Article No.

Content

Commentary

1

In cases in which there are two or more claims, the patent holder should make clear in the complaint which claim(s) the defendant has allegedly infringed. If the claim(s) infringed is not listed or is not clear in the complaint, the People’s Court should seek clarification from the patent holder; If the patent holder does not clarify as requested, the People’s Court can dismiss the lawsuit.

• This article expands Article 1 of the Supreme Court Judicial Interpretation on Issues Concerning the Application of Law in Adjudication of Patent Infringement Disputes (I):
  • “The People's Court should determine the scope of protection of the patent according to the claim(s) put forward by the patent holder, in keeping with Article 59(i) of the Patent Law. The People's Court should permit the patent holder to change the claim asserted before deliberations in the hearing of first instance.”
  • “If the patent holder seeks a determination of scope on the basis of a dependent claim, the People's Court should determine the scope of the protection of the patent according to the additional technical features of the dependent claim and the technical features of the claim it is dependent on.”
• This article allows the court to clarify the scope of proceedings.
• The patent holder must provide evidence of infringement of the claim listed in the complaint.
• Considering the relaxation of the rules on amending claims during invalidation proceedings, it’s becoming more and more common to explain which claims are the subject of suit in advance of a hearing.

2

• If the claim(s) put forward by the patent holder in a patent infringement suit is invalidated by the Patent Reexamination Board, the People’s Court hearing the case can dismiss any suit based on the invalidated claim(s).
• If there is evidence that the invalidation decision for the above-mentioned patent claim(s) has been dismissed in an effective administrative judgment, the patent holder can then file another suit.
• If the patent holder chooses to file another suit, the statute of limitation on the litigation is calculated from the date the administrative judgment mentioned in the second paragraph of this article is served.

• This article has been an important measure in accelerating deliberations in patent infringement cases.
• Invalidation proceedings have become even more important.
• Another suit can only be filed when a judgment from the Beijing High People’s Court is issued.
• This takes around a year and a half at least.
• What happens if invalidation proceedings are launched again and the claim is once again declared invalid?
• Is it more appropriate to dismiss the suit on the first instance or the second instance?
• Issues to be dealt with on dismissal
• Do temporary injunctive measures need to be revoked?
• How do you deal with the evidence of the original hearing and the facts established in the original hearing?

3

In cases in which there has been a request to invalidate the patent rights because the description cannot be used to describe the claim(s) due to an obvious violation of section three and four of Article 26 of the Patent Law**, where this does not fall within the purview of Article 4 of this interpretation, the People’s Court should normally suspend the hearing of the patent infringement dispute; if there is no request for invalidation filed for the patent within a reasonable period of time, the People’s Court may determine the scope of patent protection based on the patent claim(s).

• A situation in which proceedings can be suspended which doesn’t involve a lack of novelty or inventive step.
• The “Anti-electromagnetic pollution clothing”  utility model patent case (CN200420091540) is an example of this. The single claim of the patent contained a functional feature as follows: “A. A kind of anti-electromagnetic pollution clothing, including tops and bottoms; B. Contained in the material of the clothing are metal meshes or membranes that function as shields; C. The metal mesh or membrane that functions as a shield is composed of metal strips or metal powder with a high electromagnetic permeability without remanence.”

However there was no clear definition of what constituted “high” electromagnetic permeability in the patent description and it was not clear to people of ordinary skill in the art what this referred to, and the defendant in the case (Bo Wanqing vs Shanghai Tianxiang) was judged to not have infringed.

• If you can’t determine the scope of the patent based on the claim(s), what do you do?
• In Nokia vs Huaqin, Huaqin was found to be not infringing as no implementation of the functional feature in the claim in question had been given in the description of the patent in question.
• This shows the court’s attitude to scope of protection for functional technical features.

4

In the case of ambiguity in the grammar, text, punctuation, drawings or symbols used in the claims, the description or the drawings, but where a person of ordinary skill in the art can reach a single possible understanding from reading the claims, the description and consulting the drawings, the People’s Court should make a finding in accordance with this single possible understanding.

