We prove patent infringement in a lawsuit in Poland
When exploring the procedural secrets of a patent infringement proceeding, it is necessary to first define what a patent gives and what is the scope of protection it gives to the proprietor.
Obtaining a patent for an invention gives its owner an “unlimited” (with some exceptions) right to use the invention concerning the product, the method of its production or the use of a given product (3 categories of patents). In the case of a product, we protect the product described in the patent claims with defined characteristics, regardless of the method of its manufacture. On the other hand, a patent for a method is always limited only to a specific method of production, which has been described step by step in the patent description.
A product patent gives its owner the right to prohibit others from manufacturing, using, offering, placing on the market, or importing the product that is the subject of the invention for these purposes. Importantly, a patent for a method provides a slightly different protection – it only gives the right to prohibit other people from using the method that is the subject of the invention.
General principles of proving in the process
The above distinction is important because the regulations introduce different obligations for a plaintiff seeking infringement of his patent in relation to a given category of patent.
In the case of a patent for product protection, the general rule is that the obligation to present evidence confirming that a patent infringement has occurred rests only with the plaintiff, i.e. the party who initiated the infringement lawsuit. What is more, the regulations introduce very strict rules for proceedings in which entrepreneurs appear on both sides – because the plaintiff must present all the allegations and evidence on which he bases his convictions about the infringement already in the lawsuit. The defendant, in turn, should present all arguments and evidence to convince the court that the claim is groundless in response to the received lawsuit. Subsequent submission of evidence by either party is admissible only in strictly defined cases and depends on the consent of the court.
The provisions of the Industrial Property Law Act introduce very significant deviations from the above-described principles of proving infringement in the case of patents protecting not the product as such, but the method of its production. The legislator has introduced a legal presumption that strengthens the situation of the patent owner. This applies to the method of demonstrating that a given product has been manufactured using a patented method. Thus, in the case of a new product that can be produced in a patented way, it is presumed that it was produced in this way.
As you can see, the law introduces a very significant deviation from the general principles of proving the plaintiff’s incriminating principle. Exceptionally, in such a case, it is the entrepreneur whose product has been challenged who must prove that its product is manufactured by a different method of production than the one described by the patent owner. The passivity of the attacked entrepreneur in this exceptional situation may work to his disadvantage, which is why it is so important to become aware of the situation in a given process in a given process.
Basic principles – what must be demonstrated in the trial
Moving on to the classic rules of proof, it should be remembered that the plaintiff must prove in the statement of claim (by filing a patent document or a certified copy thereof) the existence of his right, as well as that this right remains in force (patent paid for a given period). Important – the court adjudicates in accordance with the legal status as of the date of issuance of the judgment, so the patent must remain in force also on that specific date, which usually takes place two or more years after the filing of the lawsuit.
Further, the plaintiff must demonstrate – by means of material materials – that the defendant actually sells or at least offers (and in some cases only manufactures) a product that – in its opinion – infringes its patent. Therefore, the plaintiff must submit evidence to the case file in the form of the infringer’s products, sales invoice, printouts of offers (with dates!), descriptions of technological lines, etc., so that the court can see, examine, and assess whether the defendant actually uses the invention in any of the forms described in Article 66 of the IPL, and thus whether the patented solution has been implemented.
Proving whether a patent has been infringed in a particular case requires the efficient use of evidence. In fact, this is the key to success in the case and the workshop of an efficient legal representative. Despite the theoretically clear and lucid rules, winning in a lawsuit is actually a difficult art and a big challenge. It should be remembered that the court is not there to replace the parties. The court acts as an impartial arbitrator in the case, who will assess only what has been provided to it by the parties.
Going to the specifics…
Proving patent infringement requires a number of circumstances to be met. The court first verifies whether the plaintiff actually has a patent and whether it remains in force (whether it has been paid for). The court must also have evidence as to whether the defendant conducts the activity of which he is accused. Only after verifying these two premises does the court proceed to examine whether the activity accused of the defendant constitutes the implementation of a solution protected by a patent.
This stage of the evidentiary proceedings takes the longest. It involves the need for the plaintiff, and sometimes also for the defendant (with the reversal of the burden of proof referred to in Part 1 of the article) to incur great intellectual efforts and costs related to the involvement of experts, scientific and research institutes or recognized authorities supporting the parties with “private” opinions.
It is safe to risk a thesis that no patent proceedings (infringement, determination of non-infringement, for remuneration, etc.) cannot, or at least should not take place without the participation of at least one expert opinion or other specialist in a given field. Polish courts are courts composed exclusively of lawyers, not experts (chemists, physicists, biotechnologists, electronics engineers, pharmacists, etc.). The court does not have to, and even should not, make assessments that go beyond its sphere of knowledge and competence, even though – in the end – it is the court that has, when issuing a judgment, the right to freely (although not arbitrarily) assess the evidence, assessing all the circumstances of the case, in accordance with its knowledge and life experience.
With this knowledge, the plaintiff – when initiating court proceedings – should consider very well what knowledge he has, what evidence he has, as well as what procedural tools he intends to use – and thus what he ultimately wants to achieve.
Dear entrepreneur – when joining the trial – please listen to the advice of the attorney; Our goal is not to burden you with unnecessary duties, but to prepare you for a complicated and professional battle, in which we will have to face challenges for which we should be well prepared.
The role of the expert witness in the trial
It will not be an exaggeration to say that success in the trial depends to a large extent on a good expert opinion or a good (factual and credible) “private” opinion. I am omitting, for obvious reasons, a situation in which both the plaintiff and the attorney know that in fact there is no infringement, there was no infringement or there is no longer one, or they themselves are not convinced of it. A good process undoubtedly requires preparation at the highest level, as well as experience.
