

68%

23

1/34

0

Ger

man

y 66

% 5

34/8

12

Rus

sia

42%

183

/434

Bra

zil 4

1% 1

4/34

Sou

th K

orea

26

% 1

06/4

06

U.S

. (tri

al) 6

0% 6

96/1

152

Aus

tralia

54%

25/

46

Arg

entin

a 50

% 4

/8

Can

ada

46%

19/

41

Indi

a 45

% 1

4/31

Italy

40%

37/

92

Fran

ce 3

9% 1

61/4

13

Net

herla

nds

36%

48/

133

Isra

el 3

3% 1

/3

29 9

Eng

land

27%

35/

1

/259

Japa

n 22

% 5

8/

nven

tion

pate

nts)

nt

ion

pat

Taiw

an (i

n 15

% 8

/52

0%

10%

20%

30%

40%

50%

60%

70%

80%

Patentee win rate

Bifurcated(infringement only)

Unified

average

average

S-15


Exhibit 10B: Patent Owner Infringement Win Rates in First-Instance Patent Infringement Litigation Decisions onthe Merits (2006-2012) by Common Law and Civil Law Systems. The average patentee win rate in common lawcountries is 44% (all unified systems). The average patentee win rate in civil law countries is 40% (5 bifurcated coun-tries and 6 unified countries). The average patentee win rate for the 5 bifurcated, civil law countries is 49% (infringe-ment only). The average patentee win rate for the 6 unified, civil law countries is 34%. Switzerland is not includedbecause the new court does not have sufficient data yet. The time periods represented by the patentee win rates aregenerally 2006-2012, except for the following countries where the reported time period is Argentina 2009-2010; China2007-2013; England 2006-2013; Germany 2009-2013; India 2002-2010; Israel 2011-2012; Italy 2011-2012; Netherlands2006-2011; Russia 2009–1st half of 2013; South Korea 2000-2009; Taiwan 2009-2011; and the U.S. 1991-2014.

U.S

. (tri

al) 6

0% 6

96/1

152

Aus

tralia

54%

25/

46

Can

ada

46%

19/

41

Indi

a 45

% 1

4/31

Isra

el 3

3% 1

/3

29 9

Eng

land

27%

35/

1

Chi

na (i

nven

tion

pate

nts)

68%

231/

340

Ger

man

y 66

% 5

34/8

12

Rus

sia

42%

183

/434

Bra

zil 4

1% 1

4/34

106

/406

0S

outh

Kor

ea 2

6%

Arg

entin

a 50

% 4

/8

Italy

40%

37/

92

Fran

ce 3

9% 1

61/4

13

Net

herla

nds

36%

48/

133

/259

Japa

n 22

% 5

8/

nven

tion

ntio

n

Ta

iwan

(in 15

% 8

/52

%

pate

nts)

1

0%

10%

20%

30%

40%

50%

60%

70%

80%

Patentee win rate

Common law Civil lawBifurcated

Civil lawUnified

33

average

average

average

S-16


Country (Common law/Civil law)

Patentee win rate (atleast one claim valid andinfringed) (2006–2012)

Patentee win rate onvalidity issue

Double-trackingavailable

Patentee win rate inadministrative validity

track (claims maintained+1/2 modified claims)

Argentina (CI) 50% (4/8) (2009-2010 only)(federal courts of Buenos Ar-

ies only)

No

Australia (CO) 54% (25/46) No (request for re-examination auto-matically stayed ifcourt proceedingsare commenced in

relation to the samepatent)

Brazil (CI) Infringement 41% (14/34) 41.5% (2012 only) No

Canada (CO) 46% (19/41) (per patent) 66% (27/41); on a per-patentbasis

Yes 70% (1992–2012)43(Reexamination in Ca-

nadian Intellectual PropertyOffice)

China (CI) Infringement Invention patents67.8% (194/286); Utility mod-els 72.7% (336/462); Design

patents 86% (940/1,093)(2007–2013)

Validity Invention patents48%; Utility models 44%; De-

sign patents 44%

No

England & Wales (CO) 23% (25/107) No44

Finland (CI) Insufficient data Yes 21.5%45

France (U) 39% (161/413) 33% of the losses for patenteewere because claims held in-

valid (2000–2013)

No46

Germany (CI) (Dusseldorf Regional Courtonly) 66% (534/812) (2009-

2013)

Federal Patent Court 39.1% No

India (CO) Preliminary injunction grantrate, 2002–2010: 45% (14/

31)47

Yes 18%48

Israel (O) 33% (1/3) (2011-12) Yes Average loss rate of at least48% (233/489) (2011-2013)49

Italy (CI) 44% (40/91) (2011–12 only) 31% of the of the losses forpatentee were because claims

held invalid

No50

Japan (CI) 22% (58/259) Yes Invention patents: at least 47%(796/1,703); utility models: atleast 36% (27/75); design pat-ents: at least 40% (52/130)51

Netherlands (CI) 36% (48/133) No52

Russia (CI) 42% (183/434) (2009–1st halfof 2013)

Insufficient data53 No

South Korea (CI) 9.6–26% (39–106/406) (2000–2009)54

Invention patents at least 44%(1,486/2,659); Utility models

at least 45% (754/1,361)55

No

Switzerland (CI) The historical patentee winrate is 44% (2002–2011).

No56

Taiwan (CI) 19% for invention patents;17% for utility models; 33%for designs (2010–2012 data)

32% of the of the of the lossesfor patentee were because

claims held invalid

Yes At least 53% (1,375/2,571)57

United States (CCO) (C.D.Cal.)

overall 59.4% (7,924/13,340);contested 24% (987/4112);

combined trial win rate (benchand jury) 60.4% (696/1152)58

61% (2010–2012)59 Yes 55%60 23%61

Exhibit 11: Patent Owner Validity Win Rates (2006-2012). (Shading indicates bifurcated country.)

S-17


Exhibit 12: Largest Damage Awards to Date Globally (U.S. $M).62 Note: The largest damages award in the UnitedStates was $1.8 billion (Centocor Ortho Biotech, Inc. v. Abbott Laboratories, 669 F. Supp. 2d 756 (E.D. Tex. 2009)(Judge Ward denied judgment as a matter of law to overturn jury verdict), rev’d, 636 F.3d 1341 (Fed. Cir. 2011) (hold-ing that the patent was invalid for lack of written description)). The median damage award in the U.S., which in re-cent years has been on a downward trend, was only $4.3 million (2010–2013), according to the PriceWaterhouseCoo-pers Patent Litigation Study 2014. No award was reported for Australia or Switzerland, where damages are rarelydetermined. Indeed, in Australia, there can be no trial on the issue of damages until the validity and infringement is-sues have been finally resolved through appeal. No award was reported for India; damages have not yet beenawarded in a patent infringement litigation case. The largest damage award reported for Russia is less than $100K.

$300.00

$119.00

$82.00 $82 00$70.00 $65.80

$44.00

$12.30 $11.80 $7.00 $6.00 $6.00 $3.90 $2.70 $0.73 $-

$50.00

$100.00

$150.00

$200.00

$250.00

$300.00

$350.00

Brazil

Canad

a

Japa

n

S. Kore

a

Taiw

an

China

France

Finlan

d Ita

ly

Englan

d

Spain

Netherl

ands

German

y

Israe

l

S-18


Exhibit 13: Most Patent-Owner-Friendly Courts in the World Using Objective Metrics.63

Exhibit 14: Most Patent-Owner-Unfriendly Courts in the World Using Objective Metrics (Alleged Infringer-Friendly).

High patentee win rates: China, U.S., Germany

Fast time to trial:China, Germany,Russia, England

Highest damage awards: U.S.,

Canada, Taiwan, Japan, Australia

High chance case filed will go to trial:

Russia, Brazil, Taiwan, Finland

High chance preliminary

injunction granted: Australia, Germany

China, Germany, U.S.

Low patentee win rates: England,Taiwan, Japan

Slow time to trial: India, Brazil, Italy

Low damage awards: Germany,

Israel, Russia

Low chance case filed will go to trial:

U.S., Canada, England

Low chance preliminary

injunction granted: U.S., England*,

China, Brazil (infringement)

England

S-19


E. Most Patent-Owner-Friendly Courts in the World UsingObjective Metrics64 The decision of whether and whereto sue is a multifaceted one, and includes both tangibleand intangible factors. Intangible factors—such as acompany’s relationship with its competitors and futureplans, familiarity and comfort with a particular legalsystem, or perceptions of local bias—are not the subjectof this report. Instead, this report attempts to focus ontangible factors, like patentee win rate and averagetime to trial, and put them in a framework to assist pat-ent litigation strategies and planning.

By focusing on a number of objective factors, a visualrepresentation can be made of the countries that, objec-tively, are appealing to patent owners. While patenteewin rate is usually the most important factor, all patentlitigations are unique and have different business objec-tives. Accordingly, no one factor or ‘‘size’’ fits all.Therefore, depending upon business objectives andwhich factors are most important, the litigant canforum-shop based on those particular factors. Never-theless, when focusing on factors indicative of a patent-owner-friendly court, the three countries showing upmost often are, in fact, the three busiest jurisdictions inthe world: China, U.S. and Germany.

F. Most Patent-Owner-Unfriendly Courts in the World Us-ing Objective Metrics (Alleged Infringer-Friendly)65 Thesame can be done to provide a visual representation ofcountries that, objectively, are appealing to alleged in-fringers. The one showing up the most often is England,where there has been a significant increase in the num-ber of cases filed by alleged infringers. Alleged infring-ers are plaintiffs in over half of the patent litigation de-cisions in England (66/129, 2006-2013).66 The plaintiffwin rate in England when the patentee is the plaintiff is30% (19/64, 2006-2013), but the alleged infringer plain-tiff win rate more than doubles that: 77% (50/65, 2006-2013).67 While England continues to have the lowestwin rate in Europe and has become known as the ‘‘re-vocation capital of Europe,’’ there does appear to be anoverall increase in the win rate in recent years fromwhat it has been in the past.

In England & Wales, if there is a finding of a validand infringed claim, the court ordinarily grants a finalinjunction, among other remedies. The party held to in-fringe must comply with this order, and failure to do socan be treated as contempt (with criminal sanctions).The patent owner does not have to provide a bond toenforce the decision. Accordingly, if the trial judgmentis reversed on appeal, the enjoined party is unable toclaim compensation from the patent owner for the pe-riod that it has been kept off the market between trialand appeal.

G. Comparative Patentee Win Rates by Country by Indus-try (Infringement Win Rate Only in Bifurcated Countries)68

As soon as the Global IP Project started looking at pat-entee win rates, clients asked for industry-specific data.They were correct to do so. There can be large differ-ences in win rates across different technologies. Butthat can introduce the issue of much smaller data popu-lations and consequent less statistically significant data.However, with this limitation in mind, the Global IPProject operates on the premise that having some data

is better than having no data at all. It is helpful whenconsidering a patent litigation strategy to have at leastsome idea of what the particular industry-specific winrate is, however small the data set. Moreover, thereader must always be mindful that the unified winrates represent an outcome on validity and infringe-ment (at least one claim held valid and infringed iscounted as a ‘‘win’’), while the bifurcated win rates arefor infringement only.

