Ron: Alright, I think we've got almost a full audience right now so we'll begin. Hello, my name is Ron Dimmock and I am an IP litigation partner in the Toronto office of the Gowling WLG global law firm. On behalf of my partners I welcome you to this webinar, the second in a series about the evidence needed to prove your case in a global IP dispute. This one, today, is about the essential evidence for use in patent cases. In our world, where innovation crosses many borders, patent disputes are becoming more global in nature. So, as a global patent player, it is prudent to know the law and the practice in several key jurisdictions. Today we will look at the practice and the law regarding the evidence in a patent case in the jurisdictions of the United States, the United Kingdom, France, China and Canada. But before we begin the panel discussion I would like to introduce our moderator to you. Her name is Selena Kim. She will then introduce the panel members to you and direct the discussion over the next hour and explain how to enter the chat rooms after that. Selena is a partner in the Gowling's Toronto IP office and is well known for her patent litigation and prosecution expertise. Last year she was named as one of the top 25 most influential lawyers in Canada. Not too shabby. She is certified by our law society as a specialist in patent law and was the first woman to have achieved that distinguished designation. Today, Selena will be moderating a panel of international experts in the field of patent litigation. So, Selena, I turn the rest of the webinar over to you. Thank you very much.
Selena: Thanks so much, Ron. Welcome everyone to this, the latest in our long running IP webinar series: The Life Cycle of a Smart Idea. We've covered a lot of ground in our series and today we're looking at key evidence in global patent disputes. Now to help us through this complex area of law and practice we have a panel of very experience practitioners from around the world. We will cover both common law and civil law countries and procedures. So you're going to receive a very useful overview of the considerations for your international strategy. You'll also see some PowerPoint slides we'll be referring to during our session and we'll be circulating these slides afterwards, along with a top tips sheet complied by our panelists. Now there are certain matters we're not going to cover in great detail, either because we covered them recently or will be covering them in shortly in dedicated programs, and these are expert evidence, privilege and financial remedies. For expert evidence, that webinar was very recently done and is available for viewing at our website and you'll find the link to it in the PowerPoint materials. Now let me get started with brief introductions of our panelists.
Our US patent specialist, Bill Needle, has practiced patent law for almost 50 years. He retired from private practice a few years ago but remains active in our profession as a JAMS neutral panel member, mediating and arbitrating patent cases and conducting and rendering recommendations on Markman hearings.
Our French patent litigation expert, Celine Bey, heads the IP practice of Gowling WLG in Paris. She has a deep rooted understanding of French litigation procedure and is a major player in the French market for patents, trademarks and for handling complex Pan-European disputes.
Turning to the UK, Jamie Rowlands is a partner in the international IP team. He's worked for many years in both UK and China and therefore brings to us significant experience in strategic enforcement and protection of IP rights on a global scale.
Our China expert, Elliot Papageorgiou, has practiced IP law since 1994 on four different continents and since 2005, in China. His practice centers on cross-border IP enforcement and IP litigation and he has led a number of ground breaking patent cases all the way to China's Supreme People's Court where his team holds a win record of 5 - 0.
Finally we have Laurent Massam for Canada. Laurent is a partner in our Toronto office and Canadian leader of the firm's IP litigation and strategy group. So he has extensive experience as a litigator and strategic advisor in respect of all forms of IP.
Before we go into questions to the panel, we have a couple of overviews to help situate you among the many jurisdictions we have represented. So our first slide is an overview of the evidence gathering procedure and final securing procedure in the various countries. So you'll see there's three common law countries in blue and two civil law countries in the red. Now there's a lot of detail here but let me just touch on the evidence gathering regimes in each country. Starting on the left side of the US, we have by far the most extensive discovery, deposition, disclosure regime of any jurisdictions. Then Canada, we could call it a lighter version of the US regime. UK, the disclosure's more limited but in patent cases it's pretty usual for the defendant to provide a detailed product and process description. Moving to the civil law countries, in France there's no discovery at all, per se, but there is as very interesting procedure called saise-contrafaçon. I hope I said that correctly, Celine, that Celine will explain in a few moments. Then in China, from the plaintiff's perspective they're responsible for gathering all the evidence. So that's pretty much do it yourself.
