From the US to Europe: how counsel manage global litigation
With companies increasingly taking on cross-jurisdictional
patent litigation, it’s more important than ever to understand how the courts work and what remedies are
available in different countries, according to
counsel at Johnson & Johnson, Ferring Pharmaceuticals and Dentons.
Speaking at the Managing IP Life Sciences Forum last Wednesday, June 16, panellists
during the session on global protection and enforcement strategies said counsel
should be aware of whether injunctive relief is available and what needs to go
into evidence gathering, among other things.
“A key thing you have to remember in the US, for example, is
of course that defendants have a right to a jury trial,” said Paul Coletti,
associate patent counsel at Johnson & Johnson in New Jersey.
Because of this, he added, there are emotions
involved – something that counsel in Europe might not be familiar with.
Speakers pointed out that while preliminary injunctions are
quite rare in countries such as the US, they’re much more available in Germany –
which is something that US counsel take into account when choosing where to
“It’s clearly something that’s very attractive,” said
Coletti. “In the US, as we all know, it’s becoming harder and harder to obtain a
preliminary injunction. But Germany has kept to the idea that imminent infringement
should be halted at least temporarily so the parties can have a trial.
“It’s been used by many US firms to much success,” he added.
Jesse Fecker, chief US patent counsel at biopharma company Ferring in New
Jersey, agreed that preliminary injunctions such as the
ones provided in Germany are critical.
“If you’re into damages, you’re already in trouble,” he
Coletti said that injunctions are also an excellent tool
for inducing settlements.
“Sometimes you want damages, but sometimes you want peace,
either through a cross licence or just a reasonable royalty. Depending on the
situation, an injunction might help spur on a settlement.”
But Germany might not be the only good place in Europe to
get an injunction for much longer. Loïc Lemercier, partner at Dentons in Paris,
said there has been a growing trend towards preliminary injunctions in France over
the past three years.
“Injunctions have been granted more frequently, especially in
pharma cases,” he said. “This is good news, because it used to be quite difficult
to get injunctions in France.”
Evidence in Europe
Moving on to the topic of evidence gathering, Dentons
partner Constantin Rehaag noted that several of the most popular jurisdictions
for patent litigation have very different systems for collecting information.
“That is also a huge difference that should have an
influence on your considerations,” he said.
Lemercier agreed, pointing
out that unlike in the UK or US, most European courts do not have proceedings for discovery
“In France, for example, we have an amazing tool called the infringement
seizure, which allows you to visit a competitor to gather evidence such
as gross margin and a copy of the master drug file.
“It’s an amazing
weapon,” he said.
Fecker added that it’s important for counsel to consider
that discovery is more complete in the US than in many places in Europe.
“You can essentially gather most of the documents there.
“But it’s still important to keep in mind, particularly in
patent cases where you’re often dealing with older documents and systems that
might not have retained everything, that your opponent may occasionally have a document
that surprises you.”
He added: “It’s important to keep track for consistency of what’s gone
into the US case versus what’s gone into a European case, particularly documents
attached to declarations supplied in Europe, and that you and your opponent aren’t
submitting things in Europe that aren’t part of the US record.”
Global litigation is becoming increasingly common, and as a
result it’s becoming more important for counsel to understand how different
jurisdictions work and – perhaps more importantly – the interplay between them.
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