The Global IP Project started tagging patent litigationdecisions according to ten categories: biotechnology,chemical/materials engineering, electrical, mechanical,medical device, pharmaceutical, software, semiconduc-tor, computer hardware and a catch-all category,namely ‘‘other.’’ Going forward, the DARTS-IP data-base will provide even more industry-specific data be-cause DARTS-IP will be tagging cases according to themuch more extensive European Patent Office (EPO)classification system. The industry-specific data re-ported here comes from the Global IP Project and is justbeginning to develop.69 Often the win rate for mechani-cal cases is the most reliable because there are morecases. The biotechnology data, on the other hand, oftenrepresents a very small number of cases. The relevantexhibits include only those countries with at least onecase decided on the merits in the specific technologyfrom the time period 2006-2012, except for the follow-ing countries where the reported time period is China2007-2013; England 2006-2013; Germany 2009-2013 foroverall, 2011-2012 for industry-specific; Italy 2011-2012; Netherlands 2006-2011; and Taiwan 2009-2011.70

The data for Germany only represents the Dusseldorfcourt of first instance. South Korea’s win rates are fromthe Global IP Project data collection only.

The pharmaceutical industry is also globally uniquebecause it is the one industry where a first strike deci-sion in one country, whether successful or unsuccess-ful, has virtually no bearing on leveraging a globalsettlement elsewhere around the world. Typically phar-maceutical patent litigation is about obtaining an in-junction, hence increased market share. Accordingly,even if a brand manufacturer or a generic is successfulin one country, that ‘‘first strike’’ outcome is not likelyto influence a settlement in another jurisdiction becauseany market where the pharmaceutical product hasregulatory approval remains important.

Again, the bifurcated countries’ patentee win rates inthe pharmaceutical area are significantly higher than inthe unified systems. In 3 of the bifurcated systems, Bra-zil, Germany and South Korea, the pharmaceutical winrate is actually higher than the overall country win rateaverages. In the unified systems, on the other hand,only 2 of the 8 countries, Australia and Japan, have ahigher pharmaceutical win rate than the overall countrywin rate average.

The patentee win rate in medical device cases is verylow in unified systems; lower than the overall averagepatentee win rate, in some cases, significantly lower(e.g., Canada). In all the countries represented in thechart, China stands out as the only one where the medi-cal device patentee win rate is higher than the overallaverage.

S-20


CountryNumber of

BiotechnologyPatentee Wins

Number ofBiotechnology

Cases

Number of OverallPatentee Wins

Number of OverallCases

Bifurcated countries(infringement only)

Brazil 0 3 14 34China (invention patents) 0 1 231 340

Germany (invention patents) 8 8 534 812Unified countries

Australia 1 1 25 46England 0 1 26 105France 3 12 161 413Italy 2 2 37 92Japan 0 1 58 259

Netherlands 1 1 48 133Taiwan (invention patents) 0 3 8 52

Exhibit 15: Biotechnology Patentee Win Rate and Overall Patentee Win Rate.71 Again the reader is cautioned toremember the small data population represented. Still it is interesting to note that some European countries (Ger-many, Italy, Netherlands—all 100%) generally seem more patentee-friendly in biotechnology cases than Asian coun-tries (China, Japan, Taiwan—all 0%). 7 of the 8 German biotech cases were plant variety cases.

0% 0%

100% 100%

0%

25% 25%

100%

0%

100%

0%

41%

68% 66%66%

54% 54%

25%25%

39% 40%

22%

36% 36%

15% 15%

0%

10%

20%

30%

40%

50%

60%

70%

80%

90%

100%

Brazil China(invention patents)

Germany Australia England France Italy Japan Netherlands Taiwan (inventionpatents)

Biotechnology Overall

Bifurcated systems(infringement only)

Unified systems

S-21


Country

Number ofChemical/Material

EngineeringPatentee Wins

Number ofChemical/MaterialEngineering Cases





Germany (invention patents) 16 21 534 812South Korea 1 2 106 406

Unified countriesAustralia 5 8 25 46Canada 2 2 19 41England 1 4 26 105France 7 37 161 413Italy 3 7 37 92Japan 7 27 58 259


Exhibit 16: Chemical/Materials Engineering Patentee Win Rate. While the win rates reported here derive fromlarger data sets than reported in Exhibit 15, it is again not surprising, but nevertheless interesting to see how the winrates vary from a low of 14% in Brazil (1/7) and 13% in Netherlands (1/8) compared with a high of 100% (2/2 inCanada), 76% (16/21) in Germany, and 63% (5/8) in Australia. Note that the bifurcated countries’ win rates relatesolely to the infringement issue.

14%14%

50%

76%76%

50%

63%

100%

25%25%19%

43%

26%26%

13%

50%

41%

68% 66% 66%

26%26%

54% 54%

46%46%

25% 25%

39% 40%

22%

36%36%

15% 15%

0%

10%

20%

30%

40%

50%

60%

70%

80%

90%

100%

Brazil China (invention patents)

Germany(inventionpatents)

South Korea

Australia Canada England France Italy Japan Netherlands Taiwan (inventionpatents)

Chemical/Materials Engineering Overall


Unified systems

S-22


CountryNumber of

Electrical PatenteeWins

Number ofElectrical Cases





Germany (invention patents) 534 812South Korea 3 6 106 406

Unified countriesAustralia 0 1 25 46England 0 4 26 105France 21 72 161 413Japan 3 48 58 259


Exhibit 17: Electrical Patentee Win Rate. Only in Germany is the electrical patentee win rate higher than the over-all average patentee win rate (invention patents; infringement only). There were also two utility model decisions re-lated to electrical technology; the patentee win rate was 50% (1/2). In all 4 bifurcated countries, the win rate is 50%or higher, but it is on infringement only. In the Unified countries, the electrical win rate is very low: 0% in Australia(0/1), England (0/4), and Netherlands (0/2), and 6% for Japan (3/48), 14% for Taiwan (8/58), and France is the high-est at 29% (21/72).

50% 52%

71%

50%

0% 0%

29%

6%6%0%

14%

41%

68% 66% 66%

26% 26%

54%

25% 25%

39%

22%

36% 36%

15% 15%

0%

10%

20%

30%

40%

50%

60%

70%

80%


Germany(invention patents)

SouthKorea

Australia England France Japan Netherlands Taiwan (inventionpatents)

Electrical Overall


Unified systems

S-23


CountryNumber ofMechanical

Patentee Wins

Number ofMechanical Cases








Exhibit 18: Mechanical Patentee Win Rate. The mechanical industry sector has the most cases, so the data is clos-est to the overall average win rate in most countries. Germany also has a utility model mechanical win rate of 68%(19/28). Generally, the bifurcated systems have a much higher patentee win rate in mechanical cases (averaging 82%)than the unified systems (averaging 37%). The rate for bifurcated countries of course only represents the infringe-ment win rate. This suggests that in unified systems, alleged infringers are often successful at proving invalidity inmechanical cases, lowering the patentee win rate.

83%77%

67%

100%

63%

38%

30%

40% 41%

28%

37%

16% 16%

41%

68% 66%66%

26%26%

54%54%

46%46%

25%25%

39% 40%

22%

36%36%

15%15%

0%

10%

20%

30%

40%

50%

60%

70%

80%

90%

100%


Germany (inventionpatents)

South Korea


Mechanical Overall


Unified systems

S-24


CountryNumber of

PharmaceuticalPatentee Wins

Number ofPharmaceutical

Cases







Netherlands 9 26 48 133Taiwan 0 3 8 52

Exhibit 19: Pharmaceutical Patentee Win Rate. England reports the greatest number of decisions in the pharmaceu-tical field. The 24% win rate in England encourages generic drug companies to initiate their defensive ‘‘first strike’’patent litigations there, as discussed in Section I. The pharmaceutical win rate for Canada represents infringementlitigation. This is different from the Patented Medicines (Notice of Compliance) Decisions (PM(NOC)) cases, a spe-cial pharmaceutical proceeding in Canada. In the PM(NOC) cases, the patentee win rate for 2006-2012 is 38% (25/66).

67%

50%

81%

100%

60%

30% 24%24%

17%

29%33% 35% 35%

0%

41%

68% 66%66%

26%26%

54%54%

46%46%

25%25%

39% 40%

22%

36%36%

15%15%

0%

10%

20%

30%

40%

50%

60%

70%

80%

90%

100%

Brazil China(inventionpatents)

Germany (inventionpatents)

South Korea


Pharmaceutical Overall


Unified systems

S-25


CountryNumber of MedicalDevice Patentee

Wins

Number of MedicalDevice Cases





Germany (invention patents) 1 2 534 812Unified countries

Australia 1 3 25 46Canada 0 1 19 41England 4 20 26 105

Italy 0 1 37 92Japan 1 6 58 259


Exhibit 20: Medical Device Patentee Win Rate. Often medical device litigation is initiated first in Europe becausethe U.S. regulatory process at the FDA typically takes longer than its counterparts in Europe. Similarly to the phar-maceutical industry, that the low patentee win rate in medical device cases mean it is not surprising to see defensive‘‘first strikes’’ filed by alleged infringers at the London Patents Court.

50%

79%

50%

33%

0%

20%

0%

17%17%

29%

0%

41%

68% 66% 66%

54% 54%

46% 46%

25% 25%

40%

22%

36%36%

15% 15%

0%

10%

20%

30%

40%

50%

60%

70%

80%

90%

Brazil China(inventionpatents)

Germany(inventionpatents)

Australia Canada England Italy Japan Netherlands Taiwan (invention patents)

Medical device Overall


Unified systems

S-26


Country

Number ofComputer

(hardware/software) Patentee

Wins

Number ofComputer

(hardware/software) Cases




China (invention patents) 3 4 231 340South Korea 1 1 534 812

Unified countriesAustralia 0 1 25 46Canada 0 1 19 41England 0 6 26 105

Italy 0 2 37 92Japan 0 2 58 259


Exhibit 21: Computer Hardware/Software Patentee Win Rate. The universe of global data for computer hardware/software results is very small. Even so, it is safe to say that in unified systems, owners of computer hardware or soft-ware patents have a very low chance historical win rate, usually significantly lower than the overall average. One ex-ception is Taiwan, where the win rate (25%; 3/12) is about 10% higher than the overall average Taiwan patentee winrate of 15%. It is somewhat surprising that with how poorly these patents do in litigation globally, the win rate inChina exceeds the overall average patentee win rate. This of course only represents the issue of infringement and isbased on very limited data.

75% 75%

100%

0% 0% 0% 0% 0%

17%

25%25%

68%

26% 26%

54%54%

46% 46%

25% 25%

40%

22%

36% 36%

15% 15%

0%

10%

20%

30%

40%

50%

60%

70%

80%

90%

100%

China (inventionpatents)

South Korea Australia Canada England Italy Japan Netherlands Taiwan (invention patents)

Computer hardware/software Overall


Unified systems

S-27


CountryNumber of

SemiconductorPatentee Wins

Number ofSemiconductor

Cases




China (invention patents) 0 3 231 340South Korea 1 4 534 812

Unified countriesJapan 2 12 58 259

Taiwan 0 3 8 52

Exhibit 22: Semiconductor Patentee Win Rate. The universe of data for semiconductor results is very small. Therewere no reported semiconductor first-instance patent litigation decisions reported outside of four Asian countries. Ofthese four, China and Taiwan have a 0% patentee win rate (0/3), while South Korea has one win and Japan has two.Even though the data universe is small, it is interesting that the patentee win rates in South Korea and Japan areclose to the overall average in each.