The next slide we're summarizing the core areas where you might need to gather evidence in order to prepare for the final hearing in a patent dispute. There are five categories of evidence. Now at the center of the slide we have the patent itself, so of course the claim elements, and then interpretation of the claim elements is usually a matter of expert evidence. Then second category is infringement evidence which is fact evidence, usually as interpreted by an expert. The third category is validity challenges which are very common in patent cases and they can be brought through patent office proceedings, where there's a certain level of burden of proof, or at the final trial at court. Then category four is the financials, so if the plaintiff is successful in warding off the validity challenges and proving infringement, then it's time to collect some nice money. So there's evidence of damages and profits and costs and usually commercial success of the invention. Then final category five is kind of subsidiary evidence surrounding circumstances around the patent itself. This is evidence often from representatives of the plaintiff corporation talking about commercial use of the invention, invention story to title, and this evidence is used mostly in Canadian and US proceedings. Not as frequently in the other jurisdictions.
The next slide is a summary of the evidentiary burdens, who has to prove what and to what standard. Now lawyers generally hate giving numbers or percentages. So we want to be more practical and helpful to you than other lawyers so we prepared this slide which is pretty much a fair summary of the situation regarding burden of proof in the various countries. Now in all countries issued patents are presumed valid. So we start with that proposition and that means it's the defendant's burden challenging the patent to prove invalidity of the patent. This yellow line is supposed to represent somewhere around 50% persuasiveness when you're trying to an invalidity. So in most countries you have to prove your case to a standard slightly above that. Ideally more. US and China, it's somewhere higher than 50%. We it depicted here as around 70%. Hard to say but we just know it's higher than 50%. In France and China, the way we've worded it, in those countries they don't really talk about burden of proof or balance of probabilities in the same way do in the common law jurisdictions, so that's why we bordered it this way. Apparently infringement or validity is either established or it's not. It's not really a matter of meeting some standard set by the court. Now just on the left side we have the infringement case, and you see here all countries, you have to persuade the court that you've hit above 50%, in general, in order to make out your case. Now in France and China there's an interesting exception to this, to it being a plaintiff spurred in regarding evidence of infringement. In those countries if you have established that you have a new product protected by a patented process then the burden can shift to the defendant to prove non-infringement. So that's an overview of what we need to prove to what standard.
Now that we finished that overview let's look at the strategies for procuring evidence. So we'll go to the panel. The first question for discussion is the number one most important evidence as a patent owner, it's evidence of infringement, also the most important evidence for a defendant to counteract. The options for procuring infringement evidence, they're different in all the countries. So I'm going to ask each of our panelists to comment. But we'll consider this scenario of a new recyclable plastic. So you see these black takeout containers which are not recyclable, as far as I know in any country, so you kind of feel guilty about ordering takeout but of course the alternative is doing your own cooking, yet again, so usually the guilt gets overridden. But we end up with all this black plastic to the landfills. There has actually been a patent filed for it. It was in July this year by Unilever for method of recycling this black plastic into useful articles. Hopefully we have that solution soon. In our scenario this patent is filed globally, granted in all major countries, and it has claims for both the product and the process of making this plastic, and the same defendant is making and selling plastic in each of our five countries, and plaintiff has gotten the material, looked at it and they can tell there's probably infringement of both the product and process claims. But they'll need more details to make up their case. So, we're going to start with France and have Celine talk about the overview of how you get infringement evidence from the defendant in the French jurisdiction. If we could go to the next slide we have a very detailed overview of this saise-contrafaçon procedure and, Celine, if you could highlight a few points on this procedure.
Celine: Yes, of course. Thank you, Selena. Hello, everyone. Selena, as you said, in France there is no discovery so we have a slight different approach to the question of evidence than in the other jurisdictions here. The burden of proof is on the claimants and so in France you do not start a patent litigation without having already secured evidence of infringement and, to a certain extent if possible, evidence of damages. So we do have to during the course of the proceedings, similar to discovery but they are not as efficient as discovery and they are not efficient as the saise-contrafaçon, so in English we call it seizure of goods. It is a really powerful tool like we have in France and it used before starting the action. It's an authorization which is given by the President of the Paris Court. The Paris Court has exclusive jurisdiction over all patent cases in France. So you go to the President of the Paris Court and you ask, as a patentee or exclusive licencee, the authorization to go investigate at the defendant's premises. So you can go to the manufacture. You can go also to retailers. You can go anywhere where you'd be able to find evidence of infringement and your damages. This is a next party procedure so this is made by surprise. It's like a ... and you can have several saise conducted at the same time. So it is conducted by a bailiff, usually with an IT person that will be able to investigate in the computers, in the IT system of the company, and usually the bailiff is also accompanied with the patent attorney of the patentee. Two main goals for the saise. First one is to get, as I said, proof of infringement. Second one, proof of damages, so proof of the profits made by the infringer. So the bailiff, you draft the patent, so you draft the order which is of course reviewed by the President of the Court, and the bailiff usually is authorized to go and get a copy of any document in relation to infringement and also to seize product, the infringing product. In our scenario, Selena, the bailiff would be authorized also to investigate and take copy of any documents in relation with the process, with how the product is being manufactured, and of course any evidence, any commercial document with regard to the sales, the price, the margin, etcetera. The authorization and the saise itself subject to withdrawal or to cancellation in event proceedings if the conditions have not been respected ..., so you have to deal very carefully with how you draft the order and with how the saise is conducted. But if it is successful it is a really, really interesting tool. Really powerful because the bailiff can have access to a lot of documents even to evidence that may concern other countries, other jurisdictions, especially if the bailiff can access the computers and the IT system of the company. The French Courts, Selena, have already issued decision on the fact that there is nothing preventing a party from re-using evidence that has been found in a French city, in other jurisdiction, in other litigation, in other actions. So this is really interesting to know. If your saise is successful it's really a good start for your case in France. So a good start to request a preliminary injunction if your patent is strong and it's also a good start to start a case in other jurisdictions. There's a lot to say about this saise but if you have question please join in the breakout session afterwards.
