Presentation is loading. Please wait.

Presentation is loading. Please wait.

Gaining Evidence for Patent Infringement Proceedings in Germany AIPPI Central and Eastern European Seminar on IP and Competition Law Poznan, 23 March 2007.

Similar presentations


Presentation on theme: "Gaining Evidence for Patent Infringement Proceedings in Germany AIPPI Central and Eastern European Seminar on IP and Competition Law Poznan, 23 March 2007."— Presentation transcript:

1 Gaining Evidence for Patent Infringement Proceedings in Germany AIPPI Central and Eastern European Seminar on IP and Competition Law Poznan, 23 March 2007 Dipl.-Phys. Klaus Haft / Dr. Anja Lunze, LL.M.

2 www.rokh-ip.com2 Overview I.Introduction II.Gaining Evidence in Germany 1.Public Sources 2.By Order of the Court 1.Sec. 809 German Civil Code 2.Sec. 142 German Code of Civil Procedure III.Gaining Evidence for German Proceedings Abroad 1.USA 2.France/Italy 3.Poland?

3 I. Introduction

4 www.rokh-ip.com4 I. Introduction: Overview Patent Litigation in Germany Infringement Proceedings: Civil Courts  Preliminary injunction  Proceedings on the merits Invalidity Proceedings: Federal Patent Court

5 www.rokh-ip.com5 I. Introduction: Overview Patent Litigation in Germany (cont’d) Preliminary Injunction P roceedings  Injunctive relief, no claim for damages  Injunction within  several hours ex parte in exceptional cases (trade fair) or  a few weeks with oral hearing  Requirements:  Clear infringement  Validity of patent without reasonable doubts  Urgency

6 www.rokh-ip.com6 I. Introduction: Overview Patent Litigation in Germany (cont’d) Not necessary to provide „evidence“ in preliminary injunction proceedings, but only substantiation by prima facie evidence:  Affidavit  Documents

7 www.rokh-ip.com7 I. Introduction: Overview Patent Litigation in Germany (cont´d) Proceedings on the merits  12 specialized District Courts (“Landgericht”)  more than 50% of all cases decided in Düsseldorf  Burden of proof lies on the Claimant

8 www.rokh-ip.com8 I. Introduction: Overview Patent Litigation in Germany (cont´d) Strict delimitation for taking evidence in proceedings on the merits:  Sec. 355 - 455 German Code of Civil Procedure (GCCP): 1.Documents 2.Hearing of witnesses 3.Court appointed expert‘s opinion 4.Visual inspection by the court 5.Interrogation of parties  Free evaluation of taken evidences by the Court (Sec. 286 GCCP)

9 www.rokh-ip.com9 I. Introduction: Overview Patent Litigation in Germany (cont’d) No Discovery Provided in German Legal System  Discovery: US and British legal system:  Any relevant information must be provided automatically  First filing (rough) complaint and then examining the facts and delimiting scope of complaint  In Germany  No legal provision forcing Defendant to disclose any information automatically  Scope of complaint, i.e. claims and underlying facts have to be completely collected before start of legal proceedings  Claimant fully responsible for the collection of evidence

10 II. Possibilities to Gain Evidence 1.Public Sources 2.By Order of the Court

11 www.rokh-ip.com11 II. Possibilities to Gain Evidence 1. Public Sources  Commercial register  Credit information companies or investigation companies  Dun & Bradstreet  Creditrefom  Test buying: Bying presumed infringing object and analyzing it  Test buying is admissible and necessary for adequate enforcement if presentation of the bought items is essential for substantiation of the claim  Costs for test buying can be part of reimbursement of costs (OLG München, GRUR-RR 2004, 190)  Trade fairs  Internet, Google, Websites of alleged infringers  Product catalogues  Professional journals, press releases

12 www.rokh-ip.com12 II. Possibilities to Gain Evidence (cont´d) 2. By order of the court 1.Sec. 809 German Civil Code (GCC): Inspection Sec. 485 et. seq. of the GCCP: Independent proceeding for the preservation of evidence 2.Sec.142 German Code of Civil Procedure: Presentation of documents

13 www.rokh-ip.com13 1. Sec. 809 proceedings Sec. 809 GCC provides for inspection of products or devices if someone “has a claim in consideration of a subject against the holder or wants to obtain certainty if he has such claim” In 1985, the German Federal Supreme Court accepted Sec. 809 proceedings for the first time in patent infringement proceedings (BGH GRUR 1985, 512 – “Druckbalken”/print bar)

