Obtaining evidence when preparing patent litigation


Jochen Bühling
Krieger Mes & Graf v der Groeben

One of the most crucial aspects for a patentee enforcing its patent rights against an infringer is the gathering and evaluation of evidence when preparing patent litigation. As a general principle, it is necessary to have sufficient evidence before initiating court proceedings. Only in exceptional cases should a plaintiff rely on obtaining evidence at a later stage during infringement proceedings. Frequently, the patentee will run into problems obtaining the necessary evidence. It may have serious suspicions about a potential infringement. Nevertheless, additional evidence must be obtained. This chapter sets out the patentee’s options to obtain evidence in various European countries.

European legal framework

At a European level, the situation is characterised by the fact that there are no provisions to regulate the question of enforcement of European patent rights granted under the European Patent Convention. Questions in connection with infringement are governed by the various national laws that also determine the rules of procedure for court proceedings. In each country the law of the court is decisive for such rules, including issues of evidence and burden of proof.

Recently, the EU Enforcement of IP Rights Regulation has taken a step towards harmonising the national laws with regard to these issues, taking into consideration the enforcement provisions of the World Trade Organisation Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs). The regulation contains important rules in Articles 6 and 7 that relate to the presentation and the preservation of evidence for infringement proceedings. By the end of April 2006 member states must ensure that:

•   the competent judicial authorities have the power to order that evidence be presented by the defendant, including banking, financial or commercial documents under the control of the defendant; and

•   prompt and effective provisional measures are taken to preserve relevant information in respect of the alleged infringement.

Such measures include the detailed description or physical seizure of the infringing goods, and may be ordered even before commencement of proceedings on the merits and without hearing the defendant.

Germany

German law provides various means to obtain evidence. Section 809 of the Civil Code gives the patentee the right to have a device inspected in order to obtain certainty as to whether there is a claim with regard to that specific device. This may be any claim as a result of a patent infringement. In the past this provision has been used in only a very few cases to obtain evidence with regard to patent infringement (see Druckbalken BGH GRUR 1985 512). In 2002 this provision was reanimated by the I Senate of the Federal Supreme Court which deals with copyright cases. In a case of copyright infringement the Supreme Court held that the owner of the copyright could invoke Section 809 of the Civil Code to have the allegedly infringing device (in this case a piece of software) inspected (Faxkarte BGH GRUR 2002 1046). This claim can be brought forward by way of a preliminary injunction as well as in ordinary proceedings. In particular, when the general conditions for a preliminary injunction are fulfilled, this may offer the IP rights owner a valuable tool for obtaining evidence. It does not require a very high degree of probability of infringement. A “certain degree” is sufficient; this is assessed on a case-by-case basis. However, this provision is limited to the inspection of a device and may not be used as a means to investigate whether the defendant is in possession of such a device (Kontrollbesuch BGH GRUR 2004 420, 421).

The X Senate of the Supreme Court has indicated that this provision would also be applicable in patent infringement cases. However, there are some drawbacks that must be considered. If the patentee has waited too long before initiating the proceedings and if the formal condition of urgency required for a preliminary injunction can no longer be fulfilled, the patentee will have to start ordinary proceedings, which may take as long as any other case before an enforceable court decision is obtained.

Therefore, German case law has developed another effective tool for obtaining evidence which has become increasingly common: independent proceedings for taking evidence according to Section 485 of the Civil Procedure Code. Originally widely used in construction cases, these proceedings have now been introduced in patent infringement cases as well. In particular, the Düsseldorf District Court uses this tool quite frequently.

The main purpose is to obtain a court order to have the allegedly infringing device inspected by a court-appointed expert. This is particularly effective if the device is publicly available, for example at a trade show where the device is exhibited. In principle, the proceedings may be carried out at any stage, irrespective of whether infringement proceedings are pending.