Definitely, in order to prove patent infringement, it is not enough to: present a printout of the defendant’s offer from the Internet, sample pages from a selected catalogue, price list, advertisements for the product (in which the invention would be included). Such materials – and yes – could be of fundamental importance, but in a trademark infringement lawsuit, but not a patent infringement. With this type of evidence at your disposal, you can at most start considering preparing the plaintiff for the trial, but do not take a hoe to the sun by filing a lawsuit with the court, because supplementing the evidence at a later stage may turn out to be impossible (late).
We repeat to our clients like a mantra: a reliable and professional expert (or at least a professional opinion or two of equal value) is the basis of the process. Of course, all material evidence counts, I am not mentioning samples, descriptions of technology, or other means of evidence (knowledge in this area is the know-how of a good lawyer), but let’s try to get the opinion of a specialist, choosing the right specialization. If we do not have one, we should prepare a GOOD evidentiary application for the admission of an expert; I repeat – good (!) – not forgetting that the expert will not judge from tea leaves, nor will he collect evidence himself, and if he is to express his opinion – it will only be factual and to the point. A weak evidentiary application is – I will say perversely – a 50% chance of losing the trial.
We greatly appreciate court rulings from which it is clear that: in order to determine whether the defendant has infringed the plaintiff’s rights under the patent, the only reliable evidence is the product itself and its assessment in the context of the patent claims; the plaintiff’s position that for such an assessment it is sufficient to present only a product catalogue with technical data, which moreover does not have to literally correspond to the content of the claims, is misguided. Nothing more, nothing less, it is enough to understand and follow this clear recommendation.
Remember: a mere application for the admission of an expert witness is not enough; Each opinion is issued on the basis of the material collected in the case. The expert is not entitled to seek evidence to support the plaintiff’s claims presented in the lawsuit, nor to supplement the evidence, let alone to create facts (brrr!). In many well-thought-out judgments, judges (mainly when they dismiss a claim) say directly that the court cannot stop at the contradicted claims of the plaintiffs without consulting an expert. That is the case, in particular, in cases where the two parties submit two very different private opinions to the file, one of which shows that an infringement has occurred and the other that the opposite has occurred.
In law school, students are told over and over again one of the most important principles: the burden of proof rests on the party that derives legal effects from certain facts. The parties provide evidence. The court’s power to take evidence ex officio (in order for the court to discover the objective truth) is (fortunately) extremely rare, and rather not in proceedings in which entrepreneurs appear on both sides. Given the fundamental obligation of representation in patent proceedings by professional attorneys, the court’s action beyond the role of an impartial arbitrator practically does not and should not take place. Therefore, the allegations of the complainants of the Regional Court’s decision based on the lack of active action of the court are not well received by the Courts of Appeal.
Witness in a patent infringement lawsuit
According to the rules of commercial proceedings, evidence from witness testimony may be admitted by the court only if, after exhausting other means of evidence or in the absence of them, there are unexplained facts relevant to the resolution of the case.
Witness testimony is still played a fairly large role in court proceedings, but it is to be hoped that the role of witnesses will gradually be reduced, in accordance with the legislator’s recommendations.
There is no doubt that a witness is called by a party generally when that party is convinced that the witness will testify in its favour. This does not mean that witnesses do not have knowledge of important facts, but witness testimony should be approached very carefully. Definitely, witness testimony should never replace source evidence. It should be remembered that often, or even very often, the credibility of witnesses – even the most eloquent ones – may raise significant reservations, and it may be difficult for judges to verify which witness is telling the truth, presenting impartial facts, especially when the case is complicated and the patent is highly “specialized”. Undoubtedly, the court should obtain factual information about the case, witness testimony should not replace the plaintiff in presenting the facts to the court. In the case of witnesses, it seems impossible to provide such reliable knowledge of the facts. We would like the courts to actually limit the admission of witness testimony only to situations in which the witness has knowledge of facts that are really important, not explained by other evidence; In other cases, the questioning of witnesses seems unnecessary.
Hearing of the party
According to Article 299 of the Code of Civil Procedure, “if, after exhaustion of evidence or in the absence of evidence, there remain unexplained facts relevant to the resolution of the case, the court may admit evidence from the hearing of the parties in order to clarify these facts“.
Apart from the fact that the parties always, always (without exception), have a biased and emotional approach to the case (otherwise they would not file a lawsuit or have to defend themselves against an attack), the case law of the courts shows that the role of the parties in the court process is rather limited. It is assumed that the mere assertion of a party is not evidence. Circumstances relevant to the case should be proven by the party. We can only sum up: and that’s lucky. The Court is not a place for colorful, emotional stories straight from American action movies. I do not deny it, it is nice to listen to wise and colorful statements of often very experienced members of the board, presidents. But, but …. This is not what the process is about and it is important that everyone understands this reality in the same way.
Coming down to earth, I will conclude in the following way, “in a legal way”, because this is how it should be in a trial: “according to Article 232 of the Civil Procedure Code, the parties are obliged to submit motions for evidence. The parties are also obliged to provide truthful explanations as to all the circumstances of the case. Any shortcomings and inactivity shall be the sole responsibility of the party that has failed to comply with its obligation. Such defined, clear rules lead to the conclusion that the court process should be taken seriously, have a ready and well-thought-out plan and idea for its implementation. I treat initiating a lawsuit with the thought: “maybe it will work”, “maybe the court will favor me” as an unprofessional action, to the detriment of the client – I strongly advise against it.
Author:
Helena Gajek
