Annual Global Patent Litigation Report 2014

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ANNUAL GLOBAL PATENT

LITIGATION REPORT 2014,
Patent, Trademark & Copyright Journal
Global IP Project
S-3
GLOBAL IP PROJECT:
Annual Global Patent
Litigation Report 2014
G l o b a l Tr e n d s Country Spotlight
A. Alleged Infringers Are Becoming More Proactive .... S-5 A. Germany ........................................................ S-30
B. The Trend Toward IP-Specialty Courts Continues ... S-5 1. Patent Infringement and Validity Win Rates ....... S-30
C. The Unified Patent Court (UPC) May Lead to 2. Time From Filing to Decision on the Merits ....... S-33
Increased Forum Shopping in Europe ...................... S-7 3. Remedies...................................................... S-33
D. Litigation in China Continues To Increase and B. China ............................................................. S-34
Leads a Global Movement of Patent Litigation to
1. Patent Infringement and Validity Win Rates ....... S-34
Asia .................................................................... S-7
2. Time From Filing to Decision on the Merits ....... S-34
E. America Invents Act (AIA) Has Given U.S.
Litigation a More Bifurcated Appearance .................. S-7 3. Remedies...................................................... S-34
F. The Negative Climate in the U.S. for Non- C. United States ................................................... S-39
Practicing Entities (NPEs) and the Availability of
1. Patent Infringement and Validity Win Rates ....... S-39
Injunctive Relief and Profits Damages Abroad
Suggest NPEs Will Begin to Look Outside the U.S. .... S-7 2. Time From Filing to Decision on the Merits ....... S-39
3. Remedies...................................................... S-42
Global Patent Litigation Data

Methodology and Data Sources
A. Comparison of Country Patent Litigation Systems ... S-7

Explanation ........................................................ S-42
B. Annual Patent Litigation Filings ........................... S-9
C. Patent Owner Infringement and Validity Win Global IP Project
Rates ................................................................ S-13
D. Largest Damage Awards Globally ....................... S-13 Participating Firms and Attorneys........................... S-43
E. Most Patent Owner-Friendly Courts in the World
Using Objective Metrics ....................................... S-20
Reproduced with permission from BNA’s Pat-
F. Most Patentee Owner-Unfriendly Courts in the ent, Trademark & Copyright Journal, 89 PTCJ
World Using Objective Metrics .............................. S-20 S-5, 2/13/15. Copyright 2015 The Bureau of
G. Comparative Patentee Win Rates by Country by National Affairs, Inc. (800–372–1033)
http://www.bna.com
Industry (Infringement Win Rate Only in Bifurcated
Countries) .......................................................... S-20
PATENT, TRADEMARK & COPYRIGHT JOURNAL ISSN 0148-7965 BNA 2-20-15

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

LIST OF EXHIBITS
23. ‘‘Other’’ Patentee Win Rate ............................... S-29
1. First-Instance Patent Litigation Filings in China ...... S-6 24. Bifurcation of Patent Infringement Cases From
the Düsseldorf First-Instance Court, 2012 ............... S-31
2. U.S. First-Instance Patent Litigation Filings ............ S-6
25. Bifurcation of Patent Infringement Cases from
3. U.S. Ex Parte Reexamination Petition Filings .......... S-8 the Düsseldorf First-Instance Court, 2012, Invention
4. U.S. Inter Partes Review Petition Filings ................ S-8 Patents Only ...................................................... S-31
5. Comparison of Country Patent Litigation Systems .. S-10 26. Patent Validation Rate for Invention Patents
That Have a Patent Infringement Case Decided by
6. Annual Judicial Patent Infringement Litigation
the Düsseldorf First-Instance Court in 2012 ............. S-32
Filings 2008-2012 for Category 1 Countries (0-1000
Annual Patent Litigation Filings) ........................... S-11 27. Comparing Validation Rates Between European
Patent Office (EPO) Opposition Actions and BPG
Cancellation Actions, in 2012 for First-Instance
Filings 2008-2012 for Category 2 Countries
Invention Patent Infringement Decisions on the
(101-5000 Annual Patent Litigation Filings) ............. S-11
Merits in 2012 .................................................... S-32
28. Procedure Duration in Different German
Filings 2008-2012 for Category 3 Countries (501+
Jurisdictions for First-Instance Invention Patent
Annual Patent Litigation Filings) ........................... S-12
Infringement Decisions in 2012 ............................. S-33
9. Busiest Court and Percentage of Cases Filed
29. Bifurcation of First-Instance Invention Patent
Going Through to Decision on the Merits ................ S-14
Infringement Cases from Beijing 1st Intermediate
10. Patent Owner Infringement Win Rates in People’s Court, 2012 ............................................ S-35
First-Instance Patent Infringement Litigation
30. Bifurcation of First-Instance Utility Model
Decisions on the Merits (2006-2012) ....................... S-15
Infringement Cases From Beijing 1st Intermediate
10A. Patent Owner Infringement Win Rates in People’s Court, 2012 ............................................ S-35
31. Patentee Infringement Win Rate in First-
Decisions on the Merits (2006-2012) by Unified and
Instance Invention Patent Decisions on the Merits in
Bifurcated Systems .............................................. S-15
China, in 2012 .................................................... S-36
10B. Patent Owner Infringement Win Rates in
32. Patentee Infringement Win Rate in First-
Instance Utility Model Decisions on the Merits in
Decisions on the Merits (2006-2012) by Common
China, in 2012 .................................................... S-36
Law and Civil Law Systems. ................................. S-16
33. Validation Rate in SIPO Validity Decisions on
11. Patent Owner Validity Win Rates (2006-2012) ...... S-17
the Merits, 2012 .................................................. S-37
12. Largest Damage Awards Globally ...................... S-18
34. Procedure Duration of First-Instance SIPO
13. Most Patent Owner-Friendly Courts in the World Patent Reexamination Board Decisions on the
Using Objective Metrics ....................................... S-19 Merits in China in 2012 ........................................ S-37
14. Most Patentee Owner-Unfriendly Courts in the 35. Procedure Duration of First-Instance Patent
World Using Objective Metrics .............................. S-19 Infringement Decisions on the Merits in China in
2012 ................................................................. S-38
15. Biotechnology Patentee Win Rate ...................... S-21
36. Bench and Jury Patentee Win Rates in Most
16. Chemical/Materials Engineering Patentee Win
Active U.S. Federal District Courts (By Patent
Rate ................................................................. S-22
Infringement Litigation Filings) ............................. S-40
17. Electrical Patentee Win Rate ............................. S-23
37. Outcomes of PTAB Final Written Decisions ......... S-40
18. Mechanical Patentee Win Rate .......................... S-24
38. Time From Filing to Termination by Contested
19. Pharmaceutical Patentee Win Rate..................... S-25 Judgment in the 10 Most Active U.S. District Courts
20. Medical Device Patentee Win Rate ..................... S-26 (in Months) ........................................................ S-41
21. Computer Hardware/Software Patentee Win 39. PTAB Final Written Decision Timing .................. S-41
Rate .................................................................. S-27
2-20-15 COPYRIGHT 姝 2015 BY THE BUREAU OF NATIONAL AFFAIRS, INC. PTCJ ISSN 0148-7965
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Global IP Project
Annual Global Patent Litigation Report 2014 more harmonized IP framework and emerging markets
grow in size and importance.
A. Alleged Infringers Are Becoming More Proactive Both
I. Overview of Global Trends1 patentees and alleged infringers have increasingly more
oday, corporations face a panoply of options on
T how and where to litigate against competitors. Pat-

ent owners and alleged infringers often face off in
multiple countries with varying legal systems and con-
judicial and administrative options on where to launch
a ‘‘first strike.’’ Traditionally, alleged infringers have
hesitated to initiate defensive first strikes because of a
preference not to litigate at all and to be ‘‘left alone.’’
sequent varying results. Although patents remain a na- But there is a noticeable trend among alleged infringers
tional property right, patent owners and alleged infring- of becoming more proactive, possibly spurred on by
ers must develop a global strategy for IP litigation to high success rates in some jurisdictions. The best global
maximize resources and leverage litigation results for example of this proactive behavior is in London, where
the best business outcome. Understanding the attri- the patentee win rate is relatively low 27% (35/129), but
butes of different legal systems and procedures is only the plaintiff win rate is 54% (69/129) and the alleged in-
one part of a complex process for developing a winning fringer plaintiff win rate is 77% (50/65).3 Of the 129 pat-
strategy. Companies must also understand the costs, ent litigation decisions for the time period 2006-2013,
risks, and benefits of bringing an action in various 51% have an alleged infringer plaintiff (66/129).4 The
market-driven countries. As a result, the question for best U.S. example of this behavior is represented by the
litigants now is ‘‘Where in the world should I sue?’’ high rate of filings of inter partes reviews (IPRs) by al-
An early win may be crucially important, whether for leged infringers and third parties, where the petition
the patentee or the alleged infringer. In the Global IP grant rate is 77%.5 So far, the Patent Trial and Appeal
Project, the term ‘‘first-strike’’ strategy is used to de- Board (PTAB) has held 68% of the challenged claims
scribe the approach of trying to obtain a good first re- unpatentable.6
sult that can be leveraged to favorably resolve parallel Several countries have ‘‘double-tracking’’ where a
litigation conflicts in other countries. While the pros- patent claim’s validity may be disputed in both a judi-
pect of litigating in several countries simultaneously cial proceeding and an administrative proceeding, in
can be overwhelming, winning a first litigation—a ‘‘first some jurisdictions even simultaneously.7 This provides
strike’’—provides significant leverage in settling dis- alleged infringers with two forums in which to attack
putes globally. patents. With the availability of comparative intra-
This first Global IP Project Annual Report—based on country and inter-country data, which will soon be
analysis and insight from practicing lawyers around the issue-specific because of resources such as the
world and objective data2—compares qualitative and DARTS-IP database, it will become more apparent to al-
quantitative information from 19 jurisdictions to pro- leged infringers that the option is available for them to
vide patent owners and patent challengers substantive, bring proceedings proactively to get a favorable deci-
fact-based information to use as they decide how to best sion they can then use in negotiations with the patentee.
obtain the desired business results. The Global IP Proj-
ect Annual Report authors believe that the more litiga- B. The Trend Toward IP-Specialty Courts Continues Ac-
tion strategies are based on objective metrics, the cording to the 2012 Study on Specialized Intellectual
sounder the strategies will be. In the U.S., the availabil- Property Courts by the International Intellectual Prop-
ity of objective data is extremely high, with all 98 first- erty Institute (IIPI) and the U.S. Patent and Trademark
instance courts on a single electronic database acces- Office (USPTO), there are already 90 different IP spe-
sible by the public. There are also multiple private and cialty courts around the world.8 Because of the inherent
academic database sources and sources of data analy- complexity of patent cases in particular, it is expected
sis readily available. But the picture globally differs sig- that this trend will continue. Just in the last few years,
nificantly, with many countries lacking centralized data Finland, France, Russia, Switzerland, and Taiwan
collection (e.g., Germany, Italy, China, Brazil, Spain), moved to single IP-specialty courts. In addition, in
accessibility (e.g., Israel, South Korea), or electronic China, on November 6, 2014, the Beijing IP court was
data (e.g., Russia). The Global IP Project’s founding established and by the end of 2014, the Shanghai and
purpose was to fill this data void so that global first- Guangzhou IP courts will be established. Arguably, the
strike strategies could be developed with objective data. PTAB in the U.S. is consistent with this trend because it
Using the Global IP Project’s objective patent infringe- includes, for the first time in the U.S., a panel made up
ment and validity litigation data, practitioners can intel- of administrative law judges with both legal and techni-
ligently advise clients on a forum for that crucial ‘‘first cal training.9 The Unified Patent Court (UPC) in Europe
strike’’ (inter-country and intra-country, if applicable) marks another step toward IP-specialty courts with its
where they have the best chance of obtaining a favor- plan to have specific courts designated for specific tech-
able result. nologies (e.g., London: human necessities, chemistry
The context of patent litigation is ever-changing. Sig- and metallurgy; and Munich: mechanical engineering,
nificant trends are developing as the world moves to a lighting, heating, weapons and blasting).10

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8000
8000
7000
6500
6000
5000
5000
4000
3326 3360
3000
2008 2009 2010 2011 2012
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 courts
stopped publishing the specific numbers for patent infringement litigations since 2010, and now they disclose only
the total number of patent cases, which includes patent infringement disputes, ownership disputes, licensing disputes
and 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 from
district court patent infringement filings in 2013.
S-7
C. The Unified Patent Court (UPC) May Lead to In- the new PTAB as a more favorable forum in which to
creased Forum-Shopping in Europe It is expected that data litigate the issue of patentability. Factors supporting the
metrics will play an increasing role in European forum- favorability of the PTAB forum in which to resolve pat-
shopping because of a plethora of options that will be entability are a high success rate to date, a statutory
available to litigants, including the ability to opt Euro- timeline of one year from institution, no presumption of
pean patents out of the new UPC system during the validity for the patent, a lower burden of proof and po-
transitional period, as well as the ability to choose tentially lower costs.
where to bring an action in the UPC system (subject of More details of the impact of the AIA on U.S. patent
course to the new venue and jurisdictional require- litigation are found on the GIP Project website, www-
ments) for European patents having unitary effect. In- .globalpatentmetrics.com. It is worth noting that many
creasingly litigants will file (when they have a choice) in of the more than 2,000 PTAB reviews filed in the first
those divisions of the UPC where the data metrics are two years of the new U.S. AIA post-grant proceedings
most favorable to their case objectives. Of course, as of have related district court litigation, providing a strong
January 2015, the UPC is not up and running and there example of ‘‘double-tracking.’’19
are no data metrics available for any of the proposed
new UPC courts. Also, the past practices of national F. The Negative Climate in the U.S. for Non-Practicing
courts may not turn out to indicate how the new UPC Entities (NPEs) and the Availability of Injunctive Relief and
courts in corresponding regions or countries will act.13 Profits Damages Abroad Suggest NPEs Will Begin to Look
Outside the U.S. According to the PriceWaterhouseCoo-
D. Litigation in China Continues to Increase and Leads a pers 2014 Patent Litigation Study, NPE patent litigation
Global Movement of Patent Litigation to Asia Patent litiga- filings grew from 28% in 2009 to 67% in 2013.20 It is still
tion filings in China have more than doubled in the last too early to tell the full impact of the AIA on NPE litiga-
5 years to now about 8,000 annual filings.14 While this tion in the U.S., but recent court decisions and efforts
number includes invention patents, utility models, and at reforming laws in the past few years indicate the po-
design patents the upward trend is clear.15 The histori- litical and legal climate has been unfavorable to them.
cal patentee win rate in China is very high (for all three While little data at this point suggests that NPEs are fo-
types of patents), costs are low, time to termination for cusing more enforcement efforts outside the U.S.,21 the
both infringement and validity proceedings averages following factors suggest that this may change. First, in
under one year, and a significant damage award in almost all countries outside of the U.S., an injunction is
CHINT v. Schneider Electric Low Voltage (Tianjin) Co. not only typically the principal objective, it is still essen-
Ltd. (2007) appears to reflect at least a partial accep- tially automatic and available to NPEs and other paten-
tance of patent infringement damages.16 The recent in- tees.22 Moreover, unlike the U.S., many countries allow
stitution of IP-specialty courts in Beijing, Shanghai, and a patentee to pursue the infringer’s profits. For an NPE,
Guangzhou is a positive development addressing for- this type of damage award can prove to be higher than
eign concerns about the credibility and integrity of Chi- what would be available to a practicing entity’s lost
nese courts. While patent litigation filings in Japan and profits award. When combined with lower litigation
Taiwan have been increasing more slowly, the possibil- costs as compared to the U.S., NPEs may be encour-
ity of damage awards there is attractive to patent own- aged to consider litigating in those countries where
ers,17 while the relatively low patentee win rate in both both an injunction and the infringer’s profits are avail-
countries18 will attract alleged infringers. able to obtain favorable monetary outcomes.
E. America Invents Act (AIA) Has Given U.S. Litigation a II. Global Patent Litigation Data Overview,
More Bifurcated Appearance The significant increase in 2006-201323
patent litigation filings in U.S. district courts from 2011
to 2013 shown in Exhibit 2 perhaps reflects, in part, an A. Comparison of Country Patent Litigation Systems The
impact of the new America Invents Act (AIA) joinder table in Exhibit 5 shows a number of important qualita-
provisions, which came into effect in September 2012 tive and quantitative factors of the patent litigation sys-
and limits the number of defendants that can be joined tem for each country discussed in this report.
and named in the same lawsuit. The abrupt downturn in A country is designated ‘‘unified’’ if validity and in-
2014 filings (shown in Exhibit 2) may be driven by re- fringement can both be raised in a single forum or ‘‘bi-
cent U.S. Supreme Court decisions and the new post- furcated’’ if the two issues must be decided by separate
grant options offered by the AIA, including IPRs. For bodies. This is an important factor in terms of litigation
example, since they became available in September strategy, but it also indicates whether a country may
2012, there has been a rapidly rising number of IPR fil- have ‘‘double-tracking.’’ Bifurcated countries do not
ings, as shown in Exhibit 4. While not a direct correla- have double-tracking. A further column indicates
tion by any means, it is difficult not to compare the sig- whether double-tracking is available and the name of
nificant number of IPR Petitions filed through October the administrative validity tribunal.
of 2014 with the corresponding significant decrease in The table in Exhibit 5 also shows whether a country
U.S. district court patent infringement filings for 2014. operates under common law or civil law. Among other
Not surprisingly, with the new AIA post-grant proceed- things, this helps to indicate how much discovery and
ing options, there has been a 61% decrease in ex parte cross-examination will be involved, and whether a pro-
reexamination filings from 2012 to 2013 (Exhibit 3), fur- ceeding will be largely based on written submissions or
ther supporting the conclusion that IPRs are a new driv- ‘‘live’’ trial arguments.
ing force in the litigation landscape. As a consequence, The number of first-instance patent infringement liti-
the U.S. is becoming a more ‘‘bifurcated’’ jurisdiction in gation courts in a country identifies whether there is a
appearance, where alleged infringers seem to perceive possibility of forum-shopping within the country.

