A Good Solution to Difficulties in Finding out Technical Facts of IP Cases

Nov. 1, 2017   Shanghai Law Journal   B05: Frontier Observation

Li Shulan and Fan Jingbo

For the past a few years, technical cases grew increasingly among intellectual property cases with even more complicated and diversified technologies. It no longer meets the need of judicial practice to find out technical facts only by using a certain approach, which is traditional. To find out technical facts of IP cases in a more scientific and accurate way and hear technical cases fairly and efficiently, we need to make legal proceedings open to some extent and construct a diversified mechanism for finding out technical facts.

For this purpose, based on many approaches to find out technical facts, such as technical investigation, technical consultation, expert jury and technical evaluation, we seek to construct a “Quaternity” System for finding out technical facts which plays an important role in cracking the difficulties in finding out technical facts and improving the quality and efficiency of technical case hearings. Four approaches of the System have respective assignments and functions which are complementary and interacted. More than two years of juridical practices of Shanghai Intellectual Property Court accumulated since its establishment proves that the effective operation of the “Quaternity” System for finding out technical facts could give play to the characteristics and advantages of the finding approaches, realize the coordinated interaction of the four finding approaches and substantially improve the efficiency and accuracy of technical fact finding.

Classify Technical Dispute Facts

Technical cases always involve numerous disciplines and have different degrees of difficulty in technical nature. It is important for accurately and efficiently finding out technical facts to choose an appropriate approach according to the characteristics of the finding approaches.

Technical facts to be found out in IP cases are generally classified as follows:

(1)   The category of technical facts which can be found out only with the help of some instruments and equipment or only by building an environment for analysis, test and evaluation: For this category, professional testing and technical evaluation are generally required.

(2)   The category of purely theoretically technical problems: These include the meaning of a term and the principle of a technical issue. For this category, an appropriate finding approach will be chosen according to the specific situation of the problem. Any problem that can be explained and accounted for by ordinary technicians in the discipline will be solved generally by resorting to a technical investigator. However, any problem that is difficult and complex in the discipline may be solved by resorting to an authoritative technical expert or an expert juror.

(3)   The category of technical comparison problems: Technical comparison problems have two groups. One group is the comparison involving the infringed product which is the subject of an infringement dispute, and the other group is the comparison between development results and contractual standards in the dispute of a technical development contract. For this category, if there are a few technical disputes and it is not very difficult to decide them, a technical investigator will be appointed to conduct the comparison generally. However, if there are lots of technical disputes and it is very difficult to decide them, a professional institution will be engaged to conduct the comparison and then a conclusion of juridical evaluation will be delivered.

Use Technical Investigator as “Technical Assistant”

Technical Investigator System is a new system, established after IP courts were founded in China, which is efficient, convenient and comprehensive in finding out technical facts and can be effectively combined with other finding approaches.

In juridical practices, technical investigators participate in finding out technical facts much more frequently than other approaches to find out technical facts; technical investigators participate not only in court hearing and consultation, but also in evidence preservation and field investigation, to provide all-rounded support to find out technical facts. It is unparalleled over other approaches in the depth and width of finding out technical facts. The characteristics of Technical Investigator System allow it to play a fundamental role in finding out technical facts to make a good linage between technical investigator approach and other finding approaches. This is also very important for accurately and efficiently finding out technical facts.

The linking role of technical investigators in finding out technical facts is reflected in the following aspects:

(1)   Technical investigators preliminarily participate in reviewing technical facts, helping the judge tease technical issues in dispute and choosing different approaches to find out technical facts based on actual situation.

(2)   Give play to the effect of professional communication between technical investigators on one side and technical experts and evaluators on the other side. After technical facts are submitted for expert consultation or evaluation, in case any problem occurs in the consultation or evaluation process, the technical expert or evaluator may directly communicate it with the technical investigators. In addition, the communications between the persons with technical background can make the finding process more efficiently.

Use the Mix of the Approaches to Find out Technical Facts

The four approaches, i.e. technical consultation, technical investigator, expert consultation and juridical evaluation, have their respective characteristics and scopes of application, and are not mutually exclusive.

In juridical practices, two or more approaches to find out technical facts can be adopted at the same time according to actual situations of the technical facts of the case concerned, to ensure that technical facts are found out accurately.

(1)   Both technical investigators and expert jurors participate in case hearing.

If a case has complex technical facts on which the parties concerned have very competing positions, both technical investigators and expert jurors can be invited to the case hearing at the same time. The participation of technical investigators is focused on pre-trial preparation, including holding pre-trial conference, finalizing technical issues in dispute, helping the judge tease the technical facts in dispute of the case concerned. The participation of expert jurors is focused on investigation of technical facts in the court hearing, including pre-trial reviewing, investigating and questioning about technical facts in the court hearing, and reviewing and judging technical facts in dispute.

(2)   Both juridical evaluation and technical consultation or expert jury are adopted at the same time.

In juridical practices, the parties concerned generally challenge the methods, steps and conclusions adopted for evaluation. Due to lack of professional knowledge, it is difficult for the judge to materially review the evaluation opinions. For the technical issues in dispute arising in the evaluation opinions, the judge may resort to relevant technical experts to form inner confidence. Alternatively, if expert jurors participate in the case hearing, the expert jurors may raise questions about any problem in the evaluation before the evaluators and give professional opinions on whether the evaluation opinions should be accepted.

Initiate the Principle of Juridical Evaluation Procedure

When IP cases are heard, juridical evaluation usually takes very long time, and thus has adverse effect on the quality and efficiency of case judgment. The evaluation procedure should be initiated under the following principles:

 (1) All other approaches to find out technical facts should be exhausted before initiating the evaluation procedure.

In the past juridical practices, part of judges tended to lay heavy dependence on the evaluation to find out technical facts, so that the evaluation procedure was initiated in some cases which could have been closed by any other approach. After the “Quaternity” System for finding out technical facts is put into operation, the juridical evaluation is engaged only after the exhaust of technical investigation, technical consultation and other approaches, to find out technical facts of the case concerned.

(2) Initiate upon the request of the parties concerned except that the court ex officio initiates the juridical evaluation.

Legally, there is no material different between technical facts and general facts, and their burden of proof is assumed by the parties concerned generally. For initiating the evaluation procedure, if none of the parties concerned applies for the evaluation, the court may not initiate the evaluation procedure but make decisions according to the burden of proof. Only for certain special problems that might diminish national interests, public interest or legal interests of any other person, the court may ex officio initiate the evaluation procedure without the request of the parties concerned.

(Writer’s Employer: Shanghai Intellectual Property Court)