• “A single possible understanding” is quite a high bar to meet.
• In the Supreme People’s Court 2010 Civil Appeal No. 871, the use of punctuation in the claims of utility model patent 200420017642.4 made it unclear if a list of materials – “magnesia gel bamboo fibers, wood fibers, plant fibers composite panels” were meant to denote a combination of all three “bamboo fibers, wood fibers and plant fibers” or a choice between them. On first instance the Guangzhou Intermediate People’s Court suggested that when the claims and description aren’t exactly the same and the description is broader than the claims, the claims should take priority. The product of the defendant, Tai Shan Pioneer Building Materials Co., Ltd (Pioneer), was thereby judged to be not infringing because the composite panels contained only magnesia gel and plant fibers, not bamboo (fibers) or wood fibers. This decision was then appealed to the Guangdong Higher People’s Court. The higher court cited the first part of Article 56 (It was Article 56 in the 2000 version of the law, but is now Article 59) of the Patent Law: “For the patent right of an invention or a utility model, the scope of protection shall be confined to what is claimed, and the written description and the pictures attached may be used to explain what is claimed.” Stating that the description clearly explains the claims, using the word “or” between the different components. It further stated that “bamboo fibers” and “wood fibers” are both forms of “plant fibers”, and by extension only one of any form of plant fiber, including bamboo, wood, yarn or cotton needs to be present in the implementation. The court also pointed to the function of the plant fibers, which is to strengthen the composite panel, to allow it to last longer and to make it environmentally friendly. It thereby found that the function of the “plant granules” and “plant fibers” in the allegedly infringing product have the same function as claim one of the patent and therefore the product was found to be infringing, overturning the judgment at first instance. The Supreme Court confirmed the judgment at second instance, rejecting a petition for a rehearing by Pioneer.
• In claim one of invention patent “CN1320512A”, a method for making smooth-type composite metallic shielding belt, the term "to make the plastic membrane form an uneven coarse surface of 0.04-0.09 mm in thickness" appears, and is not clarified in the description, except in the implementation. The patent owner accused other parties of infringing the patent at the Xi'an Intermediate People's Court. Although the alleged infringer suggested that the “thickness” mentioned in this part of the claim referred to the thickness of the uneven coarse surface and not the plastic membrane itself, the court found that, given the measurements specified in the implementation of the methods in the description, a person of ordinary skill in the art would understand it to refer to the thickness of the plastic membrane. This was confirmed on second instance, but the Supreme Court ordered a rehearing, which again confirmed the original judgment. The Supreme Court overturned the judgments on first and second instance and the rehearing, stating that the claims are not ambiguous and do not constitute an “obvious mistake” and could be understood by a person of ordinary skill in the art to mean “the coarse uneven surface of 0.04-0.09 mm in thickness of a plastic membrane” and not to mean “a plastic membrane of 0.04-0.09 mm in thickness”, and to construe it in any other way would constitute an illegal amendment to the claims.

5

When a People’s Court is determining the scope of a patent, the technical features listed in the preamble of independent claims, the features section and the references in subsidiary claims should all have limiting effect.

• The Supreme Court generally respects every technical feature in the patent holder’s claims.
• Harbin Industrial University Xinghe Industrial Co. Ltd. (Xinghe) sued Jiangsu Runde Pipe Industry Ltd for infringing a patent on steel strip reinforced plastic pipeline with independent claims which referenced other independent claims in the title of subject matter of the claims. The title of the subject matter of claim 2 of the invention, was “a method for making steel strip-reinforced plastic pipelines as described in claim 1”, and as “title of subject matter” is differentiated from “technical feature”, the Court of first instance determined that claim 2 could not be limited by the technical features in claim 1, given that they are independent claims and that the title of the subject matter is not a limiting technical feature and therefore found Runde to have infringed claim 2.  This verdict was overturned on second instance. The Supreme Court held the second verdict to be correct, stating that the title of subject matter should be considered in determining the scope of the patent. The Court added that although citations between independent claims don’t always have a limiting effect, their influence on the scope of the patent should be considered, and in this case it was clear that the limiting effect did apply.