The court-appointed expert may be an independent patent attorney or any other expert suggested by the patentee. Usually the court accepts the suggested expert. There are few specific conditions for such a court order. If no patent infringement case is pending, only a legitimate interest to have the device inspected is required. Such a legitimate interest arises from the mere possibility that, with the help of the expert’s report, litigation can be avoided. The patentee does not have to show any likelihood of infringement and no urgency is required. Even without such urgency the court can grant the order ex parte. With such an order in hand the expert is entitled to inspect the device insofar as the features can be examined without making any modification to the device. In particular, the expert may not take the device apart.

If any further acts are required or if the device is not available to the public, the court order should be accompanied by a preliminary injunction forcing the owner of the device to tolerate the inspection. Here, the courts (in particular the Düsseldorf District Court) assume urgency if there is a likelihood that the evidence will be destroyed or otherwise lost. In addition, the patentee will have to make some substantial statements about the likelihood of infringement, which may be based on earlier inspections, written documents (manuals) or other evidence.

The advantage of these independent proceedings for taking evidence is that they are cost and time efficient and easy to initiate. Furthermore, the report of the court-appointed expert is an independent document and thus is not considered as evidence of a party expert or an expert witness presented by a party, even if the patentee has suggested a specific expert.

Another option is to use results and information obtained in proceedings abroad (eg, saisie-contrefaçon in France, pre-trial discovery in the United States or the United Kingdom) as evidence in German litigation by way of introducing the reports as documents. German case law has not imposed limits on the use of this information. Therefore, when advising clients about the necessary evidence, the possibility of obtaining evidence in other countries should always be considered.

France

In France, it is common practice in almost every patent infringement case to obtain (additional) evidence with the help of a saisie-contrefaçon (or saisie). Even when there is already sufficient evidence, clients are often advised to obtain additional evidence in order to obtain an official statement of a court-appointed expert that can be used in court.

The saisie may be used regarding an infringement of patents conferring protection in France. It is still undecided whether a saisie may also refer to the infringement of a foreign patent.

A saisie can be initiated by the patentee against any person who is in possession of information relating to the infringement. That person need not have commited an infringement. The saisie may be conducted prior to a lawsuit or during pending litigation. If no litigation is pending the patentee is required to start infringement proceedings within 15 days of the issue of the saisie. Otherwise, the saisie is void. In this case any devices that have been seized must be released. In principle, the information obtained may not be used in infringement proceedings unless it can be obtained through other means.

Proceedings start with a motion by the patentee to the competent court. The court will issue an order to have the saisie carried out by a bailiff, who may be assisted by a designated expert. This order will be issued without a hearing. In particular, the opponent will not be informed of the saisie until it is actually carried out in order to safeguard the purpose of the saisie. In its motion the patentee does not have to substantiate the infringement, since it is the goal of the saisie to obtain the relevant information.

The saisie may consist of a description of the infringing device, but may also comprise the physical seizure of the device and documents, for example technical specifications, descriptions, brochures, drawings and commercial documents containing information about the origin of the device and the extent of the infringement. The saisie ends with a detailed report by the bailiff, which is an official document and which forms the basis for further evidence.

Belgium

In Belgium, similar proceedings can be found - the saisie-description and the saisie réelle. Compared to French law, there are some peculiarities which make the use of the saisie in Belgium even easier for plaintiffs abroad.

The saisie-description does not require patent protection in Belgium. It is sufficient that the applicant has rights under a patent in Europe. For patent protection, this follows from EU Regulation 44/2001 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters. The saisie in Belgium may thus be used to establish infringement in other EU member states. As in France, it is not necessary to show an infringement. Proceedings are conducted ex parte – that is, without informing the opponent prior to the saisie.

Under Belgian law the patentee must initiate proceedings within one month of the report of the saisie. Since the saisie may also be used for foreign infringements, it is sufficient to bring the infringement action before a court outside Belgium. It is also possible to conduct a saisie during pending infringement litigation. The consequences of missing the one-month deadline are the same as detailed above for France; the saisie is void and the information obtained may not be used in a Belgian court.