Selena: Thank you, Celine. That sounds like such a powerful tool. I'm super jealous. We don't have anything like that in Canada. Jamie, what is the procedure in the UK?
Jamie: Okay, well, thanks, Selena and thanks, Celine. Hello, everyone. Nice to part of the panel discussion. To be honest, Selena, a bit like Canada the UK position is very different to France. We certainly don't have a direct equivalent to the saise-contrafaçon, and apologies in advance or not in advance, but that was awful pronunciation. That said, we do have in the UK possibilities to get what I would call pre-action disclosure remedies. So there are two potential remedies available. You can get pre-action documentary disclosure and also you can get pre-action inspection of machinery, and indeed, you can get the ability to go into a third party facility and look at a process, so similar to the example Celine gave earlier. In both cases those pre-action disclosure applications require really high evidential burden in the UK. So in practice they are not common. The much more common way that we proceed in the UK is for disclosure to come naturally during the proceedings and UK disclosure plays a really important role in the normal course of patent infringement proceedings. Now specifically for patents, actually disclosure obligations tend to be pretty limited and there'll be new rules around this implemented fairly recently. But when it comes to the question of infringement, the alleged infringer is obliged to disclose documents in relation to the infringing product or process in dispute. Usually, in UK proceedings, that is done by what's known as a product or process description. The product and process description can be incredibly valuable to the patentee because it must describe sufficiently, clearly and in precise terms, generally done via normal written language but also helpful drawings, it must describe the product and process efficiently well so that the patentee is able to make an assessment of infringement based on the claims in question. As a defendant in the UK you've really got to get the product and process description right. There's no shirking around that. I've been involved in lots of cases where it's taken too much time or applications have been made to court to get the defendant to finesse the product and process description. That can result in adverse cost orders. It's really important that they are got right and they're taken very seriously. The plus side of a system like this, the UK system, is that the patentee is very likely to get through the normal course of proceedings, an answer, an ability to assess their claim in terms of infringement and that's really helpful. The downside, of course, is that the disclosure step in any proceeding can come some months after you issue the claim, and therefore it can be that once you see the product and process description produced by the defendant, that may be a nasty surprise from a claimant's perspective because you find some unexpected things there which may impact your infringement case. That's really it from the UK. Just to finally add, and I've touched on it already, one part of proceedings in the UK is disclosure can often become a bit of a spat. It's not unusual that there may have to be applications made to court for either side to obtain further disclosure. That's a pretty standard thing that happens in UK proceedings and certainly a tool that the court will look at it and make the relevant orders, if necessary. Thank you.
Selena: Okay. Thanks, Jamie. Not bad tools in the UK. Celine's are still way better of course.
Jamie: Hahaha. Obviously.
Selena: Elliot, how does it work in France? I mean in China. Sorry.