6

• The People’s Court can use other patents with a divisional relationship to the patent at issue, their examination documents and effective judgments on their patent validity to interpret the patent at issue.
• Patent examination documents include all formal materials submitted by the patent applicant or patent holder during the examination, reexamination or invalidity proceedings of the patent, office actions, the minutes of meetings, oral hearing transcripts, effective reexamination judgments and invalidity proceeding judgments created by the patent administration department of the State Council and the Patent Reexamination Board.

• Clarified the use of divisional applications in determining the scope of claims.
• Does not clarify whether other applications for the same subject matter from the same applicant can be used to determine the scope of claims.
• Does not clarify whether patent applications in the same family in other jurisdictions can be used to determine the scope of claims.
• Clarified the scope of patent examination documents
• Includes Office Actions (and the response to them)
• Includes effective reexamination decisions (and response)
• Includes effective invalidation decisions (and response)

7

• In the event that the allegedly infringing technical solution includes added technical features on the basis of all technical features of a close-ended claim for a composition, the People’s Court should rule that the allegedly infringing technical solution does not fall within the scope of protection, but an exception should be made when the additional technical features are unavoidable impurities of normal quantity.
• The abovementioned close-ended claim for a composition does not normally include claims relating to traditional Chinese medicine.

• Mainland Chinese courts don’t recognize semi-open-ended claims
• “Mainly consisting of…” – open-ended
• “Margin of…” – closed-ended
• The Supreme Court overturned the judgments at first and second instance in a case in which Hu Xiaoquan sued Zhendongtaisheng Pharm Corp. for patent infringement over patent CN1284525C, “Production method of disodium adenosine triphosphate and magnesium chloride injection”. Claim 2 of the patent at bar reads “An injectable freeze-dried powder of disodium adenosine triphosphate and magnesium chloride, with a ratio of 100 mg to 32 mg.” The infringing product consisted of injectable disodium adenosine triphosphate and magnesium chloride, with 100 mg of the former and 32 mg of the latter. The description listed all adjuvants as sodium bicarbonate and arginine.  On first and second instance the courts found that the product had infringed the patent on the basis of claim 2, however this was reversed by the Supreme Court, which construed the claim language as being close-ended, and therefore the presence of the adjuvants meant that the alleged infringing product differed from the scope of the patent.
• The Hu Xiaoquan case is very controversial and goes against conventional understanding.
• Failing to consider the actual contribution of an invention and instead focusing on the formation of the claims diverges from normal practice by Mainland Chinese courts, this suggests that the Supreme Court is starting to pay more attention to claim language.
• Using a judicial interpretation to confirm this methodology has changed the writing style of claims.

8

• A functional feature refers to an innovation or effect brought about through technical features structures, compositions, steps, conditions or their interrelation, towards a limiting technical feature, unless a person of ordinary skill in the art, after only reading the claim, can directly and clearly confirm the embodiments to have achieved said function or effect.
• When compared with the embodiment of the function or effect referred to in the previous clause, as recorded in the description and drawings, which must have a technical feature, if the corresponding technical features of the alleged infringing technology employ basically the same method, embody the same function, or reach the same effect, and a person of ordinary skill in the art can conceive of such a solution without having to exert themselves in creative labour when alleged infringement occurs, the People’s Court shall find such corresponding technical features as identical or equivalent to the functional features.