Italy

Italy has also introduced proceedings which are similar to the French and Belgian saisie. The descrizione offers the patentee the right to secure evidence concerning the infringing device and the extent of the infringement. The order of the court relates to a description of various objects. In particular, this refers to the infringing device, the means for manufacturing the infringing device (eg, machinery, processes) and other technical and commercial documents that can give information about the infringement. It is irrelevant whether these objects are in the possession of the infringer or of a third party, provided that the objects have been manufactured or put on the market by the opponent and provided that those objects are not intended for private use. In other words, an order against the manufacturer of an infringing device can also be carried out at the wholesaler or the retailer, or at any customer who is using the infringing device commercially. In the same way, the court may also order the seizure of the goods to be inspected.

The court may issue the order for inspection or seizure either ex parte or after hearing the opponent. An ex parte decision is issued if the patentee can show that otherwise the evidence might be destroyed or the object to be inspected might be altered, hidden or removed. In most cases this will be accepted by the courts only if an infringement case is not (yet) pending.

In contrast to proceedings in France and Belgium, the order for a descrizione in Italy requires the patentee to show infringement. It is not necessary to have all the evidence, but the patentee must at least present convincing arguments that – based on the evidence available so far – infringement is likely. These arguments can be supported by affidavits and advertising materials.

The order is executed by a court officer, who may be accompanied by a court-appointed expert and representatives of the parties. If very sensitive information is concerned that relates to business or trade secrets of the opponent, the court may also provide for measures which safeguard those secrets.

If a descrizione is requested prior to initiating infringement proceedings, the law requires those proceedings to be started within 30 days of the issue of the order. Otherwise the order becomes void.

United Kingdom

Common law countries such as the United States and the United Kingdom are well known (and to some extent also feared) for their pre-trial discovery. This tool opens ways to obtain evidence that would otherwise not be available. On the other hand, pre-trial discovery can evolve into costly and time-consuming proceedings. In the United Kingdom there have been significant efforts to streamline those proceedings and to limit their scope. Now disclosure (formerly called discovery) is part of the litigation procedure. In practice, it is unusual to request disclosure before initiating infringement litigation in court.

Since the disclosure is not conducted outside the litigation, it is not unilateral but involves both parties. Although limited in comparison to US pre-trial discovery, the standard disclosure still forces both parties to disclose documents that support their own case and that are detrimental to their own case. In particular, the defendant will have to produce documents relating to the issue of infringement. The defendant has the option to provide a detailed description of the allegedly infringing device instead. As further evidence, samples or the possibility of inspection of the device may be requested. There is no geographic limitation. Documents under the control or in the custody of a party outside the United Kingdom must be disclosed as well.

The disclosure is handled through a management plan that is set up by the parties in a court hearing. This plan contains a timetable setting out deadlines for producing the documents. However, the system is flexible and may be varied by the court.

Apart from disclosure as set out above, the UK courts also allow evidence to be secured in patent cases by way of an Anton Piller order (an ex parte search order). This order is now laid down in the statutory Civil Procedure Act. It gives the patentee the opportunity to search for material without the cooperation of the opponent, even before infringement proceedings are commenced in urgent cases. However, such an order will be granted only in cases where the patentee can show prima facie a strong infringement case and where there is a good reason to dispense of the prior notice to the opponent (eg, where delay is likely to cause irreparable harm, or where there is a demonstrable risk of evidence being destroyed). In practice, this kind of order is rarely used compared to other forms of disclosure.

Summary

The various options in different countries across Europe show that one can be quite creative in finding ways to obtain evidence in patent infringement cases. One should not stop at the borders of one’s own country, but also dare to try means provided by other countries which might not always be considered. The efforts in Europe to harmonise not only substantive law but also procedural rules, and to improve the enforcement of IP rights, and further developments of TRIPs, will certainly have an impact on these issues as well.

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