Prohibition of manufacturing, offering for sale and placing on the market of flagship products, as well as seizure of goods by a bailiff. Those were the problems faced by a leading manufacturer of industrial ranges who was sued for patent infringement. Thanks to the application of a well thought-out and effective procedural strategy, we succeeded in having the case dismissed and in persuading the court to award our client a substantial part of the costs of the proceedings, which enabled us to cover the real expenditure incurred in the course of the infringement proceedings.
What challenges did we have to overcome?
Our client Przedsiębiorstwo Produkcyjno-Handlowo-Usługowe "Wojtex" is a valued and recognizable supplier of assortment for the gas industry.
In 2018, the bailiff seized the goods manufactured and introduced by Wojtex in the form of steel gas connections. The bailiff's seizure of the goods was the implementation of the Court's decision on security for claims made against our client by his competitor.
In addition to the seizure of the goods, the court also decided against our client, for the duration of the proceedings, to prohibit the manufacture and offering of these products and to withdraw them from the market.
After receiving the decision to secure claims, the competitor sued our client to prohibit manufacturing, offering and marketing of these products. The claims of the competing company were based on a patent for the invention of a steel gas connection.
For our client, a market-leading producer of product assortment for the gas industry, the impact was twofold: financial and reputational. His will was not only to dismiss the action, but to recover any costs he had incurred in order to defend his rights.
Effectively Taken Actions
In order to effectively defend the rights of our client, we analyzed not only the validity of claims for patent infringement (i.e. whether our Client's products fall within the scope of patent claims), but also looked at the "patent itself".
We have taken the following steps in the case:
-
in cooperation with patent attorneys specializing in our law firm in mechanical inventions, we have collected evidence and developed arguments on the basis of which we have effectively undermined the validity of the patent, pointing to the lack of the so-called inventive level, i.e. the "innovativeness" of the contested invention1,
-
by invalidating the patent, we have consequently led to dismissal of the action in the case of its alleged infringement, and finally
we have obtained for our client a reimbursement of the costs of the process in the amount of almost 10 times the minimum rate.
Thus, the decision became final and the dispute was resolved at the level of the court of first instance.
Reimbursement of the real costs of the proceedings in the real amount
As a rule, reimbursements of the costs of the proceedings in intellectual property cases ordered by the Courts in the amount of the minimum statutory rate (PLN 1,680) do not correspond to the real costs of conducting the case. This means that the winner is forced to incur costs that are only symbolically compensated.
In order to ensure that the client's interests are fully protected, we have decided to ask the Court to award the costs of the trial in the actual amount, based on the list of costs. In order to do this:
we have prepared a detailed list of all costs related to handling the case, including court fees and our law firm's remuneration
we presented the Court with arguments in favour of the need to award higher costs, emphasising that the statutory rate does not reflect real expenditure.
The court endorsed our request and awarded our Client the costs of the trial in the amount of about 10 times the minimum rate.
It is good to know!
In disputes over infringement of intellectual property rights, it is important to make a comprehensive, multi-faceted assessment of the legitimacy of claims. As attorneys-at-law, we not only carefully verify the extent to which the infringement itself occurred (whether a given product falls within the scope of patent claims) and on this basis we develop a strategy in the dispute, but also carefully look at the patent itself by verifying whether the grounds for its cancellation have not come true.
It is possible to obtain the costs of the process for the benefit of the client in an amount higher than the statutory one. With the appropriate arguments and evidence, the court may award reimbursement of costs that will lead to full compensation for the expenditure incurred in the dispute.
In the event of a final dismissal of the action for infringement of the patent, the defendant has the right to claim compensation for the damage resulting from the issuance of the decision on security, during its validity, as well as after, if the cause of the subsequent damage is related to the issuance of security. The effectiveness of the claim depends on proving three things: firstly, that the action was finally dismissed; secondly, that there was damage; and thirdly, that there is a causal link between the damage and the release of the security. The assessment of the chances of success in a damage compensation case depends on the type and quantity of evidence confirming its occurrence in principle and the amount.
Conclusions of the case
This is another success of our law firm, which shows that the adoption of a multi-level process strategy brings very good results.
Our many years of experience combined with a strategic way of operating based on reliable, in-depth data analysis and an unconventional approach to client matters gives us a high chance of finding a solution that is beneficial for the Client, regardless of their status or the significant amount of the opponent's claims.
Disclaimer: The content of the article is intended to provide general information related to a given topic. In certain cases, it may be advisable to consult a specialist, taking into account the unique facts and circumstances of each individual matter.