• The fourth article of Judicial Interpretation No. 4 2009 states: “Where a claim describes a technical limitation through functions or effects, the People’s Court shall determine the contents of the technical limitation according to the specific embodiments and the equivalent embodiments  of the functions or effects described by the specification and figures.”
• Paragraph of 8 of Section 3.2.1. of Chapter 2 of Part 2 of China’s Examination Guidelines states:
• “Technical feature defined by function in a claim shall be construed as embracing all the means that are capable of performing the function. For a claim containing a feature defined by function, whether the definition can be supported by the description shall be examined.
• If the function is carried out in a particular way in the embodiments of the description, and the person skilled in the art would not appreciate that the function could be carried out by other alternative means not described in the description;
• Or the person skilled in the art can reasonably doubt that one or more means embraced in the definition by function cannot solve the technical problem aimed to be solved by the invention or utility model and achieve the same technical effect, then the definition by function as embracing the other alternative means or means incapable of solving the technical problem shall not be allowed in the claim.
• The Judicial Interpretation and the examination guidelines take a different attitude to functional features, which makes for a rather awkward state of affairs.
• They can’t be avoided, but won’t get the scope of protection that they should be awarded.
• Overly broad scope for functional features has a huge influence on the stability of claims.
• The exception listed in the first clause of Article 7 is extremely limited.
• How can you deal with a situation in which an implementation of the functional feature is not described in the description?
• Or when the implementation of the functional feature is not completely identical to its description in the claim?
• If patent invalidation proceedings find that a person of ordinary skill in the art could think of alternative means by which the function could be carried out not described in the description, can these alternative means become embodiments of the functional feature?
• Definition of an “indispensable technical feature”?
• Suggestions for description drafting:
• Add direct definitions of technical terms mentioned in the claims.
• Clarify in each implementation if the feature is indispensable.
• Try to add as many implementations as possible to the description.

9

If the allegedly infringing technical solution can’t be used in the environment as defined by the environmental features in the claim, the People’s Court shall find that the allegedly infringing technical solution does not fall within the protection scope of the patent.

• What constitutes environmental features?
• Description of the technical features of the background conditions in which the invention is used.
• The environmental features of use have a limiting effect on the protective scope of the patent.
• How do you carry out an infringement comparison for environmental features of use?
• The 23^rd Article of the Guidelines for Determining Patent Infringement issued by the Beijing High Court states: “Where a claim of a patent for product invention or utility model does not define the field of application or the use, the field of application or the use generally does not function to delimit the protection scope of the patent.”
• There is a conflict between the Guidelines for Determining Patent Infringement and Article 9.
• In the “Rear Derailleur Bracket” patent infringement case (2012 Civil Appeal No. 1, patent ZL94102612.4), the court of first instance found that the particular bicycle bracket body and the means by which it was installed as stated in claim 1 were the indispensable technical features of the patent. The allegedly infringing product can be installed by other means on the bracket body mentioned in claim 1, and can be installed on other brackets. As the allegedly infringing product had not yet been installed on a bicycle, whether or not it would embody the bicycle bracket and installation method as listed in claim 1 of the patent cannot be ascertained, so the product was judged to be non-infringing.
• The environmental features written in the claims are indispensable technical features of the claim, and have a limiting effect on the protective scope of the patent.
• What is the extent of the limiting effect of the environmental features of use on the patent scope?
• The extent of the limiting effect is how big a limiting effect the environmental features of use have on the patent claim, in other words, does matter protected by the patent have to be used in the environmental features of use or does it just have to be possible for them to be used in those conditions?

10

In a claim, if the technical feature of a product is defined by a preparation method, and the preparation method of the allegedly infringing product isn’t the same or equivalent to it, the People’s Court should find that the allegedly infringing technical solution does not fall within the protective scope of the patent.

• In Article 3.1.1 of the second chapter of part 2 of China’s Patent Examination Guidelines, it is stated: “Where one or more technical features of a product claim cannot be clearly defined by either features of structure or features of parameter, it is permissible to define the technical features by virtue of features of process. However, the subject matter of the product claim defined by the features of process is still the product, and the actual definitive effect of the features of the process depends on what impact they may impose on the claimed product per se.”
• Article 10 of the judicial interpretation is directed at product technical features, not product claims; therefore it has a larger field of application, and is less clear.
• In terms of product claims, the product by process method is unable to include products already extant, and in infringement analysis one is unable to avoid a method features comparison, therefore, it should be used very prudently.

11

Where a method claim does not specifically record the sequence of the technical steps, but a person of ordinary skill in the art, after reading the claim, specification and drawings, can directly and clearly think out the steps that should be carried out in specific order, the People’s Court should find that the sequence of steps limits the protective scope of the patent.

• In the construction of a method claim, the order of steps often becomes a point of contention.
• The standard of “directly” and “clearly” is lower than the standard of “directly, without any doubt”.
• In the description, “next”, “then” and “following this”, can all be considered as meeting the “directly” and “clearly” standard.
• In the description you can add a description of changes to the sequence of steps.

