The general rule in theory and case law is that an infringement can be established when a given solution incorporates all the features of the patented solution.
In practice, it is often necessary to decide whether the omission of certain protected features of the invention allows for an allegation of infringement. The statements of the legal doctrine in this regard are very divergent, because the regulations do not directly regulate this issue.
In some cases, the distinction between essential and non-essential features of an invention is considered, but it is closely related to the assessment of a given case by a specialist in a given field of technology, who sometimes makes such a valuation when reading patent documentation. The functional approach of the expert to such an assessment allows us to formulate the conclusion that the essential features are those that contribute to the achievement of a specific result. Essential features are therefore those that determine the function of a given solution. Therefore, if the expert finds that only those features that are not essential have been omitted, it is possible to invoke the so-called partial protection (as in SPH T.3 eds. Nowińska/Kępinski, Ożegalska-Trybalkska, Szewc, Sikorski, Szczepanowsa-Kozłowska, Targosz, Tischner, Legalis). According to the above-mentioned view, if certain features are omitted in a given solution, the decision whether we are dealing with an infringement will depend on whether the function performed by the invention covered by the patent is still performed.
The basic norm establishing the scope of protection resulting from a patent is the norm of Article 66 of the IPL. This standard constructs protection due to the subject matter of the patent, i.e. a patent whose subject matter is a product (and its application) and a patent whose subject matter is a method of conduct.
In the doctrine, it is assumed that such a division is justified by the differentiation of the scope of protection resulting from both types of patents. Obtaining a patent for a product gives the holder an “unlimited” right to use the invention concerning this product – regardless of the method of production (production) of the product. On the other hand, a patent for a method is always limited only to the method specified in the patent description (SPP T. 14 A, ed. Skubisz/Traple, Legalis). The above finding is crucial for further conclusions in the case.
It follows from the above finding that a patent for a product gives rise to a prohibition right both with respect to the manufacture and use, offering, marketing or importing for these purposes the product which is the subject of the invention, whereas a patent for a method constitutes only the right to prohibit other persons from using the method which is the subject of the invention.
It is on the basis of considerations related to the scope of patent protection that the issue of key aspects in a patent infringement proceeding, i.e. the burden of proving the fact that an infringement has occurred, is discussed.
In the case of a patent for product protection, the general rule set out in the provisions of the Civil Code and the Civil Procedure Code is applied, i.e. the principle that the obligation to present evidence rests with the parties (Art. 3 of the Civil Procedure Code), and the burden of proving facts that are significant for the resolution of the case rests with the party that derives legal effects from those facts (Art. 227 of the Civil Procedure Code) (as in the judgment of the Supreme Court of 17 December 1996, ref. no. I CKU 45/96).
In the case law, it is assumed that the purpose of the provisions introducing the obligation to concentrate evidence is to induce the parties to present (at the earliest possible stage of the proceedings – the statement of claim and the statement of defense) the necessary allegations and evidence in order to bring about the fastest possible resolution of the case, and to give the court – by providing it with access to complete procedural material – the opportunity to issue a correct decision. The risk of the court omitting late allegations or evidence is intended to induce the parties to duly fulfil the burden of supporting the proceedings and thus contribute to the achievement of the indicated objectives (as stated in the judgment of the Supreme Court of 9 August 2019, file ref. no. II CSK 353/18).
Undoubtedly, in the case of a patent stating protection for a product, the legislator does not modify in any way the classic principles of distributing the burden of proof. The only difference is the norm of Article 64(2) of the IPL, concerning demonstrating that a given product has been manufactured using a patented method. The legislator has introduced a clear presumption strengthening the situation of the patent holder, which applies in the case of a new product. According to this provision, in the case of a new product that can be produced using a patented method, it is presumed that it was produced using this method. Therefore, we are dealing here with a shift of the burden of proof to the defendant, who must prove that a specific product is manufactured in a manner other than the patented one. The above-mentioned case is the only clear case known to the Industrial Property Law Act in reversing the classic principle of the distribution of the burden of proof when proving an infringement of the law. Such a situation cannot be applied to the case under consideration.
Practitioners point out that the reality is slightly more complicated than it was anticipated by the legislator, which is not concerned with the process of raising objections by the complainants that de facto define the scope of protection. It is noted that claims in which a product is defined by the method of obtaining it (product by process claim) are a special type of claims concerning a product patent. The legislator has not introduced a uniform solution regarding the role of the product manufacturing process that a given process plays in demonstrating the infringement of such a patent.
