This article has been written by Mugeera Patel, pursuing a Certificate Course in Intellectual Property Law and Prosecution from LawSikho.
Table of Contents
Introduction
In the US, the Intellectual Property law derives its base and existence from the US Constitution and its federal characteristic. This is precisely why the Federal Rules of Evidence (known as “FER”) find their application to the entirety of the proceedings that fall under the Federal District Courts. This particular statue of FER is known to be a combination of 11 articles which are considered as general provisions in most of the jurisdictions. It comprises presumptions, handling the witness, etc.
This article however restricts its focus on various facets of evidence involved in the IP proceedings in relation to FER (Federal Evidence Rules) and FRCP (Federal Rules of Civil Procedure) and the processes pertaining to them.
The evidence phase before the trial is known as the ‘discovery phase’ in terms of the United States IP litigation regime. This particular stage comprises swapping information between the parties pertaining to the particular dispute and also procurement of material evidence from any tertiary and additional third parties that may be directly or indirectly included as part of the dispute. This type of evidence is later used at trial if the dispute progresses to the stage of trial.
After the initial registration of a complaint pertaining to a dispute is filed, the parties are mandated to formulate an anticipated discovery plan for relevant submissions before to the court. (1) After the creation of this discovery plan, the parties to the dispute are required to make what are known as initial disclosures within a period of fortnight.
These are voluntary disclosures that are taken for the purpose of identification of the name tags and communication data of witnesses that may likely be a part of the trial. The disclosures also include reproductions of documents that are to be used by the parties to support their prerogatives and defences in a particular matter. It is also likely to include an estimation of calculation of damages and any other liability agreements like that of the insurance.2 The relevant court shall than hold a meeting which is termed as a “conference” in the U.S. jurisdiction in a period of 90 days from when the complaint is said to be made and will call upon the parties to take on relevant actions to expedite or ask to not cause any unwarranted delays.
This particular time frame for showing discovery varies from time to time in IP cases. However, the ones pertaining to patents tend to have the discovery periods are for an approximation of a year and if an expert discovery is required, the process for it requires an additional six months or upward. The process of the proficient and expert discovery comprises discussion pertaining to the written reports divulging substantiated facts and opinions that an expert witness shall intend to dwell upon at the stage of the trial, this procedure is then followed by the deposition of the said expert witness.
The process of evidentiary discovery includes the exchanging of relevant documents, interrogations, which are inscribed responses to queries raised by the opposing party in the process and lastly the infamous depositions which generally take place outside the court and are known as a process of on oath like verbal demonstration of a witness that is recorded by a court reporter.
Discovery phase till date is known as one of the most expensive phases for the parties when it comes to the process of IP litigation. Post this phase the parties have the option of moving for a protective order that intends on limiting the discovery request of the opposing parties that are immaterial to the subject matter or cumbersome.
Let’s take a look at the rules associated with the key actions in the discovery phase, which spans out as follows:
Initial disclosures
Under the provisions set forth for the initial disclosures it is a best practise that when the Parties become aware of the dispute arising, the parties to such complaint or dispute must start the process of discovery without waiting for any instructions of the court or intimation by the opposing party and has to provide the opposing party relevant information pertaining to subject of the disputes.
A piece of documentary evidence that such a party may have in its possession, provided that it is in line with protecting the attorney-client privilege, the inspection of material claims for computation of damages, insurance and indemnification. There is also a listing of certain disclosures that are exempt from the nature of initial disclosure like arrangements under review for administrative action, a forfeiture arising from the likelihood of existing statute, previous criminal convictions, a petition for habeas corpus, enforcement of an arbitration award, etc.
The set time period for such a type of disclosure is that 14 days post the conference with the judge unless otherwise stated by the courts. If there are parties that are added on later as initial disclosures by such added parties should be made within a period of 30 days from the addition of such parties.
In an event of the expert witness, the identity of such witness is to be made known unless any other order from the court has been granted to maintain secrecy in event of hostile witness or raids.
With the disclosure of the witness, a written statement has to be provided, especially in cases where the witness is specially employed to provide testimony or who has been regularly giving such expert testimony. This type of written statement has to include an insight into the opinion and the basis for the formulation of such opinion and all their qualifications and list of cases where the expert witness has served to maintain the credibility of the expert witness which has to date back up to the last 4 years.
The exception to this provision lies in FER 702/03/05 wherein if such a statement is already based on sufficient fact or data, effective and reliable principles and the principles have already been applied numerous times and that non-application of such testimony will have a prejudicial effect if not admitted or where the court directs the expert to give the opinion first and cross-examines the expert later.