Elliot: In France I think it works pretty well. In China it does as well. As far as China is concerned it is, as you had mentioned a little bit earlier, it is a bit do it yourself because ultimately it's incumbent on the plaintiff to prove the infringement, but not just prove it, but also of course meet the formality requirements and it requires notarization as and when that evidence was gathered. Now putting that aside for a moment, there do exist preliminary remedies which include injunctions, property preservation, sequestration orders and also evidence preservation orders and this last one is really the main tool that you use when you're going into a court and you don't have a complete case put before you. Usually in process patent cases, very, very common because it's very difficult sometimes to gain access to factories, etcetera, but what you try to do is to show the court you've made every reasonable effort. We've got a case at the moment where the machinery involved, of an European manufacture specialty machinery, takes up the whole factory and for good reasons that whole factory is hermetically sealed. So getting in there and proving that the process within the machine is being infringed is very tough. So we've taken all sorts of measures, piece it together, from a trade fair from other elements that, for example, advertising on the website that certain parts have been ordered that have been supplied. You piece it together and then you apply to the court for this evidence preservation order. Now, the one exception that you have of course, is if you've got a new product resulting from a protective process. If it's a new product then that burden is reversed. In that situation, once you've proven that the product is mutual satisfaction of the judiciary, of the court, then the burden shifts further to the defendant to show that their process doesn't infringe the protective process. So that's the one exception but otherwise it is the case in China that you have to piece it together, product claims of course, relatively easy to do. Process claims is something a little bit tougher but generally speaking it is possible. You just have to work a little bit harder so that the court is convinced that you're not just fishing.
Selena: Okay. Thank you, Elliot. Laurent, turning to Canada. What's the procedure for getting into a defendant's manufacturing facility?
Laurent: Thanks very much, Selena, and it's a pleasure to be part of this panel. Welcome to everybody. Despite the fact that there are robust documentary and oral discovery obligations under the Canadian Federal Court Rules you touched on at the beginning, there are of course occasions where party's disclosure may be lacking, and steps will need to be taken in order to get access to necessary evidence for the purposes of trial. This can arise, of course, if a party let's say is reluctant to give full disclosure but also in instances such as what Elliot described where necessary evidence can really only be obtained by observing or testing the inner workings of a process running inside, let's say the defendant's facility. I'll just say as a side note, my personal experience and I think others, maybe Bill might have a story or two about this as well, unfortunately more often than not those facilities tend to be located in far flung somewhat less than touristy locations. Maybe the oil patch in Northern Alberta in the winter or vast industrial parks of farms in Middle America. But desirability of a location aside, a party can bring a motion to the court under our rules, and I quote the rules, "To take a sample of the property, or that inspection be made of the property, or that an experiment be tried on or with the property." A few brief comments on this form of relief that are worth keeping in mind. The first is that the court generally considers this form of relief to be intrusive and really an extraordinary remedy. As such, the relief is not readily granted, in particular at the early stages of the litigation such as pleadings. It has to be shown really by the moving party that the inspection is necessary and expedient for the purpose of obtaining information or evidence. So what does that really mean? That means that the moving party really needs to do its best to show that it wouldn't be possible to get the necessary information in any other practicable way. Of course, it's also helpful if the moving party can show that the information revealed would be very helpful to the court in adjudicating the matter. Another point to bear in mind which is related to this is that of experimental testing. If experimental testing is going to be conducted there are requirements that must be followed in order for the evidence obtained through those tests to be admissible at trial. In fact, in 2016, the Federal Court of Canada issued a notice to the profession about experimental testing that provided that where a party intends to establish any fact by testing, 2 months before the scheduled service of the expert report that would relate to that testing, you have to provide notice to the other parties of the facts to be prudent through the testing, the nature of the experiments to be performed, and this is one of the important ones, when and where the adverse party's counsel and representatives can attend to watch the experiments, and when and what format the data and test results from such experiments will be shared with the adverse parties. So in short, you can get into a defendant's facilities. You can run experiments but if you're going to do experimentations for the purposes of trial, you have to give notice to the other side and really allow the other side's participation, or at least observation. You can't just spring experimental testing on the other side of trial. Of course, those requirements only apply to experimental testing that is to be advanced at trial. If you want to do private testing, for your own purposes or for your own preparation of your own case that is going to be put forward at trial, then you free to do that under the cloak of see per see and privilege. So back to you, Selena.
Selena: Thanks, Laurent. Bill, how does it work in the US?
Bill: Thank you, Selena, and good morning, good afternoon, good evening to the participants, depending on where you are. Just as an aside, as Laurent mentioned the sort of unavailability of the areas you go into inspection, I do remember one where the cab driver, and this is a New York City cab driver, dropped us off a few blocks from our destination because he was afraid to go into that area. So that was challenging. But in the United States it's really the opposite of sort of the French situation where you can do it by surprise. Inspection comes about after the case is filed and if the parties agree then usually a protective order is entered into about the procedure, etcetera, and how they handle confidential information. ... arise where the parties can agree, usually when you have a computer software issue, and both parties are going to need to disclose their source code to the other. The protective order will usually cover that and it goes on for pages about the procedure for that. But if you have some pushback and you can't get that from the other side, the agreement to inspect their facilities, then you can file a motion to inspect and in that motion you would set out why you want to do this, the relevance of that inspection for proving your case. As well as the procedure you would use to make sure that there is no disruption to the operation of the facility that you're visiting. You put as much detail as you can in order to sort of survive a motion by the other side to have that denied, that inspection motion of yours, denied. Normally the courts will grant the motion if you show enough information ahead of time as to the why and the how. But I will leave you with just a brief note about the most more interesting than the New York situation was my inspection of a chicken poultry processing plant in the middle of summer in Georgia. I don't think I need to go into detail of this. Say enough said but it did take me quite a while to get back to fried chicken. But anyway, back to you, Selena. Thank you.