S-8
900
780 787
800 759
680
700 643 650
600
511
500
400
305
300
200
100
0
2006 2007 2008 2009 2010 2011 2012 2013
Exhibit 3: U.S. Ex Parte Reexamination Petition Filings as of Sept. 30, 2013.24 The drop in ex parte reexamination
cases from 787 in 2012 to 305 in 2013 represents a decrease of 61%.
2500
2205
2000
1500
1000
675
500
30
0
Oct. 2012 Oct. 2013 Oct. 2014
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.
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A specialized court or judge is one with technical as countries, the data are based on estimates, and often
well as legal training. shown as straight lines in the relevant exhibits.27
The number of trials to determine the issues of valid- Category 1 (fewer than 100 filings annually) includes
ity, infringement, and damages is important to know in Argentina, Australia, Brazil, Canada, Finland, Israel,
terms of having a realistic comparison of time and costs Netherlands and South Korea. For the bifurcated coun-
between countries. In the U.S., for example, first- tries, Brazil and South Korea, these filing numbers rep-
instance litigation is expensive relative to other coun- resent infringement litigations only.
tries, but all three issues may be resolved in a single Category 2 (100-500 filings annually) includes Eng-
trial. By contrast, in Germany, there will be one pro- land, France, India, Italy, Japan, Russia and Taiwan.
ceeding for infringement, one for validity and a sepa- For the bifurcated countries, Russia and Taiwan, these
rate hearing on damages, if required. The column show- filing numbers represent infringement litigations only.
ing whether damages are usually tried or settled in each Category 3 (more than 500 filings annually) includes
country indicates the likelihood of facing a damages China, Germany, and the U.S., currently the 3 most ac-
hearing. As a practical matter in Europe, there are very tive patent infringement litigation countries in the
few damages trials because the principal patentee ob- world by patent litigation filings. As such, those 3 coun-
jective is usually an injunction and in most cases the tries are highlighted and compared in Section III below.
parties settle after the issues of validity and/or infringe- For the bifurcated countries, China and Germany, these
ment have been decided by the court. This is discussed filing numbers represent infringement litigations only.
in the German context in Section III. In Asia, the issue Accordingly, when one attempts to compare the win
of damages is often decided by the court, and Japan, rate of unified countries, where the issues of both valid-
Taiwan and South Korea have, on occasion, had rela- ity and infringement are tried in the same court, as in
tively large awards. In Brazil, China, Russia and India, the U.S., with the infringement issue-only win rate in bi-
the number of damage awards is generally very small furcated countries like China and Germany, the com-
and where damages have been decided, the awards parison is obviously incomplete, or one of ‘‘apples and
have usually been very low. It is expected that the num- oranges.’’ In an attempt to develop the comparative win
ber of damage awards outside the U.S. will increase as rate data between bifurcated and unified countries, the
(1) the law of damages becomes more developed glob- GIP Project has chosen to represent the validity and in-
ally; (2) courts become more familiar with resolving fringement win rates in bifurcated countries separately.
damage disputes; and (3) if NPEs begin to enforce pat- In part this is a necessary consequence because the win
ents globally, all of which currently appear to be chang- rate data must be obtained from different tribunals. It is
ing slowly. also necessary, however, because to date, the Global IP
Of the 19 countries discussed in this report, only 5, Project has been unable to obtain parallel validity and
namely, Brazil, China, Germany, Russia and South Ko- infringement data from the different courts for the
rea are bifurcated (shaded in Exhibit 5). Of the 14 uni- same litigated patents. This is considered in greater de-
fied countries, only Argentina and Australia do not have tail below because the DARTS-IP database is now de-
‘‘double tracking.’’26 The issue of damages is usually veloping procedures to track the same patent in both
settled in 11 countries without a trial; tried in 5 coun- venues in bifurcated systems.
tries; a little of both in 2 countries (Argentina and Ja- Historically, the U.S. was the most litigious country
pan), and typically ‘‘not sought’’ in South Korea. The 6 in the world when it came to patent infringement. As of
common law countries are Australia, Canada, England, 2008, China has had the greatest number of annual pat-
India, Israel and the U.S. In general, and not surpris- ent litigation filings in the world. But this comparison is
ingly because of the typically more extensive discovery not totally accurate because more than 65%28 of Chi-
in common law, those countries, excluding India, are nese patent infringement litigation involves design and
among the most expensive. utility model patents, most of which were not examined
prior to issuance while U.S. patent litigation almost en-
B. Annual Patent Litigation Filings The Global IP Proj- tirely involves invention patents. Clearly, in terms of
ect uses annual patent litigation filings to rank coun- numbers of cases filed and market size, China has be-
tries from ‘‘most active’’ to ‘‘least active’’ jurisdictions. come the proverbial ‘‘elephant in the global IP room.’’
Three broad categories emerge: countries with fewer On the other hand, while Germany remains the most
than 100 filings annually (Category 1), countries with patent infringement active country in Europe and the
100-500 (Category 2), and countries with 500+ (Cat- third most active country in the world, the estimated
egory 3). Switzerland is not included in these charts be- number of annual filings appears to be relatively con-
cause of the insufficient filing data for its new court, es- stant. Furthermore, German courts often follow a prac-
tablished January 1, 2012. In 2012, there were 9 patent tice of issuing separate case numbers for each patent
infringement litigations filed. Unfortunately, most when multiple patents are asserted by the same paten-
countries do not provide data on the actual number of tee in the same case, while other countries assign one
patent litigations filed annually. Accordingly, in those case number no matter how many patents are asserted.

S-10
Number of trials to
Number of first-instance Specialized Damages Double-
Unified/ Common law/ determine validity, Administrative Validity challenge
Country patent infringement courts/ usually tried tracking
Bifurcated Civil law infringement, and forum
litigation courts29 judges? or settled available?30
damages
Argentina U CI 11 No 1 mixed No
Australia U CO 1+ De facto 2 settled No
27 state (infringement) usually federal courts of Rio de
Brazil B CI Yes 2 tried
5 federal (validity) Janeiro
Canadian Intellectual Property Of-
Canada U CO 1+ De facto 1 or 2 settled Yes
fice
127 (infringement)31
China B CI Yes 2 settled State Intellectual Property Office
1 (validity)
EPO for EP(UK)-designated pat-
England U CO 2 Yes 2 settled ents, UKIPO for EP(UK) Yes
designated-patents and GBs.
Finnish Patent and Registration Of-
Finland U CI 1 Yes Usually 1 tried Yes
fice
France U CI 1 Yes 1 tried EPO for France-designated patents Yes
Federal Patent Court (BDG); EPO
for Germany-designated patents;
Germany B CI 12 (infringement) 1 (validity) Yes 3 settled
German Patent Office for national
patents
5 High Courts/ Intellectual Property Appellate
India U32 CO No 1 settled Yes
600 District Courts Board
Israeli Patents and Trademarks Of-
Israel U CO 6 No Usually 2 settled Yes
fice
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
EPO for Netherlands-designated
Netherlands U CI 1 Yes 1 settled Yes
patents
Chamber for Patent Disputes, Rus-
Yes for appeal/
Russia B CI 81 (infringement) 1 (validity) 2 tried sian Federal Service for Intellectual
Yes
Property
Not usually Korean Intellectual Property Office
South Korea B CI 12 (infringement) 1 (validity) Yes 2
sought 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.
S-11
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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 infringement
litigation filings is not available. In Canada actual patent infringement filing data as reported by the Federal Court of
Canada 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 is
similar until 2012 when the PM(NOC) filings increased while the litigation filings continued downward.
400
350 350 350 350 350
350
300
250 250 250 250 250 England
250 France
230
India
200 200 200 2
20
200 200 200
168 183 187 Italy
175
131 160
150 150 Japan
1
130 133
111 Russia
100 100 100 100
00
0 100 100
Taiwan
65
50
28
0
2008 2009 2010 2011 2012
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 the
lowest 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 streamlined
procedures 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.

S-12

Exhibit 8: Annual Judicial Patent Infringement Litigation Filings 2008-2012 for Category 3 Countries.35 Statistics
for Germany are estimates because annual data on judicial patent infringement litigation filing is not available. The
German system is slowly becoming more transparent and the numbers, while not complete, represent an estimate by
the Global IP Project. Filing numbers for China include infringement cases for invention patents, utility models and
design 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 numbers
of all types of first-instance patent cases in 2010-2013 are 5,785, 7,819, 9,680 and 9,195 respectively.
S-13
Exhibit 9 shows the busiest court in each country (by sample size is small, the win rate number is still consid-
patent litigation filings), as well as the percentage of ered instructive.
cases filed going through to decision on the merits. The For validity challenges, in either bifurcated countries
busiest court may be important information in a coun- or unified countries where ‘‘double tracking’’ exists,
try with more than a single court and the possibility of there are usually three possible outcomes reported:
forum-shopping. There are many factors that drive liti- claims maintained without change (a ‘‘win’’ for the pat-
gants to a particular court. Among them are the patent ent owner), claims all canceled (a ‘‘loss’’ for the patent
experience of the judges, quick time to termination, owner), and a third category of either amended claims
large damage awards, and/or a court’s location with re- allowed or partially valid. This third category is a gray
spect to economic activity. area where it is not clear if the patent owner won: yes if
In many countries, the percentage of cases filed go- the amended claim/remaining claim still covers the al-
ing through to a decision on the merits is not tracked so legedly infringing product, no if the amended claim/
the relevant data is estimated by the Global IP Project. remaining claim no longer covers the allegedly infring-
When the annual filing data is not known, the percent- ing product. To resolve this and permit the calculation
age necessarily has to be an estimate. But percentage of of an ‘‘estimated’’ win rate, one-half of the decisions in
cases filed going through to a decision on the merits is the gray area are considered a win and one-half a loss.
another important factor to know before deciding The calculation of the patentee win rate for validity
whether and where to litigate. In the U.S., for example, challenges, therefore, equals the percentage of all
fewer than 4% of the cases filed go through to a deci- claims maintained without change + 1⁄2 (percentage of
sion on the merits. That means it is highly likely that a decisions with at least one claim amended).
U.S. case will terminate by settlement. Generally speak-
The validity win rate formula applies in bifurcated
ing, the percentage of cases going through to a decision
countries where the issue of validity is tried separately
on the merits is lower in common law countries than in
from infringement. It also applies in unified countries to
civil law countries, and the percentage is higher in
validity decisions of administrative proceedings, where
countries where IP law is still maturing, e.g., India, Rus-
‘‘double tracking’ is available. For example, the U.S.,
sia. For bifurcated countries (shaded), the number indi-
Japan and Taiwan are countries with a unified system
cated is for infringement litigation filings only.
(both validity and infringement may be determined in
C. Patent Owner Infringement and Validity Win Rates one judicial proceeding), and an administrative validity
Among global litigation metrics, the patent owner win challenge route (in the national patent office) is also
rate is often considered to be one of the most important. available.
Exhibit 10 shows the win rates in first-instance patent It is questionable whether, in bifurcated countries,
infringement litigation decisions on the merits for 2006- the two win rates should be multiplied to come up with
2012. The Global IP Project defines a ‘‘win’’ as a case a single, combined win rate as in unified countries.
terminated with at least one claim found both valid and While this could apply if the same patent was at issue in
infringed. The percentage is calculated by infringement and validity proceedings in a bifurcated
wins/wins+losses. Because the U.S. is the only country country, not every patent involved in one proceeding is
in the world where summary judgment (SJ) is impor- involved in the other. For a historical win rate, there-
tant, the above definition of a win gives an artificially fore, it may only be appropriate to multiply the two win
high U.S. win rate. This is so because in the U.S. fewer rates together with some sort of weighted factor to ac-
than 4% of all filed cases go to trial. It is estimated that count for the likelihood of being involved in both.
approximately 12% of all cases filed are decided by SJ. DARTS-IP is beginning to link infringement and valid-
Accordingly, in the U.S. it is necessary also to provide a ity proceedings in bifurcated countries, discussed fur-
win rate for ‘‘contested decisions,’’ including the sum- ther in Section III. At this preliminary stage, we refrain
mary judgment decisions that are case dispositive and from multiplying the two win rates together and believe
never proceed to a trial on the merits. While not dis- it most instructive to report the win rates separately.
cussed in detail here, the bottom line U.S. statistic is It should be noted that most of the win rate data is
that if a patent case survives summary judgment, the extracted from national patent office reports or compa-
patentee’s chances for success at trial almost double.36 rable sources for the particular forum. The Global IP
It is also necessary in the U.S. to include a third win Project is collaborating with DARTS-IP to improve this
rate, namely the overall win rate that takes into account data going forward, particularly in the joint effort to
both default and consent judgments, which obviously link both the patent infringement and validity decisions
result in a higher win rate because all consent and de- wherever possible, as discussed further in Section III.
fault judgments result in wins for the patentee. The
numbers for the U.S. in Exhibit 10 are national aver- D. Largest Damage Awards to Date Globally The amount
ages. The patentee win rates in the 94 federal district of damages a patent owner could receive upon a find-
courts vary dramatically. ing of infringement plays an important role in deciding
For bifurcated countries (shaded), the data in Exhibit whether and where to sue. Awards are significantly
10, represents the infringement win rate only. These lower in countries outside of the U.S. In most countries,
countries will have a separate validity win rate.37 The particularly in Europe, an injunction is the patent own-
patentee win rates range from a low of 15% for inven- er’s primary objective. The largest damage awards to
tion patents in Taiwan (unified country) to a high of date for some of the most litigious countries outside of
86% (on the issue of infringement only) for design pat- the U.S. is reflected in Exhibit 12 (each reported in U.S.
ents in China (bifurcated country). In some countries, $M). As shown in Exhibit 12, the largest damage
the data sample is bigger and provides a more robust awards in Europe are generally lower than elsewhere in
and statistically reliable number, but even when the the world.