12

When terms such as “at least”, or “not more than” are used in a claim to define a numerical feature and a person of ordinary skill in the art, after reading the claims, the description and consulting the drawings would think that the patented technical solution particularly emphasizes the limiting effect of the term on the technical feature, and the rights holder claims that a different numerical feature is equivalent, the People’s Court should not support this claim.

• The equivalence of numerical ranges has always been problematic.
• Article 3.2.2 of the second chapter of part 2 of China’s Patent Examination Guidelines states: “Generally, such terms as ‘about’, ‘approximately’, ‘etc.’, ‘or the like’, and the like shall not be used in a claim, since they are likely to make the protection extent of the claim unclear. Where in a claim there exists such a term, the examiner shall make a judgment as to whether the use of such term makes the claim unclear according to the specific situation, and, if not, the use of such term is permitted.”
• Should one use terms like “about” in claims?
• If one deletes terms such as “about” on the request of an examiner, does this constitute prosecution history estoppel?

13

In cases in which the rights holder proves that the amendments or statements made by the applicant or patentee to limit the claims, description or drawings during the examination or invalidation proceedings have been explicitly denied, the People’s Court shall find that the amendments or statements have not resulted in abandonment of the technical solution.

• What constitutes “abandonment”? Are statements or amendments admissible by examiners an appropriate prerequisite?
• Even if the defendant does not assert prosecution history estoppel, the court can apply the prosecution history estoppel principle on the basis of the facts of the case.
• In patent litigation over patent ZL200720069025.2 for “a steering engine”, Zhongyu Electronics sued Shanghai Nine Eagle Electronic Technology Co.,Ltd. The patent had six claims, the third of which originally read as follows: “The steering engine of claim 2 wherein a strip of carbon film and silver film is printed on the driving circuit board of the steering engine, said bracket is secured to the driving circuit board of the steering engine via a securing aperture thereon, and the electric brush on the bottom side of the slider keeps in touch with the carbon film and the silver film.” The infringing product had a copper film in place of the silver film, which the court of first instance found to be equivalent. In invalidity proceedings claims 1-2 and 4-6 were found to be invalid, and on this basis, as claim 3 is dependent on claim 2, the court of second instance, found the product to be non-infringing. The Supreme Court reversed the decision at second instance, stating that the subject matter and protective scope of a dependent claim should not be changed by the invalidation of the claim on which it depends. The court also stated that abandonment is as a result of statements or amendments made by the patentee or applicant, but does not apply when a claim on which a valid claim is dependent is invalidated.

14

When determining the average consumer’s level of knowledge and cognitive capacity in relation to a design, the People’s Court should consider the design freedom of products identical to or similar to that of the patented design when the alleged infringement occurs. If broader design freedom exists, the People’s Court may find that the average consumer may find it difficult to notice minor differences among distinct designs. If limited design freedom exists, the People’s Court should find that it is usually easier for an average consumer to notice the minor differences among different designs.

• Article 11 of the first judicial interpretation states:
• “[the People’s Court shall] … conduct a comprehensive determination based on the total visual effect of the design;”
• “[…] design features that are determined mainly by technical functions as well as features which do not affect the total visual effect such as materials and internal construction shall not be considered.”
• “The following conditions usually have more influence on the total visual effect of a design:
• Parts of the product that in normal use are easily observed directly relative to other parts;
• Design features of the granted design that differ from existing designs relative to other design features of the granted design.”
• “If the alleged infringing design does not differ from the granted design in terms of total visual effect, the People’s Court should determine the two to be the same; if no substantial difference in total visual effect exists, the two should be determined to be similar.”
• Reasons for the narrowing of product design freedom:
• Restricted by the shape of other components that are used with it;
• Limited by function capacity – electrical equipment;
• Restricted by the limits of the size of the product itself;
• Restricted by the limits of the product’s features—container-like products.
• The 2010 Administrative Appeal to the Supreme People’s Court:
• The Patent Reexamination Board found that motorcycle wheels basically consist of the rim, the spokes and the hub cap. The round rim is a normal part of a wheel design, whereas shape designs of rims and spokes have a clear influence on the entire visual effect of the wheel.

