Successful Representation Of A Client In The Software-Related Dispute In The Russian Intellectual Property Court

Client Data Matrix, LLC (Russia)

Description

Data Matrix, LLC (Russia) is a well-known IT-company, which specializes in providing data processing and statistics services in the pharmaceutical industry. Data Matrix develops cloud-computing software for clinical researches and has an exclusive license to use ‘MATRIX EDC’ software (Software), which is widely used and popular among various pharma- companies, both in Russia and internationally.

Their competitor – a company DataFlow Solutions (Russia) (Defendant) – registered software ‘DataFlow EDC’ (Conflicting Software) which was very similar to the Software in terms of the field of use, principle of operation and appearance.

Upon creating and registering the Conflicting Software the representatives of DataFlow Solutions started to actively offer it for sale to various companies and customers, including the Data Matrix’ clients, which led to substantial violation of their rights.

In order to enforce its rights, Data Matrix decided to apply to the commercial court.

The court of the first instance dismissed the claims. However, Data Matrix did not agree with the decision of the first instance court and appealed to the court of appeals.

In the course of the proceedings, a computer and technical examination was appointed which confirmed that the major part of the Conflicting Software’s source code was copied from the Software (at least 88% of the code was copied). Also, the experts proved that the principle of operation of the Conflicting Software was analogous to the one of the Software, while the appearance of the Conflicting Software was similar to the Software. As a result, the court of appeals upheld Data Matrix claims.

The Defendant disagreed with the decision of the court of appeals and moved the case to the court of cassation (Russian Intellectual Property Court) in order to challenge the decision of the court of appeals. At that stage Data Matrix (Client) approached Gorodissky & Partners as specialists in IT litigation and dispute resolution for the purposes of representation the Data Matrix’ interests and prevention of cancellation of the decision of the court of appeals.

Solution

Upon reviewing the case materials Gorodissky & Partners developed certain strategy to enforce the rights of Data Matrix being the exclusive licensee of the Software.

In particular, we thoroughly studied the expert’s opinion and, by claiming its credibility, comprehensiveness and legality, managed to convince the Russian Intellectual Property Court that there were no grounds for proceeding with re-examination or additional examination in this case.

Aside from that, the team of Gorodissky & Partners managed to convince the Russian Intellectual Property Court that the sole fact of registration of the copied and modified version of the computer program, without the rights holder’s consent, was a valid argument proving the illegal use of the original version of the Software, which should be considered as the infringement of the holder’s rights. It should be noted that it was the first such case (precedent) in the Russian court practice.

Result

As a result, the Russian Intellectual Property Court ruled to dismiss the cassation appeal of DataFlow Solutions and retain the decision of the court of appeals in force.

The Defendant is now prohibited to take any actions infringing the Client’s rights, including the use of the Conflicted Software in any way or manner, namely: to reproduce, distribute, translate or otherwise modify, and to make public (both in public and private networks).

In this regard, the proposed by Gorodissky & Partners defense strategy aimed at the enforcement of the Client’s rights to the Software turned to be viable in the court of cassation and the Client’s goals were finally achieved.