14 www.rokh-ip.com14 1. Sec. 809 proceedings (cont´d) However, the decision was guided by the principle of German Civil Procedure law: “nobody has to hand over weapons to his rival”:  Request for inspection on the basis of Sec. 809 was only granted if the Claimant could demonstrate a “considerable” likelihood of infringement  Assembly and disassembly of product parts as required for transport, operation or serving not admissible even if these acts do not lead to permanent damage Hence: Sec. 809 used to be worthless for gaining evidence

15 www.rokh-ip.com15 1. Sec. 809 proceedings (cont´d) New situation since “Faxkarte”/fax card (German Federal Supreme Court Mitt. 2002, 454) Facts:  Claimant had marketed since 1992 a fax card “PK 1115” run by MS-DOS  Defendant had started marketing a fax card “TCM 2001” in 1994  Both used a Rockwell modem device  Defendant's card was partly developed by a former employee of the Claimant

16 www.rokh-ip.com16 1. Sec. 809 proceedings (cont´d) Facts (cont´d):  Both used the same hardware configuration  Regarding software the date structure of the index of incoming faxes (journal) as well as the presentation of the files on screen were identical  Both execution files (WSR.EXE and TCMWATCH.EXE) were substantially similar  Many program blocks – 13 of them having more than 100 byte – were equally large  Both programs used some identical files

17 www.rokh-ip.com17 1. Sec. 809 proceedings (cont´d) In an auxiliary request Claimant requested the Defendant to disclose the source code for the program or parts of the program used in the TCM 2001 system The Federal Supreme Court granted this request with the following considerations:  A claim on the basis of Sec. 809 was not limited to the inspection of the fax card as such – which the Claimant already knew – but could also cover inspection of the source code

18 www.rokh-ip.com18 1. Sec. 809 proceedings (cont´d) Considerations (cont´d):  A “substantial” likelihood of infringement is not always required, but Sec. 809 explicitly refers to cases where Claimant needs further confirmation  A “substantial” likelihood cannot be required if Claimant has no other possibility to prove the infringement  Where confidential information would be disclosed, it can be required to appoint a third party for inspection, e.g. a technical expert or patent attorney  The former view of the Federal Supreme Court regarding the scope of inspection was considered too narrow. Especially source codes could not be affected by inspection. Additionally, the Claimant may be asked to serve a bond to cover potential damages

19 www.rokh-ip.com19 1. Sec. 809 proceedings (cont´d) Current practice of the District Court of Düsseldorf:  Request for inspection can be filed in various ways:  In proceedings on the merits (in parallel to injunction/damages, but time consuming)  In preliminary injunction proceedings

20 www.rokh-ip.com20 1. Sec. 809 proceedings (cont´d) Current practice (cont´d):  Düsseldorf court favors the coupling of a so-called independent proceeding for the preservation of evidence with a preliminary injunction  Independent proceeding for the preservation of evidence: Sec. 485 et seq. of the GCCP: court can order the inspection by an expert before proceedings are started  Costs are such of the main proceedings, thus no extra costs if case is won  No appeal against granting decision  Advantage: an expert opinion obtained in such proceeding is full evidence for main proceedings

21 www.rokh-ip.com21 1. Sec. 809 proceedings (cont´d) Current practice (cont´d):  Court orders:  To obtain expert opinion on the question whether the attacked embodiment makes use of certain features of the patent  That the expert refrains from any direct contact with the Claimant and to correspond with the Claimant via the court only if confidentiality is an issue  Expert shall inspect the embodiment without prior hearing of the Defendant if matter is urgent  That the Claimant's counsels may be present at the inspection, but must keep all information confidential also vis- à-vis Claimant itself

22 www.rokh-ip.com22 1. Sec. 809 proceedings (cont´d) Current practice (cont´d):  Court orders upon Claimant's request Defendant's duty to tolerate:  That the Defendant refrain from any alterations of the product; in case of non-compliance fine or imprisonment can be ordered  The expert may inspect the product and, if necessary, put it into operation  That the Defendant may comment on confidentiality issues after inspection; court will then decide if expert opinion is made available to the Claimant  The Defendant bears the costs of the proceedings for preliminary injunction

23 www.rokh-ip.com23 1. Sec. 809 proceedings (cont´d) Conclusion:  Sec. 809 proceedings can be an effective means to gain (further) evidence on infringement  It is quick and very cost effective (approx. EUR 5.000,- to 10.000,- in an average case)

24 www.rokh-ip.com24 2. Sec. 142 proceedings (1) The Court can order that a party to the proceedings or a third party discloses a deed or other documents which are in its possession and which another party to the proceedings has referred to. To do so the Court can set a deadline and order that the disclosed documents are to remain, for a predetermined period, in the possession of the Court. (2) Third parties are not obliged to disclose documents in so far as this is unreasonable or if they are entitled to rely upon a right to refuse to give evidence in accordance with Sec. 383 to 385. Sec. 386 to 290 apply accordingly. (3) The Court can order the provision of a translation, prepared by a translator authorised to do so in accordance with the guidelines of the land administration of justice, of any foreign language documents. Such an order cannot be made against third parties.