Selena: Thanks so much, Bill. So there's an interesting variety of practices and tools available in all the various countries. They all have to be very carefully executed, but please do join us in the breakout rooms if you want to hear some more details of these procedures, or you want to hear more about Bill's chicken plant story. Now let's start looking at litigation strategy. First we'll consider it from the defendant's perspective. So let's say you are in house counsel and you're facing the expensive sounding prospect of patent litigation in at least five countries, what do you do first? For this question I'll return to Bill to start.
Bill: Thank you, Selena, again. I would advise anyone that was facing litigation in the United States that owned a patent to look at this procedure within the Patent Office called the inter-partes review, IPR. It's also most advantageous for a proposed defendant. Someone who is going to be challenging the validity and infringement of the patent. But it's basically the situation where the challenger to the patent can file a petition 9 months after the issuance of the patent, or if the challenger is involved as a defendant in an ongoing litigation, a patent infringement case already, then the petition must be filed within a year of the service of the complaint. What you do is you set out then, in this petition, the grounds where you feel that one or more of the claims of the serving patent are invalid. The Patent Office then will review your petition and then they, on average, grant more than 50% of them, and you then are entered into a situation where it's sort of a many litigation where there is limited discovery and the elements that are looked at for this invalidity are only prior art and publication. So if you, as a defendant, feel you have a strong case about public use, that the invention was used in the public more than one year from filing of the patent application which could invalidate the patent, that type of evidence is not available in this IPR. The procedure will last no more than a year. Sometimes the Patent Office will extend it for another 6 months. So at max, 18 months, and the benefit to the defendant in taking this IPR procedure is that the majority of the cases they do find one or more of the claims to be invalid and sometimes all of the claims and throws out the patent. During this period the court may, where the litigation is pending, may and usually does stay the litigation, waiting the outcome of this hoping that, of course, one or more of the claims are found invalid so their issues pending in the court are less. But it's fast, it's more likely to find invalidity than in litigation because the burdens or proof are preponderance of the evidence in this IPR versus clear and convincing evidence in the litigation. It's fast, it's cheap, can be several times cheaper than litigation and then, as I say, you have this situation where issues are removed as far as the number of claims that are in suit in the litigation and may end up helping to settle the case in the court. Thank you.
Selena: Thank you, Bill. Sounds like a crucial consideration for both sides to look at before embarking on patent litigation. Elliot, how about in China? Is it common for defendants to start validity challenges in the Patent Office before litigation?
Elliot: It is if you give them the warning. So for a start the rate of success of attacking a patent in China is much lower than in the United States. It's estimated to be somewhere around 40% of all patents that were attacked, or partially or entirely invalidated. So there's a lower chance in China. The cost of course of also attacking a patent is fairly low. You're looking at about, in US terms, $10, $15,000.00 at first instance before the patent re-examination board. Now that brings us to the second point which is that unlike a number of continental countries, European continental countries, China has a bifurcated system that means usually the validity of the patent is determined before experts of the Patent Office at the patent re-examination board and then on appeal to the IP court, etcetera, etcetera. Whereas infringement is determined, of course, as usual in an IP court but sitting as infringement court and the two usually do not meet these two instances. Now, more recently we have seen a change of direction of the Chinese patent validity and infringement system which is we've had a number of breakthrough cases. Most recent one in Foshan in July where you've got both hearings combined at the insistence of the IP office, the original IP office, that meets in the morning you would hear. Here's the other thing, Chinese patent infringement proceedings are relatively short compared to anything you would see I guess in North America, even in continental Europe. 1 to maximum 3 to 4 days of hearing before the court adjourns to make a decision. So from that perspective you're looking at a morning hearing on the validity, afternoon hearing on the evidence, the next day you can have a hearing on the infringement, or indeed, have a hearing on the validity and of course, if the patent is declared invalid or is impugned in some way, then perhaps the infringement proceeding in the afternoon doesn't take place. Anyway, if there's interest on this I'm very happy to discuss it further in the breakout session. But there is a lot of development in this area and, of course, it's de rigueur for infringers to try and file invalidity action against the patent which is why very often we just do not bother at all to give them any notice. So you don't file a notice letter. You don't file a letter before action. Do not give them notice so that they can't file an invalidity against the patent before you file your infringement action.