S-14
Country (Common Annual patent litigations filed Percentage of cases going to

Busiest Court
law/Civil law) (2006-2012) trial (decision on the merits)
Argentina (CI) 20 (2009-2013) (federal courts of Bue- Nacional Court on Civil and Commer- 100% (est.)
nos Aires only) cial Federal Matters, Buenos Aires
Australia (CO) 280 (est.) Federal Court Sydney/Melbourne/ 15% (est.)
Canberra
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: ≈33%
Guangdong Guangzhou
Invention: Shanghai
1st Utility Model: Guangdong Guang-
zhou
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 Paris ≈17% (412/2,390 est.)
Paris (100%)
Germany (CI) 10,000 (est.) Patent Chamber (Patentstreitkammern) 50% (est.)
of the Regional Court (Landgericht)
Düsseldorf
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- 54% (193/360 est.)
ber The Hague
Russia (CI) 700 (est.) (infringement only) Commercial Court Moscow 90% (est.)
South Korea (CI) 420 (est.) (infringement only) Seoul Central District Court Intellectual 50% (est.)
Property (IP) Panel
Switzerland (CI) 9 (2012 only) Federal Patent Court St. Gallen (100%) 10% (est.)
Taiwan (CI) 1,088 (est.) Intellectual Property Court Taipei 50-60% (est.)
(100%)
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-15
Patentee win rate on first-instance patent infringement litigation decisions on the merits
Country
(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) (Düsseldorf 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 on
the Merits (2006-2012).
80% Bifurcated Unified

(infringement only)
70%
60%
average
50%
average
China (invention patents) 68%
40%
ntion patents)
U.S. (trial) 60% 696/1152
Netherlands 36% 48/133

Germany 66% 534/812
30%
pat
France 39% 161/413
9
England 27% 35/129
Russia 42% 183/434
Australia 54% 25/46
Canada 46% 19/41
Japan 22% 58//259

Argentina 50% 4/8
nvention
Brazil 41% 14/34
India 45% 14/31
Italy 40% 37/92
Israel 33% 1/3
20%
26% 106/406
South Korea
Taiwan (in
15% 8/52
231/340
10%
0%
Patentee win rate
Exhibit 10A: Patent Owner Infringement Win Rates in First-Instance Patent Infringement Litigation Decisions on
the Merits (2006-2012) by Unified and Bifurcated Systems. The average patentee win rate in bifurcated countries
for 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 are
generally 2006-2012, except for the following countries where the reported time period is Argentina 2009-2010; China
2007-2013, England 2006-2013; Germany 2009-2013; India 2002-2010; Israel 2011-2012; Italy 2011-2012, Netherlands
2006-2011, Russia 2009–1st half of 2013; South Korea 2000-2009; Taiwan 2009-2011; and the U.S. 1991-2014.

S-16
Common law Civil law Civil law

80%
Bifurcated Unified
70%
60%
average
50%
average
China (invention patents) 68%

40%
average
South Korea 26% 106/406

U.S. (trial) 60% 696/1152
Netherlands 36% 48/133

3
Germany 66% 534/812
30%
9
England 27% 35/129
France 39% 161/413

Russia 42% 183/434
0
Australia 54% 25/46
Canada 46% 19/41
Japan 22% 58//259

Argentina 50% 4/8
% 8/52
ntion
nvention
Brazil 41% 14/34
India 45% 14/31
Italy 40% 37/92

Israel 33% 1/3
20%
15%
Taiwan (in
patents) 1
231/340
10%
0%
Patentee win rate
Exhibit 10B: Patent Owner Infringement Win Rates in First-Instance Patent Infringement Litigation Decisions on
the Merits (2006-2012) by Common Law and Civil Law Systems. The average patentee win rate in common law
countries 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 included
because the new court does not have sufficient data yet. The time periods represented by the patentee win rates are
generally 2006-2012, except for the following countries where the reported time period is Argentina 2009-2010; China
2007-2013; England 2006-2013; Germany 2009-2013; India 2002-2010; Israel 2011-2012; Italy 2011-2012; Netherlands
2006-2011; Russia 2009–1st half of 2013; South Korea 2000-2009; Taiwan 2009-2011; and the U.S. 1991-2014.
S-17
Patentee win rate in

Patentee win rate (at
Country (Common law/ Patentee win rate on Double-tracking administrative validity
least one claim valid and
Civil law) validity issue available track (claims maintained
infringed) (2006–2012)
+1/2 modified claims)
Argentina (CI) 50% (4/8) (2009-2010 only) No
(federal courts of Buenos Ar-
ies only)
Australia (CO) 54% (25/46) No (request for re-
examination auto-
matically stayed if
court proceedings
are commenced in
relation to the same
patent)
Brazil (CI) Infringement 41% (14/34) 41.5% (2012 only) No
Canada (CO) 46% (19/41) (per patent) 66% (27/41); on a per-patent Yes 70% (1992–
basis 2012)43(Reexamination in Ca-
nadian Intellectual Property
Office)
China (CI) Infringement Invention patents Validity Invention patents No
67.8% (194/286); Utility mod- 48%; Utility models 44%; De-
els 72.7% (336/462); Design sign patents 44%
patents 86% (940/1,093)
(2007–2013)
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 patentee No46
were because claims held in-
valid (2000–2013)
Germany (CI) (Düsseldorf Regional Court Federal Patent Court 39.1% No
only) 66% (534/812) (2009-
2013)
India (CO) Preliminary injunction grant Yes 18%48
rate, 2002–2010: 45% (14/
31)47
Israel (O) 33% (1/3) (2011-12) Yes Average loss rate of at least
48% (233/489) (2011-2013)49
Italy (CI) 44% (40/91) (2011–12 only) 31% of the of the losses for No50
patentee were because claims
held invalid
Japan (CI) 22% (58/259) Yes Invention patents: at least 47%
(796/1,703); utility models: at
least 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 half Insufficient data53 No
of 2013)
South Korea (CI) 9.6–26% (39–106/406) (2000– Invention patents at least 44% No
2009)54 (1,486/2,659); Utility models
at least 45% (754/1,361)55
Switzerland (CI) The historical patentee win No56
rate is 44% (2002–2011).
Taiwan (CI) 19% for invention patents; 32% of the of the of the losses Yes At least 53% (1,375/2,571)57
17% for utility models; 33% for patentee were because
for designs (2010–2012 data) claims held invalid
United States (CCO) (C.D. overall 59.4% (7,924/13,340); 61% (2010–2012)59 Yes 55%60 23%61
Cal.) contested 24% (987/4112);
combined trial win rate (bench
and jury) 60.4% (696/1152)58
Exhibit 11: Patent Owner Validity Win Rates (2006-2012). (Shading indicates bifurcated country.)

S-18
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$250.00
$200.00
$150.00
$119.00
$100.00 $82 00
$82.00
$70.00 $65.80
$44.00
$50.00
$12.30 $11.80 $7.00 $6.00 $6.00 $3.90
$2.70 $0.73
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Exhibit 12: Largest Damage Awards to Date Globally (U.S. $M).62 Note: The largest damages award in the United
States 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 rarely
determined. 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 been
awarded in a patent infringement litigation case. The largest damage award reported for Russia is less than $100K.
S-19
High patentee win rates:

China, U.S., Germany
High chance
Fast time to trial:
preliminary
China, Germany,
injunction granted:
Russia, England
Australia, Germany
China, Germany, U.S.
High chance case Highest damage

filed will go to trial: awards: U.S.,
Russia, Brazil, Canada, Taiwan,
Taiwan, Finland Japan, Australia
Exhibit 13: Most Patent-Owner-Friendly Courts in the World Using Objective Metrics.63
Low patentee win

rates: England,
Taiwan, Japan
Low chance
preliminary
injunction granted: Slow time to trial:
U.S., England*, India, Brazil, Italy
China, Brazil
(infringement)
England
Low chance case

filed will go to trial: Low damage
U.S., Canada, awards: Germany,
England Israel, Russia
Exhibit 14: Most Patent-Owner-Unfriendly Courts in the World Using Objective Metrics (Alleged Infringer-
Friendly).

S-20
E. Most Patent-Owner-Friendly Courts in the World Using is better than having no data at all. It is helpful when
Objective Metrics64 The decision of whether and where considering a patent litigation strategy to have at least
to sue is a multifaceted one, and includes both tangible some idea of what the particular industry-specific win
and intangible factors. Intangible factors—such as a rate is, however small the data set. Moreover, the
company’s relationship with its competitors and future reader must always be mindful that the unified win
plans, familiarity and comfort with a particular legal rates represent an outcome on validity and infringe-
system, or perceptions of local bias—are not the subject ment (at least one claim held valid and infringed is
of this report. Instead, this report attempts to focus on counted as a ‘‘win’’), while the bifurcated win rates are
tangible factors, like patentee win rate and average for infringement only.
time to trial, and put them in a framework to assist pat- The Global IP Project started tagging patent litigation
ent litigation strategies and planning. decisions according to ten categories: biotechnology,
By focusing on a number of objective factors, a visual chemical/materials engineering, electrical, mechanical,
representation can be made of the countries that, objec- medical device, pharmaceutical, software, semiconduc-
tively, are appealing to patent owners. While patentee tor, computer hardware and a catch-all category,
win rate is usually the most important factor, all patent namely ‘‘other.’’ Going forward, the DARTS-IP data-
litigations are unique and have different business objec- base will provide even more industry-specific data be-
tives. Accordingly, no one factor or ‘‘size’’ fits all. cause DARTS-IP will be tagging cases according to the
Therefore, depending upon business objectives and much more extensive European Patent Office (EPO)
which factors are most important, the litigant can classification system. The industry-specific data re-
forum-shop based on those particular factors. Never- ported here comes from the Global IP Project and is just
theless, when focusing on factors indicative of a patent- beginning to develop.69 Often the win rate for mechani-
owner-friendly court, the three countries showing up cal cases is the most reliable because there are more
most often are, in fact, the three busiest jurisdictions in cases. The biotechnology data, on the other hand, often
the world: China, U.S. and Germany. represents a very small number of cases. The relevant
F. Most Patent-Owner-Unfriendly Courts in the World Us- exhibits include only those countries with at least one
ing Objective Metrics (Alleged Infringer-Friendly)65 The case decided on the merits in the specific technology
same can be done to provide a visual representation of from the time period 2006-2012, except for the follow-
countries that, objectively, are appealing to alleged in- ing countries where the reported time period is China
fringers. The one showing up the most often is England, 2007-2013; England 2006-2013; Germany 2009-2013 for
where there has been a significant increase in the num- overall, 2011-2012 for industry-specific; Italy 2011-
ber of cases filed by alleged infringers. Alleged infring- 2012; Netherlands 2006-2011; and Taiwan 2009-2011.70
ers are plaintiffs in over half of the patent litigation de- The data for Germany only represents the Düsseldorf
cisions in England (66/129, 2006-2013).66 The plaintiff court of first instance. South Korea’s win rates are from
win rate in England when the patentee is the plaintiff is the Global IP Project data collection only.
30% (19/64, 2006-2013), but the alleged infringer plain- The pharmaceutical industry is also globally unique
tiff win rate more than doubles that: 77% (50/65, 2006- because it is the one industry where a first strike deci-
2013).67 While England continues to have the lowest sion in one country, whether successful or unsuccess-
win rate in Europe and has become known as the ‘‘re- ful, has virtually no bearing on leveraging a global
vocation capital of Europe,’’ there does appear to be an settlement elsewhere around the world. Typically phar-
overall increase in the win rate in recent years from maceutical patent litigation is about obtaining an in-
what it has been in the past. junction, hence increased market share. Accordingly,
In England & Wales, if there is a finding of a valid even if a brand manufacturer or a generic is successful
and infringed claim, the court ordinarily grants a final in one country, that ‘‘first strike’’ outcome is not likely
injunction, among other remedies. The party held to in- to influence a settlement in another jurisdiction because
fringe must comply with this order, and failure to do so any market where the pharmaceutical product has
can be treated as contempt (with criminal sanctions). regulatory approval remains important.
The patent owner does not have to provide a bond to Again, the bifurcated countries’ patentee win rates in
enforce the decision. Accordingly, if the trial judgment the pharmaceutical area are significantly higher than in
is reversed on appeal, the enjoined party is unable to the unified systems. In 3 of the bifurcated systems, Bra-
claim compensation from the patent owner for the pe- zil, Germany and South Korea, the pharmaceutical win
riod that it has been kept off the market between trial rate is actually higher than the overall country win rate
and appeal. averages. In the unified systems, on the other hand,
G. Comparative Patentee Win Rates by Country by Indus- only 2 of the 8 countries, Australia and Japan, have a
try (Infringement Win Rate Only in Bifurcated Countries)68 higher pharmaceutical win rate than the overall country
As soon as the Global IP Project started looking at pat- win rate average.
entee win rates, clients asked for industry-specific data. The patentee win rate in medical device cases is very
They were correct to do so. There can be large differ- low in unified systems; lower than the overall average
ences in win rates across different technologies. But patentee win rate, in some cases, significantly lower
that can introduce the issue of much smaller data popu- (e.g., Canada). In all the countries represented in the
lations and consequent less statistically significant data. chart, China stands out as the only one where the medi-
However, with this limitation in mind, the Global IP cal device patentee win rate is higher than the overall
Project operates on the premise that having some data average.
S-21
100% 100% 100% 100%

100%
Bifurcated systems Unified systems
90%
(infringement only)
80%
68% 66%
70%
60% 54%
50%
41% 39% 40%
40% 36%
30% 25% 25%

22%
20% 15%
10%
0% 0% 0% 0% 0%
0%
Brazil China Germany Australia England France Italy Japan Netherlands Taiwan
(invention (invention
patents) patents)
Biotechnology Overall
Number of Number of
Number of Overall Number of Overall
Country Biotechnology Biotechnology
Patentee Wins Cases
Patentee Wins Cases
Bifurcated countries
(infringement only)
Brazil 0 3 14 34
China (invention patents) 0 1 231 340
Germany (invention patents) 8 8 534 812
Unified countries
Australia 1 1 25 46
England 0 1 26 105
France 3 12 161 413
Italy 2 2 37 92
Japan 0 1 58 259
Netherlands 1 1 48 133
Taiwan (invention patents) 0 3 8 52
Exhibit 15: Biotechnology Patentee Win Rate and Overall Patentee Win Rate.71 Again the reader is cautioned to
remember 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.

