Limited Pre-trial Discovery in Europe: Use Strategic Patent Prosecution to Reduce the Impact

U.S. procedural rules have long provided for broad pre-trial discovery in litigation, including patent infringement litigation. In this environment, claims directed to certain methods (e.g., methods of making a chemical compound or methods performed inside a semiconductor chip) generally will allow a patent owner to obtain discovery from the accused infringer regarding how the infringer performs the methods at issue. But how useful are such claims in jurisdictions where such discovery is not available? And more importantly, what patent strategies should be implemented to enable infringement litigation in jurisdictions without discovery?

Broad Discovery in the U.S.

Pre-trial discovery in the United States is very broad. The general standard for obtaining discovery is set out in Rule 26 of the Federal Rules of Civil Procedure: “Parties may obtain discovery regarding any nonprivileged matter that is relevant to any party's claim or defense ' including the existence, description, nature, custody, condition, and location of any documents or other tangible things and the identity and location of persons who know of any discoverable matter.” Under Rule 26, each party also has an obligation to turn over contact information of individuals who have discoverable information, all relevant documents for claims or defenses, and a preliminary calculation of damages. These rules give the parties to an infringement suit the right to demand documents from each other, demand answers to written questions, and require them to provide witnesses to give sworn testimony. The rules further grant an attorney the power to issue a subpoena to compel documents and witnesses from a party not involved in the litigation. This discovery is conducted by the parties' attorneys, with the court being involved only to resolve the (frequent) disputes. Although there have been attempts to rein in the worst discovery excesses, the parties' ability to collect evidence remains very broad.

Limited Discovery in Europe

In Europe, discovery has always been much more limited. The European Patent Convention harmonizes many aspects of patent law in Europe, but does not address enforcement of patents. Infringement litigation is conducted in the national courts, subject to the procedural rules of each country. In most of Europe, those national rules do not provide for discovery of the type familiar to American attorneys. The United Kingdom has long stood out as an exception, requiring the accused infringer to provide either documents relating to infringement or a description of the accused product or process to the plaintiff.

Several European countries do provide for court-ordered seizure of evidence from an alleged infringer. Belgium and France provide the broadest procedure, known as a “saisie description” or “saisie contrefa'on,” in which a patentee files a petition to the court to authorize a bailiff to inspect and make a detailed description of products found, and take samples of products, copies of documents, and seize manufacturing equipment and tools from the accused infringer. The seizure is typically conducted before commencement of infringement litigation and without prior notice to the infringer, but posting of a bond may be required. The patentee may also appoint an expert to accompany the bailiff. Italy provides a similar procedure known as a “descrizione.” The United Kingdom permits seizures in exceptional circumstances (known as an Anton Piller or Search order), requiring the patentee to make a strong prima facie case of infringement, demonstrate a threat of serious harm to the patentee, and provide clear evidence that the alleged infringer has incriminating documents or things in its possession that may be destroyed. Germany has a procedure whereby a court-appointed expert may seize and inspect an infringing device, but if the device is to be dismantled or modified in any way a further court order is required upon a showing of likelihood of infringement substantiated by evidence.

The common feature of all these seizure procedures is that they require a court order obtained upon a showing of a likelihood of infringement. The new Directive on the Enforcement of Intellectual Property Rights (2004/48/EC) is the same. The Directive is intended to provide the minimum discovery procedures that must be available in all countries of the European Union. Article 6 of the Directive provides that upon presenting “reasonably available evidence sufficient to support its claims,” a patentee may specify evidence that lies in the control of the accused infringer and request a court order that the evidence be produced. Article 7 provides for seizures to preserve evidence similar to the Belgian and French saisie, but also first requires making a showing of infringement. Furthermore, Article 7 has already been interpreted narrowly by some courts, which ruled that the patentee is not entitled to copies of the seized material and raising the uncertainty about how seized evidence can be used in infringement proceedings.

Thus, with the exception of the United Kingdom, discovery in Europe continues to have some significant limitations. The seizure provisions available in Belgium, France, and other countries are intended to permit a patentee to gather evidence, rather than to look for evidence. The patentee must be able to identify, before the seizure, the information and documents needed to demonstrate infringement that are in the possession of the alleged infringer. With the exception of the Belgium and French saisie, the patentee must be able to come forward with enough evidence to show a likelihood of infringement in order to be entitled to conduct a seizure.

Patenting Strategy in View of Limited Discovery

What steps should be taken during prosecution to ensure a subsequently granted patent can be enforced in view of the limits on discovery available?

Choose Patent Coverage Strategically

The discovery procedures discussed above are only effective to gather evidence present in the relevant country. To make use of these discovery procedures a patentee must have a patent in force in the relevant country, with the exception of Belgium, which only requires a European patent in force somewhere in Europe to request a seizure in Belgium.