Proving in a patent infringement lawsuit
Translating the above findings into a real infringement proceeding, it is necessary to start by noting that the key issue in the proceeding will always be determining the scope of protection under the granted patent, i.e. determining the area of exclusivity reserved for the proprietor and the area of free action of third parties.
This problem arises primarily in the area of finding a proper balance between the interests of the holder of an exclusive right and the public interest, which lies in ensuring an appropriate degree of legal certainty as to the limits of an exclusive right.
The certainty of the limits of the law would be maximally secured if the scope of the patent was limited to the literal wording of the claims, but then circumventing the patent by introducing variants of the solution that do not differ much from the claimed invention and are irrelevant from the point of view of the main idea of the invention would be relatively simple, and the protection granted would be devoid of sufficient legal significance. This principle also applies to proprietary products by defining the process of their production.
It is important to emphasize an important circumstance that may be useful in the process, when interpreting the scope of protection under a patent. Namely, it is important to realize each time that the patent holder is not able to foresee, at the time of formulating the reservations when filing the application, all possible technical variants falling within the scope of the claimed solution. These considerations support the search for a balanced solution, allowing for the construction of the material scope of the patent on the basis of claims, but properly interpreted, primarily on the basis of the description and drawings, including in particular with regard to the essence of the method formulated when claiming the final product.
This statement is important because many years pass from the work on the creation of the patent description and patent claims to the introduction of the product to the market, and even more so to the appearance on the market of products infringing patent rights, and there is often an observed discrepancy between what could have been protected on the date of filing the invention for patenting, and what turns out years later – it should be. This finding should be an important guideline for the court’s interpretation of the scope of protection under the patent by granting the parties balanced but equitable protection.
The introduction of a certain limit of flexibility in the interpretation of the scope of protection in this respect, by reference to the characteristics and purpose of a given invention, is currently accepted as admissible, although still exceptionally.
A literal interpretation of claims still remains dominant in theory and practice, but the courts are also increasingly allowing for functional interpretation, which allows when defining the scope of patent protection to take into account features that are not directly included in the claims, but can be interpreted by reference to the technical problem that the invention solves. At the same time, the interpretation of the scope of the patent in relation to the content of the claims is still binding, although sometimes taking into account their teleological interpretation. The practical problem is always the adoption of such a solution that does not distort the essence of patent protection and does not privilege the patent holder beyond a reasonable measure.
Translating the above theoretical principles into the process of pursuing patent infringement defined by the method, it should be emphasized that this particular case of a patent requires special attention of the court and reasonable participation of expert specialists in interpreting the essence of the product protected by the patent in relation to the method by which the patent holder described the achievement of its production – assuming that the patent holder had a different option to define the characteristics of the product itself at that time did not have or it would be excessively difficult. It is a reasonable and open approach to the problem at this stage that is the key to distributing the emphasis of the parties during the evidentiary proceedings in relation to:
- product as such (the question of how many features of the product can be reproduced by, m.in example, reference to the patent description and the state of the art)
- the method of manufacturing the product described in the patent, as well as the importance of the importance of this process and each of its elements for the actual reproduction of the final product (the question of whether the proprietary product can be obtained by another method is also important here)
Burden of proof of infringement
Given that the legislator has not provided for any facilitations or derogations from the classic rules of proving an infringement in the described cases, the general rule applies here, according to which it is the party proving certain facts who is burdened with proving them (Article 6 of the Civil Code).
The general principle of the distribution of the burden of proof is a rule in the substantive sense, indicating who will bear the consequences of failure to prove facts relevant to the resolution of the case, while the provision of Article 232 of the Civil Procedure Code indicates who bears the burden of proof in the formal sense, who should present evidence (judgment of the Supreme Court of 17 February 2006, V CSK 129/2005). As a result, it should be emphasized that if the evidence gathered in the case does not provide a basis for making appropriate factual findings in accordance with the claims of one of the parties, the court must draw negative consequences from the failure to prove the facts cited to justify the claims or allegations. This should be understood as meaning that a party that has not adduced sufficient evidence to support its claims bears the risk of an unfavorable ruling, provided that the burden of proof as to these circumstances rested on it (as in the judgment of the Court of Appeal in Wrocław of 18.01.2012 in case I ACa 1320/11).
As far as the substantive requirements for proving infringement of patent rights in a lawsuit are concerned, the basic principle is undoubtedly the determination that the application of an invention occurs when all the characteristic features of the invention indicated in the independent claim have been applied in the opposing solution. The use of only some elements of an invention does not constitute the application of a claimed invention.