S-22
100%
100% Bifurcated systems Unified systems
(infringement only)
90%
80% 76%
68%
70% 66%
63%
60% 54%
50% 50% 50%
50% 46%
43%
41% 40%
39%
40% 36%
30% 26% 25% 25% 26%

22%
19%
20% 14% 15%
13%
10%
0%
Brazil China Germany South Australia Canada England France Italy Japan Netherlands Taiwan
(invention (invention Korea (invention
patents) patents) patents)
Chemical/Materials Engineering Overall
Number of
Number of
Chemical/Material Number of Overall Number of Overall
Country Chemical/Material
Engineering Patentee Wins Cases
Engineering Cases
Patentee Wins
(infringement only)
Brazil 1 7 14 34
South Korea 1 2 106 406
Unified countries
Australia 5 8 25 46
Canada 2 2 19 41
England 1 4 26 105
France 7 37 161 413
Italy 3 7 37 92
Japan 7 27 58 259
Exhibit 16: Chemical/Materials Engineering Patentee Win Rate. While the win rates reported here derive from
larger data sets than reported in Exhibit 15, it is again not surprising, but nevertheless interesting to see how the win
rates vary from a low of 14% in Brazil (1/7) and 13% in Netherlands (1/8) compared with a high of 100% (2/2 in
Canada), 76% (16/21) in Germany, and 63% (5/8) in Australia. Note that the bifurcated countries’ win rates relate
solely to the infringement issue.
S-23

(infringement only)
80%
71%
68%
70% 66%
60% 54%
52%
50% 50%
50%
41%
39%
40% 36%
29%
30% 26% 25%
22%
20% 14% 15%
10% 6%
0% 0% 0%
0%
Brazil China Germany South Australia England France Japan Netherlands Taiwan
Electrical Overall
Number of
Number of Number of Overall Number of Overall
Country Electrical Patentee
Electrical Cases Patentee Wins Cases
Wins
(infringement only)
Brazil 1 2 14 34
Germany (invention patents) 534 812
Unified countries
Australia 0 1 25 46
England 0 4 26 105
France 21 72 161 413
Japan 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).

S-24
Bifurcated systems 100% Unified systems

100%
(infringement only)
90%
83%
80% 77%
68% 67% 66%

70%
63%
60% 54%
50% 46%
41% 40% 39% 41% 40%
38% 37% 36%
40%
30%
28%
30% 26% 25%
22%
20% 16% 15%
10%
0%
Mechanical Overall
Number of
Number of Number of Overall Number of Overall
Country Mechanical
Mechanical Cases Patentee Wins Cases
Patentee Wins
(infringement only)
Brazil 5 6 14 34
Unified countries
Australia 10 16 25 46
Canada 5 13 19 41
England 8 27 26 105
France 97 243 161 413
Italy 22 54 37 92
Japan 27 97 58 259
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 in
mechanical cases, lowering the patentee win rate.
S-25
Bifurcated systems 100% Unified systems

100%
(infringement only)
90%
81%
80%
67% 68%
70% 66%
60%
60% 54%
50%
50% 46%
41% 40%
39%
40% 35% 36%
33%
30% 29%
30% 26%
24% 25%
22%
20% 17%
15%
10%
0%
0%
Pharmaceutical Overall
Number of Number of
Country Pharmaceutical Pharmaceutical
Patentee Wins Cases
Patentee Wins Cases
(infringement only)
Brazil 4 6 14 34
Unified countries
Australia 6 10 25 46
Canada 3 10 19 41
England 8 33 26 105
France 5 29 161 413
Italy 2 7 37 92
Japan 4 12 58 259
Taiwan 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 infringement
litigation. 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).

S-26

90% (infringement only)
79%
80%
68% 66%
70%
60% 54%
50% 50%
50% 46%
41% 40%
40% 36%
33%
29%
30% 25%
20% 22%
20% 17% 15%
10%
0% 0% 0%
0%
Brazil China Germany Australia Canada England Italy Japan Netherlands Taiwan
(invention (invention (invention
Medical device Overall
Number of Medical
Number of Medical Number of Overall Number of Overall
Country Device Patentee
Device Cases Patentee Wins Cases
Wins
(infringement only)
Brazil 1 2 14 34
Unified countries
Australia 1 3 25 46
Canada 0 1 19 41
England 4 20 26 105
Italy 0 1 37 92
Japan 1 6 58 259
Taiwan 0 3 8 52
Exhibit 20: Medical Device Patentee Win Rate. Often medical device litigation is initiated first in Europe because
the 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.
S-27

(infringement only)
100%
100%
90%
80% 75%
68%
70%
60% 54%
50% 46%
40%
40% 36%
30% 26% 25% 25%

22%
17% 15%
20%
10%
0% 0% 0% 0% 0%
0%
China South Korea Australia Canada England Italy Japan Netherlands Taiwan
(invention (invention
patents) patents)
Computer hardware/software Overall
Number of
Number of
Computer
Computer Number of Overall Number of Overall
Country (hardware/
(hardware/ Patentee Wins Cases
software) Patentee
software) Cases
Wins
(infringement only)
Unified countries
Australia 0 1 25 46
Canada 0 1 19 41
England 0 6 26 105
Italy 0 2 37 92
Japan 0 2 58 259
Taiwan 3 12 8 52
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 win
rate of 15%. It is somewhat surprising that with how poorly these patents do in litigation globally, the win rate in
China exceeds the overall average patentee win rate. This of course only represents the issue of infringement and is
based on very limited data.

S-28

68%
70%
60%
50%
40%
30% 25% 26%

22%
20% 17% 15%
10%
0% 0%
0%
China (invention South Korea Japan Taiwan (invention
patents) patents)
Semiconductors Overall
Number of Number of
Country Semiconductor Semiconductor
Patentee Wins Cases
Patentee Wins Cases
(infringement only)
Unified countries
Japan 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. There
were no reported semiconductor first-instance patent litigation decisions reported outside of four Asian countries. Of
these 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 are
close to the overall average in each.
S-29

80% 77%
68%
70%
60% 54%
50%
50% 46% 44%
41% 40%
40% 35% 36%
30% 26% 25%

22% 23%
20% 19%
20% 15%
10%
0% 0% 0%
0%
Brazil China South Australia Canada England Italy Japan Netherlands Taiwan
(invention Korea (invention
patents) patents)
"Other" Overall
Number of ‘‘Other’’ Number of ‘‘Other’’ Number of Overall Number of Overall

Country
Patentee Wins Cases Patentee Wins Cases
(infringement only)
Brazil 1 5
Unified countries
Australia 1 2 25 46
Canada 0 2 19 41
England 0 1 26 105
Italy 7 20 37 92
Japan 9 48 58 259
Taiwan 10 44 8 52
Exhibit 23: ‘‘Other’’ Patentee Win Rate. For the sake of completeness, Exhibit 23 presents the remaining Global IP
Project ‘‘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.

S-30
III. Spotlight: 3 Most Active Patent Litigation this point to support a meaningful, corresponding esti-
Countries72 mate, the authors anticipate that the percentage of Chi-
The three most active patent litigation jurisdictions nese infringement cases that also include a validity
by measure of annual filings are the U.S., China and challenge should be significantly higher than Germany.
Germany.73 All three have multiple courts in which to So far, the data indicates otherwise. Indeed, as can be
initiate an infringement action74 and, consequently, seen from Exhibit 29, 16 out of 84 Beijing 1st Interme-
forum-shopping is a significant factor in developing an diate Court patent infringement decisions, roughly 19%,
effective strategy. Germany (12 first-instance infringe- also included a corresponding validity challenge before
ment courts) and China (127 first-instance infringement the SIPO Patent Reexamination Board. In contrast, as
courts) are bifurcated systems, but the U.S. (94 trial shown in Exhibit 24, 40% (37/88) of patents litigated in
courts)75 is a unified system. However, as noted in Sec- the Düsseldorf Regional Court in Germany have a cor-
tion I, the U.S. is becoming a more ‘‘bifurcated’’ juris- responding validity proceeding (5 in the EPO and 28 in
diction in appearance because of the rapid adoption of the BPG). As more data becomes available, it will be in-
the new post-grant procedures under the AIA and pref- teresting to see if this trend remains the same or moves
erence to use the new PTAB as a forum in which to liti- toward what is anticipated by the Global IP Project.
gate the issue of patentability. Notably, about 43% (364/ A. Germany
850) of IPRs are involved in district court litigation76
and about 2/3 of those cases are stayed in favor of an 1. Patent Infringement and Validity Win Rates For the
IPR.77 Of course, if a district court does not stay (which population of 88 Düsseldorf infringement decisions in
happens at least 1/3 of the time), then there is no bifur- 2012, 61 were patentee ‘‘wins’’ for a win rate of 69%. Of
cation but rather parallel proceedings with a race to a the 88 decisions, 51 did not include a validity challenge
final decision. within the 2-year period searched and 37 did. Accord-
Although both are bifurcated systems, the validity ingly, the first DARTS-IP attempt to correlate win rate
challenge routes in Germany and China are very differ- data for the bifurcated issues of both infringement and
ent. For example, first-instance validity challenges in validity for the same patent indicates that 40% of Düs-
Germany are handled at the Federal Patent Court seldorf patents litigated for infringement also included
(FPC78) (a court independent of the Germany Patent a corresponding validity challenge in either the Euro-
Office) whereas in China they are handled by the Pat- pean Patent Office (EPO) or the Bundespatentgericht
ent Reexamination Board of the Chinese Patent Office (BPG/FPC). The authors caution the reader about the
(SIPO). The costs for both the infringement and validity preliminary nature of this data because the number of
proceedings are considerably more in Germany than in cases is limited and the procedures for correlating va-
China, and in Germany, the loser usually pays a sub- lidity and infringement challenges (as well as the com-
stantial portion of the winning party’s litigation fees in mon identity of the parties) are not fully developed. It is
both validity and infringement proceedings. One would anticipated that more complete and accurate data will
expect that the ‘‘loser pays’’ model discourages litiga- become available in the future.
tion, and that therefore the percentage of Chinese in- For the population of 67 invention patent decisions,
fringement litigations with a corresponding validity the patentee win rate is 59.7% (47/67). Moreover, as can
challenge will be much higher than that for Germany. be seen from the right-hand side of Exhibit 25, 49% (33/
To date, this data has not been available because in 67) of the same population of invention patent infringe-
both countries it has been extremely difficult to track ment decisions include a corresponding validity pro-
those patents involved in both an infringement proceed- ceeding (with 5 decisions on the merits in the EPO and
ing and a validity challenge. However, with DARTS-IP, 28 decisions on the merits in the BPG).
it is now possible to begin to track this information. The Exhibit 26 doesn’t use Global IP Project methodol-
chart generated by DARTS-IP for Germany and China ogy. According to the Global IP Project formula, the
is a first attempt to provide data indicating what per- cases for which there is no data are excluded. Accord-
centage of infringement litigations in each country in- ingly, using the Global IP Project formula for the 4 EPO
clude a corresponding validity challenge, together with cases with an outcome, the calculated patent validation
the resultant, combined ‘‘win rate’’ for each country. rate in the EPO is 50% + 1/2(50%) = 75%, and 44% +
There are challenges obtaining the data. In Germany 1/2(22%) = 55% for the 9 BPG cases.
and China, each issue, if litigated, is not initiated at the The DARTS-IP charts report the results of the valid-
same time, not coordinated with each other in any way, ity decisions from both the EPO and the BPG in the
and may terminate months apart. Moreover, the parties same manner as can be used with the Global IP Project
challenging validity are not necessarily the same as the formula. According to that formula, the patent valida-
parties to the infringement litigation in each case. Once tion rate for invention patents in the EPO for 2012 is
issue-specific win rate data can be obtained for the 66% + 1/2(2%) = 67%; and the rate for invention pat-
same patents that are litigated separately for both in- ents in the BPG for 2012 is 39% + 1/2(13%) = 45.5%.
fringement and validity in bifurcated countries, it will For very rough, comparison purposes, it is noted that
then be possible to provide a ‘‘combined win rate’’ that the earlier calculated, corresponding patent validation
will be more directly comparable to the win rates for the rate for invention patents that have a patent infringe-
‘‘unified’’ countries under the Global IP Project method- ment case decided by the Düsseldorf First-instance
ology (i.e., a ‘‘win’’ is where at least one asserted claim Court in 2012 is 75% in the EPO; whereas the rate is
of a patent is found both valid and infringed). Currently, 55% in the BPG. Of course, it must be considered that
because of the limited data developed to date, the au- for the earlier, bifurcated win rate calculations, the uni-
thors estimate that the percentage of German patents verse of cases was much smaller: 4 in the EPO; and 9 in
litigated for both infringement and validity is 30-40%.79 the BPG. On the other hand, Exhibit 29 is drawn from
While the ‘‘combined’’ data for China is not sufficient at 1,372 EPO decisions and 103 BPG decisions.
S-31
Infringement win rate * Corresponding validity challenges

(Düsseldorf first-instance court) **
100 100
90 9
90
80 80
70 70
60 51
61 60
50 50
88
40 40
30 30
21
20 20
27
10 10 11
5
0
Total No known Ongoing validity Decision on the
validity challenge challenge merits of validity
Patentee Loses ***
Patentee Wins
EPO only BPG only
Exhibit 24: Bifurcation of Patent Infringement Cases From the Düsseldorf First-Instance Court, 2012. As indicated
earlier, this chart represents 88 cases published by the Düsseldorf Regional Court in 2012. The Global IP Project es-
timates that there were 129 proceedings on the merits published by the Düsseldorf Regional Court in 2012.
Infringement win rate Corresponding validity challenges *

(Düsseldorf lower court)
80 80
70 70
60 60
50 50 34
47
40 40
67
30 30
18
20 20
10 20 10 10
0 5
0
Patentee Loses Total No known Ongoing validity Decision on the
validity challenge challenge merits of validity
Patentee Wins
**
EPO only BPG only
Exhibit 25: Bifurcation of Patent Infringement Cases From the Düsseldorf First-Instance Court, 2012, Invention
Patents Only.

