The American Bar Association has asked me to post a notice on this forthcoming conference on Chinese Antimonopoly Law investigations, which is also expected to cover the IP issues in AML investigations, to be held on October 17, 2016:
The American Bar Association has asked me to post a notice on this forthcoming conference on Chinese Antimonopoly Law investigations, which is also expected to cover the IP issues in AML investigations, to be held on October 17, 2016:
Chinese and Western media have reported that former Supreme People’s Court IPR Tribunal Chief Judge Kong Xiangjun and former Deputy Chief Judge of the SPC’s first Circuit Court has been dismissed from his work at the SPC. Shanghai Jiaotong University, Koguan Law School also announced on September 7 that he would be joining their faculty.
Kong served nine months on the circuit court, when he was dismissed from that position by the NPC in 2015. He was dismissed from his SPC positions as both a trial judge and a member of the adjudication committee on September 3, 2016 by at the 23rd meeting of the Standing Committee of the 12th NPC. There had previously been rumors that Kong was going to leave the court when he served on the SPC’s circuit court, which he denied.
Kong pursued his Ph.D. under Jiang Ping 江平 at the Chinese University of Political Science and Law. He also served as Deputy Chief Judge under the Administrative Tribunal of the SPC, deputy chief judge of the civil tribunal, and as Deputy Party Secretary in Sichuan in 2014. Among his many honors, Managing IP nominated him to the 50 Most Influential People in IP in 2010 and 2011.
Owing to his work in the fair trade division of SAIC prior to entering the court, Kong also had an interest in unfair competition and antitrust matters, and was an example of the many of officials in China who worked on unfair competition and IP issues at different stages of their career. Kong has also authored several books including on contract law, antiunfair competition law, trade secret law, the TRIPS Agreement, and trademark law.
To the uninitiated, Qualcomm’s licensing practices in China must appear confusing. Since paying a fine of 975 million USD to NDRC – about 50,000 times average patent damages according to the CIELA database for its Standards Essential Patent licensing practices, Qualcomm has entered into approximately 100 licensing settlements with Chinese companies. How can the weak become so successful, so soon?
According to press accounts, Qualcomm has settled with the major cell phone manufacturers in China, most recently with Chinese cell phone companies Vivo and Oppo. Both deals came after Qualcomm decided to bring law suits against cell phone manufacturer Meizu in the Beijing and Shanghai intellectual property courts for damages that reportedly total about 520 million RMB. The first law suit was filed by Qualcomm around June 23 at the Beijing Intellectual Property Court. The complaint essentially sought to enforce an NDRC rectification plan imposed on Qualcomm against other infringers/potential licensees. The original complaint, according to Qualcomm’s press release “requests rulings that the terms of a patent license offered by Qualcomm to Meizu comply with China’s Anti-Monopoly Law, and Qualcomm’s fair, reasonable and non-discriminatory licensing obligations. The complaint also seeks a ruling that the offered patent license terms should form the basis for a patent license with Meizu for Qualcomm’s fundamental technologies patented in China for use in mobile devices, including those relating to 3G (WCDMA and CDMA2000) and 4G (LTE) wireless communications standards.” Since that filing, Qualcomm filed 17 new complaints were filed in Beijing and Shanghai.
Given the risks to Qualcomm posed by seeking injunctive relief for standards essential patents, Qualcomm appears to have initially launched its litigation campaign against Meizu by enforcing the NDRC approved licensing terms against one hold out company who might thereafter be left with an unfair competitive advantage. Qualcomm appears to be reducing its antitrust risks by first getting “immunized” by NDRC, and then enforcing the terms of the NDRC “rectification plan” and couching its patent infringement litigation in terms of promoting fair competition. This in effect has turned the tables on recalcitrant licensees who have previously relied on Qualcomm’s FRAND commitments to reduce the risk of being sued by Qualcomm by threatening an antitrust counterclaim. What remains to be seen, however, is the legal status the court affords the rectification plan given the often unclear relationships between judicial and administrative decision making.