15

In a design patent for a set of products, if the allegedly infringing design is identical to or similar to one of the designs, the People’s Court should find that the allegedly infringing design falls within the protective scope of the patent.

No comment.

16

When the design patent for an assembled product can only be assembled in one way and the allegedly infringing design is identical to or similar to the design in the assembled state, the People’s Court shall find that the allegedly infringing design falls within the protective scope of the patent.

No comment.

17

For a design patent on a product with variable states, if the allegedly infringing design is identical to or similar to the design in all the various states of use as illustrated in the various state views, the People’s Court should find that the allegedly infringing design falls within the protective scope of the patent. If the allegedly infringing design lacks the design of one state of use, or is neither identical to or similar to the design in one state of use, the People’s Court should find that the allegedly infringing design does not fall within the protective scope of the patent.

• A change to design patents and a rise in their importance.
• It’s difficult for the entire visual effect to be judged as the same when a design lacks  a single use case or if the use case is different or dissimilar.
• Unrelated to GUI, is the GUI similar to an entire product?
• Negotiation with invalidation standards:
• The Patent Examination Guidelines demands that products that change state must provide drawings with all state views.
• How does one protect the design of products with varying states?

18

In cases in which a rights holder, according to Article 13 of the Patent Law, requests an entity or individual pay a reasonable fee for implementing the invention during the period between the date on which the invention patent application has been published and the date on which the patent has been granted, the People’s Court may determine reasonable fees by referring to related patent royalties.

When the protective scope claimed by the applicant in a published invention patent differs from the protective scope of the granted invention patent, and the technical solution at bar falls within both scopes, the People’s Court should find that the defendant has implemented the invention during the period. If the technical solution at bar falls within only one of the scopes, the People’s Court should find that the defendant has not implemented the invention during the period.

After the grant of an invention patent is announced, when a person uses, offers for sale, or sells a product that has been manufactured, sold or imported by another person during the period in question for business purposes and without the permission of the patentee , and this person pays or has undertaken to pay the appropriate fee as provided by Article 13 of the Patent Law, the People’s Court shall not support the right holder’s claim that such use, offer for sale or sale infringes the patent.

No comment.

19

Where a sales contract for a product has been formulated in accordance with the law, the People’s Court should find that it constitutes a sale, as provided by Article 11 of the Patent Law.

• Clarifies the definition of sale

20

Where a subsequent product obtained by further processing or treating of the products made directly from a patented process are further processed or treated, the People’s Court shall find that such re-processing or re-treatment does not belong to “use of product directly obtained from the patented process” as provided in Article 11 of the Patent Law.

• Article 13 of the 2009 Judicial Interpretation states:
• “With regard to an original product obtained through the use of a patented process, the People’s Court should determine this to constitute a product directly obtained through the patented process under Article 11 of the Patent Law.”
• “With regard to the acts of further processing or treating the above original product to obtain a further product, the People’s Court should determine  this to constitute use under Article 11 of the Patent Law by which a product is directly obtained by the patented process.”

21

Where one clearly knows that a product is the raw material, equipment, part or intermediate material exclusively for the implementation of a patent and, without authorization from the patentee and for production or business purposes, supplies this product to another person who has infringed the patent, if the rights holder claims that the supplier’s act constitutes “assisting the tortious acts of others” as prescribed under Article 9 of the Torts Liability Law, the People’s Court should support the claim.

Where one clearly knows that a patent has been granted on a product or method and, without authorization from the patentee and for production or business purposes, actively induces another person to implement the patent, if the rights holder claims that the inducer’s acts constitute “abetting the tortious acts of others”, as prescribed under Article 9 of the Torts Liability Law, the People’s Court should support this claim.

• The Tort Law:
• Article 8  Where two or more persons jointly commit a tort, causing harm to another person, they shall be liable jointly and severally.
• Article 9  One who abets or assists another person in committing a tort shall be liable jointly and severally with the tortfeasor.

• Direct Infringing behaviour
• Subjective awareness
• Awareness + Specific Use + Provision
• Awareness + Active Inducement

22

In a prior art defense or prior design defense raised by the alleged infringer, the People’s Court should define the prior art or prior design in accordance with the Patent Law effective at the application date of the patent.