S-32
Patent Validation rate, Patent Validation rate,

European Patent Office (EPO) Bundespatentgericht (BPG)
(# of decisions/patents) (# of decisions/patents)
1,
10%
1,
20% 4,
2,
40% 40%
3,
30%
2,
40% 2,
20%
Totally valid Partially valid

Totally valid Partially valid
Not valid No Data
Not valid No Data
Exhibit 26: Patent Validation Rate for Invention Patents That Have a Patent Infringement Case Decided by the
Düsseldorf 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 EPO
or cancellation proceeding in front of the Bundespatentgericht, the German patent court) within the 2 years (before
or after) the infringement decision.
European Patent Office Bundespatentgericht

(EPO) (BPG)
445,
32% 50, 40,
48% 39%
927,
66%
32,
2% 13,
13%
Totally valid Partially valid Not valid Totally valid Partially valid Not valid
Exhibit 27: Comparing Validation Rates Between EPO Opposition Actions and BPG Cancellation Actions, in 2012
for First-Instance Invention Patent Infringement Decisions on the Merits in 2012.
S-33
Average duration of infringement action Average duration of cancellation action

in months (# of decisions) in months (# of decisions)
Mannheim (9)
Bundespatentgericht
21.
(128)
Düsseldorf (6) 22
2
0 5 10 15 20 25 0 5 10 15 20 25
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 filed
and the date of the final decision on the merits. The authors hope that in the future it will be possible to obtain this
information from reliable sources.
2. Time from Filing to Decision on the Merits The aver- tion of liability, and often the parties settle before the
age duration of infringement and validity proceedings hearing is held. The largest damage award to date was
in Germany is a little less than 2 years. Of course, as for about U.S. $2.7M,81 which is small compared with
mentioned earlier, these two time periods may or may the largest awards elsewhere in the world.
not be running simultaneously. A patent could survive In Germany, damages actually suffered are compen-
infringement litigation and then face a validity chal- sated. There are no punitive damages. Damages may be
lenge in the FPC much later, or vice versa. If the pro- calculated as lost profits, infringer’s profits, or a reason-
ceedings are simultaneous, the German infringement able royalty. In German proceedings, a court will decide
proceeding is not likely to stay a decision pending the liability of the defendant to compensate damages and to
outcome of the validity challenge.80 The average time of render accounts. Under German law, there is an obliga-
less than 2 years compares favorably with many district tion of the losing party to reimburse statutory attorney
courts in the U.S. but is about twice as long as the aver- (and patent attorney) fees of the winning party.82 The
age time for infringement and validity proceedings in attorneys’ statutory fees are calculated based on the
China. value in dispute, as determined by the court. Accord-
ingly, the obligation to compensate attorneys’ fees is
3. Remedies The most important remedy in Germany not based on actual costs of the attorney (which may
is an injunction. Damages hearings rarely occur there. have been calculated on an hourly fee) but rather statu-
The court will consider damages only after a determina- tory fees.

S-34
B. China one of the fastest patent litigation jurisdictions in the

world.
1. Patent Infringement and Validity Win Rates Exhibit Exhibit 34 shows an average time for a validity deci-
29 shows the first-instance patentee infringement win sion from SIPO in 2012 was 8 months. This number is
rate in China for the Beijing 1st Intermediate People’s fairly robust because it is based on 1,096 decisions. This
Court for 2012 for 84 decisions is 73.8 % (62/84). The makes China one of the fastest jurisdictions in the
authors caution the reader about this preliminary bifur- world for obtaining a validity decision.
cation data because the number of cases is limited and
the procedures for correlating validity and infringement 3. Remedies Although perhaps starting to change
challenges (as well as the common identity of the par- somewhat, the average damage award in China remains
ties) are not fully developed. small, relative to the damages awarded in other coun-
Only 19% of the 84 Chinese infringement decisions tries, averaging about U.S. $15,000.83 As is the case in
appear to have a corresponding validity challenge (16/ Germany, an injunction is also the primary litigation
84). For the 15 decisions for which a validity decision objective in China.
could be located, the validation rate according to the The patentee may ask the judges to decide the issues
Global IP Project formula (excluding the cases for of infringement and damages in one case. Alternatively,
which there is no data) is 87% + 1/2(6.7%) = 90.3 %. it may also file a separate litigation to pursue damages
The authors provide the same preliminary data caveats after the court decides that infringement was commit-
as those expressed earlier. Nevertheless, multiplying ted. To determine a damage award, the damages calcu-
the patentee infringement win rate 74% by the patent lation is based on the following four methods, which
validation rate, 90%, for this limited sample size results must be pursued in the below priority order:
in a combined win rate of 67%. This combined win rate
1. the patentee’s actual loss caused by the infringe-
is very high.
ment;
Exhibit 30 shows that the patentee win rate for this
population of 104 first-instance utility model infringe- 2. the infringer’s benefit acquired through infringe-
ment decisions from the Beijing 1st Intermediate Peo- ment;
ple’s Court is 65.4% (68/104). It also shows that only 3. 1–3 times reasonable royalties; or
30% (32/104) of those decisions include a correspond-
ing validity challenge. For those 28 cases for which 4. statutory compensation ranging from RMB 10,000
there is actual decision data, the utility model validation to RMB 1,000,000 (about U.S. $1,590–$9,000).84
rate according to the Global IP Project formula (exclud- Because the calculation of patentee’s damage claim
ing the cases for which there is no data) is 71.4% + must follow the above sequence of proof, only when the
1/2(7.1%) = 74.9%. previous method of proof fails is the patentee permitted
Subject to the same caveats expressed earlier, multi- to pursue the following method described above.
plying the patentee infringement win rate 65% by the Attorneys’ fees are recoverable damages for the
utility model validation rate, 75%, results in a combined plaintiff.85 However, in practice, courts award only a
win rate of 49%. small portion of the fees actually incurred by the pre-
For each of the 8 reported courts, the 2012 Invention vailing party. Court fees should also be the responsibil-
Patent win rate exceeds 67%, except for Shanghai 2nd, ity of the losing party, but in many cases the defendant
which is 33%. The universe of cases on which the calcu- is only ordered to pay part of the court fee.
lation is based is still small. The reasonable expenditures of the plaintiff spent for
For each of the 8 courts the 2012 Utility Model Patent investigating and confirming the infringement can also
win rate exceeds 50%, except for Shanghai 1st, which is be included as part of the prevailing party’s damages.86
also 33%. The universe of cases on which the calcula- In 2012, the losing party in all but two of 385 cases, was
tion is based is still small. ordered to pay the court fee. The average court fee for
For the 1,036 reported decisions from the SIPO Reex- those 383 cases was RMB 4,756 (about U.S.$792).
amination Board, the patentee validity win rate accord- A permanent injunction is available at the plaintiff’s
ing to the Global IP Project methodology is 37% + request. However, if an injunction is determined by the
1/2(14%) = 43%. court to be detrimental to the public interest, the court
may decide not to grant it. For example, if the patent in-
2. Time from Filing to Decision on the Merits Exhibit 35 volves technology used by a power plant and an injunc-
shows that the average duration for 2012 utility patent tion would mean the power plant had to stop produc-
infringement decisions was less than 1 year for all of tion, the public interest would be harmed as a result of
the reported courts other than the Changdu and Nan- the injunction. In that scenario, the court will then
jing intermediate courts. The same was true for inven- likely grant a compulsory license even though Chinese
tion patent cases in courts other than Zhengzhou and Patent Law assigns the power of granting compulsory
Beijing 1st. A duration of less than a year makes China licenses to SIPO.
S-35
Infringement win rate *** Corresponding validity challenges * Corresponding validity win rate
(Chinese 1st instance cases)
90 90
80 80 1,
1, 6%
70 70 6%
60 60 6%
62
50 50 68
40 40 84
13,
30 30 82%
20 20
10 22 10 16
0 0
Total No known validity Decision on Totally Valid Partially Valid
Patentee Loses
decision ** validity of patent Not Valid No Data
Patentee Wins
Exhibit 29: Bifurcation of First-Instance Invention Patent Infringement Cases From Beijing 1st Intermediate Peo-
ple’s Court, 2012.
Infringement win rate *** Corresponding validity challenges * Corresponding validity win rate
(Chinese 1st instance cases)
100 100
100
90 90
80 80
4,
70 68 70 72 13%
60 60
104 6,
50 50 19%
20,
40 40
62%
30 30
20 36 20
32
10 10
0 0
Total No known validity Decision on Totally Valid Partially Valid
Patentee Loses
decision ** validity of patent Not Valid No Data
Patentee Wins
Exhibit 30: Bifurcation of First-Instance Utility Model Patent Infringement Cases From Beijing 1st Intermediate
People’s Court, 2012.

S-36
100%
100% 100% 100%
90% 3/3 4/4 7/7
80% 86%
6/7
77% 76%
70%
10/13 13/17
67%
60%
4/6
50%
40%
30% 33%
2/6
20%
10%
0%
Nanjing Jiangmen Shanghai 2nd Zhengzhou Chengdu Beijing 1st Guangzhou Shanghai 1st
Intermediate Intermediate Intermediate Intermediate Intermediate Intermediate Intermediate Intermediate
Court Court Court Court Court Court Court Court
Exhibit 31: Patentee Infringement Win Rate in First-Instance Invention Patent Decisions on the Merits in China,
in 2012.
90%
80%
80% 80%
75% 4/5 4/5 76%
70%
3/4 19/25
60%
50% 53%
50% 50% 50% 8/15
2/4 2/4 3/6
40%
30% 33%
3/9
20%
10%
0%
Jiangmen Shanghai 2nd Changzhou Lanzhou Chengdu Nanjing Shanghai 1st Zhengzhou Guangzhou
Intermediate Intermediate Intermediate Intermediate Intermediate Intermediate Intermediate Intermediate Intermediate
Court Court Court Court Court Court Court Court Court
Exhibit 32: Patentee Infringement Win Rate in First-Instance Utility Model Decisions on the Merits in China, in
2012.
S-37
150
383 14%
37%
Not Valid
Totally Valid
Partially Valid
506
49%
Exhibit 33: Validation Rate in SIPO Validity Decisions on the Merits, 2012.
Average Time in Months
0 2 4 6 8
Exhibit 34: Procedure Duration of First-Instance SIPO Patent Reexamination Board Decisions on the Merits in
China in 2012. Average based on 1,096 decisions between January 1, 2012, and December 31, 2012.

S-38
China – Utility Patent Infringement

Average Duration in months, 2012
Jiangmen Intermediate Court(4) 7.03

0
Shanghai Second Intermediate Court(4) 4.50
Changzhou Intermediate Court(4) 6.39
Chengdu Intermediate Court(5) 19

9.02
Nanjing Intermediate Court(6) 13.87
Shanghai First Intermediate Court(9) 8.52
Zhengzhou Intermediate Court(15) 4.04
Guangzhou Intermediate Court(25) 9

9.50
- 2.00 4.00 6.00 8.00 10.00 12.00 14.00 16.00 18.00 20.00
China - Invention Patent Infringement

Average Duration in months, 2012
Nanjing Intermediate Court(3) 6.17
Jiangmen Intermediate Court(4) 9.10
Changsha Intermediate Court(6) 10.88

8
Zhengzhou Intermediate Court(6) 13.87
Chengdu Intermediate Court(7) 6.04
Beijing First Intermediate Court(7) 14.43
Guangzhou Intermediate Court(13) 8.52
Shanghai First Intermediate Court(17) 8.23
- 2.00 4.00 6.00 8.00 10.00 12.00 14.00 16.00
Exhibit 35: Procedure Duration of First-Instance Patent Infringement Decisions on the Merits in China in 2012.
S-39
C. United States stance for IPRs and PGRs. It comprises a panel of three
administrative patent judges with technical and legal
1. Patent Infringement and Validity Win Rates In the training. PGR petitions have a time limit of 9 months af-
U.S., there are 94 federal district courts in which patent ter issuance, which may remind some practitioners of
litigation may be initiated. The U.S. is a unified system, EPO Opposition proceedings, but there are many proce-
so both infringement and validity may be determined in dural differences.93
a single court proceeding. The litigation may be initi- As of November 1, 2014, the petition grant rate is 77%
ated by the patent owner or by the alleged infringer (for and so far the PTAB has held 68% of the instituted
a declaration of noninfringement or invalidity). The claims unpatentable.94 Nearly 23% of the claims have
only other patent infringement venues in the U.S. are survived without any changes, and 9% of the claims
the U.S. International Trade Commission (USITC) were conceded by the patent owner.95
(where there are certain domestic industry jurisdic- The same patent claims can be at issue simultane-
tional requirements and where money damages cannot ously in an administrative proceeding and a U.S. dis-
be obtained) and the U.S. Court of Federal Claims trict court litigation. Neither forum is required to stay
(where infringement claims against the U.S. govern- its proceeding in favor of the other (except for limited
ment must be filed).87 In addition, there are a three circumstances96). Moreover, a patent held valid in liti-
principal ways a contested case can be terminated on gation may still be challenged in an administrative pro-
the merits in the U.S: case-dispositive summary judg- ceeding and may be determined unpatentable.97 In liti-
ments, judge verdict, or jury verdict. The result is sev- gation, there is a presumption of patent validity and a
eral different patentee win rates for each first-instance clear-and-convincing evidentiary standard of proof. Be-
court. fore the PTAB, by contrast, there is no presumption of
The busiest first-instance court in the U.S., by patent validity, the broadest reasonable claim construction ap-
litigation filings, is the Eastern District of Texas, with plies, and a preponderance-of-evidence standard deter-
1,513 cases filed in 2013.88 Second is the District of mines the issue of patentability. There have been cases
Delaware with 1,336, followed by the Central District in the United States where damages awarded by a court
and Northern District of California with 417 and 396 re- after an infringement trial were held unenforceable af-
spectively. For the Eastern District of Texas, the overall ter a PTAB decision of unpatentability.98
patentee win rate is 45% (includes consent and default
judgments). The patentee win rate in contested cases 2. Time from Filing to Decision on the Merits The time
(excluding consent and default judgments) is 37%. The from filing to termination in first-instance patent litiga-
bench trial win rate is 100% (2/2), and the jury trial win tion in the United States varies considerably by district.
rate is 56.8% (25/44).89 The appropriate win rate to use For example, according to the 2014 PriceWater-
depends on the stage of the litigation. Before filing? At houseCoopers Patent Litigation Study, the median time
this stage the overall win rate is most appropriate un- to termination by trial in the Eastern District of Virginia
less it is known that the opposing party is litigious, in is less than one year (.97 years), whereas the average
which case the contested win rate is the appropriate time to termination by trial in the Northern District of
win rate to use. After claim construction? The jury or Illinois is more than 3.67 years.99 Even looking at termi-
bench win rate will apply depending on which finder of nation by contested judgments, there is wide variation
fact will decide the case. between the fastest (Eastern District of Virginia at 12.2
Very few of the patent cases filed in the Eastern Dis- months) and the slowest (Eastern District of Michigan
trict of Texas go to a decision on the merits, 1.6% (46/ at 42.3 months).100 On average, patent infringement liti-
2,862),90 but the average damage award is $34M, mak- gation in the United States is likely to take between two
ing it a very attractive jurisdiction to patent owners.91 to three years, depending in large part on how long dis-
The AIA created two new post-grant proceedings: covery takes, and to a lesser degree on which district
post-grant review (PGR) and inter partes review (IPR). court is involved. This makes the U.S. the slowest of the
Since coming into effect September 16, 2012, 2,144 IPR three most active patent litigation countries, although it
petitions have been filed.92 As discussed in Section I, must be remembered that the issues of validity, in-
this enthusiastic uptake of the new proceedings is mak- fringement, and damages may all be determined when
ing the U.S. more of a ‘‘bifurcated’’ jurisdiction. Factors a U.S. litigation terminates. In China and Germany, in-
supporting the favorability of PTAB are a statutory fringement and validity will be separate and an addi-
timeline of one year from institution, no presumption of tional hearing for damages may be necessary.
validity for the patent, a lower burden of proof, and po- The new post-grant proceedings, IPR and PGR, by
tentially lower costs. statute must finish 12 months (or, for ‘‘good cause,’’ 18
An integral part of the changes to the administrative months) from the date on which they are instituted.101
options is the replacement of the Board of Patent Ap- As of December 4, 2014, 177 IPR Final Written Deci-
peals and Interferences with the Patent Trial and Ap- sions have issued from 853 IPRs instituted. The PTAB
peal Board (PTAB). The PTAB is the forum of first in- has, for the most part, met the 12-month deadline.

