On July 6, 2021, the European Union filed an “Article 63.3” request at the WTO requesting further information on four SEP cases in China (the “Request”). Article 63 requests are transparency requests, and was used by the United States in DS/362, the China IP enforcement case, about which I have blogged over the years. The lack of a strong commitment to judicial transparency in IP litigation was a singular weakness of the Phase 1 Trade Agreement.
The SEP cases that are the subject of the Request include: Conversant v. Huawei, Oppo v. Sharp, Xiaomi v InterDigital, and Samsung v. Ericsson. The Request asks for further information to enable rightsholders to “acquaint themselves with those decisions that are identified as typical, example cases.” The Request further notes that “upon research only the Conversant v Huawei case decisions [was] found on [China judgements on line]…Therefore the European Union would like to request China to clarify if and where the decisions in the other three cases can be found and provide these.” The Request further notes that “This is a case of some urgency as shown by the fact that some Courts adopted these provisional measures inaudita altera parte.”
To the extent there are other judicial decisions germane to the Request, the EU has also requested China to provide all of these documents. The Request references secondary materials such as press articles and the disclosures made in the recent decision in the Western District of Texas in Ericsson v. Samsung (Jan. 11, 2021) to advance the request for the existence of additional documents.
The EU has properly observed that China has developed a nascent system of case law, through designation as a “typical” case or similar. This phenomenon has been especially acute in the area of anti-suit injunctions and SEPs. In addition, the Request has identified the limited utility of China Judgments On Line in analyzing case developments, due to selection bias concerns. I have also noted previously that non-publication of SEP-related cases has been especially concerning.
China’s utilization of case law to provide greater certainty in adjudication of disputes raises questions regarding whether such cases are of “general application” pursuant to TRIPS Art. 63.1 (below), which would require China to make such cases continuously available. Students in my Chinese IP and international trade classes have heard me discuss the potential implications of Chinese case law development on its transparency obligations for the past decade. As I noted in my blog “The WTO IP Cases That Weren’t”, “China should publish cases that have ‘general application’ whether or not they are strictly binding because of their ‘general application’ beyond the facts in suit. These would include cases that are considered ‘guiding’ cases, ‘model’ [typical] cases or other cases that are intended to instruct or guide judges, lawyers, rightsholders or the public. While most of the influential cases are already publicly available, there are some that are not… Preliminary injunctions or other provisional measures should also not be exempt from Article 63, provided that the decision is final. “
In sum, publication of these importance cases will benefit all parties through increased transparency and disclosure of how Chinese policy is evolving in this contentious area. I am sure this issue will also be discussed in the forthcoming Asia Society of Northern California program on July 14, “Intellectual Property in the Cross-Fire.”
TRIPS Article 63 provides in pertinent part:
1. Laws and regulations, and final judicial decisions and administrative rulings of general application, made effective by a Member pertaining to the subject matter of this Agreement (the availability, scope, acquisition, enforcement and prevention of the abuse of intellectual property rights) shall be published, or where such publication is not practicable made publicly available, in a national language, in such a manner as to enable governments and right holders to become acquainted with them. …
3. Each Member shall be prepared to supply, in response to a written request from another Member, information of the sort referred to in paragraph 1. A Member, having reason to believe that a specific judicial decision or administrative ruling or bilateral agreement in the area of intellectual property rights affects its rights under this Agreement, may also request in writing to be given access to or be informed in sufficient detail of such specific judicial decisions or administrative rulings or bilateral agreements.