How to prove your case before the Unified Patent Court

The RoP enumerate a non-conclusive list of means of evidence that have the same evidentiary value. They include:

• written evidence (printed, handwritten or drawn, in particular, documents, written witness statements, plans, drawings and photographs);
• physical objects (in particular, devices, products, embodiments, exhibits and models);
• electronic files and audio or video recordings; and
• expert reports and reports on experiments carried out for the purpose of the proceedings.

The means of obtaining evidence include, in particular but not conclusively:

• the hearing of the parties;
• requests for information;
• production of documents;
• summoning, hearing and questioning of witnesses;
• appointing, receiving opinions from and summoning, hearing and questioning of experts;
• ordering inspection of a place or a physical object;
• conducting comparative tests or experiments; and
• obtaining sworn statements in writing.

Since the UPCA is modelled on different jurisdictions, essential procedural aspects deviate especially from continental European jurisdictions. In connection with means of evidence, four of these particularities are to be emphasised:

• The underlying objective of the UPCA is for proceedings before the UPC to be rapid and efficient. Regarding evidence, this objective is, for example, reflected by the availability of an intermediate procedure in which the judge-rapporteur prepares for the oral hearing and may order the production of evidence.
• The hearing of parties is considered an independent means of evidence before the UPC, as explicitly stated in both the UPCA and the RoP. No further specifics are provided.
  
  In contrast, under German civil procedural law, the hearing of parties is not considered evidence but rather serves to obtain information. Although a distinction is made between a mere party hearing and a party hearing that constitutes evidence, the latter is only used subsidiarily due to the potential conflict of interest between the duty to tell the truth and the interest in the outcome of the proceedings.
  
  The UPC will also need to consider this aspect when assessing such evidence.
• With regard to witness evidence, the RoP generally require that the party seeking to offer witness evidence shall lodge a written witness statement or a written summary of the evidence to be given. Only in exceptional cases may witnesses give oral statements. Using a written witness statement, however, carries a risk of influence by legal representatives to increase the credibility of a witness, especially against the background of the often complex evidentiary issues in patent infringement proceedings. It remains to be seen whether the UPC will address this issue through the liberal use of the power to hear in person. Representatives appearing before the UPC must strictly adhere to the code of conduct adopted by the UPC Administrative Committee, which includes rules on the treatment of witnesses and party experts. Since the UPCA and RoP suggest an extremely strict application of the burden of proof rule, written testimony may already be submitted with the complaint. The extent to which the proceedings are ‘frontloaded’ will only become clear when the first complaints are brought before the UPC.
  
  In contrast, for example under strict German evidence procedures, witness evidence is only taken during the oral proceedings.
• Besides the UPC, which may appoint a court expert at any time after hearing the parties, the parties themselves may also present experts they have appointed as expert evidence. Expert evidence provided by parties is subject to the same regulations as witness evidence: parties may submit a written expert opinion or an appropriate summary of an expert opinion. In contrast, for example under strict German evidence procedures, evidence is restricted to a court-appointed expert witness.

For any party not having access to all evidence needed, the UPCA will permit requests for information at an early stage of proceedings. There is even the possibility for parties to request the execution of experiments by an expert appointed by the UPC. This could open up significant evidentiary advantages over, for example, the German procedure, especially with regard to patents in the biological or chemical field.

The following provides more details on the competence and procedure of the UPC for means of gathering evidence; the specific means of providing evidence, including limitations and restrictions of such means; and the consequences of non-compliance with court orders in this regard.

The means of gathering evidence before the UPC are governed by the RoP. Evidence may be obtained in the interim procedure or in the oral proceedings.

Questioning of witnesses and experts must only occur under the control of the UPC and is limited to what is necessary to prevent questioning by the parties or the attorneys of record in the absence of the court.

Any party may lodge an application requesting an order regarding evidence to be reviewed by the panel. Such application for review shall be lodged within 15 days of service of the order, requires the payment of a fee, has no suspensive effect, and shall state the grounds for review and the evidence, if any, in support of the grounds. The other party will be given an opportunity to be heard before the panel decides on and makes any necessary revised order.

Any party may also lodge an appeal against the order to produce evidence within 15 calendar days of the notification of the order to the applicant. All other orders can only be appealed together with the appeal against the decision using the evidence gathered based on this order, or where the UPC grants leave to appeal for the order.