S-40
Bench Jury
100%
100% 100% 100% 100%
90% 2/2 4/4 1/1 3/3
88%
80%
83% 83% 7/8
70% 2.5/3 75% 5/8
3/4 67%
60% 18/28
4/6 63%
58% 60%
50% 57% 56% 7.5/12
14.5/25 3/5
25/44 50% 5/9
48%
40% 6/12 44%
22/45
7/16 38%
30%
3/8
20% 25%
1/4
10%
0%
Eastern District of District of Central District of Northern District Southern District Northern District Southern District District of New Eastern District of Southern District
Texas Delaware California of California of California of Illinois of Florida Jersey Virginia of New York
Exhibit 36: Bench and Jury Patentee Win Rates in Most Active U.S. Federal District Courts (By Patent Infringe-
ment Litigation Filings).102
1457
68.31%
Instituted Claims
Cancelled by PTAB
Instituted Claims
Conceded by Owner
Instituted Claims Survived
482
22.60% 194
9.10%
Exhibit 37: Outcomes of PTAB Final Written Decisions.103
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SD New York, 30.6
ED Virginia, 12.2
D New Jersey, 30.6
SD Florida, 20.6
ND Illinois, 31.9
SD California, 25.3
ND California, 24
CD California, 19.6
D Delaware, 28.3
ED Texas, 30.4
0 5 10 15 20 25 30 35
Exhibit 38: Time From Filing to Termination by Contested Judgment in the 10 Most Active U.S. District Courts
(in Months).104
Frequency of Cases
Days from Institution to Final Written Decision
Exhibit 39: PTAB Final Written Decision Timing.105

S-42
While not as fast as the average time to termination first-instance trial decision on the merits and in which
in SIPO in China, that is faster than the FPC in Ger- at least one asserted claim of the patent-in-suit is held
many, and marks a significant change from the pre-AIA both valid and infringed. Any other decision on the mer-
era, when ex parte reexamination was the main admin- its is considered a ‘‘loss.’’ To determine a country’s win
istrative validity challenge option and the average time rate for patentees on a per-case basis, the total number
for ex parte reexamination from filing to issued certifi- of ‘‘wins’’ is the numerator and the total number of
cate exceeded two years (27.8 months).106 ‘‘wins + losses’’ is the denominator. For example, if in
a given year there are 5 cases that were wins for the pat-
3. Remedies Liability for patent infringement in the entee and 7 that were losses, the win rate would be
U.S. is only civil in nature; there is no criminal liabil- 5/(7+5), or 42 percent. The same formula is used to de-
ity.107 Remedies for patent infringement include dam- termine the patentee win rate on a per-patent basis,
ages,108 permanent and preliminary injunctions,109 and which may be applicable in countries where more than
attorneys’ fees.110 Damages awarded are the largest in one patent is at issue in a single litigation.
the world, by an order of magnitude (see Section II): the For bifurcated countries, the above formula applies to
largest damages award was $1.8 billion.111 Damages the infringement litigation outcomes. For validity, a sec-
are a primary objective of patent litigation in the U.S., ond win rate must be calculated. In validity decisions,
in contrast to Germany and China (and most countries) one of three outcomes is usually possible:
where an injunction is the main goal. With the increase
in patent litigation in the U.S. by nonpracticing entities, 1. All claims are validated without change, which is a
it is no longer automatic that a permanent injunction clear win for the patentee;
will be granted upon a finding of liability; permanent in-
2. All claims are invalidated, which is a clear loss for
junctions are routinely denied in cases in which the pat-
the patentee; or
entee merely licensed its technology and was not offer-
ing its own commercial embodiment.112 3. At least one claim is amended, or some claims in-
There are two calculation methods in the U.S.: lost validated and some claims remain unchanged, or the
profits and reasonable royalty.113 There are no infring- patent is ‘‘partially invalidated.’’
er’s profits awarded. Damages must not be less than a The third outcome is unclear for the patentee be-
reasonable royalty. A reasonable royalty is the default cause the data does not indicate whether the specific
calculation when lost profits cannot be sufficiently claims amended or held invalid were the ones covering
proved or are otherwise inappropriate as the measure the allegedly infringing product or process. Accord-
of damages. Prejudgment interest and postjudgment in- ingly, it is impossible to determine, without a more de-
terest are also available to compensate the patentee tailed review of the actual decision itself, whether the
based on the lost time–value of money it should have re- third outcome is a ‘‘win’’ or a ‘‘loss’’ for the patentee. To
ceived.114 resolve this problem and permit the calculation of an
In addition, mixed damages awards are possible. For ‘‘estimated’’ win rate, one-half of the mixed decisions
example, lost profits may compensate for the part of the are considered a win and one-half a loss. The calcula-
infringing sales the patent owner proved it could have tion of the patentee win rate for validity challenges,
made, and a reasonable royalty may be applied for the therefore, equals the percentage of all claims main-
remainder of the infringing sales.115 tained without change + 1/2(percentage of decisions
Courts have authority and discretion to grant punitive with at least one claim amended).
damages. The court may increase the damages up to The validation rate formula also applies in unified
three times the amount found or assessed (‘‘treble dam- countries to validity decisions of administrative pro-
ages’’).116 Typically, increased damages are granted for ceedings, where that route is available. For example,
acts of willful infringement. Willful infringement dam- the U.S., Japan, and Taiwan are countries with a unified
ages are awarded when the infringer acted despite an system (both validity and infringement may be deter-
objectively high likelihood that its actions constituted mined in one judicial proceeding) and an administrative
infringement of a valid patent.117 The patentee must validity challenge route (in the national patent office) is
show the objective recklessness of the infringer by also available.
clear-and-convincing evidence. The report is based on data collected by Global IP
Reimbursement of costs and attorneys’ fees are pos- Project contributors for the Global IP Project, some of
sible, but not very likely. Even if some costs are which is reported in GLOBAL PATENT LITIGATION: HOW AND
awarded to a winning party, it is very unlikely to cover WHERE TO WIN (copyright 娀 2014 by The Bureau of Na-
the actual costs and fees incurred. To be eligible for an tional Affairs, Inc., and reprinted by permission). It is
award of reasonable attorneys’ fees, a party must show also based on data collected by DARTS-IP (www.darts-
that the litigation is an ‘‘exceptional case.’’118 This is a ip.com) as part of a collaboration agreement between
discretionary determination by the court, and attorneys’ DARTS-IP and the Global IP Project. The U.S. data de-
fees awards are not very common. rives from LegalMetric for the U.S. district court data,
Courtlink for the U.S. patent litigation filing data, Price-
IV. Methodology and Data Sources WaterhouseCoopers for the U.S. damage awards data,
The Global IP Project defines a patent litigation and the United States Patent & Trademark Office for
‘‘win’’ as a patent litigation case that is terminated in a the PTO post-grant proceedings data.
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V. Global IP Project Participating Firms and Attorneys
Argentina Marval, ÓFarrell & Mairal Martin Bensadon

www.marval.com Ignacio Sánchez Echagüe
Maria Laura Etcheverry
Marval, ÓFarrell & Mairal
Av. Leandro N. Alem 928
C1001AAR, Buenos Aires
Argentina
Tel: +54-11-4310-0100
Fax: +54-11-4310-0200
MB@marval.com
IMSE@marval.com
MLET@marval.com
Australia Ashurst Australia Mary Padbury
www.ashurst.com Jessica Norgard
Kellech Smith
Ashurst Australia
Level 26
181 William Street
Melbourne VIC 3000
Australia
GPO Box 9938
DX 388 Melbourne
Tel: +61 3 9679 3000
Fax: +61 3 9679 3111
mary.padbury@ashurst.com
Jessica.Norgard@ashurst.com
Kellech.Smith@ashurst.com
Austria Salomonowitz Horak Lawyers Dr. Sascha Salomonowitz
www.sh-ip.at Salomonowitz Horak Lawyers
Tuchlauben 18 / 9
A-1010 Vienna
T: +43 (1) 5320404-0
F: +43 (1) 5320404-80
s.salomonowitz@sh-ip.at
Brazil Dannemann, Siemsen, Joaquim Eugenio Goulart
Bigler & Ipanema Moreira Rodrigo Carneiro
www.dannemann.com.br Dannemann, Siemsen,
Bigler & Ipanema Moreira
Rua Marquês de Olinda, 70
22251-040, Rio De Janeiro
Brazil
Tel: +55 21 553 1811 (general)
Tel: +55 21 2237 8750 (direct)
Fax: +55 21 553 1812
jgoulart@dannemann.com.br
rcarneiro@dannemann.com.br

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Canada Gowlings Michael Crichton

www.gowlings.com Gowling Lafleur Henderson LLP
160 Elgin Street
Suite 2600
Ottawa, Ontario
Canada K1P 1C3
Tel: +613-786-0248
Fax: +613-563-9869
michael.crichton@gowlings.com
Chile Silva & Cia - Santiago Francisco Silva
www.silva.cl Juan Pablo Silva
Andrés Grunewaldt
Silva & Cia
Hendaya 60, PISO 4
Las Condes
Santiago, Chile
Tel: +56 2 4387000
Fax: +56 2 3720444
fsilva@silva.cl
jpsilva@silva.cl
AGrunewaldt@silva.cl
China Beijing Sanyou Intellectual Lena Shen
Property Agency Ltd Beijing Sanyou Intellectual Property
www.san-you.com/en/ Agency Ltd.
16F, Block A, Corporate Square
No. 35 Jinrong Street
Beijing 100032, P. R. China
Tel: +86.10.88091921
+86.10.88091922
Fax: +86.10.88091920
shenlena@san-you.com
(Xiaoguang Cui, cipp@cippnet.com)
Denmark Zacco Advokater – Copenhagen Martin Sick Nielsen
www.zaccoadvokater.dk Zacco Advokater
Hans Bekkevolds Allé 7
DK-2900 Hellerup
Denmark
Tel.: +45 70 42 42 10
Fax: +45 70 42 42 11
msn@zaccoadvokater.dk
England Taylor Wessing - London Chris Thornham
www.taylorwessing.com Paul England
Taylor Wessing
5 New Street Square
London EC4A 3TW
UK
Tel: +44 (0)207 300 7000
Fax: +44 (0)207 300 7100
c.thornham@taylorwessing.com
p.england@taylorwessing.com
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Finland Roschier, Attorneys Ltd. Johanna Flythström

www.roschier.com Rainer Hilli
Mikael Segercrantz
Roschier, Attorneys, Ltd.
Keskuskatu 7 A
00100 Helsinki
Finland
Tel: +358 (0)20 506 6518
Fax: +358 (0)20 506 6100
johanna.flythstrom@roschier.com
rainer.hilli@roschier.com
mikael.segercrantz@roschier.com
France VÉRON & ASSOCIÉS Pierre Véron
AVOCATS Thomas Bouvet
www.veron.com VÉRON & ASSOCIÉS
AVOCATS
1, rue Volney
F 75002 Paris, France
Tél.: +33 (0)1 47 03 62 62
Fax: +33 (0)1 47 03 62 68
pierre.veron@veron.com
thomas.bouvet@veron.com
Germany Taylor Wessing - Munich & Dr. Sabine Rojahn
Düsseldorf Taylor Wessing
www.taylorwessing.com Isartorplatz 8
D-80331 Munich
Tel. +49 (0)89 2 10 38 -0
Fax: +49 (0)89 2 10 38 -300
s.rojahn@taylorwessing.com
Roland Küppers
Taylor Wessing
Benrather Str. 15
40213 Düsseldorf
Tel. + 49 (0)211 83 87 -0
Fax: + 49 (0)211 83 87 -100
r.küppers@taylorwessing.com
India Anand and Anand Pravin Anand
www.anandandanand.com Archana Shanker
Anand and Anand
1 Jaipur Estate
B-41 Nizamuddin East
New Delhi, India 110 013
Tel: +91 11 2435 51749
Fax: +91 11 2435 4243
Pravin@anandandanand.com
archana@AnandAndAnand.com

S-46
Ireland A&L Goodbody John Whelan

www.algoodbody.ie John Cahir
A&L Goodbody
International Financial Services Centre
North Wall Quay
Dublin 1, Ireland
Tel: +353 1 649 2000
Fax: +353 1 649 2649
jcahir@algoodbody.ie
jwhelan@algoodbody.ie
Israel Gilat Bareket& Co. Eran Bareket
www.rcip.co.il/en/gilat-bareket/ Gilat Bareket & Co.
26A Habarzel Street, Tel-Aviv 6971037,
Israel
P.O.Box 13136, Tel-Aviv 6113101, Israel
Tel: +972 3 5672000
Fax: +972 3 5672030
eranb@gilatadv.co.il
Italy Franzosi - Dal Negro - Setti Vincenzo Jandoli
www.franzosi.com Franzosi - Dal Negro, et al.
Via Brera
5 - 20121 Milano
Tel.: +39 02 859091
Fax: +39 02 72099425
jandoli@franzosi.com
Japan Kaneko & Iwamatsu - Tokyo Shinichi Murata
www.kanekoiwamatsu.com Attorney-at-law (admitted in Japan and New York)
Kaneko & Iwamatsu
12th Fl. Daido Seimei Kasumigaseki Bldg.
1-4-2 Kasumigaseki, Chiyoda-ku
Tokyo 100-0013 Japan
Tel: 81-3-6206-1303
Fax: 81-3-6206-1326
murata@kanekoiwamatsu.com
Korea Kim & Chang Jay J. Kim
www.ip.kimchang.com Tae-Jun Suh
Cy C. Kim
Jeongdong Building, 17F
21-15 Jeongdong-gil
Jung-gu, Seoul 100-784, Korea
Tel: +822-2122-3570
jjkim@ip.KimChang.com
tjsuh@ip.KimChang.com
cykim@ip.KimChang.com
Mexico Uhthoff, Gomez Vega & Uhthoff SC Saúl Santoyo
www.uhthoff.com.mx Uhthoff, Gomez Vega & Uhthoff SC
Hamburgo No. 260
C.P. 06600 Mexico D.F.
Tel: +52-5533-5060
Fax: +52-5208-8387/8507
saulso@uhthoff.com.mx
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Netherlands NautaDutilh Professor Charles Gielen

www.nautadutilh.com NautaDutilh
Strawinskylaan 1999
1007 XV Amsterdam
P.O. Box 7113
1007 JC Amsterdam
The Netherlands
T: +31 20 7171 902
F: +31 20 7171 335
charles.gielen@nautadutilh.com
New A J Park Matt Adams
Zealand www.ajpark.co.nz A J Park
Level 22, State Insurance Tower
1 Willis Street
Wellington, New Zealand
PO Box 949, Wellington 6140, New Zealand
Tel: +64-4-498-3454
Fax: +64-4-472-3358
Matt.Adams@ajpark.com
Norway Zacco Norway AS Zacco Norway AS
www.zacco.com Haakon Vll’s gt. 2
PO Box 2003 Vika
No-0125 Oslo, Norway
Tel: +47-22 91 04 00
Fax: +47-22 91 05 00
Russia Gowlings International Inc. David Aylen
www.gowlings.com Gowlings International Inc.
11 Gogolevsky Boulevard
Moscow, Russia
119019
Tel: +7 495 502 1258
david.aylen@gowlings.com
Scotland Brodies LLP Gill Grassie
www.brodies.com Robert Buchan
Brodies LLP
15 Atholl Crescent
Edinburgh EH3 8HA
Scotland UK
Tel: + 44 (0) 131 656 0078
Fax: +44 (0)131 228 3878
Gill.grassie@brodies.com
robert.buchan@brodies.com
South To be identified To be identified
Africa
Spain Gómez-Acebo & Pombo Abogados Gonzalo Ulloa
www.gomezacebo-pombo.com Eduardo Castillo
Gómez-Acebo & Pombo Abogados, SLP
Castellana, 216
28046 Madrid
Tel: (34) 91 582 91 00
Fax: (34) 91 582 91 14
ecastillo@gomezacebo-pombo.com
gulloa@gomezacebo-pombo.com