This tool plays a key part in helping the Parties determine whether the opponent’s witness is a credible one.
In the case of Hangzhou Langhong Technology Co. Versus and Langhong Technology USA Inc, 2014 the court held towards excluding the testimony of the expert due to no disclosure being made under this provision. This shows that even minute non-compliance of rules may lead to the case suffering tremendously. (7)
Interrogatories
Interrogatories are known as the set of inquiries that a party to a dispute directs towards the other party. The party to whom these interrogations are directed, must answer and inscribe them in writing and also and under an oath. As per the rule’s stated in evidence and civil procedure of the US regime.
A party to a dispute can only serve 25 interrogatories relating to general provisions in the process of the discovery. In practice, this tool is used for ascertaining the basic distinguishing facts of the case, the timing of occurrence of various actions and events, identification of witnesses and relevant documents. The set time period to respond to these interrogatories is 30 days. If there is any objection to the subject matter of such enquiry being confidential in nature; such objections are also to be put forth in a time-bound manner. However, there is no mention of the specified duration of this ‘timely manner’ or ‘time bound’ manner in the rules and should be filed as soon as possible as it will be decided at the discretion of the court.
In the case of R.W. International Corp Versus Welch Foods, 1991 it was held that if an order to give an adequate response in form of an answer was disobeyed and not complied with, the trial court in question has all the rights to impose relevant sanctions which may also include dismissal of the dispute as by invoking powers of FRCP 37 (1) and (2).
Document requests
Referred to as requests that may be made by the opposition party to the dispute for Production of relevant documents and materials that may be additionally required during the process of discovery.
The Parties are at liberty to make inspections, additional copies and make appropriate testing’s to documents that are electronically stored or otherwise, are considered to be tangible or are in a reasonably usable form.
This provision is laid out in a manner that the opposing party is also permitted entry to the space or property of the responding party to examine the property, inspect it and survey it. This provides an extremely wide scope to the requesting party and can sometimes work against the Party responding to such a request.
To ensure that this does not happen the powers of the requesting party are curtailed from the beginning as it is stated that request of such content must state the exact specifics and particulars of the discovery documents the Party is seeking. In case of inspection or audit for a particular place, a reasonable time, place and manner for doing such an act have to be specified and with regards to electronically stored information, the form in which information is to be handed over or produced is to be mentioned in clear and absolute detailing.
When such a request is made, the party who is supposed to respond to the said request has to provide in writing within a time period of thirty days whether such a request was received and what elements shall be provided. The Party also has to take into consideration each object and item and state whether it is permitting the request and the grounds for denial if denying the request.
When it comes to electronic form a simple rejection can be made merely on the aspect that the requesting party did not specify the particular form. The Party to whom such a request was made can share the electronic records in the way they maintain it and no special form or format is to be complied to as long as the information is in a form that is reasonably usable. In an event that a third party is to be compelled to produce any information, a subpoena can be issued to gain the information provided that it is not in bad faith or bad in law. This type of requests is used for collecting relevant documents pertaining to the dispute to be examined and used in the trial later.
In the case of Wai Feng Trading Co. Limited. et. Versus Al Quick Fitting, Inc, 2016, it was seen that after a period of three years from the time the discovery of dispute took place the defendant then raised an objection on the way that the Plaintiff presented the emails in question. The emails were presented in the similar file format that they were stored which is the usual course of things. The magistrate judge then took into cognizance and noted that the Defendants earlier had not specified any particular formatting in their production request which is allowed under FRCP 34, and therefore this contention of the objection stood overruled by the judge.
Requests for admission
It refers to the written requests that are made to admit specific facts and documents. This is a key part of the discovery phase to prove admissibility. Anything that is not explicitly decided during this process shall not be considered admissible unless any order of the court states otherwise or by specific limitations when pleading in front of the court.
This is also an important step to take into consideration when seeing if the documents are valid and genuine. For this process too each matter under the admission should be stated separately. And to confirm the genuineness of the document; a copy of the document should be accompanied.
The time period for completion of this process is also 30 days after the request for such an exercise is received. If there is a particular document, fact or event that is disputed by the parties and is not accepted, such reasons for non-acceptance must be stated and recorded. An objection or denial cannot be made on the sole basis that the existence of a particular discovery will make it harder for any of the parties to prove their contention at the time of the trial. If the party requesting such documents is not satisfied with the objection it can move to the court to determine the validity of the rejection.