Selena: Okay. Thank you very much, Elliot. Now, we'll just go to Celine to close off this question. Celine, how is invalidity handled in France?
Celine: Yes, so briefly, in France the validity is handled by the Paris Court. So not by the office. So the defendants can take the initiative to bring cancellation action, validity action, but it's not of great interest because automatically the patent owner will commence claim for infringement. So this is not really used because it would be done in the same proceedings because we have no bifurcation system. We have only one court which issues one decision on validity and infringement. Just quickly, we more use the invalidity claims as a strategy, international litigation or European litigation. For example, in a recent case we had a client sued in Germany and France for infringement of a European patent, so French courts and German courts of the European patent, so we decided with our UK colleague to counterattack in the UK on the UK part of the European patent because we were before the High Court and we know it's ... of legal costs and the UK was still market of interest of the patentee, so this helped us settle the case. This is more used in terms of strategy then there is a real interest to seek invalidity of a French patent or European patent.
Selena: Okay. Thank you, Celine. So now I'd like to turn to Jamie to discuss international strategy from the point of view of the plaintiff. Now most clients do not want to do full hearings in five countries on the same patent so what factors are important to consider in deciding where you want the final hearing held first in order to encourage settlement in the remaining countries? And please don't say it depends. Sorry. That's just a lawyer joke.
Jamie: I was never going to say it depends. Although in this case, actually does slightly depend. But I want to really do is try and explain why I say that. I think the first thing said, the biggest point here is the question of jurisdiction is really important. Frankly, the earlier one gets together with a legal team, the client to talk about jurisdiction in any cross-border dispute, the better because there are nuances around the world. There are different things, different pinch points that are going to direct the line of travel and the focus of jurisdiction that one might want to take. As I say, the earlier one can decide on that, the better. It's a big topic actually, and just a little plug for the chat rooms here, anyone that wants to talk about this in more detail I know that everyone on the panel will understand how important this is and will be able to give their views on this issue. So please do come and have a chat with us. But I think looking at this forensically, there's a number of things you're going to have to consider. Basically what's the fact pattern to the case is going to be a big thing. The sector of the litigation is going to be really important. The desired remedy; ie: is the injunction the important goal or actually is damages going to be the thing that drives the potential settlement, drives the end of a dispute. But also things like cost exposure and different timings in different jurisdiction. Different pinch points of those different proceedings in different jurisdictions. Those are all the sort of things that we would look at with guidance to map out the strategy. I just want to give you just a few examples of where those sort of issues may come into play. Starting with manufacturing hubs, for example. It may very well be that in a cross-border dispute, as patentee, the concern is that there is mass manufacturing in a particular jurisdiction. Often that jurisdiction tends to be China. Not always but it's certainly true with my experience when I was out there and I know the same with Elliot. So manufacturing is really important. That in itself may dictate that if that manufacturing hub is in China that China should be the focus of the litigation strategy. Now, there's a lot of good reasons to be litigating in China in those circumstances. Actually litigating in China is relatively quick and cheap and, if you can obtain an enforceable injunction against a large scale manufacturer in China, there are two immediate benefits from that. Firstly, if you can stop goods or turn off the tap of the infringing goods in China before the flood onto the market in the rest of the world, that's a huge success in your litigation strategy. Secondly, from a settlement perspective, if a defendant risks an injunction at their main manufacturing hub in China, for example, proceedings that are relatively quick, that may be sufficient for them, irrespective of what's going on in other jurisdictions, to come to the negotiation table. So certainly something to think about there. The second area I was going to mention earlier and we'll look at now is sector specific litigation. Bit of a plug for the UK here but certainly in the telecom space, where I do a lot of litigation, the UK is a very hot jurisdiction at the moment because when it comes to standard central patents, and the determination of FRAND, the UK Supreme Court has gone very patentee friendly with the ... panic decision and the UK court is able to determine global FRAND terms and that's a very attractive proposition for patentees in the telecom space. Actually, incidentally, earlier this week in fact, in the Optis and Apple fight the UK first instance decision has just been handed down, which again is quite patentee friendly, all over the question of willingness. A big decision in the FRAND world. So if you are a patentee in the telecom space, the UK is going to be an obvious jurisdiction of interest to focus one's energies. Finally, looking at remedies. The US, obviously when it comes to damages, size of damages, awards, particularly around punitive damages, and it can be a benefit even because the cost of litigation in the US can be quite high, but if you are litigating as a patentee against defendant that may not have particularly deep pockets, driving the litigation in a jurisdiction such as the US may be a very good strategy to sort of focus the mind on a monetary level to enable settlements on all global scale elsewhere. So there's are certainly issues to look at. Those are broad big issues to look at. I think, obviously, in addition we have to look at what I would call more granular issues and we would always do a comparison of how evidence is going to be gathered, the ability to use expert witnesses, for example. That would go as far as to include issues such as do we need to use translators in certain jurisdiction, and the pros and cons of that, because in my experience use of translators in proceedings, you need to think very carefully about that. Prepare for it very carefully. They certainly can be hugely beneficial if they work well and they're good translators. Sometimes they can be less useful and things go wrong. I know Elliot out in China has had some good stories and experiences with translators. I don't know if we've got a couple of minutes, maybe Elliot you could take up the mic and just tell a tale or two?