S-48
Sweden Zacco Sweden AB Bengt Eliasson

www.zacco.com Zacco Sweden AB
Sveavãgen 151
Box 23101
SE-104 35 Stockholm
Sweden
Tel: +46 8 7299555
Fax: +46 8 318315
bel@zacco.se
Switzerland Schellenberg Wittmer Andrea Mondini
www.swlegal.ch Philipp Groz
Schellenberg Wittmer
Löwenstrasse 19
Postfach 6333
CH-8023 Zurich
Switzerland
Tel: +41-44-215-5252
Fax: +41-1-215-5200
andrea.mondini@swlegal.ch
philipp.groz@swlegal.ch
Taiwan Saint Island International Frank Liu
Patent & Law Office Tony T.Y. Chang
www.saint-island.com.tw Saint Island International
Patent & Law Office
7th Fl., No.248, Section 3,
Nanking East Road,
Taipei, Taiwan,
Republic of China
TEL : 886-2-2775-1823
FAX : 886-2-2731-6377
siiplo@mail.saint-island.com.tw
tony.chang@mail.saint-island.com.tw
U.S.A. Finnegan, Henderson, Farabow, Michael C. Elmer
Garrett & Dunner C. Gregory Gramenopoulos
www.finnegan.com Jonathan Stroud
Stacy Lewis
Finnegan
901 New York Ave., NW
Washington, DC 20001
U.S.A.
michael.elmer@finnegan.com
c.gregory.gramenopoulos@finnegan.com
jonathan.stroud@finnegan.com
stacy.lewis@finnegan.com
S-49
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 the
personal views of the authors and provide no individualized legal advice. It is understood that each case is
fact-specific; and that the appropriate solution in any case will vary. Therefore, these materials may or may
not be relevant to any particular situation. Thus, the authors and participating law firms of the Global IP
Project 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 of
attorney-client relationship with the joint authors and participating law firms of the Global IP Project. While
every 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 rate
data and other objective global metrics with the assistance of patent attorneys and litigators from law firms
around the world. Before 2002, this data did not exist. Through the combined efforts of its members, the
Global IP Project has collected litigation data from 1997 through the present for the most litigious countries
in 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 research
global 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 more
countries (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 the
book. Similarly, while this first Annual Report includes data for 19 countries, the objective is to eventually
include data from all 30 countries in future annual reports. In addition, the reader is directed to the Global
IP 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 the
19 countries discussed in the report, with editorial direction and writing from Michael C. Elmer, C. Gregory
Gramenopoulos, and Stacy Lewis of Finnegan, Henderson, Farabow, Garrett & Dunner, LLP.
7
Only unified systems have the possibility of double-
NOTES tracking because bifurcated systems separate infringe-
1
Text in this section excerpted and/or derived from ment and validity proceedings. See Exhibit 5. Global IP
GLOBAL PATENT LITIGATION: HOW AND WHERE TO WIN Project countries with double-tracking are Canada,
(Bloomberg BNA 2014) and GLOBAL PATENT LITIGATION, Denmark, England, Finland, France, India, Israel, Italy,
2014 SUPPLEMENT (Bloomberg BNA 2014) is the copy- Japan, Netherlands, Norway, Spain, Sweden, Switzer-
right 娀 of The Bureau of National Affairs, Inc., and is re- land, Taiwan, and the U.S.
8
printed by permission. For information on the treatise See also Michael C. Elmer and Stacy Lewis, ‘‘Global
and supplement, see http://www.bna.com/global-patent- Trend to IP Specialty Courts,’’ Managing IP China Edi-
litigation-p17179895470/. tion (July 2013).
2 9
Data sources listed in Section V. The patent pilot program in the U.S. district courts
3
Source: Global IP Participant for the time period was a step in this direction also, but the judges do not
2006-2013. have technical backgrounds.
4 10
Source: Global IP Participant. http://unified-patent-court.org/images/documents/
5
842 instituted, 258 denied. Does not include joinder enhanced-european-patent-system.pdf
11
decisions. As of Nov. 27, 2014. Source: http:// Source: Global IP Participant for China.
12
www.uspto.gov/ip/boards/bpai/stats/112714_aia_stat_ Source: Courtlink.
13
graph.pdf Details and discussion of the UPC can be found in
6
1,457/2,133. An additional 9% of the challenged Chapter 5, ‘‘The Unified Patent Court’’ of GLOBAL PATENT
claims were conceded by the patent owner (194/2,133). LITIGATION: HOW AND WHERE TO WIN (Bloomberg BNA 2014).
14
Source: Finnegan research, as of Nov. 1, 2014, http:// Source: Courtlink. See also, Chapter 15 of GLOBAL
www.aiablog.com/claim-and-case-disposition/. See PATENT LITIGATION: HOW AND WHERE TO WIN (Bloomberg BNA
also, Jonathan R.K. Stroud & Mark Consilvio, Unravel- 2014).
15
ing the USPTO’s Tangled Web: An Empirical Analysis The GIP Project authors define an ‘‘invention’’ pat-
of the Complex World of Post-Issuance Patent Proceed- ent as a patent that has been subject to prior art exami-
ings, 20 INTELL. PROP. L. REV. (Georgia) (2014). nation, to distinguish from other patents such as the

S-50
utility model and design patents in China, which have dicating a patent infringement case. Only when and if
not been examined. It should also be noted that in this (or a similar practice) is implemented, together
China, more than 65% of all patent infringement litiga- with an electronic reporting system, will it be possible
tions are based on utility model and design patents; to obtain more accurate, comparative filing data.
28
11% cases filed for ‘‘invention’’ patents, and 24% ‘‘not Source: Global IP Participant.
29
known.’’ Source: Global IP Participant. ‘‘1+’’ means that while technically multiple courts
16
About U.S. $44M. Settled for U.S. $24 million be- have jurisdiction, virtually all patent infringement cases
fore an appeal was heard. are brought in one court.
17 30
Largest award to date in Japan is U.S. $82M, Aruze Double-tracking question applies only to unified
Corp. v. Sammy Corp., Hanrei Times No. 1119, 222 countries.
31
(2002). Largest award to date in Taiwan is U.S. $65.8M, 87 intermediate courts, 6 basic courts, 31 high
Celanese Far East Limited Taiwan Branch (Hong courts, and 3 IP-specialty courts all have jurisdiction to
Kong) v. China Petrochemical Development Corpora- hear first-instance patent infringement litigation cases.
32
tion, 95 Zhi 5 (Taipei D.C. 2007) Taiwan Taipei District India considers itself a ‘‘hybrid’’ system because
Court (overruled in Aug. 2010). Source: Global IP Par- post-grant oppositions and patent revocation actions
ticipants. can be brought only before the Intellectual Property Ap-
18
Japan: 22% (58/259) (2006-2012); Taiwan: Design pellate Board (IPAB). However, the authors consider In-
patents 36% (4/11), Invention patents 15% (8/52), Utility dia a unified system because invalidity can be raised as
models 16% (16/97) (2010–2011). Source: Global IP Par- a defense in patent infringement litigation and the court
ticipants. can make a validity determination. Uniquely, multiple
19
The USPTO 2014 Annual Report shows 330 re- validity challenge routes may not be used simultane-
quests in 2012 and 260 IPR requests in 2013 were ously.
33
known to have related litigation. Since inter partes re- Source: Global IP Project.
34
view replaced inter partes reexamination on Sept. 16, Source: Global IP Participants.
35
2012, we use an estimate of 104 for 2012 for a total of Source: Global IP Participants for China and Ger-
364 IPR requests known to have related litigation. This many; Courtlink for U.S.
represents about 43% (364/850). The 850 requests are 36
This issue is discussed in detail in chapter 3 of
estimated from the bar graph at http://www.uspto.gov/ GLOBAL PATENT LITIGATION: HOW AND WHERE TO WIN. The
ip/boards/bpai/stats/112714_aia_stat_graph.pdf. Litiga- bench and jury trial win rates are based on decisions on
tion may be stayed pending termination of the IPR. An the merits in cases that have survived summary judg-
average of 66% of litigation stay requests were granted ment. It is more than twice as high as LegalMetric’s
according to LegalMetric Nationwide Report: Stay ‘‘contested’’ win rate, which includes other case out-
Pending Inter Partes Review in Patent Cases, August comes such as case-dispositive summary judgment mo-
2012-June 2014 (‘‘based upon 212 decisions in con- tions. For example, as shown in Exhibit 10 for the U.S.,
tested stay pending inter partes review motions found the contested win rate is only 24% whereas the com-
in the dockets of the courts. Of these 212 decisions, 136 bined (bench and jury) trial win rate is 60.4%.
were granted, 6 were granted in part, and 70 were de- 37
As will unified systems where ‘‘double tracking’’ is
nied.’’ The grant rate, of course, varies by district.). available.
20
PriceWaterhouseCoopers 2014 Patent Litigation 38
Although the data shows 259 patent litigation cases
Study, p. 2. decided on the merits, the 1,265 patent cases filed in-
21
NPE data is extremely difficult to obtain. While clude all patent-related cases such as patent license
there are a few well-known NPEs, there is no universal cases and employee invention cases. 259/1,265 gives a
way to tell if a plaintiff is an NPE by looking at the figure of 21%, which is too low, considering the denomi-
name. In addition, the meaning of what constitutes an nator is not just patent infringement litigation cases
NPE is often debated and the real party in interest is not filed; 40% is considered a reasonable estimate.
always evident from the pleadings. 39
Preliminary injunction data is reported for India
22
This is not the case in the U.S. in view of eBay, Inc. because there is insufficient data for decisions on the
v. MercExchange, LLC, 547 U.S. 388, 391 (2006). merits in the first instance. One decision on the merits,
23
Text in this section excerpted and/or derived from Roche v. Cipla, Delhi High Court, Sept. 7, 2012.
40
GLOBAL PATENT LITIGATION: HOW AND WHERE TO WIN The Italian patent litigation data is provided by
(Bloomberg BNA 2014) and GLOBAL PATENT LITIGATION, DARTS-IP based on decisions provided by the Judges of
2014 SUPPLEMENT (Bloomberg BNA 2014) is the copy- Corporate Courts.
right of The Bureau of National Affairs, Inc., and is re- 41
South Korean patent infringement litigation data
printed by permission. For information on the treatise provided by Professor Chaho Jung’s analysis of 406 pat-
and the forthcoming supplement, see http:// ent infringement cases between 2000–2009, which indi-
www.bna.com/global-patent-litigation-p17179895470/. cates the patentee won or partially 106 times and lost
24
Source: http://www.uspto.gov/patents/stats/inter_ 300 times. Accordingly, the South Korean patentee win
parte_historical_stats_roll_up_EOY2013.pdf. rate is 26% (106/406). Prof Jung characterizes a case as
25
Estimated from bar graph at http://www.uspto.gov/ ‘‘partially won’’ where the patentee won on the issue of
ip/boards/bpai/stats/112714_aia_stat_graph.pdf. infringement (according to the book definition) but was
26
Canada, England & Wales, Finland, France, India, not awarded all of the damages requested.
42
Israel, Italy, Japan, Netherlands, Switzerland, Taiwan Source: LegalMetric Nationwide Patent Litigation
and the U.S. have ‘‘double tracking.’’ Report February 2014 for the time period January 1991–
27
The Global IP Project, through its collaboration February 2014. Patentee win rates vary widely among
with DARTS-IP, is attempting to encourage other coun- the U.S. federal district courts.
43
tries to adopt a practice similar to that in the U.S., Source: Canadian Intellectual Property Office
where a civil cover sheet is prepared and submitted, in- (CIPO).
S-51
44
Patent validity is ordinarily challenged in the court, the infringement issue, was not awarded all of the dam-
but can be challenged post-grant in the UKIPO in revo- ages requested.
55
cation proceedings (rarely used) and EPO oppositions The win rate cannot be determined more precisely
are available for European patents if filed within nine because the required level of data is not available. The
months of grant, or if there is an opposition pending number indicated here represents the decisions where
into which a litigant can intervene. no claims were invalidated (patent claims remain intact
45 without change; a win for the patentee). Source: Korean
Finnish Patents and Registration Office’s First-
Instance Decisions on Patent Oppositions 2009–2012. Intellectual Property Office (KIPO) Intellectual Prop-
46
No national validity challenge track, but EPO op- erty Tribunal (IPT), 2005–2009.
56
positions available for European patents. No national validity challenge track, but EPO op-
47
Preliminary injunction data is reported for India positions available for European patents.
57
because there is insufficient data for decisions on the The win rate cannot be determined more precisely
merits in the first instance. One decision on the merits, because the required level of data is not available. The
Roche v. Cipla, Delhi High Court, Sept. 7, 2012. number indicated here is the ‘‘requests for invalidation
48 denied’’ (patent claims remain intact without change; a
Data from Intellectual Property Appellate Board
win for the patentee). Source: TIPO Annual Report In-
(IPAB) revocation proceeding; patentee win rate calcu-
validation Decisions (2010–2012).
lated differently than Global IP Project methodology. 58
49 Source: LegalMetric Nationwide Patent Litigation
The Israel Patent Office (ILPTO) validity win rate Report February 2014 for the time period January 1991-
is not recorded in a manner consistent with the Global February 2014. Patentee win rates vary widely among
IP Project methodology, but rather a refusal of the op- the U.S. federal district courts.
position and withdrawal of the opposition (cumula- 59
Source: www.patstats.org, reported on issue-by-
tively) are counted as a win for the patent applicant,
issue, not case-by-case.
and withdrawal of the patent application and allowance 60
of the opposition (cumulatively) are counted as a loss 22% percent of all claims confirmed + 1⁄2 (66% of
for the patent applicant. This data, however, is probably at least one claim amended). Source: United States Pat-
skewed towards showing a higher win rate than the ent and Trademark Office (USPTO) statistics, June 1,
true one. This is because the patentee loss data should 1981–Sept. 30, 2013 (www.uspto.gov).
61
be fairly accurate (there is little doubt that withdrawal Source: Finnegan research, http://
of the patent application and allowance of the opposi- www.aiablog.com/claim-and-case-disposition/. PTAB
tion are a loss for the patent applicant), but the other results surviving claims (23%) (482/2,133). Data as of
two results are not necessarily a complete win for the Nov. 1, 2014.
62
patentee. Refusal of the opposition may have been Brazil: Lune v. Americel, 2nd Chamber of the Civil
achieved after a narrowing amendment of the claims, Courts of Brasília, case n. 1998.01.1012867; Canada:
and withdrawal of the opposition may have been Merck v. Apotex, 2013 FC 751 (2013); Japan: Aruze
achieved after granting a license or a covenant not to Corp. v. Sammy Corp., Hanrei Times No. 1119, 222
sue to the opponent. Therefore, we have reported the (2002); South Korea: Kimberly-Clark Corp. v. Ssang
loss rate of at least 48% to be as consistent as possible Yong Paper Co. Ltd. (2004); Taiwan: Celanese Far East
with the Global IP Project methodology. Limited Taiwan Branch (Hong Kong) v. China Petro-
50 chemical Development Corp., 95 Zhi 5 (Taipei D.C.
No national validity challenge track, but EPO op-
2007) Taiwan Taipei District Court (overruled in Aug.
positions available for European patents.
51 2010); China: Zhejiang province, CHINT v. Schneider
The win rate cannot be determined more precisely Electric Low Voltage (Tianjin) Co. Ltd. (2007) (utility
according to the Global IP Project methodology (all model patent) (settled for $24M before appeal heard);
claims maintained without change + half of the claims France: TGI Paris, 3rd Chamber, section 2, (2007),
amended) because this level of data is not available. Ethypharm/Fournier; Finland: District Court of Hel-
The number indicated here represents the ‘‘requests for sinki, decision, No. 11/14339, dated 15 April 2011, in the
invalidation not accepted or dismissed’’ (patent claims matters L 02/1623, L 02/9097, L 02/9513, L 09/47725, L
remain intact without change; a win for the patentee). 09/47735, L10/20063, and L 10/39588.7; Italy: Court of
Source: 2013 Japan Patent Office (JPO) Annual Report Appeal of Milan, No. 2199/10, October 7, 2010; Eng-
Part 5 (2006–2012). land: Ultraframe v. Eurocell (2006) ($6.15M); Gerber
52
No national validity challenge track, but EPO op- Garment Technology Inc v. Lectra Systems Ltd. (Ct.
positions available for European patents. App.) (1996) ($6M); Spain: Pfizer v. Bexal; Netherlands:
53
The Russia Patent Chamber validity win rate is not Excluding approximately 15 years of statutory interest,
recorded in a manner consistent with the Global IP District Court The Hague, 6 September 2006, nr. 3563/
Project methodology. Rather, for 2008–2010, 64% of the HAZA92-8273, BIE 2007, 103: Bom/Alcoa; Germany:
time in validity challenges the claims were all main- EUR 2.04M plus interest; Düsseldorf Regional Court,
tained or maintained-in-part. This includes patents, June 22, 2010, File No. 4b O 57/09, ‘‘Occluder’’ (In-
trademarks and appellation cases fringement was, however, not confirmed by Federal
54
South Korean patent infringement litigation data Court of Justice and, consequently, damages became
provided by Professor Chaho Jung’s analysis of 406 pat- re-payable); Israel: the Ein Tal matter (2003).
63
ent infringement cases between 2000–2009, which indi- Australia preliminary injunction grant rate: 74%
cates the patentee won 39 times, ‘‘partially won’’ 67 (14/19) (2006-2011); Germany preliminary injunction
times, and lost 300 times (in actuality, 408 cases were grant rate: 2009 – 2013: 55% (79/145) (Düsseldorf first-
evaluated; however, two cases were mediated). Accord- instance court only).
64
ingly, the patentee win rate is 26% (106/406). As noted There are regional versions of this diagram on the
previously, Professor Jung characterized certain cases Global IP website, www.globalpatentmetrics.com
as ‘‘partially won’’ where the patentee, after winning on wherein the most patentee-friendly and patentee-