If the court finds objection is valid then they can request for a new amended answer or otherwise the request will have to be adequately served to. The court here possesses the final power to withdraw or amend the admission in question. In an event that the court decides to pronounce such an order, the said admission shall not be permitted to be used against the party in any further proceeding with regard to the matter.
In the matter of Walsh Versus Conn. Mut. Life Insurance Corporation it was seen that when a party to dispute, is served with a demand for admission request which such a party finds legally intolerable and non-tenable; the party will have to respond in a manner that it does not by deny the request for admission but rather make a valid written objection for protection of their rights and interest under FRCP Rule 36.
Depositions
It is a process of an oath like a verbal demonstration of a witness that is recorded by a court reporter or a videographer. Depositions can be taken in two forms one which is without the leave of the court by issuing a subpoena and the other with the leave of the court where court grants the permission for deposition based of certain cases wherein the parties may not have earlier agreed to the process or where it would take more than 10 depositions or where a particular deponent has been deposed in the said subject matter or where the party wants to seek immediate relief in the particular matter.
A notice is to be provided to the person or the party that is to be deposed to enable them and to provide them with a reasonable time. If a particular subpoena is for production of documents, the particulars of the documents are to be listed. Method for recording the testimony should also be provided in the notice.
The forms which are allowed are audio medium, audio-visual medium, or stenographically as stated in the FRCP 30. There is also a provision to take depositions by remote means by the order of the court. There is a time limit for deposition which amounts to 7 hours on a particular day. There is also a provision for review of transcripts by the deponent but is limited to the time before which a deposition shall be deemed to be completed. If the deponent feels that they want to change a part of the testimony an effective signed form is to be filled in listing the reason for the particular change.
In the matter of United States versus Kattar, 1999, the attorney’s behaviour of constant interruption was considered as a sign of bad faith and unreasonableness and therefore the government contested the judgment to be passed in the favour of the government. This shows the regard for due procedure in the course during the trial stages.
Conclusion
It is an interesting sight to see how the rules try a balancing act and provide a system of actual equilibrium between the Parties of the dispute to ensure that there are effective time periods between each of the processes. This is one of the key ingredients that make for a strong IP regime and provides for an ecosystem that is built on the cornerstone of fostering creativity and innovation while effectively protecting the rights of Intellectual Property Right holders. Another interesting trend seen during the course of this article is the increasing involvement for the want of legal tech and AI tools to create a streamlined process for this particular cycle of discovery by the legal fraternity to ease cumbersome processes.
References
- https://www.law.cornell.edu/rules/frcp/rule_26#rule_26_b_2
- https://www.law.cornell.edu/rules/frcp/rule_33
- https://www.law.cornell.edu/rules/frcp/rule_26
- https://www.law.cornell.edu/rules/frcp/rule_34
- https://www.uscourts.gov/news/2020/02/13/just-facts-intellectual-property-cases-patent-copyright-and-trademark
- https://www.uscourts.gov/news/2020/02/13/just-facts-intellectual-property-cases-patent-copyright-and-trademark
- https://www.law.cornell.edu/rules/frcp/rule_26#rule_26_b_2
- https://www.law.cornell.edu/rules/fre/rule_702
- https://www.law.cornell.edu/rules/fre/rule_703
- https://www.law.cornell.edu/rules/fre/rule_705
- Invue Security Products Inc. v. Hangzhou Langhong Technology, Co., Ltd., Case No. 4:13-cv-457-A (N.D. Tex. July 17, 2014), https://www.lexology.com/library/detail.aspx?g=a0145ed3-8dfa-406a-8afc-042f8e976d35
- https://www.law.cornell.edu/rules/frcp/rule_33
- R.W. International Corp Versus Welch Foods, Inc., 937 F.2d 11, 15 (1st Cir. 1991)
- https://www.law.cornell.edu/rules/frcp/rule_34
- Wai Feng Trading Co. Ltd. et. Versus Al Quick Fitting, Inc., Consolidated Case Nos. 13-056 and 13-033 (D. R.I., Sept. 30, 2016) https://casetext.com/case/wai-feng-trading-co-v-quick-fitting-inc-1
- https://www.law.cornell.edu/rules/frcp/rule_36
- Walsh v. Conn. Mut. Life Ins. Co., D.C., 26 F. Supp. 566 https://law.justia.com/cases/federal/district-courts/FSupp/26/566/2593539/
- https://www.law.cornell.edu/rules/frcp/rule_30
- United States v. Kattar, 191 F.R.D. 33 (1999) https://cite.case.law/frd/191/33/
- https://www.law.cornell.edu/rules/fre
- https://www.law.cornell.edu/rules/frcp/rule_29
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