0%

25%25%

17%17%

0%

68%

26%26%22%

15%15%

0%

10%

20%

30%

40%

50%

60%

70%

80%

China (invention patents)

South Korea Japan Taiwan (invention patents)

Semiconductors Overall


Unified systems

S-28


Country Number of ‘‘Other’’Patentee Wins

Number of ‘‘Other’’Cases




Brazil 1 5China (invention patents) 441 574 231 340

South Korea 0 1 534 812Unified countries

Australia 1 2 25 46Canada 0 2 19 41England 0 1 26 105

Italy 7 20 37 92Japan 9 48 58 259


Exhibit 23: ‘‘Other’’ Patentee Win Rate. For the sake of completeness, Exhibit 23 presents the remaining Global IPProject ‘‘other’’ technology category. No meaningful technology-specific conclusions can be drawn, however, be-cause the cases represented by the data are possibly very diverse. England also reports a patentee win rate for ‘‘tele-coms’’ of 32%. It is not reported in this report, because the Global IP Project does not have this technology category.

20%

77%77%

0%

50%

0% 0%

35% 35%

19%

44% 44%

23%

41%

68%

26% 26%

54% 54%

46%46%

25%25%

40%

22%

36% 36%

15% 15%

0%

10%

20%

30%

40%

50%

60%

70%

80%

90%


South Korea

Australia Canada England Italy Japan Netherlands Taiwan (invention patents)

"Other" Overall


Unified systems

S-29


III. Spotlight: 3 Most Active Patent LitigationCountries72

The three most active patent litigation jurisdictionsby measure of annual filings are the U.S., China andGermany.73 All three have multiple courts in which toinitiate an infringement action74 and, consequently,forum-shopping is a significant factor in developing aneffective strategy. Germany (12 first-instance infringe-ment courts) and China (127 first-instance infringementcourts) are bifurcated systems, but the U.S. (94 trialcourts)75 is a unified system. However, as noted in Sec-tion I, the U.S. is becoming a more ‘‘bifurcated’’ juris-diction in appearance because of the rapid adoption ofthe new post-grant procedures under the AIA and pref-erence to use the new PTAB as a forum in which to liti-gate the issue of patentability. Notably, about 43% (364/850) of IPRs are involved in district court litigation76

and about 2/3 of those cases are stayed in favor of anIPR.77 Of course, if a district court does not stay (whichhappens at least 1/3 of the time), then there is no bifur-cation but rather parallel proceedings with a race to afinal decision.

Although both are bifurcated systems, the validitychallenge routes in Germany and China are very differ-ent. For example, first-instance validity challenges inGermany are handled at the Federal Patent Court(FPC78) (a court independent of the Germany PatentOffice) whereas in China they are handled by the Pat-ent Reexamination Board of the Chinese Patent Office(SIPO). The costs for both the infringement and validityproceedings are considerably more in Germany than inChina, and in Germany, the loser usually pays a sub-stantial portion of the winning party’s litigation fees inboth validity and infringement proceedings. One wouldexpect that the ‘‘loser pays’’ model discourages litiga-tion, and that therefore the percentage of Chinese in-fringement litigations with a corresponding validitychallenge will be much higher than that for Germany.To date, this data has not been available because inboth countries it has been extremely difficult to trackthose patents involved in both an infringement proceed-ing and a validity challenge. However, with DARTS-IP,it is now possible to begin to track this information. Thechart generated by DARTS-IP for Germany and Chinais a first attempt to provide data indicating what per-centage of infringement litigations in each country in-clude a corresponding validity challenge, together withthe resultant, combined ‘‘win rate’’ for each country.

There are challenges obtaining the data. In Germanyand China, each issue, if litigated, is not initiated at thesame time, not coordinated with each other in any way,and may terminate months apart. Moreover, the partieschallenging validity are not necessarily the same as theparties to the infringement litigation in each case. Onceissue-specific win rate data can be obtained for thesame patents that are litigated separately for both in-fringement and validity in bifurcated countries, it willthen be possible to provide a ‘‘combined win rate’’ thatwill be more directly comparable to the win rates for the‘‘unified’’ countries under the Global IP Project method-ology (i.e., a ‘‘win’’ is where at least one asserted claimof a patent is found both valid and infringed). Currently,because of the limited data developed to date, the au-thors estimate that the percentage of German patentslitigated for both infringement and validity is 30-40%.79

While the ‘‘combined’’ data for China is not sufficient at

this point to support a meaningful, corresponding esti-mate, the authors anticipate that the percentage of Chi-nese infringement cases that also include a validitychallenge should be significantly higher than Germany.So far, the data indicates otherwise. Indeed, as can beseen from Exhibit 29, 16 out of 84 Beijing 1st Interme-diate Court patent infringement decisions, roughly 19%,also included a corresponding validity challenge beforethe SIPO Patent Reexamination Board. In contrast, asshown in Exhibit 24, 40% (37/88) of patents litigated inthe Dusseldorf Regional Court in Germany have a cor-responding validity proceeding (5 in the EPO and 28 inthe BPG). As more data becomes available, it will be in-teresting to see if this trend remains the same or movestoward what is anticipated by the Global IP Project.

A. Germany

1. Patent Infringement and Validity Win Rates For thepopulation of 88 Dusseldorf infringement decisions in2012, 61 were patentee ‘‘wins’’ for a win rate of 69%. Ofthe 88 decisions, 51 did not include a validity challengewithin the 2-year period searched and 37 did. Accord-ingly, the first DARTS-IP attempt to correlate win ratedata for the bifurcated issues of both infringement andvalidity for the same patent indicates that 40% of Dus-seldorf patents litigated for infringement also includeda corresponding validity challenge in either the Euro-pean Patent Office (EPO) or the Bundespatentgericht(BPG/FPC). The authors caution the reader about thepreliminary nature of this data because the number ofcases is limited and the procedures for correlating va-lidity and infringement challenges (as well as the com-mon identity of the parties) are not fully developed. It isanticipated that more complete and accurate data willbecome available in the future.

For the population of 67 invention patent decisions,the patentee win rate is 59.7% (47/67). Moreover, as canbe seen from the right-hand side of Exhibit 25, 49% (33/67) of the same population of invention patent infringe-ment decisions include a corresponding validity pro-ceeding (with 5 decisions on the merits in the EPO and28 decisions on the merits in the BPG).

Exhibit 26 doesn’t use Global IP Project methodol-ogy. According to the Global IP Project formula, thecases for which there is no data are excluded. Accord-ingly, using the Global IP Project formula for the 4 EPOcases with an outcome, the calculated patent validationrate in the EPO is 50% + 1/2(50%) = 75%, and 44% +1/2(22%) = 55% for the 9 BPG cases.

The DARTS-IP charts report the results of the valid-ity decisions from both the EPO and the BPG in thesame manner as can be used with the Global IP Projectformula. According to that formula, the patent valida-tion rate for invention patents in the EPO for 2012 is66% + 1/2(2%) = 67%; and the rate for invention pat-ents in the BPG for 2012 is 39% + 1/2(13%) = 45.5%.For very rough, comparison purposes, it is noted thatthe earlier calculated, corresponding patent validationrate for invention patents that have a patent infringe-ment case decided by the Dusseldorf First-instanceCourt in 2012 is 75% in the EPO; whereas the rate is55% in the BPG. Of course, it must be considered thatfor the earlier, bifurcated win rate calculations, the uni-verse of cases was much smaller: 4 in the EPO; and 9 inthe BPG. On the other hand, Exhibit 29 is drawn from1,372 EPO decisions and 103 BPG decisions.

S-30


Exhibit 24: Bifurcation of Patent Infringement Cases From the Dusseldorf First-Instance Court, 2012. As indicatedearlier, this chart represents 88 cases published by the Dusseldorf Regional Court in 2012. The Global IP Project es-timates that there were 129 proceedings on the merits published by the Dusseldorf Regional Court in 2012.

Exhibit 25: Bifurcation of Patent Infringement Cases From the Dusseldorf First-Instance Court, 2012, InventionPatents Only.

88

5

51

21

11

0

10

20

30

40

50

60

70

80

90

100

Total No known validity challenge

***

Ongoing validitychallenge

Decision on themerits of validity

EPO only BPG only

Corresponding validity challenges**

27

61

10

20

30

40

50

60

70

80

90

100

Patentee Loses Patentee Wins

00

Infringement win rate *(Düsseldorf first-instance court)

9090909

67

5

34

18

10

0

10

20

30

40

50

60

70

80

Total No known validity challenge

**

Ongoing validitychallenge

Decision on themerits of validity

EPO only BPG only

Corresponding validity challenges *

20

47

0

10

20

30

40

50

60

70

80


0000

Infringement win rate (Düsseldorf lower court)

S-31


Exhibit 26: Patent Validation Rate for Invention Patents That Have a Patent Infringement Case Decided by theDusseldorf First-Instance Court in 2012. In other words, the patent validation rate for patents that have a patent in-fringement case that was decided in 2012, and a corresponding validity challenge (opposition action in front of EPOor cancellation proceeding in front of the Bundespatentgericht, the German patent court) within the 2 years (beforeor after) the infringement decision.

Exhibit 27: Comparing Validation Rates Between EPO Opposition Actions and BPG Cancellation Actions, in 2012for First-Instance Invention Patent Infringement Decisions on the Merits in 2012.

Patent Validation rate,Bundespatentgericht (BPG)

(# of decisions/patents)

Patent Validation rate, European Patent Office (EPO)

(# of decisions/patents)

4, 40%

2, 20%

3, 30%

1, 10%

Totally valid Partially validNot valid No Data

2, 40%

2, 40%

1, 20%

Totally valid Partially validNot valid No Data

European Patent Office(EPO)

Bundespatentgericht(BPG)

927, 66%

32, 2%

445, 32%

Totally valid Partially valid Not valid

40, 39%

13, 13%

50, 48%

Totally valid Partially valid Not valid

S-32


Exhibit 28: Procedure Duration in Different German Jurisdictions for First-Instance Invention Patent Infringe-ment Decisions in 2012. The reader is cautioned that Exhibit 28 chart is based on a limited population of decisions.The reason for the small number is because very few German patent decisions report both the date the case was filedand the date of the final decision on the merits. The authors hope that in the future it will be possible to obtain thisinformation from reliable sources.

2. Time from Filing to Decision on the Merits The aver-age duration of infringement and validity proceedingsin Germany is a little less than 2 years. Of course, asmentioned earlier, these two time periods may or maynot be running simultaneously. A patent could surviveinfringement litigation and then face a validity chal-lenge in the FPC much later, or vice versa. If the pro-ceedings are simultaneous, the German infringementproceeding is not likely to stay a decision pending theoutcome of the validity challenge.80 The average time ofless than 2 years compares favorably with many districtcourts in the U.S. but is about twice as long as the aver-age time for infringement and validity proceedings inChina.

3. Remedies The most important remedy in Germanyis an injunction. Damages hearings rarely occur there.The court will consider damages only after a determina-

tion of liability, and often the parties settle before thehearing is held. The largest damage award to date wasfor about U.S. $2.7M,81 which is small compared withthe largest awards elsewhere in the world.

In Germany, damages actually suffered are compen-sated. There are no punitive damages. Damages may becalculated as lost profits, infringer’s profits, or a reason-able royalty. In German proceedings, a court will decideliability of the defendant to compensate damages and torender accounts. Under German law, there is an obliga-tion of the losing party to reimburse statutory attorney(and patent attorney) fees of the winning party.82 Theattorneys’ statutory fees are calculated based on thevalue in dispute, as determined by the court. Accord-ingly, the obligation to compensate attorneys’ fees isnot based on actual costs of the attorney (which mayhave been calculated on an hourly fee) but rather statu-tory fees.