In practice, it is also taken into account that all elements of the patented product are not manufactured, but in the circumstances of the case it is indisputable that the patented solution has already been reproduced in the manufactured elements, regardless of the missing elements.
The situation we are dealing with in the case of proving an infringement of a patent for a product protected by the way it was manufactured is somewhere in the middle between these two theories. Undoubtedly, it is crucial for the court to establish (demonstrate by the plaintiff) that the invention has been implemented, but theoretically it is also possible to prove the infringement by demonstrating that the proprietary process has not been duplicated in its entirety or that it is impossible to fully reproduce it in the trial. It should be noted that for the court (different views of adjudicating panels) the simplest and most certain situation is the one in which the plaintiff presents the court with undisputed material evidence proving the creation of a product that was or had to be created using a patented method, but situations of this type (where we have a 1:1 duplication of both the product and the process leading to its production) may be extremely rare, and certainly do not exhaust the full catalogue of situations, in which it is justified to raise an allegation of patent infringement, despite the lack of perfect evidence.
The fact that the plaintiff does not know how the infringer’s product was manufactured means that it is often impossible to prove the identity of the two products. In connection with the above, in particular in foreign literature, it is emphasized that in such cases the proprietor is required to demonstrate, with the help of scientific expertise, that the patented product can only be obtained by the method specified in the claims. The proprietor does not benefit from any evidentiary facilities or presumption that strengthens the position of the patent holder on the method of production, and thus the plaintiff should be allowed to use such a (reasonable) line of evidence that will consistently convince the court that the essence of the patent infringer has been implemented in the product of the infringer.
Moving on to the defendant’s rights, there is also a valid reason to claim that the defendant himself can prove that the product is manufactured in a different way than that which characterizes the patented product. In such a situation, in case of significant doubts, it should be assumed that the products are not identical. Despite the lack of a rule of proof clearly indicated in the regulations, it would be indeed risky to accept the claim that passivity and simple denial by the defendant will testify in his favor. It may happen that the assessment of the situation by the appointed expert – based on the facts and materials provided – will be unfavorable for the defendant.
Notwithstanding the above, to sum up, it seems that a lot of views have been presented in the doctrine justifying the thesis that since patent protection is granted to the product and not to the method of manufacture, the introduction of certain changes to the method of production of the patented product does not mean that we are not dealing with patent infringement if, as a result of the changed production process, we obtain the same product as the one covered by the patent. Such a situation may occur in particular when, at the time of filing the application, it was not possible to define the product in any other way than by the characteristic method of its production, and then after some time it turned out that the same product could be obtained by a different method.
Approaching the issue of proof in a trial from a substantive point of view, in Polish jurisprudence particular attention is paid to the fact that in a patent infringement trial, the main evidence that will be necessary to resolve the trial will be an expert opinion, prepared on the basis of an examination of the disputed products and the documentation attached to them (m.in. the District Court in Warsaw in its decision of 25 October 2022, ref. no. XXII GWo 143/21).
It is emphasized that while the parties rely on the content of a private opinion, the opinion must not raise any formal and substantive doubts. The author of such an opinion should therefore be an expert in a given field of technology, and not an advocate, legal advisor or even a patent attorney (as stated by the District Court in Warsaw in its decision of 8 April 2021, file ref. no. XXII GWo 95/20). At the same time, the courts emphasize that the application of Article 278 § 1 of the Civil Procedure Code to the disposition of the legislator limited the court’s jurisdictional autonomy by excluding from its competence the possibility of authoritative stance on issues requiring special knowledge. The court’s assessment is therefore limited in that it cannot encroach on the domain of the expert, i.e. special knowledge. An expert’s opinion, in turn, is subject to assessment on the basis of criteria appropriate to its attribute, in accordance with the principles of logic, common knowledge, the level of the expert’s knowledge, the theoretical basis of the opinion, as well as the manner of motivation and the degree of firmness of the conclusions expressed in it (so the Court of Appeal in Białystok, in the judgment of 25 September 2012, ref. no. I ACA 721/12, following the judgment of the Supreme Court of 7 November 2000, I CKN 1170/98)
It is also unequivocally recognized that the independent analysis of the patent claim made by the plaintiff in the justification of the lawsuit is not an absolutely sufficient source of proof in infringement proceedings (as the District Court in Warsaw stated in its decision of 12 July 2022)
Helena Gajek