S-52
unfriendly countries are identified for Asia and Europe, port: Stay Pending Inter Partes Review in Patent Cases,
respectively. The most patentee-friendly countries in August 2012–June 2014 (‘‘based upon 212 decisions in
Europe are Germany, France, and the Netherlands, and contested stay pending inter partes review motions
the most patentee-unfriendly is England. In Asia, the found in the dockets of the courts. Of these 212 deci-
most patentee-friendly country is China, and the most sions, 136 were granted, 6 were granted in part, and 70
patentee-unfriendly are Japan and Taiwan. were denied. The grant rate, of course, varies by dis-
65
There are regional versions of this diagram on the trict. In very limited circumstances, a stay is mandatory
Global IP Project website, www.globalpatentmetric- (35 U.S.C. § 315(a)(2) and § 325(a)(2)); otherwise, the
s.com. decision to grant a stay request is at the discretion of
66
Source: Global IP Participant. the district court judge. Before the AIA, the proclivity of
67 district court judges to grant requests for a stay pend-
Source: Global IP Participant.
68
In this Report, the authors provide industry- ing ex parte reexamination varied widely. See Legal-
specific data from the Global IP Project. For industry Metric Nationwide Report Stay Pending Reexamination
data from DARTS-IP, the reader is directed to Appendix in Patent Cases, June 1991–February 2014.
78
A of GLOBAL PATENT LITIGATION: HOW AND WHERE TO WIN, Also known as the Bundespatentgericht (BPG). In
where the first-ever global industry-specific data is pro- Germany, there may also be validity challenges in the
vided from early data extractions from the DARTS-IP European Patent Office (EPO) of European patents des-
database. While the data is embryonic, the DARTS-IP ignating Germany.
79
database is also interesting because it captures indus- As can be seen from the first DARTS-IP German
tries according to the more extensive EPO classification bifurcation chart, 37 out of 88 Düsseldorf patent in-
system. fringement decisions for calendar year 2012 (40%) also
69
Although the Italy cases come from DARTS-IP da- included either a corresponding validity challenge in
tabase, the analysis of industry-specific win rates comes the EPO or FPC. It is this limited population of deci-
from the Global IP Project. sions that provides the, ‘‘upper’’ preliminary estimate of
70
For more technology-specific patentee win rates in 40%. This is considered an upper estimate because the
France, see chapter 17 of GLOBAL PATENT LITIGATION: HOW DARTS-IP database is not yet able to confirm that the
AND WHERE TO WIN. The only French technology-specific same parties are involved in both the Düsseldorf in-
patentee win rate data included in this report is that fringement case and the corresponding validity chal-
corresponding to the Global IP Project technology cat- lenge.
80
egories. See Chapter 18 in GLOBAL PATENT LITIGATION: HOW AND
71
When the UPC is established, London will be the WHERE TO WIN.
81
specialty court for human necessities, chemistry and Germany: EUR 2.04M plus interest; Düsseldorf Re-
metallurgy. gional Court, June 22, 2010, File No. 4b O 57/09, ‘‘Oc-
72
The charts in this section on Germany and China cluder’’ (Infringement was, however, not confirmed by
are provided by DARTS-IP. The data represents a lim- Federal Court of Justice and, consequently, damages
ited number of cases. For example, in 2012, the became re-payable).
82
DARTS-IP German bifurcation data chart is based on GCCP § 91.
83
88 of decisions from Düsseldorf. Source: Global IP Participant, average damage
73
In the U.S., nearly all patent litigation filings relate awards from select Chinese first-instance courts, 2007-
to invention patents. In Germany, they relate to inven- 2009: Shanghai 2nd, U.S. $35,400; Beijing 1st, U.S.
tion patents and utility models. In China this number $22,000; Zhejiang Ningbo, U.S. $20,400; Beijing 2nd,
represents invention patents, utility models and design U.S. $18,400; Anhui Hefei, U.S. $12,300; Guangdong
patents. Design patents and utility models make up at Shenzhen, U.S. $11,500; Shanghai 1st, U.S. $11,500;
least 65% of the patent litigation filings; invention pat- Zhejiang Jinhua, U.S. $11,500,
84
ents 11%, unknown 24%. Source: Global IP Project. Article 65, Patent Law of China (2009).
85
74
Germany has 12 first-instance infringement courts; Article 65 of Patent Law of China (2009); Article 22
the U.S. has 94 first-instance federal district courts plus of Supreme Court’s Some Regulations on the Applica-
the ITC and Court of Federal Claims; and China has 87 tion of Laws to Hearing Patent Dispute Cases (2013).
86
intermediate people’s courts, 6 basic courts, 31 high Article 22 of Patent Law of China (2009).
87
courts, and 3 IP-specialty courts that can hear the first- For more information on USITC and Claims Court
instance patent infringement litigation cases. data see the Global IP Project website, www.globalpat-
75
While not discussed here, the U.S. has two addi- entmetrics.com.
88
tional trial courts, namely, the U.S. International Trade Source: Courtlink.
89
Commission (USITC) and the U.S. Court of Federal Source: LegalMetric, District Report, Jan. 2009–
Claims. Feb. 2014.
76 90
The USPTO 2014 Annual Report shows 330 re- Source: LegalMetric, District Report, Jan. 2009–
quests in 2012 and 260 IPR requests in 2013 were Feb. 2014.
91
known to have related litigation. Since inter partes re- Source: LegalMetric, District Report, Jan. 2009–
view replaced inter partes reexamination on Sept. 16, Feb. 2014.
92
2012, we use an estimate of 104 for 2012 for a total of Source: http://www.uspto.gov/ip/boards/bpai/stats/
364 IPR requests known to have related litigation. This 120414_aia_stat_graph.pdf, as of December 4, 2014.
93
represents about 43% (364/850). The 850 requests are See Filip De Corte, Anthony C. Tridico, Tom Irving,
estimated from bar graph at http://www.uspto.gov/ip/ Stacy D. Lewis & Christina N. Gervasi, AIA Post-Grant
boards/bpai/stats/112714_aia_stat_graph.pdf. Review & European Oppositions: Will They Work in
77
Litigation may be stayed pending termination of Tandem, or Rather Pass Like Ships in the Night?, 14
the IPR. An average of 66% of litigation stay requests N.C. J.L. & Tech. 93 (2012), available at http://ncjolt.org/
were granted according to LegalMetric Nationwide Re- wp-content/uploads/2013/01/11_De-Corte_Final.pdf.
S-53
94 104
1,457/2,133. Source: Finnegan research, as of Nov. Source: LegalMetric District Reports, 2009-Feb.
1, 2014, www.aiablog.com/claim-and-case-disposition/. 2014.
95 105
Source: Finnegan research, as of Nov. 1, 2014, Source: Finnegan research, as of November 1,
www.aiablog.com/claim-and-case-disposition/. 2014, http://www.aiablog.com/timing/
96
35 U.S.C. § 315(a)(2) and § 325(a)(2). 106
Source: http://www.uspto.gov/patents/stats/ex_
97
See, e.g., Fresenius USA v. Baxter Int’l, 721 F.3d parte_historical_stats_roll_up_EOY2013.pdf.
1330 (Fed. Cir. 2013), cert. denied, 134 S.Ct. 2295 (U.S. 107
35 U.S.C. § 281.
2014), and In re Baxter Int’l, Inc., 678 F.3d 1357 (Fed. 108
35 U.S.C. § 284.
Cir. 2012); ); Interthinx, Inc. v. Corelogic, Inc., 109
35 U.S.C. § 283.
CBM2012-00007 Paper 58 (P.T.A.B. Jan. 30, 2014) 110
35 U.S.C. § 285.
(holding unpatentable expired patent claims that had 111
Centocor Ortho Biotech, Inc. v. Abbott Laborato-
been held valid, enforceable, and infringed in patent
ries, 669 F. Supp. 2d 756 (E.D. Tex. 2009) (Judge Ward
litigation).
98 denied judgment as a matter of law to overturn jury ver-
See, e.g., RIM $612M settlement of litigation over
dict), rev’d, 636 F.3d 1341 (Fed. Cir. 2011) (holding that
patents that were later held invalid by the USPTO in re-
the patent was invalid for lack of written description)).
examination; NTP, Inc. v. Research In Motion, Ltd., 397 112
F. Supp. 2d 785 (E.D. Va. 2005). eBay, Inc. v. MercExchange, LLC, 547 U.S. 388,
99
2014 PriceWaterhouseCoopers Patent Litigation 391 (2006).
113
Study, Chart 9a. 35 U.S.C. § 284
114
100
LegalMetric District Reports, January 2009–Feb. 35 U.S.C. § 284(1); See Energy Transp., Inc. v.
2014 (‘‘average time from case filing to case termina- William Demant Holding A/S, 697 F.3d 1342 (Fed. Cir.
tion, in months, for all patent cases terminated by con- 2012), for a short mention of prejudgment interest in
tested judgment[.]’’). damage awards.
115
101
35 U.S.C. § 316(a)(11) and § 326(a)(11). Crystal Semiconductor Corp. v. TriTech Micro-
102
Source: LegalMetric, District Reports, Jan. 2009– electronics Int’l, 246 F.3d 1336, 1354 (Fed. Cir. 2001).
116
Feb. 2014. The reports indicate that when ‘‘.5’’ is 35 U.S.C. § 284(2).
117
shown, half a case was counted because in it is recorded In re Seagate Technology LLC, 497 F.3d 1360,
that both parties prevailed. 1371 (Fed. Cir. 2007).
103 118
Source: Finnegan research, as of November 1, Id.
2014, www.aiablog.com/claim-and-case-disposition/.

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ANNUAL GLOBAL PATENT

Global Patent Litigation Data

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

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

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

T how and where to litigate against competitors. Pat-

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

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

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

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

#" #" #" #" #" #"

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

  

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

Country (Common Annual patent litigations filed Percentage of cases going to

80% Bifurcated Unified

Netherlands 36% 48/133

Australia 54% 25/46

Canada 46% 19/41

Japan 22% 58//259

India 45% 14/31

Italy 40% 37/92

Israel 33% 1/3

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

Common law Civil law Civil law

China (invention patents) 68%

South Korea 26% 106/406

Netherlands 36% 48/133

France 39% 161/413

Canada 46% 19/41

Japan 22% 58//259

Italy 40% 37/92

Patentee win rate in

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

High patentee win rates:

China, Germany, U.S.

High chance case Highest damage

Low patentee win

Low chance case

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

100% 100% 100% 100%

30% 25% 25%

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

30% 26% 25% 25% 26%

Chemical/Materials Engineering Overall

Bifurcated systems Unified systems

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

Bifurcated systems 100% Unified systems

68% 67% 66%

Bifurcated systems 100% Unified systems

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

Bifurcated systems Unified systems

Medical device Overall

Bifurcated systems Unified systems

30% 26% 25% 25%

Computer hardware/software Overall

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

Bifurcated systems Unified systems

30% 25% 26%

Bifurcated systems Unified systems

30% 26% 25%

Number of ‘‘Other’’ Number of ‘‘Other’’ Number of Overall Number of Overall

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