• Applicable to the expansion of prior art after the amendment to the Patent Law
• According to the normal way of dealing with things, the application date is used as a division line when applying for changes to the content of an application; changes made relating to patent infringement use the date of filing of the lawsuit as a division line.
• The definition of prior art borrows the notion of application date from the application process, in line with the principle of fairness.

23

Where the allegedly infringing technical solution or design falls within the protection scope of the prior patent in dispute, if the alleged infringer raises a non-infringement defense on the grounds that his technical solution or design has been granted a patent, the People's Court should not support this defense.

• Two forms of defense:
• The allegedly infringing technical solution is granted a patent
• The allegedly infringing technical solution is more innovative than the prior art.

Clarifies that no matter what kind of patent is granted to the allegedly infringing technical solution, it does not constitute a non-infringement defense

24

Where the recommended national, industrial, or local standards have explicitly indicated information of an essential patent, if an alleged infringer raises a non-infringement defense on the grounds that implementing such a standard does not require a license from the patentee, the People’s Court generally should not support its defense.

Where the recommended national, industrial or local standards have explicitly indicated  information of an essential patent, when the patentee and an alleged infringer negotiate terms for licence of the patent, if the patentee willfully violates the fair, reasonable and non-discriminatory principle, comprehensively consider such factors as the innovation level of the patent, its effect in the standard, the technical field of the standard, nature of the standard, the implementation scope of the standard and relevant license terms.

Where laws or administrative regulations have other stipulations on the implementation of patents in a standard, such provisions should prevail.

No comment.

25

Where one uses, offers for sale or sells any infringing product for production or business purpose without knowing that the product has been made and sold without authorization from the patentee, and one has provided evidence to prove the legitimate source of the product, if the rights holder seeks injunctive relief against such use, offer for sale or sale, the People’s Court should support it, unless the user of the allegedly infringing product provides evidence to prove that they have already paid reasonable compensation for the product.

“Without knowing” as stated in the first paragraph of this Article means both “actually not knowing” and “should not know”.

“Legitimate source” as stated in the first paragraph of this Article means that the product has been acquired by normal commercial means, such as through a lawful sales channel. To prove a “legitimate source”, the person who uses, offers for sale, or sell the product should provide relevant evidence consistent with transaction norms.

• Sellers who have a legitimate source do not have liability for infringement damages
• An injunction against sales extends to sellers with a legitimate source
• The revenue of sellers with legitimate sources can serve as evidence of profit from infringement by the infringer
• Injunctions may result in large losses for well-intentioned retailers.
• The addendum, stating “without knowing” + “legitimate source” offers an increased level of protection for well-intentioned retailers.

26

Where the defendant commits patent infringement and the patentee requests the court for an injunction, the People’s Court should support the claim, but the court may, in light of national interest or public interest, not grant the injunction against the defendant, and order the defendant to pay reasonable fees instead.

• What constitutes national and public interest?
• How can you confirm what reasonable fees are?
• King Glass Engineering Group vs Shenzhen Airport and Norinco
• In the US, no injunction can be issued if liability for damages can be applied. In China, it is the opposite and if infringement is ongoing, a judge should order an injunction. One notable exception to this was when King Glass Engineering Group sued Shenzhen Airport Co. Ltd and North International Cooperation Co. Ltd. (Norinco) for patent infringement for a connection device in a glass wall. The plaintiff requested an injunction to cease infringement as well as damages. The Shenzhen Intermediate People's Court determined that infringement had occurred and imposed an injunction on Norinco as well as ordering them to pay damages. The airport was asked to pay damages to the plaintiff, but no injunction was imposed on the airport. Although an injunction should have been imposed, the judge considered the airport to be a special case, and that an injunction would be unrealistic and would inflict harm on society.
• In Wuhan Jingyuan Environment Project Tech Inc. v. Kubota Kasui and Others, the Supreme Court found the patent for a flue gas desulphurization system to be infringing, but refused to grant an injunction because an injunction would have a huge impact on the public interest of Fujian, given that the system had already been installed in a factory there.