25 www.rokh-ip.com25 2. Sec. 142 proceedings (cont´d) Requirements:  Other party or third party is in possession  of a document which another party has referred to  Third parties may refuse to present evidence in accordance with the right to refuse to render evidence In the past, Sec. 142 had been construed narrowly by the courts and was not applied to Intellectual Property Law New situation since Decision “Restschadstoff- entfernung”/Residual Pollutant Elimination of 1 August 2006 (German Federal Supreme Court GRUR 2006, 942 ss)

26 www.rokh-ip.com26 2. Sec. 142 proceedings (cont´d) Facts:  Patent in suit: Process for the elimination of residual gaseous pollutants from the emission of waste incineration plants.  Litigation concerning amount of royalties  Dispute about the exact features of the process for de-dusting the gaseous fumes  A third party was in possession of a plan of the plant in question, showing the exact course of the condensation  The Claimant requested the disclosure of this plan to the expert  The expert only analyzed the plant but did not consult the plan in question because District Court and Appelate Court had not regarded it to be legally relevant

27 www.rokh-ip.com27 2. Sec. 142 proceedings (cont´d) The Federal Supreme Court granted the request to disclose the plan with the following considerations:  Like the provision of Sec. 809 GCC, Sec. 142 GCCP is a means to overcome the Claimant's difficulties in rendering evidence, as may arise especially in the field of the particularly vulnerable technical property rights  Since special provisions do not exist, Sec. 142 has to be construed in such a way that it helps to meet the requirements of the TRIPS Agreement (i.e. Art. 43 TRIPS) and Art. 6 of the Directive (EC) 2004/48 on the production of evidence

28 www.rokh-ip.com28 2. Sec. 142 proceedings (cont´d) Art. 43 TRIPS: “The judicial authorities shall have the authority, where a party has presented reasonably available evidence sufficient to support its claims and has specified evidence relevant to substantiation of its claims which lies in the control of the opposing party, to order that this evidence be produced by the opposing party, subject in appropriate cases to conditions which ensure the protection of confidential information.”

29 www.rokh-ip.com29 2. Sec. 142 proceedings (cont´d) Art. 6 Directive (EC) 2004/48 on the Enforcement of IP Rights: “Member States shall ensure that, on application by a party which has presented reasonably available evidence sufficient to support its claims, and has, in substantiating those claims, specified evidence which lies in the control of the opposing party, the competent judicial authorities may order that such evidence be presented by the opposing party, subject to the protection of confidential information. (...)”

30 www.rokh-ip.com30 2. Sec. 142 proceedings (cont´d) Considerations (cont´d):  Third parties can be allowed to obliterate the documents to the extent that protected interests stand in the way of the disclosure  Probability of infringement sufficient. Case law concerning Sec. 809 GCC applies accordingly

31 www.rokh-ip.com31 2. Sec. 142 proceedings (cont´d) Conclusion: Requirements for production of documents:  likelihood of infringement  production is suitable and necessary to clarify facts of the case  proportionate and reasonable: weighing of interests

32 www.rokh-ip.com32 2. Sec. 142 proceedings (cont´d) Conclusion:  Order is within the discretion of the court  No appeal against decision  Enforceability  against third party: fines  against Defendant: not enforceable but consequences on evaluation of evidence

33 www.rokh-ip.com33 2. Sec. 142 proceedings (cont´d) Conclusion (cont‘d):  No practical experience yet  Expectation that production of documents will be easier in the future  However, reference on document by Claimant is crucial

34 www.rokh-ip.com34 III. Gaining Evidence Abroad 1.USA 2.France/Italy 3.Poland?

35 www.rokh-ip.com35 1. USA U.S. Code Title 28 Section 1782 „(a) The district court of the district in which a person resides or is found may order him to give his testimony or statement or to produce a document or other thing for use in a proceeding in a foreign or international tribunal, including criminal investigations conducted before formal accusation. The order may be made pursuant to a letter rogatory issued, or request made, by a foreign or international tribunal or upon the application of any interested person and may direct that the testimony or statement be given, or the document or other thing be produced, before a person appointed by the court. By virtue of his appointment, the person appointed has power to administer any necessary oath and take the testimony or statement. The order may prescribe the practice and procedure, which may be in whole or part the practice and procedure of the foreign country or the international tribunal, for taking the testimony or statement or producing the document or other thing. To the extent that the order does not prescribe otherwise, the testimony or statement shall be taken, and the document or other thing produced, in accordance with the Federal Rules of Civil Procedure. A person may not be compelled to give his testimony or statement or to produce a document or other thing in violation of any legally applicable privilege. (b) (...)“