Selecting which European countries in which to validate European patents should take into account not merely the countries in which infringement may take place, but also those countries where evidence to support an infringement action may be found. This may include, for example, the location where critical components of a patented product are made, where critical steps of a process are performed, or where stocks of final, intermediate or byproducts can be found.

However, prior to validation stage, at the time of drafting the patent application, strategic considerations to minimize the hurdle of limited discovery proceedings in Europe should be implemented if possible.

Draft Claims to Minimize Problems

Because of the broad discovery procedures in the United States, it generally is not necessary to draft claims with discovery in mind, as information relevant to proving infringement will normally be discoverable in any infringement litigation. In Europe, however, it may be beneficial to draft claims that are enforceable in countries where relevant discovery can be obtained.

Typical problems arise in the chemical field for compositions where the process used to make the composition cannot be determined from the product sold. The composition itself may not be new, the invention residing instead in the method of making the composition. In the electronics field, problems occur where a process or logic embedded in a chip cannot be revealed without very expensive and lengthy reverse engineering. If discovery is not available to prove what process was used to make the composition or to uncover the inner working of the chip, how can a patentee prove infringement?

A focus on factors that may be gleaned from publicly available sources or obtained from a seizure may alleviate the problem. For example, claims focusing on ingredients used or intermediate products or byproducts produced for a method of making a composition may be useful. Information about ingredients used by the accused infringer may be available from a seizure of the infringer's purchasing records, from a supplier, or as a result of the ingredients appearing in some quantity in the final product. Knowledge of the ingredients used, even if incomplete, may be enough to make a prima facie case of infringement sufficient to enable seizure of more complete information or to shift the burden of proof to the accused infringer.

Further, for chemical composition claims, it may be beneficial to focus on end technical features produced in the product-by-process, rather than relying too much on technicalities in the process, as discovery of process techniques, as opposed to seizure and analysis of the end product, is more difficult in Europe.

For subject matter in the electronics field, depending on the invention involved, drafting claims directed to the properties of the input and output signals rather than solely to internal processing of the signals may enable an inference of infringement to be drawn where a chip is present in the infringer's device that processes the same inputs to produce the same outputs.

In sum, because of the much more limited discovery proceedings in Europe, it is important to be cognizant of what discovery is available for a potential subsequent patent infringement action when prosecuting patent applications in Europe.

David P. Owen ([email protected]) is a U.S. patent attorney and UK solicitor and Coraline J. Haitjema ([email protected]) is a U.S. patent attorney, both in Howrey LLP's Amsterdam office.

U.S. procedural rules have long provided for broad pre-trial discovery in litigation, including patent infringement litigation. In this environment, claims directed to certain methods (e.g., methods of making a chemical compound or methods performed inside a semiconductor chip) generally will allow a patent owner to obtain discovery from the accused infringer regarding how the infringer performs the methods at issue. But how useful are such claims in jurisdictions where such discovery is not available? And more importantly, what patent strategies should be implemented to enable infringement litigation in jurisdictions without discovery?

Broad Discovery in the U.S.

Pre-trial discovery in the United States is very broad. The general standard for obtaining discovery is set out in Rule 26 of the Federal Rules of Civil Procedure: “Parties may obtain discovery regarding any nonprivileged matter that is relevant to any party's claim or defense ' including the existence, description, nature, custody, condition, and location of any documents or other tangible things and the identity and location of persons who know of any discoverable matter.” Under Rule 26, each party also has an obligation to turn over contact information of individuals who have discoverable information, all relevant documents for claims or defenses, and a preliminary calculation of damages. These rules give the parties to an infringement suit the right to demand documents from each other, demand answers to written questions, and require them to provide witnesses to give sworn testimony. The rules further grant an attorney the power to issue a subpoena to compel documents and witnesses from a party not involved in the litigation. This discovery is conducted by the parties' attorneys, with the court being involved only to resolve the (frequent) disputes. Although there have been attempts to rein in the worst discovery excesses, the parties' ability to collect evidence remains very broad.

Limited Discovery in Europe

In Europe, discovery has always been much more limited. The European Patent Convention harmonizes many aspects of patent law in Europe, but does not address enforcement of patents. Infringement litigation is conducted in the national courts, subject to the procedural rules of each country. In most of Europe, those national rules do not provide for discovery of the type familiar to American attorneys. The United Kingdom has long stood out as an exception, requiring the accused infringer to provide either documents relating to infringement or a description of the accused product or process to the plaintiff.