Qualcomm’s GC, Don Rosenberg said Qualcomm is taking legal action out of a sense of fairness to other companies that are paying what they owe. In addition, the case represents a vote of confidence by Qualcomm in the court system. As Don Rosenberg noted “”We’re putting our faith in the court system there and we wouldn’t do that if we didn’t think we were in capable hands.” Qualcomm may no doubt have been inspired by the success of its licensing program as well as the perfect or near perfect win rate in the sixty five infringement cases filed by foreigners in 2015 in the Beijing IP court. As I have noted repeatedly on this blog, foreigners do win IP cases in China.
In China’s current legal environment, where licensing is burdened by seemingly contradictory norms – e.g., where the Chinese government sets prices for license transactions in antitrust cases, restricts the freedom to negotiate of foreigners, provides tax incentives for licensing in to China for high tech enterprises, sets national goals for licensing transactions, and where the courts seem to have difficulty imposing damages based on actual or implied royalties, Qualcomm appears to be turning the 975 million dollars of “lemons” of the NDRC fine, into a vat of lemonade.
Qualcomm’s vote of confidence in the courts in a high stakes case may also help set an important model for other foreign and Chinese rightsholders, potentially by highlighting such important issues as: Yes, foreigners win cases in China, the importance of actual or explicit license agreements for determining damages (already being tried in some jurisdictions, see: 江苏固丰管桩集团有限公司 vs 宿迁华顺建筑预制构件有限公司 (Jiangsu, 2015), and the respective roles of patent law, antitrust law, the courts and administrative agencies, in obtaining SEP licenses in China.
Qualcomm and China both have a lot at stake in the handling of SEP issues. A recent report by Thomson Reuters (The Evolving Landscape of Standard Essential Patents: Keeping What is Essential, Sawant and Oak), showed that Qualcomm owns 17% of the patent declarations before the European Telecommunications Standards Institute, followed by Nokia, Huawei, and InterDigital. Decisions in Europe such as Huawei vs. ZTE may also have underscored the importance of looking at whether a putative licensee/infringer is in fact negotiating in good faith with a FRAND encumbered licensor.
Judges such as Zhu Li of the SPC have noted some of these changes publicly. As Zhu Li said in a recent blog:
[T]he owner of standard essential patent FRAND commitment that is made voluntarily does not give up under all circumstances the choice of seeking injunctive relief. Furthermore, it does not mean seeking injunctive relief must produce anti-competitive effects. Therefore, when a holder of a FRAND encumbered SEP seeks injunctive relief, the anti-competitive effects still need specific analysis and judgment。
The evolving practice appears to be that the evidentiary burden to demonstrate that the infringers have refused to pay a license fee is on the licensor and, as Zhu Li noted, a monopoly is not necessarily constituted when an injunction is requested by SEP owners.
The State Council’s recent opinion on how China should become a “strong” IP country, also highlighted how China needs to draft rules on standard essential patents that are based on FRAND licensing and “stopping infringement” (Art. 38) (with the involvement of AQSIQ, SIPO, MIIT, and the Supreme People’s Court) and that encouraging standardization of Chinese patents also remains a priority (Arts. 61, 71).
As I indicated elsewhere, a key question for China is “What circumstances exist to suggest that a prospective licensee is engaged in patent hold-out, i.e., refusing to license in good faith which might suspend the licensor’s F/RAND obligation…” Hopefully China is beginning to ask the better questions that are suitable for its licensing environment and its efforts to become a “strong” IP economy.
What are you observing in this hot area? Please post your comments and corrections!
The preceding is the author’s personal opinion only.
Antitrust agency heads from the Federal Trade Commission, Department of Justice, Competition Markets Authority, and EU Commission will deliver keynote remarks at this 43rd annual event. Panel discussions will address topics such as antitrust and intellectual property in Asia, international antitrust cooperation in today’s multicultural environment, and antitrust enforcement in China. The conference concludes with an in-house counsel roundtable, “The China Challenge.” The program will be held September 22 – 23 at Fordham University.