Average duration of infringement actionin months (# of decisions)

222Düsseldorf (6)

Mannheim (9)

0 5 10 15 20 25

Average duration of cancellation action in months (# of decisions)

.21Bundespatentgericht (128)

0 5 10 15 20 25

S-33


B. China

1. Patent Infringement and Validity Win Rates Exhibit29 shows the first-instance patentee infringement winrate in China for the Beijing 1st Intermediate People’sCourt for 2012 for 84 decisions is 73.8 % (62/84). Theauthors caution the reader about this preliminary bifur-cation data because the number of cases is limited andthe procedures for correlating validity and infringementchallenges (as well as the common identity of the par-ties) are not fully developed.

Only 19% of the 84 Chinese infringement decisionsappear to have a corresponding validity challenge (16/84). For the 15 decisions for which a validity decisioncould be located, the validation rate according to theGlobal IP Project formula (excluding the cases forwhich there is no data) is 87% + 1/2(6.7%) = 90.3 %.The authors provide the same preliminary data caveatsas those expressed earlier. Nevertheless, multiplyingthe patentee infringement win rate 74% by the patentvalidation rate, 90%, for this limited sample size resultsin a combined win rate of 67%. This combined win rateis very high.

Exhibit 30 shows that the patentee win rate for thispopulation of 104 first-instance utility model infringe-ment decisions from the Beijing 1st Intermediate Peo-ple’s Court is 65.4% (68/104). It also shows that only30% (32/104) of those decisions include a correspond-ing validity challenge. For those 28 cases for whichthere is actual decision data, the utility model validationrate according to the Global IP Project formula (exclud-ing the cases for which there is no data) is 71.4% +1/2(7.1%) = 74.9%.

Subject to the same caveats expressed earlier, multi-plying the patentee infringement win rate 65% by theutility model validation rate, 75%, results in a combinedwin rate of 49%.

For each of the 8 reported courts, the 2012 InventionPatent win rate exceeds 67%, except for Shanghai 2nd,which is 33%. The universe of cases on which the calcu-lation is based is still small.

For each of the 8 courts the 2012 Utility Model Patentwin rate exceeds 50%, except for Shanghai 1st, which isalso 33%. The universe of cases on which the calcula-tion is based is still small.

For the 1,036 reported decisions from the SIPO Reex-amination Board, the patentee validity win rate accord-ing to the Global IP Project methodology is 37% +1/2(14%) = 43%.

2. Time from Filing to Decision on the Merits Exhibit 35shows that the average duration for 2012 utility patentinfringement decisions was less than 1 year for all ofthe reported courts other than the Changdu and Nan-jing intermediate courts. The same was true for inven-tion patent cases in courts other than Zhengzhou andBeijing 1st. A duration of less than a year makes China

one of the fastest patent litigation jurisdictions in theworld.

Exhibit 34 shows an average time for a validity deci-sion from SIPO in 2012 was 8 months. This number isfairly robust because it is based on 1,096 decisions. Thismakes China one of the fastest jurisdictions in theworld for obtaining a validity decision.

3. Remedies Although perhaps starting to changesomewhat, the average damage award in China remainssmall, relative to the damages awarded in other coun-tries, averaging about U.S. $15,000.83 As is the case inGermany, an injunction is also the primary litigationobjective in China.

The patentee may ask the judges to decide the issuesof infringement and damages in one case. Alternatively,it may also file a separate litigation to pursue damagesafter the court decides that infringement was commit-ted. To determine a damage award, the damages calcu-lation is based on the following four methods, whichmust be pursued in the below priority order:

1. the patentee’s actual loss caused by the infringe-ment;

2. the infringer’s benefit acquired through infringe-ment;

3. 1–3 times reasonable royalties; or

4. statutory compensation ranging from RMB 10,000to RMB 1,000,000 (about U.S. $1,590–$9,000).84

Because the calculation of patentee’s damage claimmust follow the above sequence of proof, only when theprevious method of proof fails is the patentee permittedto pursue the following method described above.

Attorneys’ fees are recoverable damages for theplaintiff.85 However, in practice, courts award only asmall portion of the fees actually incurred by the pre-vailing party. Court fees should also be the responsibil-ity of the losing party, but in many cases the defendantis only ordered to pay part of the court fee.

The reasonable expenditures of the plaintiff spent forinvestigating and confirming the infringement can alsobe included as part of the prevailing party’s damages.86

In 2012, the losing party in all but two of 385 cases, wasordered to pay the court fee. The average court fee forthose 383 cases was RMB 4,756 (about U.S.$792).

A permanent injunction is available at the plaintiff’srequest. However, if an injunction is determined by thecourt to be detrimental to the public interest, the courtmay decide not to grant it. For example, if the patent in-volves technology used by a power plant and an injunc-tion would mean the power plant had to stop produc-tion, the public interest would be harmed as a result ofthe injunction. In that scenario, the court will thenlikely grant a compulsory license even though ChinesePatent Law assigns the power of granting compulsorylicenses to SIPO.

S-34


Exhibit 29: Bifurcation of First-Instance Invention Patent Infringement Cases From Beijing 1st Intermediate Peo-ple’s Court, 2012.

Exhibit 30: Bifurcation of First-Instance Utility Model Patent Infringement Cases From Beijing 1st IntermediatePeople’s Court, 2012.

84

16

68

0

10

20

30

40

50

60

70

80

90

Total No known validitydecision **

Decision on validity of patent


22

62

0

10

20

30

40

50

60

70

80

90


00

Infringement win rate *** (Chinese 1st instance cases)

13, 82%

6%

1, 6%

1, 6%

Totally Valid Partially ValidNot Valid No Data

Corresponding validity win rate

104

32

72

0

10

20

30

40

50

60

70

80

90

100

Total No known validitydecision **

Decision on validity of patent


36

68

0

10

20

30

40

50

60

70

80

90

100


00

Infringement win rate *** (Chinese 1st instance cases)

001001

20, 62%

6, 19%

4, 13%

Totally Valid Partially Valid

Not Valid No Data

Corresponding validity win rate

S-35


Exhibit 31: Patentee Infringement Win Rate in First-Instance Invention Patent Decisions on the Merits in China,in 2012.

Exhibit 32: Patentee Infringement Win Rate in First-Instance Utility Model Decisions on the Merits in China, in2012.

100% 3/3

100% 4/4

33% 2/6

67% 4/6

100% 7/7

86% 6/7

77% 10/13

76% 13/17

0%

10%

20%

30%

40%

50%

60%

70%

80%

90%

100%

Nanjing Intermediate

Court

Jiangmen Intermediate

Court

Shanghai 2nd Intermediate

Court

Zhengzhou Intermediate

Court

Chengdu Intermediate

Court

Beijing 1st Intermediate

Court

Guangzhou Intermediate

Court

Shanghai 1st Intermediate

Court

75% 3/4

50% 2/4

50% 2/4

80% 4/5

80% 4/5

50% 3/6

33% 3/9

53% 8/15

76% 19/25

0%

10%

20%

30%

40%

50%

60%

70%

80%

90%

Jiangmen Intermediate

Court

Shanghai 2nd Intermediate

Court

Changzhou Intermediate

Court

Lanzhou Intermediate

Court

Chengdu Intermediate

Court

Nanjing Intermediate

Court

Shanghai 1st Intermediate

Court

Zhengzhou Intermediate

Court

Guangzhou Intermediate

Court

S-36


Exhibit 33: Validation Rate in SIPO Validity Decisions on the Merits, 2012.

Exhibit 34: Procedure Duration of First-Instance SIPO Patent Reexamination Board Decisions on the Merits inChina in 2012. Average based on 1,096 decisions between January 1, 2012, and December 31, 2012.

506 49%

383 37%

150 14%

Not Valid

Totally Valid

Partially Valid

0 2 4 6 8

Average Time in Months

S-37


Exhibit 35: Procedure Duration of First-Instance Patent Infringement Decisions on the Merits in China in 2012.

9.50 9

4.04

8.52

13.87

.029 19

6.39

4.50

7.03 0

- 2.00 4.00 6.00 8.00 10.00 12.00 14.00 16.00 18.00 20.00

Guangzhou Intermediate Court(25)

Zhengzhou Intermediate Court(15)

Shanghai First Intermediate Court(9)

Nanjing Intermediate Court(6)

Chengdu Intermediate Court(5)

Changzhou Intermediate Court(4)

Shanghai Second Intermediate Court(4)

Jiangmen Intermediate Court(4)

China – Utility Patent InfringementAverage Duration in months, 2012

8.23

8.52

14.43

6.04

13.87

10.88 8

9.10

6.17

- 2.00 4.00 6.00 8.00 10.00 12.00 14.00 16.00

Shanghai First Intermediate Court(17)

Guangzhou Intermediate Court(13)

Beijing First Intermediate Court(7)

Chengdu Intermediate Court(7)

Zhengzhou Intermediate Court(6)

Changsha Intermediate Court(6)

Jiangmen Intermediate Court(4)

Nanjing Intermediate Court(3)

China - Invention Patent InfringementAverage Duration in months, 2012

S-38


C. United States

1. Patent Infringement and Validity Win Rates In theU.S., there are 94 federal district courts in which patentlitigation may be initiated. The U.S. is a unified system,so both infringement and validity may be determined ina single court proceeding. The litigation may be initi-ated by the patent owner or by the alleged infringer (fora declaration of noninfringement or invalidity). Theonly other patent infringement venues in the U.S. arethe U.S. International Trade Commission (USITC)(where there are certain domestic industry jurisdic-tional requirements and where money damages cannotbe obtained) and the U.S. Court of Federal Claims(where infringement claims against the U.S. govern-ment must be filed).87 In addition, there are a threeprincipal ways a contested case can be terminated onthe merits in the U.S: case-dispositive summary judg-ments, judge verdict, or jury verdict. The result is sev-eral different patentee win rates for each first-instancecourt.

The busiest first-instance court in the U.S., by patentlitigation filings, is the Eastern District of Texas, with1,513 cases filed in 2013.88 Second is the District ofDelaware with 1,336, followed by the Central Districtand Northern District of California with 417 and 396 re-spectively. For the Eastern District of Texas, the overallpatentee win rate is 45% (includes consent and defaultjudgments). The patentee win rate in contested cases(excluding consent and default judgments) is 37%. Thebench trial win rate is 100% (2/2), and the jury trial winrate is 56.8% (25/44).89 The appropriate win rate to usedepends on the stage of the litigation. Before filing? Atthis stage the overall win rate is most appropriate un-less it is known that the opposing party is litigious, inwhich case the contested win rate is the appropriatewin rate to use. After claim construction? The jury orbench win rate will apply depending on which finder offact will decide the case.

Very few of the patent cases filed in the Eastern Dis-trict of Texas go to a decision on the merits, 1.6% (46/2,862),90 but the average damage award is $34M, mak-ing it a very attractive jurisdiction to patent owners.91

The AIA created two new post-grant proceedings:post-grant review (PGR) and inter partes review (IPR).Since coming into effect September 16, 2012, 2,144 IPRpetitions have been filed.92 As discussed in Section I,this enthusiastic uptake of the new proceedings is mak-ing the U.S. more of a ‘‘bifurcated’’ jurisdiction. Factorssupporting the favorability of PTAB are a statutorytimeline of one year from institution, no presumption ofvalidity for the patent, a lower burden of proof, and po-tentially lower costs.