Elliot: Yes, indeed. Thank you for the pass over, Jamie. Indeed it is one of the questions a lot of people ask in China. We had a case quite recently in the Guangdong region in the Guangzhou IP Court and there the key thing was to try and get direct evidence of foreign witnesses, qualified foreign witnesses, including and I can mention this particular identity, the former controller of San Francisco Airport. Then the first thing that you have to do is realize that these witnesses will be giving, of course, their evidence via interpreters. That means that your strategy then is how critical and how good is your interpreter, and how expensive is your interpreter, and save the best interpreter for your most important witness, especially if you're competing within such as Canton Fair, which was taking place around the same time as our hearing. Then of course you also pick up that the credibility of your interpreter becomes primary to the court because after a while the court starts to direct its questions to the interpreter rather than the witness who is being interpreted. When it came to one session, one German engineer, where in fact the witness realized the court had difficulty understanding some technical points from the interpreter, that the witness wanted to almost speak over the interpreter, which was somewhat comical but also of course a somewhat concerning situation. So the lesson there is when you go to a jurisdiction where your primary objective is to admit direct evidence of foreigners, bear in mind that firstly, slower, secondly that you need to have really excellent interpreters, and the third, that you need to be prepared to sort of ask for a timeout so that you can realign the interpreter with your witness. In the Chinese courts at least there is that flexibility. It's not as procedurally run. For example there are no rules of contempt of court. There's no rules of perjury, etcetera. On the other hand it does mean that the judges have a lot of flexibility.
Selena: Thank you very much, Jamie and Elliot. So next we'll go to our final question for the panel. Then we'll do a recap and go to our breakout rooms. Final question. Let's look at it from the plaintiff's perspective. You're plaintiff's in house counsel and you do want to proceed with litigation as efficiently as possible. Now regarding evidence you've procured let's now look at how you can use evidence obtained in one country in the litigation in other countries. So in our scenario we thought we'd start with the US as they have the most extensive discovery procedures of any jurisdiction. We'll also look at how that evidence can be used in a Canadian proceeding. This is a very common scenario as parallel litigation is quite frequent between Canada and the US. So let's go back to the slides and we'll look at the next slide showing an overview of the discovery procedures in Canada and the US and then discuss how that evidence can be shared. Bill, if you'd like to start.
Bill: Okay. Thank you, Selena. The situation in the United States as far as discovery is concerned is quite the opposite of what Jamie mentioned about China being quick and cheap. In the United States it's turgid. The time to trial is 30 months, on average, and it's very expensive with the cheapest case usually running around a million dollars in attorney's fees. It's because we have discovery, discovery, discovery. It's the Wild West. Everything is open to discovery. There's fact discovery. There's expert discovery and there's damages discovery. Usually there's no limit to the amount of interrogatories you can file, depositions you can take, etcetera. As you see on the chart there's only one per party for corporate representative in Canada, in the United States, if you can indicate the topic and it's different for each witness, you will be allowed to take as many corporate representatives as fits those topics as you generally like. The inventors are typically deposed in both jurisdictions for a variety of reasons. All discovery in the United States is public unless it's sealed by the court and/or the parties have a protective order, which is usual, where they designate certain documents to be confidential and not to be disclosed to third parties. Sometimes a protective order also just has a blanket provision that says all documents produced will only be used in this US case. So that might be a roadblock in trying to get some of that over to another jurisdiction like Canada. But generally all discovery, unless confidential, is public and therefore the sharing of it, or the transfer to Canada and other jurisdictions, is the usual. With that I turn it to Laurent to tell us about Canada.
