SEP Litigation and Licensing in China: Are There New Voices in the Room?

morevoices

A string of recent events suggest that there is increasing confidence by the foreign community in China’s antitrust and licensing regime and that some of the aggressive posturing in the past by the Chinese government on the ”hegemony” of foreign ownership of SEP’s  countries, or (more recently) the abuse of dominance of foreign SEP owners (in cases like Huawei vs Interdigital and NDRC v Qualcomm), is shifting to a more balanced view.  Hopefully, policy developments in this new phase will also facilitate China’s efforts to become a global innovator and technology exporter.

One of the more hopeful signs of faith in the Chinese legal system was Qualcomm’s filings against Meizu, Since its initial court filings in China, Qualcomm has filed 17 complaints against Meizu.  In addition, Qualcomm announced in October 2016 that it launched a 337 action against Meizu in the United States, and is pursuing litigation in Germany and France.

In another sign of confidence Canadian NPE, Wireless Future Technologies Inc, a subsidiary of Canadian PIPCO WiLAN, filed a patent infringement lawsuit against Sony in the Intermediate People’s Court of Nanjing.  The choice of the Nanjing court, rather than one of the specialized IP courts has been a source of some speculation, with the media suggesting any of three factors: faster litigation times, local contacts and even, perhaps, anti-Japanese sentiment.   Two other reasons: Jiangsu’s efforts to use actual or implied royalties to assess damages, rather than the low statutory damages that applied in the vast majority of cases in China. Damages in a “model case”  for patent infringement in 2014 using a royalty based calculation that was first adjudicated by the Nanjing Intermediate Court, were 3,000,000 RMB, relatively high by Chinese standards.   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, 南京中院(2014)宁知民初字第00108号 , 江苏高院(2015)苏知民终字第00038号.  Finally, and perhaps, most importantly, Sony’s phones are made by Arima in Wujiang, Jiangsu Province.

The Financial Times has written on the Arima case, noting that “A new corporate era beckons in which a Chinese judge could conceivably cut off the lifeblood of some of the world’s most valuable companies. It was not so long ago that China’s legal system just did not factor into the risk calculus of most global companies.” 

Chinese companies are also showing confidence overseas by bringing cases brought against foreign competition. Earlier this year, Huawei brought SEP-related litigation in the United States against Samsung in both the United States and China, and against T-Mobile in the Eastern District of Texas.

China’s growing SEP portfolio may be contributing to this change in perspective.  As Dina Kallay of Ericcson noted at the recent Fordham Antitrust conference: “Of the ten largest contributors of technology to cellular standards — and we like to measure it by accepted technical contributions, so it’s not just measured by the number of patents, which arguably you can play with — but by how many of your technical contributions were accepted into the standard, …Three … are Chinese — Huawei, ZTE, and CATT (Datang).  No other nation has as many companies in the Top Ten list.”  Considering China’s increasing investments in the United States and its rapidly improving patent portfolios, might a Chinese company soon be a complainant in a Section 337 litigation?

By the way, Huawei’s website impressively identifies their contributions to IP in standards as follows;

  Huawei has filed over 57,800 patent applications in China, U.S., Japan, European Union, South Korea, and Brazil, as well as other countries and districts, of which approximately 15000 are in the area of wireless communications.

  Huawei has 2,137 essential patents in the area of wireless communications…

In the area of wireless communications, Huawei has submitted approximately 20,009 proposals to international standard organizations … 40% of which have been adopted.

Huawei’s extensive experience in standards setting and its own investments in IP have likely contributed to its  opposition to some of the mandatory disclosure / mandatory licensing  standards-related aspects of  the proposed revisions to China’s patent law (eg., Article 85). Interestingly, Huawei objected to this provision due to the the complexity of international regulation of standards setting organizations, and because it alleged that foreigners do not participate in the development of Chinese domestic standards; therefore this provision might primarily be applied by Chinese against Chinese.  Nonetheless, its rejection would be a positive step by avoiding an unfortunate precedent for SIPO and reducing overregulation of standards setting bodies.

One can also point to other recent factors, such as government to government engagement, and the pressure of overseas litigation in Huawei vs ZTE (ECJ), Sisvel vs Haier (Germany), Unwired Patent vs Huawei and Samsung (United Kingdom) and Vringo vs ZTE (SDNY and other jurisdictions) as other informative experience and perhaps sources of pressure for greater international conformity.

These changes in IP ownership, standards participation, litigation experience and maturity due to increased engagement are likely having their effect on domestic policy. Within China, early this year draft IP abuse guidelines of NDRC recognized that ownership of an SEP does not automatically confer market dominance.  In July of 2015, the State Council announced its plans for China turning into a “strong IP economy”, and identified several projects involving standards.  One of the projects identified by the State Council calls for the development of rules on standard essential patents that are based on FRAND licensing and “stopping infringement”, with the involvement of AQSIQ, SIPO, MIIT, and the Supreme People’s Court (Art. 38).  As the focus of this task is on stopping infringement, rather than “abuse of dominance”, this suggests to me that a more rights-holder friendly approach.