An integral part of the changes to the administrativeoptions is the replacement of the Board of Patent Ap-peals and Interferences with the Patent Trial and Ap-peal Board (PTAB). The PTAB is the forum of first in-

stance for IPRs and PGRs. It comprises a panel of threeadministrative patent judges with technical and legaltraining. PGR petitions have a time limit of 9 months af-ter issuance, which may remind some practitioners ofEPO Opposition proceedings, but there are many proce-dural differences.93

As of November 1, 2014, the petition grant rate is 77%and so far the PTAB has held 68% of the institutedclaims unpatentable.94 Nearly 23% of the claims havesurvived without any changes, and 9% of the claimswere conceded by the patent owner.95

The same patent claims can be at issue simultane-ously in an administrative proceeding and a U.S. dis-trict court litigation. Neither forum is required to stayits proceeding in favor of the other (except for limitedcircumstances96). Moreover, a patent held valid in liti-gation may still be challenged in an administrative pro-ceeding and may be determined unpatentable.97 In liti-gation, there is a presumption of patent validity and aclear-and-convincing evidentiary standard of proof. Be-fore the PTAB, by contrast, there is no presumption ofvalidity, the broadest reasonable claim construction ap-plies, and a preponderance-of-evidence standard deter-mines the issue of patentability. There have been casesin the United States where damages awarded by a courtafter an infringement trial were held unenforceable af-ter a PTAB decision of unpatentability.98

2. Time from Filing to Decision on the Merits The timefrom filing to termination in first-instance patent litiga-tion in the United States varies considerably by district.For example, according to the 2014 PriceWater-houseCoopers Patent Litigation Study, the median timeto termination by trial in the Eastern District of Virginiais less than one year (.97 years), whereas the averagetime to termination by trial in the Northern District ofIllinois is more than 3.67 years.99 Even looking at termi-nation by contested judgments, there is wide variationbetween the fastest (Eastern District of Virginia at 12.2months) and the slowest (Eastern District of Michiganat 42.3 months).100 On average, patent infringement liti-gation in the United States is likely to take between twoto three years, depending in large part on how long dis-covery takes, and to a lesser degree on which districtcourt is involved. This makes the U.S. the slowest of thethree most active patent litigation countries, although itmust be remembered that the issues of validity, in-fringement, and damages may all be determined whena U.S. litigation terminates. In China and Germany, in-fringement and validity will be separate and an addi-tional hearing for damages may be necessary.

The new post-grant proceedings, IPR and PGR, bystatute must finish 12 months (or, for ‘‘good cause,’’ 18months) from the date on which they are instituted.101

As of December 4, 2014, 177 IPR Final Written Deci-sions have issued from 853 IPRs instituted. The PTABhas, for the most part, met the 12-month deadline.

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Exhibit 36: Bench and Jury Patentee Win Rates in Most Active U.S. Federal District Courts (By Patent Infringe-ment Litigation Filings).102

Exhibit 37: Outcomes of PTAB Final Written Decisions.103

100% 2/2

48% 22/45

100% 4/4

83% 2.5/3

100% 1/1

25% 1/4

67% 4/6 18/28

60% 3/5

38% 3/8

57% 25/44

58% 14.5/25 50%

6/12 44% 7/16

56% 5/9

75% 3/4

100% 3/3

83% 5/8

63% 7.5/12

88% 7/8

0%

10%

20%

30%

40%

50%

60%

70%

80%

90%

100%

Eastern District of Texas

District of Delaware

Central District of California

Northern District of California

Southern District of California

Northern District of Illinois

Southern District of Florida

District of New Jersey

Eastern District of Virginia

Southern District of New York

Bench Jury

1457 68.31%

194 9.10%

482 22.60%

Instituted Claims Cancelled by PTAB Instituted Claims Conceded by Owner Instituted Claims Survived

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Exhibit 38: Time From Filing to Termination by Contested Judgment in the 10 Most Active U.S. District Courts(in Months).104

Exhibit 39: PTAB Final Written Decision Timing.105

ED Texas, 30.4

D Delaware, 28.3

CD California, 19.6

ND California, 24

SD California, 25.3

ND Illinois, 31.9

SD Florida, 20.6

D New Jersey, 30.6

ED Virginia, 12.2

SD New York, 30.6

0 5 10 15 20 25 30 35

Days from Institution to Final Written Decision

Freq

uenc

y of

Cas

es

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While not as fast as the average time to terminationin SIPO in China, that is faster than the FPC in Ger-many, and marks a significant change from the pre-AIAera, when ex parte reexamination was the main admin-istrative validity challenge option and the average timefor ex parte reexamination from filing to issued certifi-cate exceeded two years (27.8 months).106

3. Remedies Liability for patent infringement in theU.S. is only civil in nature; there is no criminal liabil-ity.107 Remedies for patent infringement include dam-ages,108 permanent and preliminary injunctions,109 andattorneys’ fees.110 Damages awarded are the largest inthe world, by an order of magnitude (see Section II): thelargest damages award was $1.8 billion.111 Damagesare a primary objective of patent litigation in the U.S.,in contrast to Germany and China (and most countries)where an injunction is the main goal. With the increasein patent litigation in the U.S. by nonpracticing entities,it is no longer automatic that a permanent injunctionwill be granted upon a finding of liability; permanent in-junctions are routinely denied in cases in which the pat-entee merely licensed its technology and was not offer-ing its own commercial embodiment.112

There are two calculation methods in the U.S.: lostprofits and reasonable royalty.113 There are no infring-er’s profits awarded. Damages must not be less than areasonable royalty. A reasonable royalty is the defaultcalculation when lost profits cannot be sufficientlyproved or are otherwise inappropriate as the measureof damages. Prejudgment interest and postjudgment in-terest are also available to compensate the patenteebased on the lost time–value of money it should have re-ceived.114

In addition, mixed damages awards are possible. Forexample, lost profits may compensate for the part of theinfringing sales the patent owner proved it could havemade, and a reasonable royalty may be applied for theremainder of the infringing sales.115

Courts have authority and discretion to grant punitivedamages. The court may increase the damages up tothree times the amount found or assessed (‘‘treble dam-ages’’).116 Typically, increased damages are granted foracts of willful infringement. Willful infringement dam-ages are awarded when the infringer acted despite anobjectively high likelihood that its actions constitutedinfringement of a valid patent.117 The patentee mustshow the objective recklessness of the infringer byclear-and-convincing evidence.

Reimbursement of costs and attorneys’ fees are pos-sible, but not very likely. Even if some costs areawarded to a winning party, it is very unlikely to coverthe actual costs and fees incurred. To be eligible for anaward of reasonable attorneys’ fees, a party must showthat the litigation is an ‘‘exceptional case.’’118 This is adiscretionary determination by the court, and attorneys’fees awards are not very common.

IV. Methodology and Data SourcesThe Global IP Project defines a patent litigation

‘‘win’’ as a patent litigation case that is terminated in a

first-instance trial decision on the merits and in whichat least one asserted claim of the patent-in-suit is heldboth valid and infringed. Any other decision on the mer-its is considered a ‘‘loss.’’ To determine a country’s winrate for patentees on a per-case basis, the total numberof ‘‘wins’’ is the numerator and the total number of‘‘wins + losses’’ is the denominator. For example, if ina given year there are 5 cases that were wins for the pat-entee and 7 that were losses, the win rate would be5/(7+5), or 42 percent. The same formula is used to de-termine the patentee win rate on a per-patent basis,which may be applicable in countries where more thanone patent is at issue in a single litigation.

For bifurcated countries, the above formula applies tothe infringement litigation outcomes. For validity, a sec-ond win rate must be calculated. In validity decisions,one of three outcomes is usually possible:

1. All claims are validated without change, which is aclear win for the patentee;

2. All claims are invalidated, which is a clear loss forthe patentee; or

3. At least one claim is amended, or some claims in-validated and some claims remain unchanged, or thepatent is ‘‘partially invalidated.’’

The third outcome is unclear for the patentee be-cause the data does not indicate whether the specificclaims amended or held invalid were the ones coveringthe allegedly infringing product or process. Accord-ingly, it is impossible to determine, without a more de-tailed review of the actual decision itself, whether thethird outcome is a ‘‘win’’ or a ‘‘loss’’ for the patentee. Toresolve this problem and permit the calculation of an‘‘estimated’’ win rate, one-half of the mixed decisionsare considered a win and one-half a loss. The calcula-tion of the patentee win rate for validity challenges,therefore, equals the percentage of all claims main-tained without change + 1/2(percentage of decisionswith at least one claim amended).

The validation rate formula also applies in unifiedcountries to validity decisions of administrative pro-ceedings, where that route is available. For example,the U.S., Japan, and Taiwan are countries with a unifiedsystem (both validity and infringement may be deter-mined in one judicial proceeding) and an administrativevalidity challenge route (in the national patent office) isalso available.

The report is based on data collected by Global IPProject contributors for the Global IP Project, some ofwhich is reported in GLOBAL PATENT LITIGATION: HOW AND

WHERE TO WIN (copyright � 2014 by The Bureau of Na-tional Affairs, Inc., and reprinted by permission). It isalso based on data collected by DARTS-IP (www.darts-ip.com) as part of a collaboration agreement betweenDARTS-IP and the Global IP Project. The U.S. data de-rives from LegalMetric for the U.S. district court data,Courtlink for the U.S. patent litigation filing data, Price-WaterhouseCoopers for the U.S. damage awards data,and the United States Patent & Trademark Office forthe PTO post-grant proceedings data.

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V. Global IP Project Participating Firms and Attorneys

Argentina Marval, OFarrell & Mairalwww.marval.com

Martin BensadonIgnacio Sanchez EchagueMaria Laura EtcheverryMarval, OFarrell & MairalAv. Leandro N. Alem 928C1001AAR, Buenos AiresArgentinaTel: +54-11-4310-0100Fax: [email protected]@[email protected]

Australia Ashurst Australiawww.ashurst.com

Mary PadburyJessica NorgardKellech SmithAshurst AustraliaLevel 26181 William StreetMelbourne VIC 3000AustraliaGPO Box 9938DX 388 MelbourneTel: +61 3 9679 3000Fax: +61 3 9679 [email protected]@[email protected]

Austria Salomonowitz Horak Lawyerswww.sh-ip.at

Dr. Sascha SalomonowitzSalomonowitz Horak LawyersTuchlauben 18 / 9A-1010 ViennaT: +43 (1) 5320404-0F: +43 (1) [email protected]

Brazil Dannemann, Siemsen,Bigler & Ipanema Moreira

www.dannemann.com.br

Joaquim Eugenio GoulartRodrigo CarneiroDannemann, Siemsen,Bigler & Ipanema MoreiraRua Marques de Olinda, 7022251-040, Rio De JaneiroBrazilTel: +55 21 553 1811 (general)Tel: +55 21 2237 8750 (direct)Fax: +55 21 553 [email protected]@dannemann.com.br

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Canada Gowlingswww.gowlings.com

Michael CrichtonGowling Lafleur Henderson LLP160 Elgin StreetSuite 2600Ottawa, OntarioCanada K1P 1C3Tel: +613-786-0248Fax: [email protected]

Chile Silva & Cia - Santiagowww.silva.cl

Francisco SilvaJuan Pablo SilvaAndres GrunewaldtSilva & CiaHendaya 60, PISO 4Las CondesSantiago, ChileTel: +56 2 4387000Fax: +56 2 [email protected]@[email protected]

China Beijing Sanyou IntellectualProperty Agency Ltdwww.san-you.com/en/

Lena ShenBeijing Sanyou Intellectual PropertyAgency Ltd.16F, Block A, Corporate SquareNo. 35 Jinrong StreetBeijing 100032, P. R. ChinaTel: +86.10.88091921+86.10.88091922Fax: [email protected](Xiaoguang Cui, [email protected])