I will be on a panel on September 22 from 11:20 a.m.–12:35 p.m. speaking in my academic capacity on “Antitrust and Intellectual Property in Asia: Convergence? ” with H. Stephen Harris Jr., Partner, Winston & Strawn moderating. Other panelists include Dina Kallay, Director, Intellectual Property and Competition, Ericsson, Inc.; and Joshua Wright, Senior Of Counsel, Wilson Sonsini Goodrich & Rosati.
Additional information can be found at: http://www.fordham.edu/info/20689/competition_law_institute
Attached are comments of the ABA Sections of Antitrust and International Law (ABA) and the George Mason University Global Antitrust Institute (GAI) on the draft guidelines of the National Development and Reform Commission on Disgorgement and Fines in Antimonopoly Law matters. The ABA comments are bilingual and have the complete text of the draft guidelines included in the package that is being made available here. The guidelines were published for public consultation on June 17, 2016.
The two sets of comments offer two slightly nuanced approaches in their understanding of the final drafting responsibilities for these guidelines. The ABA comments are nominally directed to the Antimonopoly Commission of the State Council, while the GAI’s Comments are more directed to the National Development and Reform Commission which released this draft for eventual adoption by the Antimonopoly Commission. The relationship between these drafts and an official adoption by the AMC is not clear to me, as the NDRC announcement of the draft states that the drafting of the guidelines are in the work plan of the Antimonopoly Commission, and that NDRC undertook the research and drafting (根据国务院反垄断委员会的工作计划，我们研究起草了《关于认定经营者垄断行为违法所得和确定罚款的指南》（征求意见稿）,现面向社会公开征求意见.). It does not explicitly say that this research and drafting was undertaken on behalf of the AMC. Moreover, comments are to be delivered to the Pricing Bureau of NDRC, not the NDRC itself, which may suggest that this is indeed a research project (发送到国家发展改革委（价监局）. It is my view that considering the continuing battle of drafting responsibility by Antimonopoly enforcement agencies + SIPO, in the IP Abuse guidelines, which the State Council has recently said is the responsibility of these four agencies and the State Council Legislative Affairs Office, final drafting responsibility for an interagency antimonopoly law guideline may not be easily assumed at this time. If others in the antitrust community have more specific information, I welcome them posting it here.
Regardless of which agency is the lead, the sharing of drafts with this website and others helps to increase our understanding of the overall process through sharing of different commenters’ positions, for which I am grateful. I hope that over time Chinese agencies will also make all non-confidential comments publicly available.
GAI’s recommendations include that the Draft Guidelines be revised to limit the application of disgorgement (or the confiscating of illegal gain) and punitive fines to matters in which: (1) the antitrust violation is clear (i.e., if measured at the time the conduct is undertaken, and based on existing laws, rules, and regulations, a reasonable party should expect that the conduct at issue would likely be found to be illegal) and without any plausible efficiency justifications; (2) it is feasible to articulate and calculate the harm caused by the violation; (3) the measure of harm calculated is the basis for any fines or penalties imposed; and (4) there are no alternative remedies that would adequately deter future violations of the law. In the alternative, and at the very least, the NDRC should expand the circumstances under which the Anti-Monopoly Enforcement Agencies (AMEAs) will not seek punitive sanctions such as disgorgement or fines to include two conduct categories that are widely recognized as having efficiency justifications: unilateral conduct such as refusals to deal and discriminatory dealing and vertical restraints such as exclusive dealing, tying and bundling, and resale price maintenance.
GAI also urges the NDRC to clarify how the total penalty, including disgorgement and fines, relate to the specific harm at issue and the theoretical optimal penalty. According to GAI, economic analysis should determine the total optimal penalties, which includes any disgorgement and fines. When fines are calculated consistent with the optimal penalty framework, disgorgement should be a component of the total fine as opposed to an additional penalty on top of an optimal fine. If disgorgement is an additional penalty, then any fines should be reduced relative to the optimal penalty.
