{"id":169390,"date":"2021-08-01T08:48:08","date_gmt":"2021-08-01T08:48:08","guid":{"rendered":"https:\/\/dominiclevent.com\/blog\/?p=169390"},"modified":"2021-08-02T06:50:44","modified_gmt":"2021-08-02T06:50:44","slug":"from-the-us-to-europe-how-counsel-manage-global-litigation","status":"publish","type":"post","link":"https:\/\/dominiclevent.com\/blog\/from-the-us-to-europe-how-counsel-manage-global-litigation\/","title":{"rendered":"From the US to Europe: how counsel manage global litigation"},"content":{"rendered":"


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With companies increasingly taking on cross-jurisdictional
\npatent litigation, it’s more important than ever to understand how the courts work and what remedies are
\navailable in different countries, according to
\ncounsel at Johnson & Johnson, Ferring Pharmaceuticals and Dentons. <\/p>\n

Speaking at the Managing IP Life Sciences Forum<\/a> last Wednesday, June 16, panellists
\nduring the session on global protection and enforcement strategies said counsel
\nshould be aware of whether injunctive relief is available and what needs to go
\ninto evidence gathering, among other things. <\/p>\n

\u201cA key thing you have to remember in the US, for example, is
\nof course that defendants have a right to a jury trial,\u201d said Paul Coletti,
\nassociate patent counsel at Johnson & Johnson in New Jersey.<\/p>\n

Because of this, he added, there are emotions
\ninvolved \u2013 something that counsel in Europe might not be familiar with. \u00a0\u00a0\u00a0\u00a0<\/p>\n

<\/p>\n

Injunction opportunities<\/h2>\n

<\/strong><\/p>\n

Speakers pointed out that while preliminary injunctions are
\nquite rare in countries such as the US, they\u2019re much more available in Germany \u2013
\nwhich is something that US counsel take into account when choosing where to
\nlitigate. <\/p>\n

\u201cIt\u2019s clearly something that\u2019s very attractive,\u201d said
\nColetti. \u201cIn the US, as we all know, it\u2019s becoming harder and harder to obtain a
\npreliminary injunction. But Germany has kept to the idea that imminent infringement
\nshould be halted at least temporarily so the parties can have a trial.<\/p>\n

\u201cIt\u2019s been used by many US firms to much success,\u201d he added.\u00a0<\/p>\n

Jesse Fecker, chief US patent counsel at biopharma company Ferring in New
\nJersey, agreed that preliminary injunctions such as the
\nones provided in Germany are critical. <\/p>\n

\u201cIf you\u2019re into damages, you\u2019re already in trouble,\u201d he
\nadded. <\/p>\n

Coletti said that injunctions are also an excellent tool
\nfor inducing settlements. <\/p>\n

\u201cSometimes you want damages, but sometimes you want peace,
\neither through a cross licence or just a reasonable royalty. Depending on the
\nsituation, an injunction might help spur on a settlement.\u201d<\/p>\n

But Germany might not be the only good place in Europe to
\nget an injunction for much longer. Lo\u00efc Lemercier, partner at Dentons in Paris,
\nsaid there has been a growing trend towards preliminary injunctions in France over
\nthe past three years.<\/p>\n

\u201cInjunctions have been granted more frequently, especially in
\npharma cases,\u201d he said. \u201cThis is good news, because it used to be quite difficult
\nto get injunctions in France.\u201d<\/p>\n

<\/p>\n

Evidence in Europe<\/h2>\n

<\/strong><\/p>\n

Moving on to the topic of evidence gathering, Dentons
\npartner Constantin Rehaag noted that several of the most popular jurisdictions
\nfor patent litigation have very different systems for collecting information.<\/p>\n

\u201cThat is also a huge difference that should have an
\ninfluence on your considerations,\u201d he said. <\/p>\n

Lemercier agreed, pointing
\nout that unlike in the UK or US, most European courts do not have proceedings for discovery
\nor disclosure. <\/p>\n

\u201cIn France, for example, we have an amazing tool called the infringement
\nseizure, which allows you to visit a competitor to gather evidence such
\nas gross margin and a copy of the master drug file.<\/p>\n

\u201cIt\u2019s an amazing
\nweapon,\u201d he said.\u00a0<\/p>\n

Fecker added that it\u2019s important for counsel to consider
\nthat discovery is more complete in the US than in many places in Europe. <\/p>\n

\u201cYou can essentially gather most of the documents there. <\/p>\n

\u201cBut it\u2019s still important to keep in mind, particularly in
\npatent cases where you\u2019re often dealing with older documents and systems that
\nmight not have retained everything, that your opponent may occasionally have a document
\nthat surprises you.\u201d<\/p>\n

He added: \u201cIt\u2019s important to keep track for consistency of what\u2019s gone
\ninto the US case versus what\u2019s gone into a European case, particularly documents
\nattached to declarations supplied in Europe, and that you and your opponent aren\u2019t
\nsubmitting things in Europe that aren\u2019t part of the US record.\u201d<\/p>\n

Global litigation is becoming increasingly common, and as a
\nresult it\u2019s becoming more important for counsel to understand how different
\njurisdictions work and \u2013 perhaps more importantly \u2013 the interplay between them.\n<\/p>\n

\n

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