On January 1, 2019, the Intellectual Property Tribunal of the Supreme People's Court of China officially opened its office to hear nationally intellectual property cases such as patents, which are highly technical and professional. Over the past year, the Intellectual Property Tribunal of the Supreme People ’s Court has effectively strengthened the trial system and capacity building, concluded a large number of technical IP cases with important impacts according to law, vigorously improved IP protection, and continuously promoted the unification of technical IP cases. It has made important contributions to the strict protection of intellectual property rights, service innovation-driven development strategies, and the creation of a world-class business environment.
The Judgment of the Intellectual Property Court of the Supreme People's Court (2019) selects 36 typical cases from the technical intellectual property cases concluded by the Supreme People's Court Intellectual Property Tribunal in 2019, and refines 40 judgment rules, reflecting the judicial philosophy, trial ideas and adjudication methods of the Supreme People's Court Intellectual Property Court in the field of technological intellectual property in handling new, difficult and complex cases, it is hereby announced.
I. Patent civil trial
1. Identification of functional features
In the VALEO SYSTEMES D'ESSUYAGE v. Xiamen Lukasi Automobile Parts Co., Ltd., Xiamen Fuke Automobile Parts Co., Ltd., and Chen Shaoqiang case of dispute over infringement upon invention patent, the Supreme People ’s Court pointed out that if a certain technical feature has defined or implied a particular structure, component, procedure, condition or mutual relationship thereof in the invention technical scheme, even if this technical feature also defines the function or effect it achieves, in principle, it does not belong to the functional features as mentioned in Article 8 of the Interpretation (II) of the Supreme People's Court on Several Issues Concerning the Application of Law in the Trial of Patent Infringement Dispute Cases.
2. The effect and function of the subject name substantially limit the claim
In the Sun Xixian v. Hunan Jingyi Ecological Technology Co., Ltd. case of dispute over infringement upon invention patent, the Supreme People ’s Court pointed out that if the effects and functions described in the subject name of the claim are not the effects, functions, etc. that can be achieved by the structure, component, procedure, condition or mutual relationship, but the difference between the patented technical solution and the existing technical solution, then the effects and functions recorded in the subject name of the claim have a substantial definitive effect on the protection scope of the claim.
3. Judgment of infringement of multi-agent implementation method patent
In the Shenzhen Jixiang Tengda Technology Co., Ltd. v. Shenzhen Dunjun Technology Co., Ltd., the original trial defendant Jinan Lixia Hongkang Electronic Product Management Department, Jinan Lixia Haowei Electronic Product Management Department case of dispute over infringement upon invention patent, the Supreme People's Court pointed out that if the infringed perpetrators are for the purpose of production and operation, solidify the essence of the patent method to the infringed product, the act or the result of the act has played an irreplaceable and substantial role in the comprehensive coverage of the technical characteristics of the patent claim or the end user can naturally reproduce the process of the patent method when the alleged infringing product is used normally, then the court will rule the accused infringer implemented the patent method and violated the rights of the patentee.
4. Consideration of invention points in the prior art defense confirmation
In the Wang Yeci v. Xuzhou Huasheng Industrial Co., Ltd. case of dispute over infringement upon invention patent, the Supreme People ’s Court pointed out that the patent in question clearly pointed out the invention point of its technical solution, and emphasized that the technical features other than the invention point are universal parts. If the technical feature corresponding to the invention point is already disclosed in the prior art and the remaining technical features are not, but the prior art and the general components must be combined to form an overall technical solution corresponding to the patented technical solution in question, it can be deemed that the existing technical defense is established.
5. Identification of "main technical drawings" in the preemption defense
In the aforementioned Wang Yeci v. Xuzhou Huasheng Industrial Co., Ltd. case, the Supreme People's Court pointed out that the design drawings are the basic basis for product processing and inspection in the field of machinery manufacturing. The infringer has already designed the drawings of key components of the infringed product and other parts of the product are all general parts, it can be determined that it has completed the main technical drawings necessary for the implementation of the invention and creation, and it has made the necessary preparations for the production of the alleged infringing product. The preemption defense is established.
6. Examination of seller’s legal source defense
In the Baokou (Xiamen) Bathroom Co., Ltd. v. Guantao County Peilong Plumbing Installation and Maintenance Shop case of dispute over infringement upon utility model patent, the Supreme People’s Court stated that the establishment of the seller’s legal source defense needs to satisfy two requirements, both the objective requirement that the alleged infringing product has a legitimate source and the subjective requirement that seller has no subjective fault. The two requirements are related to each other. If the seller can prove that he complies with the lawful and normal market trading rules, the source of the products he obtains is clear, the channel is legal, the price is reasonable, and his sales behavior conforms to the principle of good faith and conforms to trading practices, he can be presumed to have no subjective fault. Under this circumstance, the right holder should provide counterevidence. When the right holder fails to provide further evidence sufficient to reverse the above presumption, the seller’s legal source defense shall be established.