Finally, GAI recommends that the Anti-Monopoly Enforcement Agencies (AMEAs) rely on economic analysis to determine the harm caused by any violation. When using proxies for the harm caused by the violation, such as using the illegal gains from the violations as the basis for fines or disgorgement, such calculations should be limited to those costs and revenues that are directly attributable to a clear violation. This should be done in order to ensure that the resulting fines or disgorgement track the harms caused by the violation. To that end, GAI recommends that the Draft Guidelines explicitly state that the AMEAs will use economic analysis to determine the but-for world, and will rely wherever possible on relevant market data. When the calculation of illegal gain is unclear due to lack of relevant information, GAI strongly recommends that the AMEAs refrain from seeking disgorgement.
These comments are broader than IP-related antitrust. One common theme they share with IP damage issues is the low utilization of economic calculations to determine damages, and unclear sensibility of when damages are adequate, deterrent or punitive.
The comments also do not address the relationship, if any, between low IP damages and high antitrust damages for IP abuse, except in the broadest sense that excessive damages may create over deterrence. The Chinese government and academics are also increasingly focused on the problem of low IP damages, including possibilities of providing for punitive damages and higher compensatory damages, the availability of discovery for damage calculations, such as in the trademark law and with experiments in increasing statutory damages or relying on alternative calculations such as actual or implied royalties such as occurred last year in Jiangsu (See 江苏固丰管桩集团有限公司诉宿迁华顺建筑预制构件有限公司侵害发明)专利权纠纷一案[(2015)苏知民终字第00038]), where an implied royalty was used for perhaps the first time in a patent case. The issue is also actively being discussed by academics. See, e.g., 刘自钦 , 著作权惩罚性赔偿制度在中国大陆的具体运用, Macau Law Review, No. 10, at p. 123 (Liu Zichen, Substantial Application of the Punitive Compensation System for Copyright in Chinese Mainland – Based on American Experience and the Chinese Reality).
The current reality is that IP damages remain too low and non-deterrent. To me this suggests a possible issue of disproportionality between IP protection and antitrust enforcement for IP abuse, or as I have often said one cannot have IP ‘abuse’ without having IP ‘use.’ On June 7, 2016 I had the pleasure in my official capacity of testifying before the House Judiciary Committee, where I discussed the issue of the large disparity between high antitrust damages and low patent infringement damages. My testimony is also on the PTO website. I recently calculated that the current ratio of average patent damages as determined on the www.ciela.cn database and the Qualcomm damage imposed by NDRC is about 50,000 to 1 (18,000 USD to 975 million USD); it is only somewhat lower if other databases are used. As I noted in my testimony, antitrust damages and patent damages address different issues and thus may not always be directly comparable. However, if the ratio is wildly disproportionate the ecosystem for innovation and technology transfer could erode. Many companies already do not want to transfer technology to China, for fear that their IP will not be adequately protected. As I have noted, the data already suggests that China is an under-licensed market. Some companies may also now be avoiding China because damages are too low and/or antitrust risks are too high. If antitrust damages become be too high in relationship to the actual value of a patent, incentives to disclose patentable inventions may erode – which itself may erode competition in the long run. Moreover, China will suffer as it may not be able to obtain leading-edge technology. I personally believe that antitrust and IP damages should not be wildly disproportionate, which should be another factor in antitrust damages, IP damages and in China’s efforts to become an IP “strong country.”
This blog remains my academic, personal and non-official observations and should not be construed as the opinion of the US government, or any former client or third party or even any academic institution with which I am affiliated. Corrects and comments in English or Chinese are most welcome!
On July 18, 2016, the State Council issued a new policy document,国务院关于新形势下加快知识产权强国建设的 若干意见-重点任务分工方案 — the “Opinion of the State Council on Accelerating the Construction of Intellectual Property Powers for China as an Intellectual Property Strong Country under the New Situation –Division of Tasks.” Here’s a link to this action plan (docketed as State Council Working Office No. 66) , and a link to the machine translation, from which the world cloud above is drawn. The action plan itself is drawn from a State Council document issued in 2015 on accelerating the establishment of a strong IP country in the context of a new situation. This 2015 document identified such problems as China being a big country for IP, but not a strong country, protection was not adequately strict, infringement was easy and pervasive, and that these factors were affecting industry’s efforts to innovate.