Production of evidence

A party unable to retrieve a piece of evidence may ask the UPC to grant an order for production of evidence against the opposing party or a third party.

This requires that the requesting party has:

• presented reasonably available evidence sufficient to support its claims; and
• specified evidence that lies in the control of the opposing party or a third party.

Further, under the same requirements, (only) the opposing party can be ordered to produce banking, financial or commercial documents under its control.

Thus, the requesting party must provide details in support of its claim and show that it lacks a certain piece of evidence in order to fully prove the fact to the UPC. These requirements are supposed to impede ‘fishing expeditions’ for unspecified information.

The evidence to be produced goes beyond the duty of disclosure in the event of IP infringement under articles 6 and 7 of Directive 2004/48/EC on the enforcement of intellectual property rights (IPR Enforcement Directive) and sections 142 and 144 of the German Code of Civil Procedure, which is limited to documents (and the inspection of objects or processes).

With the wording of article 59 UPCA referring to evidence in general, it could even be conceivable that production of written witness testimony, which is a means of evidence under the UPCA, and consequently also oral witness testimony, could be ordered by the UPC.

Requests for information

The UPC may order the alleged infringer to provide, upon the plaintiff’s request, information on:

• the origin and distribution channels of the infringing products or processes;
• the quantities produced, manufactured, delivered, received or ordered, as well as the price obtained for the infringing products; and
• the identity of any third person involved in the production or distribution of the infringing products or in the use of the infringing process.

The information to be produced mirrors the duty of disclosure in the event of IP infringement under article 8 of the IPR Enforcement Directive. In German infringement proceedings, such information would usually be obtained by enforcement of a first instance judgment or – in cases of obvious infringement – a preliminary injunction. Under the UPC, this information can be obtained during ongoing infringement proceedings.

The UPC extends the information to be provided to third parties, namely to persons who were:

1. found to be in possession of the infringing products on a commercial scale or using an infringing process on a commercial scale;
2. found to be providing on a commercial scale services used in infringing activities; or
3. indicated by the person referred to in points (1) or (2) as being involved in the production, manufacture or distribution of the infringing products or processes or in the provision of the services.

Thereby, the UPCA extends the scope of those requested to provide information to persons other than the parties of the litigation.

In addition, the RoP extend (both) parties’ options to gather information even further not only by permitting a request for communication of the information, but by extending the scope of the information that can be requested to ‘such other information as is reasonably necessary for the purpose of advancing that party’s case’. This broad wording invites extensive requests for information. It remains to be seen how high a hurdle the UPC divisions will impose for showing that the requested information is reasonably necessary.

Experiments

Any party can request the UPC to order an execution of comparative tests and experiments to prove a statement of fact for the purpose of proceedings before the UPC.

The UPC may order the execution of experiments on a reasoned request by a party. The request of the party shall:

• dentify the facts intended to be established by the experiments and describe the proposed experiments in detail and the reasons for carrying out the proposed experiments;
• propose an expert to carry out such experiments; and
• disclose any previous attempts to carry out similar experiments.
  
  

The request needs to be lodged ‘as soon as practicable’ in the written procedure or the interim procedure, which implies that there should by no means be any culpable delay in this regard.

The UPC invites the other parties to comment on the request, including the identity of the expert proposed and the description of the experiments. To save money and time, the other parties are explicitly invited to state whether they dispute the facts intended to be established by the experiments.

The UPC may order that the experiments be carried out in the presence of the parties and their experts. Following the expert’s submission of its report on the experiments to the UPC, the UPC invites the parties to comment on the report, either in writing or during the oral hearing. Moreover, the expert may be summoned to the oral hearing.

As regards costs, the party requesting the experiment initially bears the costs of the experiment unless otherwise ordered by the UPC.

Limitations to gathering evidence

Limitations apply with a view to a witness’s right to refuse testimony, attorney–client privilege and litigation privilege.

Moreover, the order to produce evidence shall not result in a party’s obligation of self-incrimination.

Confidentiality-based restrictions

All collection and use of evidence in proceedings before the UPC is subject to the UPC imposing measures for the protection of confidentiality, where needed. Such measures comprise the order that the collection and use of evidence in proceedings before the UPC be restricted or prohibited or that access to such evidence be restricted to specific persons.

As regards the production of evidence, UPCA clarifies that the order to produce evidence, as well as the communication of banking, financial or commercial documents under the control of the opposing party, is subject to the protection of confidential information.