Denmark Zacco Advokater – Copenhagenwww.zaccoadvokater.dk

Martin Sick NielsenZacco AdvokaterHans Bekkevolds Alle 7DK-2900 HellerupDenmarkTel.: +45 70 42 42 10Fax: +45 70 42 42 [email protected]

England Taylor Wessing - Londonwww.taylorwessing.com

Chris ThornhamPaul EnglandTaylor Wessing5 New Street SquareLondon EC4A 3TWUKTel: +44 (0)207 300 7000Fax: +44 (0)207 300 [email protected]@taylorwessing.com

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Finland Roschier, Attorneys Ltd.www.roschier.com

Johanna FlythstromRainer HilliMikael SegercrantzRoschier, Attorneys, Ltd.Keskuskatu 7 A00100 HelsinkiFinlandTel: +358 (0)20 506 6518Fax: +358 (0)20 506 [email protected]@[email protected]

France VERON & ASSOCIESA V O C A T Swww.veron.com

Pierre VeronThomas BouvetVERON & ASSOCIESA V O C A T S1, rue VolneyF 75002 Paris, FranceTel.: +33 (0)1 47 03 62 62Fax: +33 (0)1 47 03 62 [email protected]@veron.com

Germany Taylor Wessing - Munich &Dusseldorf

www.taylorwessing.com

Dr. Sabine RojahnTaylor WessingIsartorplatz 8D-80331 MunichTel. +49 (0)89 2 10 38 -0Fax: +49 (0)89 2 10 38 [email protected]

Roland KuppersTaylor WessingBenrather Str. 1540213 DusseldorfTel. + 49 (0)211 83 87 -0Fax: + 49 (0)211 83 87 [email protected]

India Anand and Anandwww.anandandanand.com

Pravin AnandArchana ShankerAnand and Anand1 Jaipur EstateB-41 Nizamuddin EastNew Delhi, India 110 013Tel: +91 11 2435 51749Fax: +91 11 2435 [email protected]@AnandAndAnand.com

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Ireland A&L Goodbodywww.algoodbody.ie

John WhelanJohn CahirA&L GoodbodyInternational Financial Services CentreNorth Wall QuayDublin 1, IrelandTel: +353 1 649 2000Fax: +353 1 649 [email protected]@algoodbody.ie

Israel Gilat Bareket& Co.www.rcip.co.il/en/gilat-bareket/

Eran BareketGilat Bareket & Co.26A Habarzel Street, Tel-Aviv 6971037,IsraelP.O.Box 13136, Tel-Aviv 6113101, IsraelTel: +972 3 5672000Fax: +972 3 [email protected]

Italy Franzosi - Dal Negro - Settiwww.franzosi.com

Vincenzo JandoliFranzosi - Dal Negro, et al.Via Brera5 - 20121 MilanoTel.: +39 02 859091Fax: +39 02 [email protected]

Japan Kaneko & Iwamatsu - Tokyowww.kanekoiwamatsu.com

Shinichi MurataAttorney-at-law (admitted in Japan and New York)Kaneko & Iwamatsu12th Fl. Daido Seimei Kasumigaseki Bldg.1-4-2 Kasumigaseki, Chiyoda-kuTokyo 100-0013 JapanTel: 81-3-6206-1303Fax: [email protected]

Korea Kim & Changwww.ip.kimchang.com

Jay J. KimTae-Jun SuhCy C. KimJeongdong Building, 17F21-15 Jeongdong-gilJung-gu, Seoul 100-784, KoreaTel: [email protected]@[email protected]

Mexico Uhthoff, Gomez Vega & Uhthoff SCwww.uhthoff.com.mx

Saul SantoyoUhthoff, Gomez Vega & Uhthoff SCHamburgo No. 260C.P. 06600 Mexico D.F.Tel: +52-5533-5060Fax: +52-5208-8387/[email protected]

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Netherlands NautaDutilhwww.nautadutilh.com

Professor Charles GielenNautaDutilhStrawinskylaan 19991007 XV AmsterdamP.O. Box 71131007 JC AmsterdamThe NetherlandsT: +31 20 7171 902F: +31 20 7171 [email protected]

NewZealand

A J Parkwww.ajpark.co.nz

Matt AdamsA J ParkLevel 22, State Insurance Tower1 Willis StreetWellington, New ZealandPO Box 949, Wellington 6140, New ZealandTel: +64-4-498-3454Fax: [email protected]

Norway Zacco Norway ASwww.zacco.com

Zacco Norway ASHaakon Vll’s gt. 2PO Box 2003 VikaNo-0125 Oslo, NorwayTel: +47-22 91 04 00Fax: +47-22 91 05 00

Russia Gowlings International Inc.www.gowlings.com

David AylenGowlings International Inc.11 Gogolevsky BoulevardMoscow, Russia119019Tel: +7 495 502 [email protected]

Scotland Brodies LLPwww.brodies.com

Gill GrassieRobert BuchanBrodies LLP15 Atholl CrescentEdinburgh EH3 8HAScotland UKTel: + 44 (0) 131 656 0078Fax: +44 (0)131 228 [email protected]@brodies.com

SouthAfrica

To be identified To be identified

Spain Gomez-Acebo & Pombo Abogadoswww.gomezacebo-pombo.com

Gonzalo UlloaEduardo CastilloGomez-Acebo & Pombo Abogados, SLPCastellana, 21628046 MadridTel: (34) 91 582 91 00Fax: (34) 91 582 91 [email protected]@gomezacebo-pombo.com

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Sweden Zacco Sweden ABwww.zacco.com

Bengt EliassonZacco Sweden ABSveavagen 151Box 23101SE-104 35 StockholmSwedenTel: +46 8 7299555Fax: +46 8 [email protected]

Switzerland Schellenberg Wittmerwww.swlegal.ch

Andrea MondiniPhilipp GrozSchellenberg WittmerLowenstrasse 19Postfach 6333CH-8023 ZurichSwitzerlandTel: +41-44-215-5252Fax: [email protected]@swlegal.ch

Taiwan Saint Island InternationalPatent & Law Office

www.saint-island.com.tw

Frank LiuTony T.Y. ChangSaint Island InternationalPatent & Law Office7th Fl., No.248, Section 3,Nanking East Road,Taipei, Taiwan,Republic of ChinaTEL : 886-2-2775-1823FAX : [email protected]@mail.saint-island.com.tw

U.S.A. Finnegan, Henderson, Farabow,Garrett & Dunnerwww.finnegan.com

Michael C. ElmerC. Gregory GramenopoulosJonathan StroudStacy LewisFinnegan901 New York Ave., NWWashington, DC [email protected]@[email protected]@finnegan.com

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NOTES1 Text in this section excerpted and/or derived from

GLOBAL PATENT LITIGATION: HOW AND WHERE TO WIN

(Bloomberg BNA 2014) and GLOBAL PATENT LITIGATION,2014 SUPPLEMENT (Bloomberg BNA 2014) is the copy-right � of The Bureau of National Affairs, Inc., and is re-printed by permission. For information on the treatiseand supplement, see http://www.bna.com/global-patent-litigation-p17179895470/.

2 Data sources listed in Section V.3 Source: Global IP Participant for the time period

2006-2013.4 Source: Global IP Participant.5 842 instituted, 258 denied. Does not include joinder

decisions. As of Nov. 27, 2014. Source: http://www.uspto.gov/ip/boards/bpai/stats/112714_aia_stat_graph.pdf

6 1,457/2,133. An additional 9% of the challengedclaims were conceded by the patent owner (194/2,133).Source: Finnegan research, as of Nov. 1, 2014, http://www.aiablog.com/claim-and-case-disposition/. Seealso, Jonathan R.K. Stroud & Mark Consilvio, Unravel-ing the USPTO’s Tangled Web: An Empirical Analysisof the Complex World of Post-Issuance Patent Proceed-ings, 20 INTELL. PROP. L. REV. (Georgia) (2014).

7 Only unified systems have the possibility of double-tracking because bifurcated systems separate infringe-ment and validity proceedings. See Exhibit 5. Global IPProject countries with double-tracking are Canada,Denmark, England, Finland, France, India, Israel, Italy,Japan, Netherlands, Norway, Spain, Sweden, Switzer-land, Taiwan, and the U.S.

8 See also Michael C. Elmer and Stacy Lewis, ‘‘GlobalTrend to IP Specialty Courts,’’ Managing IP China Edi-tion (July 2013).

9 The patent pilot program in the U.S. district courtswas a step in this direction also, but the judges do nothave technical backgrounds.

10 http://unified-patent-court.org/images/documents/enhanced-european-patent-system.pdf

11 Source: Global IP Participant for China.12 Source: Courtlink.13 Details and discussion of the UPC can be found in

Chapter 5, ‘‘The Unified Patent Court’’ of GLOBAL PATENT

LITIGATION: HOW AND WHERE TO WIN (Bloomberg BNA 2014).14Source: Courtlink. See also, Chapter 15 of GLOBAL

PATENT LITIGATION: HOW AND WHERE TO WIN (Bloomberg BNA2014).

15 The GIP Project authors define an ‘‘invention’’ pat-ent as a patent that has been subject to prior art exami-nation, to distinguish from other patents such as the

Disclaimer: These materials are public information and have been prepared solely for educational and en-tertainment purposes to contribute to the understanding of intellectual property law. They reflect only thepersonal views of the authors and provide no individualized legal advice. It is understood that each case isfact-specific; and that the appropriate solution in any case will vary. Therefore, these materials may or maynot be relevant to any particular situation. Thus, the authors and participating law firms of the Global IPProject cannot be bound either philosophically or as representatives of their various present and future cli-ents to the comments expressed here. The presentation of these materials does not establish any form ofattorney-client relationship with the joint authors and participating law firms of the Global IP Project. Whileevery attempt was made to ensure accuracy, errors or omissions may appear, for which any liability is dis-claimed.

About: The Global IP Project was founded in January 2002 by Michael Elmer of Finnegan, Henderson,Farabow, Garrett & Dunner, LLP. One of the main objectives of the Global IP Project was to develop win ratedata and other objective global metrics with the assistance of patent attorneys and litigators from law firmsaround the world. Before 2002, this data did not exist. Through the combined efforts of its members, theGlobal IP Project has collected litigation data from 1997 through the present for the most litigious countriesin the world. Today, the Global IP Project has members from 30 countries and collaborates with DARTS-IP(http://www.darts-ip.com/), a global intellectual property case law database collects decisions daily and cur-rently has over 2,000,000 cases from over 2,000 courts globally (as of September 2014). Each individual de-cision is analyzed locally by trademark, patent, design or domain name specialists. Search interfaces are tai-lored to the needs of IP professionals. DARTS-IP has a large number of filters to find cases and to researchglobal data, such as date, main proceeding, substantive discussion, industry, country/court, win rates, pro-ceeding duration, and bifurcation. In 2014, Global IP Project participants representing 16 countries contrib-uted to the treatise GLOBAL PATENT LITIGATION: HOW AND WHERE TO WIN, published by Bloomberg BNA. Two morecountries (Finland and Israel) were included in the first supplement, to be published in December 2014.While the book supplements are intended to provide updated data and developments for the current 18 book-countries, another objective is to gradually include additional Global IP Project participating countries in thebook. Similarly, while this first Annual Report includes data for 19 countries, the objective is to eventuallyinclude data from all 30 countries in future annual reports. In addition, the reader is directed to the GlobalIP Project website, www.globalpatentmetrics.com, where the authors provide additional global patent litiga-tion data and related information.

