Investigation and evidence collection in IP infringement cases
Publication | July 2020
In recent years, I have dealt with many infringement as well as contract litigation cases. To my understanding, the biggest difference between infringement cases and contract disputes is that the infringement cases have no preliminary part of the negotiation between the two parties. Most infringement cases have neither consultation on the agreed terms, nor agreement on liability for breach of contract and jurisdiction; generally, it is difficult to reach a unanimous dispute settlement opinion after the dispute.
Generally speaking, the infringement is concealed while carried out; once an infringer discovered that the right holder may take action, the infringer will immediately take action to hide or destroy the relevant evidence. Therefore, the investigations and evidence gatherings, which are relatively few in contract disputes, have become top priority in revealing facts and securing evidence in infringement cases.
Due to the special nature of IPR infringement cases, it is generally not recommended that the right holders obtain evidence by themselves or solely by the lawyer or the investigator. In comparatively complex infringement cases, investigation and evidence collection generally requires at least the cooperation of a professional investigator and a lawyer. In some cases where the requirements for evidence are more stringent, the participation of notary publics or even Forensic experts are also required.
Since the infringer has gradually become more and more sophisticated and capable of combating infringement over the years, if there is a slight negligence or mistake in the investigation and evidence collection, not only may the purpose of the evidence collection not be achieved, but the evidence collector will also face other risks in some cases.
The advantages of professional investigators in investigation and evidence collection are mainly reflected in the further exploration of clues and specific evidence secure operations.
The high vigilance of the infringer, the concealment of infringing evidence and the prevention of evidence collection make it difficult for the on-site evidence collection work to be completed solely by a lawyer.
Most experienced lawyers will form a distinctive professional feature in the many years of practice, and young lawyers do not have the corresponding social experience. While facing infringers, it is very likely that their identity would easily be discovered by the infringer.
During on-site evidence collection, only investigators with rich investigation experience and social experience can let the infringer’s guard down. Therefore, the infringer may reduce the concealment of infringement evidence, and gradually reveal the corresponding infringement clues and evidence.
In one of recent cases reported by the media, a technician went to another factory to take photos, and was spotted and captured on the spot. Although the scenarios are different from IP investigation, it also illustrates the special requirements of the on-site evidence collection in IP infringement cases.
Another question is whether the right holder could save the lawyer's fee via only entrusting the investigation company to obtain evidence?
According to our experience, if the case is not complicated and does not involve too many legal issues in the initial evidence collection, it is indeed feasible to do so. However, in comparatively difficult and complicated cases, while involves multiple types and number of evidence, and the communication process involves the core elements necessary for future Court hearings, it would be difficult to complete the set goals and get the feasible evidence, which could be presented before the Court, solely by the investigators. Without many years of legal practice and Court hearing experience, it is difficult to obtain valid evidence by relying on the investigator’s own understanding to grasp core evidence in a complex environment.
In IP infringement cases, the evidence collection plays a very important role in supporting the subsequent actions. With the evidence in hand, the right holder may choose a variety of ways to deal with the infringer in later stage; without evidence, the anxiety and anger generally could not solve the problem.
In the past two years, several right-holders have even failed in the cases filed by infringers claiming infringements of goodwill due to improper letters sent to the infringer by right holders. On the one hand, it is due to the negligence on the wording requirements of legal documents; on the other hand, it is very likely caused by taking actions according to right holder’s emotions without fixing the appropriate corresponding evidence.
Therefore, according to practical experience, evidence collection in IP infringement cases is particularly important, especially in complex cases. It requires the cooperation of different professional institutions to obtain relatively satisfactory evidence. Either for right holders or other professionals, if taking the work not within your own profession with the only purpose of saving costs, there would still be some chances of success; but in the long run, the risk of overturning the ship is really big.
This article was originally published in Fusion Strength.