On January 22-23 and 29-30, 2021 (Beijing time), the Third Tsinghua-Berkeley Annual Conference, jointly sponsored by Tsinghua University School of Law and UC Berkley School of Law, was held online with the theme of Transnational IP Litigation at a Time of Trade Tension.
Attending the conference were administrative and judicial professionals from the State IP Office of China, the US Patent and Trademark Office, the US Department of Justice, Chinese and American courts, scholars from well-known universities at home and abroad, such as Tsinghua University, University of California, Berkeley, Peking University, Sydney University and East China University of Political Science and Law, as well as legal advisers of Chinese and American companies and law firm partners, who held in-depth dialogues from multi-perspectives on transnational IP litigation at a time of trade tension.
The opening ceremony of the conference was addressed by Shen Weixing, Dean of THU School of Law, and Erwin Chemerinsky, Dean of UC Berkeley School of Law, who extended sincere welcome to all the guests who participated in the conference, reviewed the previous close cooperation between the two sides, emphasized the importance of discussing related issues at a time of trade tension and wished this conference a complete success.
The Conference featured four topics, relating to the progress and litigation of IP legislation at a time of trade tension, transnational litigation and licensing of Standards-Essential Patents (SEPs), the development of trade secret laws and litigation, transnational IP litigation under the changing background of international trade. The guests delivered speeches and held discussions on the following issues: case data analysis of patent litigation, revision of patent laws, Anti—suit Injunction in transnational litigation of standards-essential patents (SEPs), case data analysis of trade secret litigation, revision of law against unfair competition and criminal law concerning trade secrets, prospect of the first-stage economic and trade agreement between China and the United States and its impact on IP protection, and differences between China and the United States in IP litigation.
The first topic of the forum is "IP Litigation under Trade Tension", consisting of two sessions, "Thematic Discussion" and "Data Review/Cases and Legislative Development". Professor Mark Cohen, Asia IP Project Director, Berkeley Center for Law & Technology, presided over the first session, Thematic Discussion. Raymond Chen, United States Circuit Judge of the United States Court of Appeals, and Professor Zhang Yuejiao of Tsinghua University, a former judge of the WTO Appellate Body, respectively analyzed the situation and prospects of IP protection in China and the United States, stressing that the high-level officials of the two countries should hold dialogues and actively cooperate on relevant issues. The second session, " Data Review/Cases and Legislative Development", was presided over by Gao Lulin, former Director of the State IP Office of China, and Thomas Chia, Director of VIA. Melissa Schneider, Head of North America Litigation Department of Darts-IP Company, presented the relevant data of transnational IP litigation in recent years, pointing out that Chinese enterprises were increasingly involved in related disputes. Pu Xiang, CEO of Zhichanbao Company, shared the relevant data of transnational IP litigation heard by China courts in recent years, holding that despite the declining number of related litigation in 2020, the amount of litigation compensation and the trial period showed an upward trend. John Wiora, Chief Operating Officer of ktMINE, analyzed the statistical data of patent transactions in recent years, believing that the overall situation of related transactions was relatively healthy. Larry Lian, a consultant lawyer of the United States Patent and Trademark Office, made a brief comment on the contents of the report “Trademarks and Patents in China: The Impact of Non-Market Factors on Filing Trends and IP Systems,” recently released by the Office. Matthew Chervenak, Founder and CEO of General Biologic, analyzed the impact of the recent law amendments in China on the pharmaceutical market from the perspective of the industry.
The second topic of the forum is “SEPs/FRAND/Licensing: Global Developments and Impact on US-China Trade”, presided over by Professor Robert Merges, Founder and Co-director of the Center for Law and Technology of UC Berkley School of Law, and Dr. Hao Yuan, a researcher at UC Berkeley School of Law. Professor Robert Merges of UC Berkeley School of Law first introduced the function, generation mechanism, recognition standard and increasing trend of SEPs. Dr. Hao Yuan comprehensively discussed the key issues of SEPs, such as calculating rates, issuing Anti-suit Injunctions and mutual competition in different jurisdictions in SEPs litigation. Judge Andrew Guilford, a former federal court for the Central District of California, reviewed the history of American Anti—suit Injunction and the restrained attitude of issuing Anti-suit Injunction cautiously, emphasized the importance of international comity, and advocated the establishment of an international arbitration body to avoid parallel litigation and jurisdictional disputes in related cases. Randall Ray Rader, former Chief Judge of the United States Court of Appeals for the Federal Circuit and Honorary Professor of Tsinghua University School of Law, agreed with the settlement of SEPs through international arbitration, that is, settling conflicts through arbitration, and further discussed related institutional design, further development of law and other issues. Judge Su Zhifu of Beijing Higher People's Court pointed out the importance of judicial comity from the perspective of gaming between the patentee and the implementer of trade secret litigation, with a detailed discussion on such key issues as the positioning of SEP dispute settlement, the positioning of the court, and the avoidance and coordination of judicial conflicts across jurisdictions. Lawyer Zhao Ye, a partner at Jingtian & Gongcheng Law Firm, explained the history and legal basis of Anti-suit Injunction in China, and deeply analyzed the policy considerations of Anti-suit Injunction in China with typical cases. Lawyer Zhang Hongbin, a partner at China Global Law Office, analyzed the application of contract law, law against unfair competition, anti-monopoly law and judicial interpretation of the Supreme People's Court in SEP litigation, and discussed the basis of claim right of FRAND rate in judicial judgment.Attorney Stuart Chemtob, a partner at Wilson Sonsini Goodrich & Rosati, made a further comparative analysis of the application of the Anti-suit Injunction system in the courts of various countries in the light of the practice of the British court in deciding the global license fee for SEPs. David Kappos, a partner at Cravath, Swaine & Moore LLP, former Under Secretary of Commerce and Director of the United States Patent and Trademark Office (USPTO), analyzed the disadvantages and costs of determination of FRAND rates by different countries in parallel litigation, and emphasized that the relevant system should ensure the balance of interests between innovators and implementers. Lawyer Li Jiang, an IP partner of Wanhuida, explained the factors that affected the choice of dispute settlement between the patentee and the patent implementer, and shared his vision about the possible development of the FRAND commitment system in the future. Professor Vivienne Bath from the University of Sydney Law School summarized and commented on the views of the distinguished guests, and suggested setting up a global specialized agency to settle relevant disputes.