Another hopeful sign which I have been following are suggestions that China’s Technology Import/Export Regulations  (“TIER”) may now be under revision, as was noted in the European Business in China Position Paper (2016/2017) .   Some aspects such as ownership of improvements have been the subject of the TIER  and also appear to factor into AML enforcement policy such as in the Qualcomm case. (see also QBPC’s paper on the TIER at “应允许当事人对后续改进的技术成果的权利归属进行自由约定”, attached here.[Chinese Language]).

What do you think? Please feel free to comment  with your own experiences or examples (in favor or against) in this area!

Rev. Nov. 19, 2016

US and China Customs Data Compared

The following are some reflections on what Customs-related enforcement activity in the US and China last year.   The data generally shows the continuing problem of a high level of exports of counterfeit goods from China, difficulties in addressing online and border measures for patents, and the need to work with Customs officials to secure enforcement.

Both US and Chinese data generally showed an increase in Customs activity, especially in Sino-US trade, for 2015.  According to US  Fiscal Year 2015 data, the number of IPR seizures increased nearly 25 percent to 28,865 from 23,140 in FY 2014.  The total estimated manufacturer’s suggested retail price (MSRP) of the seized goods, had they been genuine, increased 10 percent to $1,352,495,341.  China and Hong Kong together at 87% of seizures, versus 88% for 2014.

China Customs also released its data in late April 2015.  Chinese data shows that the United States rose from the number 5 slot to the number one slot in terms of destination of batches of shipments.  However, the US was number 29 in numbers of seized items (suggesting a relatively small quantity in each batch of seizure for export to the US).   Postal shipments accounted for 84% of overall seizures, an increase of 2.7% from last year.  There was however a drop in seizures upon export from 23,019 to 22,000, which is contrary to the US experience – since increasing on-line sales in particular should likely result in more seizures, presumably at less value.

Iran was the export destination from China with the most goods seized, holding the number one place in 2014 and 2015.  As discussed last year, 2014 showed a diversification in destinations of China’s export destinations for counterfeit goods, which continued for this year.

There was also a change in the mix of China and Hong Kong origin seizures coming into US ports.  China origin seizures by US Customs dropped by 11% in 2015 and Hong Kong picked up the slack (10%).

Why was there such a dramatic “migration” of counterfeits to Hong Kong?  One other odd trend is that trademark litigation in Southern China (Guangdong)  actually dropped by 4.11%, according to data from the Guangdong High Court.   Any downward trend in Chinese IP statistics is often a warning sign – by comparison, the Supreme People’s court noted in its 2015 White Paper that national civil TM cases increased nationwide by 13.14% during this time frame to 24,168 cases.   The data might suggest that Guangdong is becoming less important as a place for enforce trademarks and/or that transshipment through Hong Kong is becoming more important, but it is too early to tell.

US data shows that the three largest categories by numbers of seizures were wearing apparel, consumer electronics and pharmaceuticals/personal care for 2015.  China reported that cosmetics, tobacco products, and machinery were amongst the major categories of seized products.  Cosmetics, jewelry, medical devices, and watches showed the greatest levels of increases in Chinese seizures.

Chinese Customs data also shows that the number of articles seized based on ex officio actions dropped dramatically (65% vs. 98%) comparing 2015 to 2014, suggesting the need for increased engagement by rightsholders with Chinese Customs to alert them to suspected infringing shipments.

Interestingly, China reported a noticeable increase in seizures on behalf of its domestic IP rights owners, which included 1939 batches with a value of more than 55,900,000 RMB.

As with the United States, Chinese Customs’ emphasized seizing trademark infringing goods over other rights.   In 2014,  TM’s occupied 96.86% of total items seized, with only 1.94% related to patent.  In 2015, TM related seizures increased to 98% of total items seized; copyright and patent combined were about 2% of the items seized.

US Customs reports that there was also a big increase in exclusion orders issues and enforced on behalf of the International Trade Commission, typically involving patents, with a 13-fold increase in shipments seized from 2 to 26.   In China, on-line enforcement against articles that infringe patents is also attracting more attention from Chinese regulators, with the Chinese patent law amendments also looking at an increased scope of liability for online service providers (Art. 63).

While on-line enforcement is getting more attention,  the Federal Circuit decided last year in ClearCorrect v. Align that the USITC Section 337 jurisdiction over the importation of “articles that infringe” does not extend to the “electronic transmission of digital data”, which may reduce the ITC’s role in the digital environment, particularly those involving patents.  This otherwise appears to be a trend that is contrary to an increased focus on on-line infringement.