Evidence is crucial to IP infringement litigation. For a long time, no strong evidence discovery mechanism had been established in China’s law court system. But things are improving.
China’s Supreme People’s Court’s Provisions on Evidence in Intellectual Property Civil Litigation (《最高人民法院关于知识产权民事诉讼证据的若干规定》) went into effect on November 18, 2020. Some of the highlights include potential burden shifting in methods of manufacture claims, evidence needed to file a declaratory judgment action for non-infringement, admission of foreign-originated evidence, evidence preservation, and court-appointed experts.
The Supreme People's Court revoked on August 10, 2020 a lower court’s decision on a patent infringement lawsuit and remanded it to the lower court to retry on the grounds that it failed to address the plaintiff’s application for preservation of evidence.
In 2019, Zhejiang CTB Corrugated Steel Web Co., Ltd. (浙江中隧桥波形钢腹板有限公司) filed the lawsuit at the Shijiazhuang Intermediate People’s Court of Hebei province against Zhengzhou Hengtian Dajian Bridge Steel Co., Ltd. (郑州恒天大建桥梁钢构有限公司), Henan Dajian Corrugated Steel Web Co., Ltd. (河南大建波形钢腹板有限公司), and Chengdu Huachuan Highway Construction Group Co., Ltd. (成都华川公路建设集团有限公司) for allegedly infringing its patent ZL201310308210.2 covering corrugated steel sheets having different thicknesses and used for reinforcing corner.
The trial court didn’t agree with the plaintiff’s argument, holding that the plaintiff based its claim merely on the information being displayed on a defendant’s website without producing any infringing product as evidence. Zhejiang CTB appealed the trial court decision to the Supreme People’s Court.
The Supreme People's Court held that preservation of evidence is a significant means to strengthen the parties of interests’ power to produce evidence and facilitate fact discovery. The people's courts shall review their applications for preservation of evidence and take effective measures to reduce the burden of proof on them.
First, the preliminary evidence submitted by Zhejiang CTB is found to be relevant to the alleged infringement facts. The products manufactured by Zhengzhou Hengtian and Henan Dajian to be used in a bridge construction project are found to be similar to the product manufactured by the plaintiff applying the infringed patent. Moreover, in the product specifications displayed on defendant Henan Dajian’s website, the descriptions of some features are shown to be similar to those of the infringed patent. In addition, two defendants Zhengzhou Hengtian and Henan Dajian are corrugated steel web manufacturers and subcontractor companies hired by defendant Chengdu Huachuan, a general contractor of a highway contraction project, where corrugated steel webs manufactured applying the infringed patent are used.
Second, the preservation of evidence required by Zhejiang CTB is urgent and there exists “the possibility that the evidence will be lost or will be difficult to obtain in the future and its impact on the facts to be proved.” At the filing time, the construction project is underway. Once it is completed, technical features of the allegedly infringing products will be hard to examine. And the products are specialized construction materials, hard to be obtained through commercial purchase on the market. The plaintiff has exhausted legal and reasonable efforts to gather evidence.
Third, it will be highly feasible for the court to take action to preserve the evidence since the construction is underway at the filing time. Zhejiang CTB required the court to preserve as evidence the products being utilized on the construction site as well as the products stored at the defendants’ plants and their production processes. The construction project is a Hebei province’s major infrastructure project, so it’s predictable that Zhengzhou Hengtian has archived the project’s technical drawings, which serve as inculpatory evidence in the case.
The docket no. of the case is （2020）最高法知民终2号 (English: No. 2, second instance, civil case, (2020) IPR Division of the Supreme People’s Court).