The third topic of the Conference was "Developments in Trade Secret Law and Litigation", presided over by Professor James Pooley of UC Berkeley School of Law and Associate Professor Jiang Ge of THU School of Law. Lawyer Zhang Xiaoxia, a partner at Jindu Law Firm, reviewed the historical evolution of the relevant laws and regulations on trade secret protection in China, and pointed out the main differences between China and the United States. Lawyer Xia Feng, a senior consultant of Anjie Law Firm, analyzed the statistics of civil and criminal cases of trade secrets in detail, described the current judicial situation of trade secrets protection in China in recent years, and pointed out that the amendment of legislation concerning trade secrets protection and the improvement of the IP protection environment had effectively increased the number of trade secrets litigation cases. Timothy Bickham, a partner at Steptoe & Johnson LLP, presented the statistics and trends of trade secret cases in the United States, with a focus on analyzing the extraterritorial jurisdiction of the US International Trade Commission on trade secret infringement cases.Judge Song Jian of Jiangsu Higher People's Court discussed the influence of amended Article 32 of Law of the People’s Republic of China Against Unfair Competition in 2019 on the trial of trade secret infringement cases, noting that the provisions of shifting the burden of proof instead of the inversion of the burden of proof, and the two prima facie evidences as the lowering of the standard of legal proof are conducive to addressing the difficulties of trade secret protection in China. Judge Kent Jordan of the United States Court of Appeals for the Third Circuit, in the light of his own trial experience, pointed out the presence of many problems in the field of trade secrets, such as the choice of SEP litigation court, Anti-suit Injunction and Anti-Anti-suit Injunction. Professor Huang Wushuang of East China University of Political Science and Law commented on various regulations on trade secret damages in China, and offered substantive suggestions on the specific calculation method of damages and the conditions for applying punitive damages. Evan Williams, IP consultant of the U.S. Department of Justice in Hong Kong, reviewed the criminal prosecution of trade secrets in the United States and pointed out that the greatest challenge in the trial of related cases was found in the assessment of the value of trade secrets. Lawyer Hong Yan, Director of Longnuo Law Firm, compared and analyzed, from a practical point of view, the differences between civil litigation and criminal litigation in China's trade secret cases, and made an in-depth analysis with a view to typical cases of trade secret involving both criminal and civil proceedings.
The fourth topic of the forum was “Transnational IP Litigation and a Changing Trade Environment”, presided over by Randall Ray Rader, former Chief Justice of the U.S. Federal Court of Appeals for the Circuit, and Honorary Professor of THU School of Law, and Professor Yang Guohua of THU School of Law. Professor Yang Guohua shared his views on the prospect of the China-US phase-one economic and trade agreement and the relationship between IP protection and the implementation of the agreement. Judge Cheng Yongshun, a former judge of Beijing Higher People's Court, made a detailed analysis of the modifications of the patent system related to the pharmaceutical industry in China in recent years, pointing out institutional problems and reform objectives related to the special protection of pharmaceutical patents. Karen Guo, Director of China Patents, Novo Nordisk (China) Pharmaceutical Co., Ltd., analyzed the institutional modification of special protection of pharmaceutical patents from the perspective of medical reform objectives, and said that the changes of pharmaceutical patent system in China should be fully understood from the perspectives of the overall planning of national policies and the internal needs of the industry in China. Soji John, Senior Council at Western Digital Corporation, shared his experience and methods of IP protection, technological innovation and cracking down on counterfeits. Attorney Howard Hogan, a partner at Gibson, Dunn & Crutcher LLP, with a view to his own experience in anti-piracy legal work, introduced in depth the working process of lawyers in dealing with fake and forged commodity cases and the differences in obtaining evidence from banks of the two countries. Jeremy Fogel, former United States District Judge of the United States District Court for the Northern District of California, introduced the advantages and disadvantages of the American litigation system in patent case trials under the common law tradition, and pointed out the unique contribution of judges who were not technical specialists to considering the relationships among all parties in patent litigation. Professor Susan Finder of Peking University School of Transnational Law shared her observations and opinions on China's efforts to promote the trial of IP cases, and suggested that China should further clarify the regulations on enforcement and arbitration of IP rights. Next, the guests also had heated discussions on transnational IP litigation strategies, professional ethics conflicts of lawyers in different jurisdictions, future development of the China-US economic and trade agreement, arbitrability of IP cases and other issues.
Finally, Professor Mark Cohen, Asia IP Project Director, Berkeley Center for Law & Technology of UC Berkeley School of Law, delivered a closing speech. Mark Cohen expressed his great honor to participate in the conference, extended his heartfelt thanks to all the guests present, and looked forward to deepening cooperation with THU School of Law to help the development of the IP systems in China and the United States. The Conference was thus successfully concluded.
On the theme of “Transnational IP Litigation at a Time of Trade Tension”, this Conference held extensive discussions on such topics as litigation strategy, remedy mechanism, trade secret and cooperation strategy, which deepened the understanding of professionals from both countries on each other's IP protection practices, broadened the channels of IP dialogue between China and the United States, and held great significance for strengthening academic exchanges and cooperation between the two sides in the field of IP.