Laurent: Thanks very much, Bill. Thanks, Selena, and as sort of alluded to in your question, it's not uncommon for certain large litigation matters to run in parallel in a couple of jurisdictions and, of course, there are efficiencies that can be obtained by putting it in the right order. Given how broad the scope of discovery is in the US, as described by Bill, the real advantage of having access to the US documents and depositions if it goes first, is that more or less you get a preview of what the other side's case may be in Canada, and frankly, likely elsewhere. Of course the flip side of that coin is that the other side will get a preview of the case you will most be likely lead in Canada or elsewhere. I should note that even though you might get a preview of the other side's documents and depositions, of course the parties to Canadian litigation have to go through the documentary disclosure and all discovery phases of the Canadian litigation and still comply with all the Canadian rules in that regard, and as shown on the slide and mentioned by Bill, it's quite right that in Canada you can only conduct an examination for discovery of one corporate representative of each other's opposite party, or an individual defendant or plaintiff if they're opposite in interest, as the case may be. But even though it's just one representative, that person is required to answer all relevant questions on behalf of the party they speak for, and if they don't know the answer, generally they will have to go and get it and provide it to the other side by way of an undertaking. Also, of course, you an examine the inventor, the inventor or inventor's of the patent or patents that issue. Just close on one note which is that in distinction with the US, under our rules and our under common law, all information obtained by party only through the discovery process is deemed to be subject to what we call the implied undertaking rule, which prevents the receiving party from using that information for any purpose other than the litigation, until that information is either made public in court or otherwise, legitimately made publicly available. So, in short really, having the US go first or at least if there is parallel litigation in various jurisdictions can be a good looking glass to see what's coming but, of course, it doesn't replace the litigation procedure and process that has to be followed in Canada. I'll just stop there in the interest of time but happy to expand on it more in the breakout room. Thanks, Selena.
Selena: Okay. Thanks so much, Laurent. As Celine had already mentioned, you can use evidence from the French proceeding, discovery from the saise and other countries, and likewise you can use as evidence from other countries in France. We'll just close on this question with comments from Elliot. Elliot, do you have anything to add regarding use of a foreign discovered evidence in China?
Elliot: As I said, the judges have a lot of flexibility over evidence they'll admit to listen to. Now, of course, at the end of the hearing the judge will then make, perhaps even in the judgment, will make a determination. One of the key things is that the Chinese courts can be very formal because, of course, if there is no perjury, if there is no contempt of court, then the quality of the evidence, that whole idea about the appropriately of the evidence is always put in question. So while the courts will listen to the evidence, whatever it may be, then after the judge may determine what evidence they will admit or not, including evidence from other courts overseas. Now, vice versa, there is also a challenge which is because Chinese courts are very reluctant to impose any sort of orders which they have to then follow up on, or which they have to police later on, it's very unlikely you'll get a gag order. You'll get a hearing and camera, etcetera, which makes it very tough sometimes, especially when it comes to interpretation of claims and it comes to also evidence in relation to patents which may go into the realm of trade secrets because it'll be an open court which means that the counterparty, or any member of the public, can sit in the court and of course any of the evidence that has been presented can then also be relayed, potentially also into other jurisdictions. So if we've got a case, and somebody comes in, it's really important to link up your jurisdictions that we're speaking with. We're speaking with Laurent, we're speaking with Celine, we're speaking with Jamie and the colleagues in the United States, and say, "Look. We will not admit any evidence even if this may not be optimal for our case, at least not in the form that we freely admit, if this is going to then be able to be used against you in other jurisdictions." So this is the linked up nature of the way our team works really tries to minimize that risk because China is a risky place if the other party gets to see your evidence and then can transfer it to other jurisdictions to use it against you.
Selena: Okay. Thank you, Elliot. Well this concludes the formal part of our presentation. Thanks so much to our panel and I'd also like to give special thanks to our US panelists, Bill Needle, who was game enough to join our international panel of Gowling lawyers to give us the benefit of his years of expertise in US patent litigation. So some key take home points for our audience. If you're considering multi-jurisdictional patent litigation get your international team in place and speaking to each other early so that you can gain the maximum strategic advantages of each jurisdiction. If the US is one of your jurisdictions consider early whether your patent will be vulnerable to inter-parties review. This webinar will shortly be posted as a recording on our website, if you'd like to watch it again or share with your colleagues, and if you want to learn more now our panelists are going into chat rooms. So if you signed up a for a breakout room you should see on your screen, in a moment, a little window where you will be asked to join your room. So all you do is click join and you'll automatically be brought to your room. For now, thank you so much for your attendance today and we look forward to seeing many of you as our webinar series, The Life Cycle of a Smart Idea, continues.