The case management and trial process in England is clear, and places parties on an equal footing while considering procedural measures and substantive interests. The judicial decision is based on specific case merits, and does not conflict with decided facts and the overriding objects of civil procedure and substantive law. The basic success of English trial lies in an open process of discovery of evidence and case management. The main arguments from both sides on points of law and facts are equally heard. In contrast, Chinese case management lacks clear guidance to bind the trial. Its trial process lacks proper discovery of evidence, relying on formality to decide evidence relevance and credibility. Its case management and trial process lacks equal treatment of both sides’ arguments, and lack judicial notice of the court’s inference as to findings. There is no search order available for the plaintiff to obtain infringing information. Its judicial decisions lack comprehensive and cogent links between the findings and legal decisions. Its case management and discovery evidence are not transparent enough to see what has happened in trial. The judicial decisions do not reveal clearly how a Chinese judge has arrived at his conclusion, if both sides’ arguments had been treated equally. The fundamental problem is that, mainly by discarding evidence because of its formality defects, and by picking up some evidence because of its notarisation or originality, the decision’s grounds and applicable law lack inner connection, and cannot be properly fitted into the judgments, and as a result the disputed issues cannot be persuasively resolved. The situation described here, about the case management and trial process, triggers another problem dealt with in the next chapter, namely that legal finality and its binding force are very weak in the Chinese judicial regime.
Chapter Three: Overlapping IPR Trials and Compensation
Overlapping claims in intellectual property suits are very common; indeed this is a major characteristic of IPR litigation. This trait reflects the complexity and transformative nature of invisible intelligence property: idea, expression, design, inventions, discovery, data, processing and labouring etc. For example, Ocular
Sciences Ltd (OSI) v Aspect Vision Care Ltd ,1 was a case claiming breach of several IPR rights in a business cooperation relating to the manufacture of contact lenses. The two claimants sued eight defendants for breach of confidence, breach of contract, breach of fiduciary duty, conspiracy and infringement of copyright and design rights relating to the manufacture of contact lenses. But the judge only confirmed copyright infringement in the judgment.2
The creation of more, and also more complex, IPR has also caused the boundaries between types of subject-matters to become blurred. 3 The boundaries between the subject matter: patentable or unpatentable, business methods and computer programmes, functional design or artistic design, remain unclear. The same design may be protected by copyright law, design law as well as the tort law protection of ‘passing off’, because one intelligent work will often encompass different forms, interests or functions. These can exist in a status of artistic work through to an industrial production, so they do not fit squarely within the boundaries of either copyright, design right or patent law. This is one reason why, today, there are a lot of different and sometimes conflicting demands, some for new and some for improved rights. Confusion increases even more when there is no clear definition
of what is related to, and what is different from the subject matter.4 So we find more and more IPR creations may fall into several IPR protection categories. 5
The legal finality rule 6also increases the overlap of claims occurring in IPR suits. Under the res judicata and issue estoppel principles, claimants are worried that they may be deprived of their full protection by making an inappropriate election in pleadings. So the safe choice to recover a full compensation is to lodge multiple claims with all possible causes of action rolled together. Litigants often attempt to pursue multiple claims in order to ensure the full award of damages, especially when the boundary of each subject matter is vague or uncertain in scope. The complexity of most IPR cases is hard to avoid and likely to generate a lot of claims under different substantive legal provisions. 7
On the other hand, property calls for boundaries. Any property law has to draw boundaries determining who holds rights, and what the matters subject to these rights are. Especially for intangible property rights---IPR, there is no need to occupy its physical limits to utilize its intelligence rights. Comparing with real property rights, the IPR owner and the public need clearer and more coherent boundaries to know who owns what, and where each right begins and ends.8 Each IPR right should have a clear boundary around its specific protection subject, and accordingly should vary in strategic ways, since overlapping protection for a single subject with different layers suggests high costs of legal enforcement. There are significant costs in devising specialised systems to record and award rights that are uncertain in scope. There could be also high costs in challenging or defending such rights.9 It is
obvious that a clear IPR boundary can help an IPR owner to choose the best suited methods, to efficiently protect rights and save money in litigation.
This chapter will analyse, through the legal interpretation of the substantive law of IPRs, how the judges in each of the two countries deal with and manage overlapping claims in IPR cases to enforce IPR protection.