Successful Representation Of Client’s Interests In Complex Patent Litigation
Client PSS Corporation (Russia)
PSS Corporation (PPMTS Permsnabsbyt, JSC) carries out research, design, full production cycle, supply and installation of electrochemical corrosion protection equipment since 1999. Corrosive destruction of downhole equipment is a serious problem for the oil industry, causing inconvenience in work and large financial losses. In this connection, PSS Corporation developed and patented a new technical solution (RU patent for utility model No. 137329), designed to protect expensive oil submersible equipment – electric submersible pumps and motors (ESP systems) in environments with high content of carbon dioxide and hydrogen sulphide, where corrosion is particularly intense.
In 2016, PSS Corporation became aware that Geopromyslovye Novatsii Ltd., Tyumen (Geopron Ltd.), offered for sale and sold products with illegal use of the utility model to oil and gas companies. It was also found out that RPA RosAnticor Ltd., Chelyabinsk, manufactured these goods.
A test purchase of the disputed products was made. After that, patent attorneys of Gorodissky and Partners carried out patent and technical analysis and confirmed the fact of patent infringement in the bought items. The infringers refused to stop illegal use of the patent and PSS Corporation instructed Gorodissky and Partners lawyers to file a lawsuit.
A lawsuit was filed for prohibiting Geopron and RosAntikor from using the utility model, recovering compensation and publishing the court decision (case A70-2219/2017). During the consideration of the dispute in the court of first instance, the defendants denied the use of the utility model in their products, demanded the conduct of an independent patent-technical examination, and submitted nominations of experts. There were circumstances, however, that cast doubt on the impartiality of those experts, and all of them were excluded. As a result, the court ordered to examine the patent and disputed products with their drawings and technical specifications to the commission of two experts (one of them was proposed by us, another – selected by the court). Based on the results of the analysis, the expert commission made a truthful, impartial and independent conclusion about the presence of all the features of the independent claim of the patent in the disputed objects.
Attempts by our opponents to challenge the results of the independent patent-technical examination failed, and in this connection, the defendants changed their strategy and filed a countersuit against PSS Corporation for recognizing the right of prior use for a technical solution, identical to the patented one. However, taking into account our arguments, the filing of the countersuit 9 months after the start of the trial was qualified by the court as abuse of rights. In this connection, the court refused to consider the countersuit.
During the hearings, we provided the court with information about the period of the infringement, the pattern of cooperation of the infringers, the scope of production, profitability of products; probable damages were also assessed. The amount of compensation, jointly demanded from the infringers, amounted to 2,000,000 rubles ($35,000 approx.). The defendants’ arguments about overstating the amount of compensation were refuted, and the court satisfied the claims in full.
In the court of appeal, and later in the IP Court, the defendants claimed that the issue of the right to prior use had not been considered and the countersuit was turned down by the first instance court unlawfully. However, as the higher courts rightly considered that the submitted documents did not confirm the circumstances to be determined when resolving the issue of the right of prior use, and the first instance court dismissed the countersuit properly, since the purpose of that suit was the unfair delay of the trial.
It also should be noted that, in parallel with the consideration of the case A70-2219/2017 by the commercial courts, Geopron twice initiated patent revocation proceedings with the Russian PTO. However, in both cases it was established that there were no grounds for revocation of the patent.
As a result, the demands of PSS Corporation to Geopron and RosAntikor on the prohibition of the use of the utility model under RU patent No. 137329, payment of 2,000,000 rubles compensation and publication of the court decision were fully satisfied. Appeals and cassation complaints of the defendants were completely dismissed. The infringers failed in the revocation proceedings and the Russian PTO upheld the patent.
Thus, thanks to the comprehensive and thorough work of Gorodissky and Partners lawyers and patent attorneys, PSS Corporation succeeded in prohibiting the illegal use of the patent by competing companies, received fair monetary compensation, and rejected competitors’ unreasonable attempts to revoke the patent.