36 www.rokh-ip.com36 1. USA (cont´d) Proceedings by 28 U.S.C. Sec. 1782(a): Requirements: 1.Person or entity from whom discovery is sought resides or is found in the district 2.Discovery is for use in a proceeding before a foreign tribunal 3.The application is made by a foreign or international tribunal or any interested person 4.Discretion of Court as to whether and to what extent to lend its assistance

37 www.rokh-ip.com37 1. USA (cont´d) Four discretionary factors identified by Supreme Court (Intel Corp. v. Advanced Micro Devices Inc., 542 U.S. 241, 264 (2004)):  Whether the person from whom discovery is sought is a participant in the foreign proceedings or not. In the former case the need for Sec. 1782(a) help is not as apparent as in the latter case  Whether US assistance would offend the foreign country (e.g. opposing opinion by a Ministry of Justice or a prosecutor) and whether the material sought is admissible evidence in the foreign tribunal  Whether the request conceals an attempt to circumvent foreign proof-gathering limits or other policies of a foreign country or the United States  Whether the discovery requests are unduly intrusive or burdensome

38 www.rokh-ip.com38 1. USA (cont´d) United States District Court, S.D. New York, Gemeinschaftspraxis Dr. Med. Schottdorf./. McKinsey of 29 December 2006:  discretion must be exercised in light of the aim of the statute: providing efficient means of assistance to participants in international legislation”  The production of documents can be ordered even if they are located abroad, i.e. not in the United States  Confidentiality agreements can be reached with the assistance of the court  Discovery is not burdensome because the documents have to be translated into English

39 www.rokh-ip.com39 1. USA (cont´d) Conclusion:  Proceedings by 28 U.S.C. Sec. 1782(a) is an effective way to gain evidence from companies having set up a base in the United States  Use discovery for disclosure of documents outside U.S.  Rulings tend to be in favor of the applicant seeking US assistance

40 www.rokh-ip.com40 2. France/Italy France: Saisie Contrefaçon, Italy: Discrezione –French IP code (article L.615-5) and Italian law explicitly provide for a special procedure to obtain evidence on patent infringement –Proceeding: Request for seizure: ex parte order. Claimant does not need to present evidence for infringement Grant of order: cannot be rejected by the judge, but only amended/limited to what is necessary Timeline: several days

41 www.rokh-ip.com41 2. France (cont´d) Proceeding (cont´d): –Persons carrying out the order: Bailiff assisted by experts chosen by Claimant –Collection of evidence: Bailiff may search for information and possibly ask questions, take copies or samples. –Detailed report is written by Bailiff. When asked to sign the report, Defendant may challenge way of seizure, raise trade secrets or confidentiality issues, request certain information to be sealed –Further legal proceedings: infringement action should be filed within 15 days (France), 30 days (Italy) of the seizure

42 www.rokh-ip.com42 2. France (cont´d) Conclusion: –Fast and cost effective way (approx. EUR 10.000,- to 15.000,- for average case) –Also possible to obtain documents or samples –Infringement litigation must be started shortly after which can be cost intensive –Additional evidence that same product is marketed e.g. in Germany required for German proceedings

43 www.rokh-ip.com43 3. Poland?  Because of Article 91 of the Polish Constitution, Art. 43 TRIPS is directly applicable in Poland  Art. 6 Directive (EC) 2004/48 on the Enforcement of IP Rights already implemented?  Provisions in Polish Code of Civil Procedure to produce documents in Polish proceedings:  Art. 248: On request of the court, documents constituting an evidence have to be presented, unless they contain a state secret  Art. 312: The Claimant must specify facts and evidences supporting the facts and reasons justifying the preserving of the evidences  Art. 251: If a party refuses to present the document, the Court will hear it and, if the refusal is not justified, may impose a fine  Are there any means comparable to 28 U.S.C. 1782 (a), saisie- contrefaçon or discrezione in Poland?

44 www.rokh-ip.com44 Thank you for your attention! Dipl.-Phys. Klaus Haft Dr. Anja Lunze, LL.M. REIMANN OSTERRIETH KÖHLER HAFT Rechtsanwälte Partnerschaftsgesellschaft Düsseldorfer Straße 189Tel. +49 (0)211 550 220 40545 DüsseldorfFax +49 (0)211 550 22 550 Klaus.Haft@rokh-ip.com Anja.Lunze@rokh-ip.com www.rokh-ip.com


Download ppt "Gaining Evidence for Patent Infringement Proceedings in Germany AIPPI Central and Eastern European Seminar on IP and Competition Law Poznan, 23 March 2007."

Similar presentations


Ads by Google