7. Commitment of the seller’s reasonable expenses legal source defense is established
In the Guangzhou Surui Machinery Equipment Co., Ltd., v. Shenzhen Helitai Technology Co., Ltd., and the original defendant Guangdong Kuainv Biotechnology Co., Ltd. case of dispute over infringement upon utility model patent, the Supreme People’s Court pointed out that the legal source defense is only a defense exempting liability, not a non-infringement defense; the establishment of the seller’s legal source defense neither changes the infringing nature of the act of selling infringing products nor exempts the responsibility for stopping the sale of infringing products. The infringer shall still bear the reasonable expenses paid by the right holder for stopping the infringement.
8. Calculation of damages when the infringed party refuses to provide infringement account book materials without justifiable reasons
In the aforementioned Shenzhen Jixiang Tengda Technology Co., Ltd. v. Shenzhen Dunjun Technology Co., Ltd., the original trial defendant Jinan Lixia Hongkang Electronic Product Management Department, Jinan Lixia Haowei Electronic Product Management Department case of dispute over infringement upon invention patent, the Supreme People's Court pointed out that the right holder claimed to calculate the amount of damages based on the profit of the infringement and had completed the preliminary proof of the fact of the scale of the infringement. The accused infringer refused to provide the corresponding evidence materials on the basic facts of the scale of infringement without justifiable reasons, so that the basic facts used to calculate the profit of infringement could not be accurately determined. The defense reasons such as the contribution of the involved patent to its infringement profit may not be considered.
9. The scope and conditions of patent infringement administrative complaints constituting infringement warnings
In the VMI Holland Company, Cooper (Kunshan) Tire Co., Ltd. v. Sachi Huachen Machinery (Suzhou) Co., Ltd. case of non-infringement of patent, the Supreme People’s Court pointed out that the right holder only filed a patent infringement dispute request with the patent administrative department against some producers, sellers, and users of the alleged infringing product, resulting in the operations of producers, sellers, and users who did not participate in the administrative process in an uncertain state. It may be determined that the request for handling a patent infringement dispute constitutes an infringement warning for the above-mentioned producers, sellers, and users who have not participated in the administrative processing procedures.
10. Handling the relationship between temporary injunction and partial judgment
In the aforementioned VALEO SYSTEMES D'ESSUYAGE v. Xiamen Lukasi Automobile Parts Co., Ltd., Xiamen Fuke Automobile Parts Co., Ltd., and Chen Shaoqiang case, the Supreme People’s Court pointed out that the right holder applied for an act preservation to stop the infringement, and also applied for a partial judgment to stop the infringement. The people's court should not refuse to process the application for preservation of the act because of a partial judgment to stop the infringement is made but should examine the application for preservation of the act. If it meets the conditions for the preservation of the act, it shall make a ruling in time.
11. Procedures after a patent infringement case is heard when the right holder claims the patent right is declared invalid
In the Shenyang Flying Boat Digital Printing Equipment Co., Ltd. v. Qingdao Hanze Electric Co., Ltd. case of dispute over infringement upon invention patent, the Supreme People’s Court pointed out that, during the first-instance, the right holder’s claim of the patent right is declared invalid, but if the patent right in question remains valid on the basis of other original claims or new claims formed by amendment, the right holder shall be allowed to re-clarify the claims. If the right holder chooses the currently valid claim to claim the patent right, the court of first instance shall continue the trial; after it is clarified that the right holder still insists on claiming the right based on the invalidated claim, the court of first instance may rule to dismiss the prosecution.
12. Handling after part of the parallel technical solutions in a patent infringement case has been declared invalid
In the Shenzhen Yunchongba Technology Co., Ltd. v. the Shenzhen Laidian Technology Co., Ltd. case of dispute over infringement upon utility model patent, the Supreme People’s Court pointed out that during the lawsuit, the corresponding part of one or more parallel technical solutions in the patent claims involved was declared invalid, but the corresponding parts of the remaining parallel technical solutions remained valid, and the right holder continued to claim rights in accordance with the claims that remained valid, the Supreme People’s may dismiss the prosecution for the claim that declared the invalid part, and at the same time make a judgment on the claim that maintains the valid part.
13. The effect of voluntary waiver of claims in patent invalidation administrative procedures on patent infringement litigation
In the Shandong Yanggu Dasheng Pipe Co., Ltd., Shandong Zhuorui Dasheng Pipe Co., Ltd. v. Shunfang Pipe Co., Ltd. case of dispute over infringement upon utility model patent, the Supreme People’s Court pointed out that in the administrative procedure of invalidation of the patent in question, the right holder voluntarily waived the claim in the civil infringement case by deleting the claim, regardless of whether the validity of the administrative decision that recorded the waiver was finally determined, there is no possibility of reinstatement of the abandoned claims, and they can no longer be included in the scope of protection of patent rights in disputes of infringement. The basis of the right to claim infringement no longer exists, and the relevant claims can be rejected by judgment.
14. Handling of new evidence against existing technology in the review process
In the retrial of Foshan Yunmi Electric Technology Co., Ltd. v. Foshan Shunde District Midea Washing Electric Manufacturing Co., Ltd., the original trial defendant Shenzhen Kangzhi Technology Co., Ltd., and the original trial defendant Zhejiang Tmall Network Co., Ltd. case of dispute over infringement upon utility model patent, the Supreme People’s Court pointed out that if the parties did not file an appeal after the first instance judgment was made, and they argued against the existing technology on the grounds of new evidence in the retrial review procedure, then the existing technical defense claim will not to be reviewed.