As I discussed previously, the idea of China needing to become a strong IP country appears in the 2014-2020, National IPR Strategy Action Plan, which has the goal of “Striving to Build A Strong IPR Country” (努力建设知识产权强国). While China indeed has become “big” on most scales: invention patent filings, trademark, utility models and design patents, intellectual property litigation, criminal IP litigation and administrative litigation, to name a few, “strong” suggests quality, which is much harder to judge.
Here are a few specific observations about this action plan:
Often in looking at plans like these, it is also equally important to ask what is not being covered. The plan does not focus enough on a China where there is greater scientific collaboration with foreign scientists and engineers, which are also result in an increasingly large number of co-invented patents. Similarly, increasing Chinese investment in IP-intensive industries in the United States means that many Chinese companies will own substantial IP interests and may be less inclined to view IP issues as “us” vs “them.” The relative under-emphasis on civil remedies for IP issues in this plan is also troubling, as the availability of adequate civil remedies is what drives IP commercialization.
The report also does not suggest increasing the role of economists in IP and antitrust agencies, despite a clear focus on increasing the IP-intensity of the Chinese economy. Gaps in Chinese law, such as denial of copyright protection for sports broadcasting, weak protection for trade dress, and “circular” litigation between the patent and trademark offices and the courts which may delay final adjudication on matters, controlling trademark squatting and subsidies for unexamined patents are not discussed.
Although there are many positive aspects of this plan, I believe that focusing on issues like compulsory licensing, the Doha Declaration and folklore, or what appears to be political solutions to overseas infringement may also not deliver as much value to the Chinese economy and China’s scientists, engineers, artists and entrepreneurs, as returning to core IP concepts which let the market govern IP creation and enforcement through such measures as improving the scope of rights that are protected under Chinese law, limiting government intervention, increasing the role of the civil judicial system, and promoting increased collaboration.
Attached are the comments of the American Bar Association Sections on International Law and Antitrust Law on the proposed draft revisions of the Anti-Unfair Competition Law (AUCL) as well as comments of the Global Antitrust Institute of George Mason University.
The ABA’s comments are comprehensive – addressing IP issues (including trade secret and trade dress), advertising law, competition law issues and commercial bribery. GAI’s comments are focused on the interface between the AUCL and the Antimonopoly Law.
Regarding the overlap with the AML, the GAI advocates that “any provisions in the AUCL that relate to conduct covered by traditional antitrust laws, or conduct covered by China’s Anti-Monopoly Law, be either omitted entirely or revised to limit liability to situations when there is substantial evidence of harm to competition. … The AUCL should be implemented in a manner consistent with these objectives of competition policy.” The same argument might be applied to other laws in China, such as Section 329 of the contract law, which deals with monopolization of technology. In fact, China has a long history of industrial policy regulation of competition, much of which was enacted prior to China’s antimonopoly law.
Neither set of comments fully addresses a core concern of the proponents of this draft, “that the administrative law enforcement is dispersed, that law enforcement standard is not unified, that the legal responsibility system is not perfect, and that the punishment is too lenient.” Prior experience of administrative trade secret enforcement of the AUCL has shown that foreigners have not been a significant beneficiary, despite high level political attention paid to increased trade secret protection. In the trademark context, SAIC’s foreign-related docket is several multiples of all foreign-related civil IP cases. Increased administrative enforcement authorities raise several complicated concerns: will these authorities be used fairly on behalf of Chinese and foreigners alike, will trade secrets be protected by administrative agencies, are the courts better situated to adjudicate the various divergent issues, what priority will AUCL enforcement assume in SAIC’s vast bureaucracy, how will these expanded authorities be coordinated with criminal law enforcement and the courts, etc.
Update of March 16, 2017: Attached are the Comments of the American Intellectual Property Law Association.