Have you ever been in a situation where you have reliable
information that an organization has infringed your intellectual
property rights, but you do not have actual "evidence"
in-hand? This article discusses a procedure under the District
Court Rules of Texas which addresses this issue in cases where a
Texas court has jurisdiction over the matter.
In most jurisdictions unless you have what constitutes
court-acceptable evidence of infringement, the proposed defendant
("Target") can "non-suit you" - have your claim
struck on the basis there is no evidence to support the
allegations. In these motions the Target usually has no obligation
to give its evidence on the facts and legal claims you would like
to prosecute. If you are aware of facts and evidence from another
lawsuit, you are generally prohibited from using such facts and
evidence in a new lawsuit until you seek a court order.
You are understandably daunted by having your claim thrown out
with costs against you.
The Texas procedure can be summarized as an entitlement to
perform questioning of a witness of the potential defendant before
deciding whether to commence the suit or not. In Texas the court
may, in the correct circumstances, grant you an order giving you
the right to take a "deposition" (also known as a
"questioning") before filing any legal claim against the
Target in Texas.
To obtain this order, you must both swear a petition and make an
application to the court on notice to the Target. The Target may
argue against it, but the courts in Texas have shown that they are
willing to grant this type of order as a matter of general
In Texas, the court takes the view that if there are facts
suggesting a legal claim exists the interests of justice are served
if, in the most convenient manner possible, a given
"Target" is brought before court reporters to give sworn
evidence on activities and facts related to the potential lawsuit.
The court will direct an organization to assign witnesses to
attend, direct those witnesses to provide relevant written
materials in advance and cooperate in respect of informing
It is also notable that if the deposition evidences facts which
might ground a separate action in another jurisdiction, such as
Alberta, then there may be steps that can be taken to bring an
action in Alberta.
It is also notable that in issuing demand letters in situations
where you are lacking strong evidence respecting the claim behind
the demand, it is wise to exercise caution. You could be
contradicting yourself if you clearly indicated you had evidence of
the wrongdoing and then later say you need a deposition to obtain
such evidence. This contradiction can be used against you in any
"verified petition initiative" brought later.
The Federal Court dismissed a motion by Apotex seeking particulars from Allergan's pleading relating to the prior art, inventive concept, promised utility and sound prediction of utility of the patents at issue.
Last year we saw the Canadian Courts release trademark decisions that granted a rare interlocutory injunction, issued jailed sentences for failure to comply with injunctive relief, grappled with trademark and internet issues...
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