Several European countries do provide for court-ordered seizure of evidence from an alleged infringer. Belgium and France provide the broadest procedure, known as a “saisie description” or “saisie contrefa'on,” in which a patentee files a petition to the court to authorize a bailiff to inspect and make a detailed description of products found, and take samples of products, copies of documents, and seize manufacturing equipment and tools from the accused infringer. The seizure is typically conducted before commencement of infringement litigation and without prior notice to the infringer, but posting of a bond may be required. The patentee may also appoint an expert to accompany the bailiff. Italy provides a similar procedure known as a “descrizione.” The United Kingdom permits seizures in exceptional circumstances (known as an Anton Piller or Search order), requiring the patentee to make a strong prima facie case of infringement, demonstrate a threat of serious harm to the patentee, and provide clear evidence that the alleged infringer has incriminating documents or things in its possession that may be destroyed. Germany has a procedure whereby a court-appointed expert may seize and inspect an infringing device, but if the device is to be dismantled or modified in any way a further court order is required upon a showing of likelihood of infringement substantiated by evidence.

The common feature of all these seizure procedures is that they require a court order obtained upon a showing of a likelihood of infringement. The new Directive on the Enforcement of Intellectual Property Rights (2004/48/EC) is the same. The Directive is intended to provide the minimum discovery procedures that must be available in all countries of the European Union. Article 6 of the Directive provides that upon presenting “reasonably available evidence sufficient to support its claims,” a patentee may specify evidence that lies in the control of the accused infringer and request a court order that the evidence be produced. Article 7 provides for seizures to preserve evidence similar to the Belgian and French saisie, but also first requires making a showing of infringement. Furthermore, Article 7 has already been interpreted narrowly by some courts, which ruled that the patentee is not entitled to copies of the seized material and raising the uncertainty about how seized evidence can be used in infringement proceedings.

Thus, with the exception of the United Kingdom, discovery in Europe continues to have some significant limitations. The seizure provisions available in Belgium, France, and other countries are intended to permit a patentee to gather evidence, rather than to look for evidence. The patentee must be able to identify, before the seizure, the information and documents needed to demonstrate infringement that are in the possession of the alleged infringer. With the exception of the Belgium and French saisie, the patentee must be able to come forward with enough evidence to show a likelihood of infringement in order to be entitled to conduct a seizure.

Patenting Strategy in View of Limited Discovery

What steps should be taken during prosecution to ensure a subsequently granted patent can be enforced in view of the limits on discovery available?

Choose Patent Coverage Strategically

The discovery procedures discussed above are only effective to gather evidence present in the relevant country. To make use of these discovery procedures a patentee must have a patent in force in the relevant country, with the exception of Belgium, which only requires a European patent in force somewhere in Europe to request a seizure in Belgium.

Selecting which European countries in which to validate European patents should take into account not merely the countries in which infringement may take place, but also those countries where evidence to support an infringement action may be found. This may include, for example, the location where critical components of a patented product are made, where critical steps of a process are performed, or where stocks of final, intermediate or byproducts can be found.

However, prior to validation stage, at the time of drafting the patent application, strategic considerations to minimize the hurdle of limited discovery proceedings in Europe should be implemented if possible.

Draft Claims to Minimize Problems

Because of the broad discovery procedures in the United States, it generally is not necessary to draft claims with discovery in mind, as information relevant to proving infringement will normally be discoverable in any infringement litigation. In Europe, however, it may be beneficial to draft claims that are enforceable in countries where relevant discovery can be obtained.

Typical problems arise in the chemical field for compositions where the process used to make the composition cannot be determined from the product sold. The composition itself may not be new, the invention residing instead in the method of making the composition. In the electronics field, problems occur where a process or logic embedded in a chip cannot be revealed without very expensive and lengthy reverse engineering. If discovery is not available to prove what process was used to make the composition or to uncover the inner working of the chip, how can a patentee prove infringement?

A focus on factors that may be gleaned from publicly available sources or obtained from a seizure may alleviate the problem. For example, claims focusing on ingredients used or intermediate products or byproducts produced for a method of making a composition may be useful. Information about ingredients used by the accused infringer may be available from a seizure of the infringer's purchasing records, from a supplier, or as a result of the ingredients appearing in some quantity in the final product. Knowledge of the ingredients used, even if incomplete, may be enough to make a prima facie case of infringement sufficient to enable seizure of more complete information or to shift the burden of proof to the accused infringer.

Further, for chemical composition claims, it may be beneficial to focus on end technical features produced in the product-by-process, rather than relying too much on technicalities in the process, as discovery of process techniques, as opposed to seizure and analysis of the end product, is more difficult in Europe.

For subject matter in the electronics field, depending on the invention involved, drafting claims directed to the properties of the input and output signals rather than solely to internal processing of the signals may enable an inference of infringement to be drawn where a chip is present in the infringer's device that processes the same inputs to produce the same outputs.

In sum, because of the much more limited discovery proceedings in Europe, it is important to be cognizant of what discovery is available for a potential subsequent patent infringement action when prosecuting patent applications in Europe.

David P. Owen ([email protected]) is a U.S. patent attorney and UK solicitor and Coraline J. Haitjema ([email protected]) is a U.S. patent attorney, both in Howrey LLP's Amsterdam office.