Non-compliance with the UPC order for production of evidence can be considered by the UPC when deciding on the respective issue the requested evidence pertained to.

A party refusing to comply with the terms of an order to provide information can be sanctioned with a penalty payment.

Should the party bearing the burden of proof not have sufficient knowledge about the infringing quality of an object, there is already a pretrial opportunity to close this gap.

During pretrial proceedings (in particular), evidence may be preserved in the context of or independently from an inspection order. Apart from supporting the party burdened with proof, these (pretrial) proceedings may also prevent potentially unnecessary legal disputes.

Scope of and distinction between inspection and preservation of evidence

Inspection and preservation of evidence relate to each other as follows: if the evidence is not publicly accessible, an order for preservation of evidence may be supplemented by an inspection order, which allows the proprietor to gain access to premises. In turn, a mere visual inspection of premises may be supplemented by an order to preserve evidence.

Inspection may be performed in respect of premises, namely, a property and buildings thereon and extended to products, devices, methods, premises or local situations in situ.

Preservation of evidence may be performed by:

• detailed description, with or without the taking of samples;
• physical seizure of allegedly infringing goods;
• physical seizure of the materials and implements used in the production or distribution of these goods and any related document; and
• preservation and disclosure of digital media and data and the disclosure of any passwords necessary to access them.

Preservation of evidence is only permissible against the alleged (future) patent infringer. In contrast, since an inspection is less invasive, it may arguably also be performed against third parties, at least in situations where it is necessary for accessing evidence.

Application

Applications for inspections or preservations of evidence must be filed with the trial court or, if no main proceedings are pending yet, with the court where the applicant intends to initiate the main proceedings. Applications must include the details of the requested measures – including facts and evidence on which the request is based and, hence, the exact locations for and the necessity of the requested measures. In case of an ex parte application, the applicant must show that he or she is likely to suffer irreparable harm as a result of a delay or that there is a demonstrable risk of evidence being destroyed or otherwise ceasing to be available.

Decision of the UPC

Orders for preservation or inspection are based on a discretionary decision of the UPC. In particular, the UPC may consider the urgency of the action and the reasons for an ex parte order. The order may be issued prior to the commencement of infringement proceedings and does not depend on the (possible) refusal of the affected party to consent to the issuance. The same applies in respect of the enforcement of the measure.

Enforcement

In principle, the order is enforceable immediately after it has been issued, whereby the UPC may also set conditions to the enforceability of the order. Since the enforcement is, in principle, subject to the enforcement procedure and conditions of the member state in which enforcement is sought, national requirements preventing enforcement must also be taken into account in the application and the court order.

In pretrial proceedings, the ordered provisional measures are suspended for the protection of the party, subject to inspection or preservation of evidence, if the (successful) claimant does not file an action on the merits within a certain time period. In addition, the RoP include the following protective measures in favour of the party, subject to inspection or preservation of evidence.

Right to be heard

The other party must generally be heard by the UPC by oral hearing or in writing before the UPC issues the order. However, since the UPC may issue an ex parte order upon request, the hearing may be postponed. The affected party must be informed about the order immediately after the execution of the measures so that he or she may request a review of the court order.

Protection of confidential information

Generally, the applicant himself or herself may not be present at the inspection but may only be represented. For additional protection of confidential information, the UPC may order measures for the protection of confidential information by limiting or excluding the collection of or access to evidence – especially in respect of ex parte proceedings.

Restricted use of obtained information

The results of the inspection or preservation of evidence may only be used in the proceedings on the merits of the case – unless the UPC orders otherwise.

Security and compensation

If the order for inspection or preservation of evidence is subsequently revoked, for example because it was unfounded or the application has lapsed due to the applicant’s act or omission, the other party may request payment of damages. The corresponding compensation claim may – and, in the case of an ex parte order, must – be secured by an adequate bond.

Protective letter

Protective letters against evidence preservation proceedings are not permissible. It remains to be seen whether protective letters against evidence preservation proceedings will nevertheless be accepted and considered by the UPC.

The UPC provides for a variety of evidentiary means and different ways of obtaining them. This offers the parties to UPC proceedings a wide range of possibilities that either do not exist at all or do not exist to the same extent in the member states’ respective jurisdictions. Patent owners should therefore consider these new instruments as part of their patent enforcement strategy.