Acknowledgement: This report was prepared with input from the Global IP Participants representing the19 countries discussed in the report, with editorial direction and writing from Michael C. Elmer, C. GregoryGramenopoulos, and Stacy Lewis of Finnegan, Henderson, Farabow, Garrett & Dunner, LLP.

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http://www.bna.com/global-patent-litigation-p17179895470/


http://www.uspto.gov/ip/boards/bpai/stats/112714_aia_stat_graph.pdf



http://www.aiablog.com/claim-and-case-disposition/


http://unified-patent-court.org/images/documents/enhanced-european-patent-system.pdf

http://unified-patent-court.org/images/documents/enhanced-european-patent-system.pdf

http://www.darts-ip.com/


utility model and design patents in China, which havenot been examined. It should also be noted that inChina, more than 65% of all patent infringement litiga-tions are based on utility model and design patents;11% cases filed for ‘‘invention’’ patents, and 24% ‘‘notknown.’’ Source: Global IP Participant.

16 About U.S. $44M. Settled for U.S. $24 million be-fore an appeal was heard.

17 Largest award to date in Japan is U.S. $82M, AruzeCorp. v. Sammy Corp., Hanrei Times No. 1119, 222(2002). Largest award to date in Taiwan is U.S. $65.8M,Celanese Far East Limited Taiwan Branch (HongKong) v. China Petrochemical Development Corpora-tion, 95 Zhi 5 (Taipei D.C. 2007) Taiwan Taipei DistrictCourt (overruled in Aug. 2010). Source: Global IP Par-ticipants.

18 Japan: 22% (58/259) (2006-2012); Taiwan: Designpatents 36% (4/11), Invention patents 15% (8/52), Utilitymodels 16% (16/97) (2010–2011). Source: Global IP Par-ticipants.

19 The USPTO 2014 Annual Report shows 330 re-quests in 2012 and 260 IPR requests in 2013 wereknown to have related litigation. Since inter partes re-view replaced inter partes reexamination on Sept. 16,2012, we use an estimate of 104 for 2012 for a total of364 IPR requests known to have related litigation. Thisrepresents about 43% (364/850). The 850 requests areestimated from the bar graph at http://www.uspto.gov/ip/boards/bpai/stats/112714_aia_stat_graph.pdf. Litiga-tion may be stayed pending termination of the IPR. Anaverage of 66% of litigation stay requests were grantedaccording to LegalMetric Nationwide Report: StayPending Inter Partes Review in Patent Cases, August2012-June 2014 (‘‘based upon 212 decisions in con-tested stay pending inter partes review motions foundin the dockets of the courts. Of these 212 decisions, 136were granted, 6 were granted in part, and 70 were de-nied.’’ The grant rate, of course, varies by district.).

20 PriceWaterhouseCoopers 2014 Patent LitigationStudy, p. 2.

21 NPE data is extremely difficult to obtain. Whilethere are a few well-known NPEs, there is no universalway to tell if a plaintiff is an NPE by looking at thename. In addition, the meaning of what constitutes anNPE is often debated and the real party in interest is notalways evident from the pleadings.

22 This is not the case in the U.S. in view of eBay, Inc.v. MercExchange, LLC, 547 U.S. 388, 391 (2006).

23 Text in this section excerpted and/or derived fromGLOBAL PATENT LITIGATION: HOW AND WHERE TO WIN

(Bloomberg BNA 2014) and GLOBAL PATENT LITIGATION,2014 SUPPLEMENT (Bloomberg BNA 2014) is the copy-right of The Bureau of National Affairs, Inc., and is re-printed by permission. For information on the treatiseand the forthcoming supplement, see http://www.bna.com/global-patent-litigation-p17179895470/.

24 Source: http://www.uspto.gov/patents/stats/inter_parte_historical_stats_roll_up_EOY2013.pdf.

25 Estimated from bar graph at http://www.uspto.gov/ip/boards/bpai/stats/112714_aia_stat_graph.pdf.

26 Canada, England & Wales, Finland, France, India,Israel, Italy, Japan, Netherlands, Switzerland, Taiwanand the U.S. have ‘‘double tracking.’’

27 The Global IP Project, through its collaborationwith DARTS-IP, is attempting to encourage other coun-tries to adopt a practice similar to that in the U.S.,where a civil cover sheet is prepared and submitted, in-

dicating a patent infringement case. Only when and ifthis (or a similar practice) is implemented, togetherwith an electronic reporting system, will it be possibleto obtain more accurate, comparative filing data.

28 Source: Global IP Participant.29 ‘‘1+’’ means that while technically multiple courts

have jurisdiction, virtually all patent infringement casesare brought in one court.

30 Double-tracking question applies only to unifiedcountries.

31 87 intermediate courts, 6 basic courts, 31 highcourts, and 3 IP-specialty courts all have jurisdiction tohear first-instance patent infringement litigation cases.

32 India considers itself a ‘‘hybrid’’ system becausepost-grant oppositions and patent revocation actionscan be brought only before the Intellectual Property Ap-pellate Board (IPAB). However, the authors consider In-dia a unified system because invalidity can be raised asa defense in patent infringement litigation and the courtcan make a validity determination. Uniquely, multiplevalidity challenge routes may not be used simultane-ously.

33 Source: Global IP Project.34 Source: Global IP Participants.35 Source: Global IP Participants for China and Ger-

many; Courtlink for U.S.36 This issue is discussed in detail in chapter 3 of

GLOBAL PATENT LITIGATION: HOW AND WHERE TO WIN. Thebench and jury trial win rates are based on decisions onthe merits in cases that have survived summary judg-ment. It is more than twice as high as LegalMetric’s‘‘contested’’ win rate, which includes other case out-comes such as case-dispositive summary judgment mo-tions. For example, as shown in Exhibit 10 for the U.S.,the contested win rate is only 24% whereas the com-bined (bench and jury) trial win rate is 60.4%.

37 As will unified systems where ‘‘double tracking’’ isavailable.

38 Although the data shows 259 patent litigation casesdecided on the merits, the 1,265 patent cases filed in-clude all patent-related cases such as patent licensecases and employee invention cases. 259/1,265 gives afigure of 21%, which is too low, considering the denomi-nator is not just patent infringement litigation casesfiled; 40% is considered a reasonable estimate.

39 Preliminary injunction data is reported for Indiabecause there is insufficient data for decisions on themerits in the first instance. One decision on the merits,Roche v. Cipla, Delhi High Court, Sept. 7, 2012.

40 The Italian patent litigation data is provided byDARTS-IP based on decisions provided by the Judges ofCorporate Courts.

41 South Korean patent infringement litigation dataprovided by Professor Chaho Jung’s analysis of 406 pat-ent infringement cases between 2000–2009, which indi-cates the patentee won or partially 106 times and lost300 times. Accordingly, the South Korean patentee winrate is 26% (106/406). Prof Jung characterizes a case as‘‘partially won’’ where the patentee won on the issue ofinfringement (according to the book definition) but wasnot awarded all of the damages requested.

42 Source: LegalMetric Nationwide Patent LitigationReport February 2014 for the time period January 1991–February 2014. Patentee win rates vary widely amongthe U.S. federal district courts.

43 Source: Canadian Intellectual Property Office(CIPO).

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44 Patent validity is ordinarily challenged in the court,but can be challenged post-grant in the UKIPO in revo-cation proceedings (rarely used) and EPO oppositionsare available for European patents if filed within ninemonths of grant, or if there is an opposition pendinginto which a litigant can intervene.

45 Finnish Patents and Registration Office’s First-Instance Decisions on Patent Oppositions 2009–2012.

46 No national validity challenge track, but EPO op-positions available for European patents.

47 Preliminary injunction data is reported for Indiabecause there is insufficient data for decisions on themerits in the first instance. One decision on the merits,Roche v. Cipla, Delhi High Court, Sept. 7, 2012.

48 Data from Intellectual Property Appellate Board(IPAB) revocation proceeding; patentee win rate calcu-lated differently than Global IP Project methodology.

49 The Israel Patent Office (ILPTO) validity win rateis not recorded in a manner consistent with the GlobalIP Project methodology, but rather a refusal of the op-position and withdrawal of the opposition (cumula-tively) are counted as a win for the patent applicant,and withdrawal of the patent application and allowanceof the opposition (cumulatively) are counted as a lossfor the patent applicant. This data, however, is probablyskewed towards showing a higher win rate than thetrue one. This is because the patentee loss data shouldbe fairly accurate (there is little doubt that withdrawalof the patent application and allowance of the opposi-tion are a loss for the patent applicant), but the othertwo results are not necessarily a complete win for thepatentee. Refusal of the opposition may have beenachieved after a narrowing amendment of the claims,and withdrawal of the opposition may have beenachieved after granting a license or a covenant not tosue to the opponent. Therefore, we have reported theloss rate of at least 48% to be as consistent as possiblewith the Global IP Project methodology.


51 The win rate cannot be determined more preciselyaccording to the Global IP Project methodology (allclaims maintained without change + half of the claimsamended) because this level of data is not available.The number indicated here represents the ‘‘requests forinvalidation not accepted or dismissed’’ (patent claimsremain intact without change; a win for the patentee).Source: 2013 Japan Patent Office (JPO) Annual ReportPart 5 (2006–2012).


53 The Russia Patent Chamber validity win rate is notrecorded in a manner consistent with the Global IPProject methodology. Rather, for 2008–2010, 64% of thetime in validity challenges the claims were all main-tained or maintained-in-part. This includes patents,trademarks and appellation cases

54 South Korean patent infringement litigation dataprovided by Professor Chaho Jung’s analysis of 406 pat-ent infringement cases between 2000–2009, which indi-cates the patentee won 39 times, ‘‘partially won’’ 67times, and lost 300 times (in actuality, 408 cases wereevaluated; however, two cases were mediated). Accord-ingly, the patentee win rate is 26% (106/406). As notedpreviously, Professor Jung characterized certain casesas ‘‘partially won’’ where the patentee, after winning on

the infringement issue, was not awarded all of the dam-ages requested.

55 The win rate cannot be determined more preciselybecause the required level of data is not available. Thenumber indicated here represents the decisions whereno claims were invalidated (patent claims remain intactwithout change; a win for the patentee). Source: KoreanIntellectual Property Office (KIPO) Intellectual Prop-erty Tribunal (IPT), 2005–2009.


57 The win rate cannot be determined more preciselybecause the required level of data is not available. Thenumber indicated here is the ‘‘requests for invalidationdenied’’ (patent claims remain intact without change; awin for the patentee). Source: TIPO Annual Report In-validation Decisions (2010–2012).

58 Source: LegalMetric Nationwide Patent LitigationReport February 2014 for the time period January 1991-February 2014. Patentee win rates vary widely amongthe U.S. federal district courts.

59 Source: www.patstats.org, reported on issue-by-issue, not case-by-case.

60 22% percent of all claims confirmed + 1⁄2 (66% ofat least one claim amended). Source: United States Pat-ent and Trademark Office (USPTO) statistics, June 1,1981–Sept. 30, 2013 (www.uspto.gov).

61 Source: Finnegan research, http://www.aiablog.com/claim-and-case-disposition/. PTABresults surviving claims (23%) (482/2,133). Data as ofNov. 1, 2014.

62 Brazil: Lune v. Americel, 2nd Chamber of the CivilCourts of Brasilia, case n. 1998.01.1012867; Canada:Merck v. Apotex, 2013 FC 751 (2013); Japan: AruzeCorp. v. Sammy Corp., Hanrei Times No. 1119, 222(2002); South Korea: Kimberly-Clark Corp. v. SsangYong Paper Co. Ltd. (2004); Taiwan: Celanese Far EastLimited Taiwan Branch (Hong Kong) v. China Petro-chemical Development Corp., 95 Zhi 5 (Taipei D.C.2007) Taiwan Taipei District Court (overruled in Aug.2010); China: Zhejiang province, CHINT v. SchneiderElectric Low Voltage (Tianjin) Co. Ltd. (2007) (utilitymodel patent) (settled for $24M before appeal heard);France: TGI Paris, 3rd Chamber, section 2, (2007),Ethypharm/Fournier; Finland: District Court of Hel-sinki, decision, No. 11/14339, dated 15 April 2011, in thematters L 02/1623, L 02/9097, L 02/9513, L 09/47725, L09/47735, L10/20063, and L 10/39588.7; Italy: Court ofAppeal of Milan, No. 2199/10, October 7, 2010; Eng-land: Ultraframe v. Eurocell (2006) ($6.15M); GerberGarment Technology Inc v. Lectra Systems Ltd. (Ct.App.) (1996) ($6M); Spain: Pfizer v. Bexal; Netherlands:Excluding approximately 15 years of statutory interest,District Court The Hague, 6 September 2006, nr. 3563/HAZA92-8273, BIE 2007, 103: Bom/Alcoa; Germany:EUR 2.04M plus interest; Dusseldorf Regional Court,June 22, 2010, File No. 4b O 57/09, ‘‘Occluder’’ (In-fringement was, however, not confirmed by FederalCourt of Justice and, consequently, damages becamere-payable); Israel: the Ein Tal matter (2003).

63 Australia preliminary injunction grant rate: 74%(14/19) (2006-2011); Germany preliminary injunctiongrant rate: 2009 – 2013: 55% (79/145) (Dusseldorf first-instance court only).

64 There are regional versions of this diagram on theGlobal IP website, www.globalpatentmetrics.comwherein the most patentee-friendly and patentee-

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unfriendly countries are identified for Asia and Europe,respectively. The most patentee-friendly countries inEurope are Germany, France, and the Netherlands, andthe most patentee-unfriendly is England. In Asia, themost patentee-friendly country is China, and the mostpatentee-unfriendly are Japan and Taiwan.

65 There are regional versions of this diagram on theGlobal IP Project website, www.globalpatentmetric-s.com.

66 Source: Global IP Participant.67 Source: Global IP Participant.68 In this Report, the authors provide industry-

specific data from the Global IP Project. For industrydata from DARTS-IP, the reader is directed to AppendixA of GLOBAL PATENT LITIGATION: HOW AND WHERE TO WIN,where the first-ever global industry-specific data is pro-vided from early data extractions from the DARTS-IPdatabase. While the data is embryonic, the DARTS-IPdatabase is also interesting because it captures indus-tries according to the more extensive EPO classificationsystem.

69 Although the Italy cases come from DARTS-IP da-tabase, the analysis of industry-specific win rates comesfrom the Global IP Project.

70 For more technology-specific patentee win rates inFrance, see chapter 17 of GLOBAL PATENT LITIGATION: HOW

AND WHERE TO WIN. The only French technology-specificpatentee win rate data included in this report is thatcorresponding to the Global IP Project technology cat-egories.

71 When the UPC is established, London will be thespecialty court for human necessities, chemistry andmetallurgy.

72 The charts in this section on Germany and Chinaare provided by DARTS-IP. The data represents a lim-ited number of cases. For example, in 2012, theDARTS-IP German bifurcation data chart is based on88 of decisions from Dusseldorf.

73 In the U.S., nearly all patent litigation filings relateto invention patents. In Germany, they relate to inven-tion patents and utility models. In China this numberrepresents invention patents, utility models and designpatents. Design patents and utility models make up atleast 65% of the patent litigation filings; invention pat-ents 11%, unknown 24%. Source: Global IP Project.

74 Germany has 12 first-instance infringement courts;the U.S. has 94 first-instance federal district courts plusthe ITC and Court of Federal Claims; and China has 87intermediate people’s courts, 6 basic courts, 31 highcourts, and 3 IP-specialty courts that can hear the first-instance patent infringement litigation cases.

75 While not discussed here, the U.S. has two addi-tional trial courts, namely, the U.S. International TradeCommission (USITC) and the U.S. Court of FederalClaims.

76 The USPTO 2014 Annual Report shows 330 re-quests in 2012 and 260 IPR requests in 2013 wereknown to have related litigation. Since inter partes re-view replaced inter partes reexamination on Sept. 16,2012, we use an estimate of 104 for 2012 for a total of364 IPR requests known to have related litigation. Thisrepresents about 43% (364/850). The 850 requests areestimated from bar graph at http://www.uspto.gov/ip/boards/bpai/stats/112714_aia_stat_graph.pdf.

77 Litigation may be stayed pending termination ofthe IPR. An average of 66% of litigation stay requestswere granted according to LegalMetric Nationwide Re-

port: Stay Pending Inter Partes Review in Patent Cases,August 2012–June 2014 (‘‘based upon 212 decisions incontested stay pending inter partes review motionsfound in the dockets of the courts. Of these 212 deci-sions, 136 were granted, 6 were granted in part, and 70were denied. The grant rate, of course, varies by dis-trict. In very limited circumstances, a stay is mandatory(35 U.S.C. § 315(a)(2) and § 325(a)(2)); otherwise, thedecision to grant a stay request is at the discretion ofthe district court judge. Before the AIA, the proclivity ofdistrict court judges to grant requests for a stay pend-ing ex parte reexamination varied widely. See Legal-Metric Nationwide Report Stay Pending Reexaminationin Patent Cases, June 1991–February 2014.

78 Also known as the Bundespatentgericht (BPG). InGermany, there may also be validity challenges in theEuropean Patent Office (EPO) of European patents des-ignating Germany.

79 As can be seen from the first DARTS-IP Germanbifurcation chart, 37 out of 88 Dusseldorf patent in-fringement decisions for calendar year 2012 (40%) alsoincluded either a corresponding validity challenge inthe EPO or FPC. It is this limited population of deci-sions that provides the, ‘‘upper’’ preliminary estimate of40%. This is considered an upper estimate because theDARTS-IP database is not yet able to confirm that thesame parties are involved in both the Dusseldorf in-fringement case and the corresponding validity chal-lenge.

80 See Chapter 18 in GLOBAL PATENT LITIGATION: HOW AND

WHERE TO WIN.81 Germany: EUR 2.04M plus interest; Dusseldorf Re-

gional Court, June 22, 2010, File No. 4b O 57/09, ‘‘Oc-cluder’’ (Infringement was, however, not confirmed byFederal Court of Justice and, consequently, damagesbecame re-payable).

82 GCCP § 91.83 Source: Global IP Participant, average damage

awards from select Chinese first-instance courts, 2007-2009: Shanghai 2nd, U.S. $35,400; Beijing 1st, U.S.$22,000; Zhejiang Ningbo, U.S. $20,400; Beijing 2nd,U.S. $18,400; Anhui Hefei, U.S. $12,300; GuangdongShenzhen, U.S. $11,500; Shanghai 1st, U.S. $11,500;Zhejiang Jinhua, U.S. $11,500,

84 Article 65, Patent Law of China (2009).85 Article 65 of Patent Law of China (2009); Article 22

of Supreme Court’s Some Regulations on the Applica-tion of Laws to Hearing Patent Dispute Cases (2013).

86 Article 22 of Patent Law of China (2009).87 For more information on USITC and Claims Court

data see the Global IP Project website, www.globalpat-entmetrics.com.

88 Source: Courtlink.89 Source: LegalMetric, District Report, Jan. 2009–

Feb. 2014.90 Source: LegalMetric, District Report, Jan. 2009–

Feb. 2014.91 Source: LegalMetric, District Report, Jan. 2009–

Feb. 2014.92 Source: http://www.uspto.gov/ip/boards/bpai/stats/

120414_aia_stat_graph.pdf, as of December 4, 2014.93 See Filip De Corte, Anthony C. Tridico, Tom Irving,

Stacy D. Lewis & Christina N. Gervasi, AIA Post-GrantReview & European Oppositions: Will They Work inTandem, or Rather Pass Like Ships in the Night?, 14N.C. J.L. & Tech. 93 (2012), available at http://ncjolt.org/wp-content/uploads/2013/01/11_De-Corte_Final.pdf.

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94 1,457/2,133. Source: Finnegan research, as of Nov.1, 2014, www.aiablog.com/claim-and-case-disposition/.

95 Source: Finnegan research, as of Nov. 1, 2014,www.aiablog.com/claim-and-case-disposition/.

96 35 U.S.C. § 315(a)(2) and § 325(a)(2).97 See, e.g., Fresenius USA v. Baxter Int’l, 721 F.3d

1330 (Fed. Cir. 2013), cert. denied, 134 S.Ct. 2295 (U.S.2014), and In re Baxter Int’l, Inc., 678 F.3d 1357 (Fed.Cir. 2012); ); Interthinx, Inc. v. Corelogic, Inc.,CBM2012-00007 Paper 58 (P.T.A.B. Jan. 30, 2014)(holding unpatentable expired patent claims that hadbeen held valid, enforceable, and infringed in patentlitigation).

98 See, e.g., RIM $612M settlement of litigation overpatents that were later held invalid by the USPTO in re-examination; NTP, Inc. v. Research In Motion, Ltd., 397F. Supp. 2d 785 (E.D. Va. 2005).

99 2014 PriceWaterhouseCoopers Patent LitigationStudy, Chart 9a.

100 LegalMetric District Reports, January 2009–Feb.2014 (‘‘average time from case filing to case termina-tion, in months, for all patent cases terminated by con-tested judgment[.]’’).

101 35 U.S.C. § 316(a)(11) and § 326(a)(11).102 Source: LegalMetric, District Reports, Jan. 2009–

Feb. 2014. The reports indicate that when ‘‘.5’’ isshown, half a case was counted because in it is recordedthat both parties prevailed.

103 Source: Finnegan research, as of November 1,2014, www.aiablog.com/claim-and-case-disposition/.

104 Source: LegalMetric District Reports, 2009-Feb.2014.

105 Source: Finnegan research, as of November 1,2014, http://www.aiablog.com/timing/

106 Source: http://www.uspto.gov/patents/stats/ex_parte_historical_stats_roll_up_EOY2013.pdf.

107 35 U.S.C. § 281.108 35 U.S.C. § 284.109 35 U.S.C. § 283.110 35 U.S.C. § 285.111 Centocor Ortho Biotech, Inc. v. Abbott Laborato-

ries, 669 F. Supp. 2d 756 (E.D. Tex. 2009) (Judge Warddenied judgment as a matter of law to overturn jury ver-dict), rev’d, 636 F.3d 1341 (Fed. Cir. 2011) (holding thatthe patent was invalid for lack of written description)).

112 eBay, Inc. v. MercExchange, LLC, 547 U.S. 388,391 (2006).

113 35 U.S.C. § 284114 35 U.S.C. § 284(1); See Energy Transp., Inc. v.

William Demant Holding A/S, 697 F.3d 1342 (Fed. Cir.2012), for a short mention of prejudgment interest indamage awards.

115 Crystal Semiconductor Corp. v. TriTech Micro-electronics Int’l, 246 F.3d 1336, 1354 (Fed. Cir. 2001).

116 35 U.S.C. § 284(2).117 In re Seagate Technology LLC, 497 F.3d 1360,

1371 (Fed. Cir. 2007).118 Id.

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