27

Where it is difficult to determine the actual loss suffered by the rights holder due to infringement, the People’s Court shall ask the rights holder to provide evidence on the profit gained by the infringer from the infringement according to Article 65(1) of the Patent Law. Where the rights holder has provided preliminary evidence on profit gained by the infringer, and the account books and documents on the patent infringement are mainly held by the infringer, the People’s Court may order the infringer to provide such books and documents. If the infringer refuses to provide those books and documents without justification or provides false books and documents, the People’s Court may determine the profit gained by the infringer from the infringement according to the rights holder’s claim and evidence provided by the rights holder.

• Contrast to the system for obstruction of evidence outlined in the Trademark Law
• Trademark Law Article 63: “Where the right holder has exhausted its efforts in discharging the obligation of burden of proof, but the account books and materials related to the infringing acts are mainly controlled by the infringer, the people's court may, for the purpose of determining the amount of damages, order the infringer to submit account books and materials related to the infringing acts. Where the infringer fails to provide such account books or materials or provides false account books or materials, the people's court may render a judgment on the amount of damages in reference to the claims of the right holder and the evidence furnished thereby.”

• Protection of the trade secrets of the defendant
• One of the most important reasons a defendant wouldn’t provide account books is to protect trade secrets
• How the court deals with trade secret related evidence

28

Where a rights holder and an infringer have agreed on the amount  of damages or the ways of calculating damages according to law, and in a patent infringement lawsuit, it is requested to determine the amount of damages based on the agreement, the People’s Court should support the request.

• When parties are cooperating
• Between licensors and licensees
• A useful weapon in deliberate infringement or repeated infringement
• Reduces the burden of proof on the rights holder in patent infringement cases
• Can infringement cases be transformed into breach of contract cases?

29

After a decision for declaring the patent invalid has been made, if a party files a petition for retrial according to law based on the invalidation decision and requests to revoke the infringement judgment or mediation document that was made by the People’s Court before the invalidation decision but has not yet been enforced, the People’s Court can rule to suspend the retrial examination, and rule to suspend the enforcement of the original judgment or mediation document.

Where the patentee provides a sufficient and valid guarantee with the People’s Court and requests to continue to enforce the judgment or mediation documents mentioned in the preceding paragraph, the People’s Court shall continue to enforce; where the infringer provides a sufficient and valid counter guarantee with the People’s Court and requests to suspend the enforcement, the People’s Court should approve. Where an effective judgment of the People’s Court has not withdrawn the decision for declaring invalidity of a patent right, the patentee should compensate the losses caused to the other party due to continuation of enforcement; where the decision for declaring invalidity of a patent right has been withdrawn by the effective judgment of the People’s Court and the patent right is still valid, the People’s Court may directly enforce the above counter guaranteed properties according to the judgment or mediation documents mentioned in the preceding paragraph.

• Enforcement procedural rules
• Patent invalid + not enforced = suspended
• Guarantee and counter-guarantees

30

Where no action is filed with the People’s Court against an invalidation decision within the legally prescribed time limit, or where an action has been filed but the effective judgment does not revoke the invalidation decision, if a party files a petition for retrial according to the law and requests to revoke the infringement judgment or mediation document made by the People’s Court before the invalidation decision but which has not yet been enforced, the People’s Court shall grant the retrial. If a party requests termination of enforcement of the infringement judgment or mediation documents made by the People’s Court before the invalidation decision but which have not been enforced, the People’s Court should rule to terminate the enforcement.

• Enforcement rules
• The original judgement or mediation document states that patent infringement occurred
• The original judgement or mediation document is already in effect and is ready to be enforced
• A later patent invalidation request results in the invalidation of the patent
• Through applying for a retrial, the enforcement of a previous judgement or mediation document is suspended.

31

This interpretation shall take effect on April 1st, 2016. In case of any inconsistency between relevant judicial interpretations previously released by the Supreme People’s Court and this Interpretation, this Interpretation shall prevail.

This interpretation will be adopted by the People’s Court for cases on first and second instance; For cases that ended before this interpretation came into effect, this interpretation should not be used in hearing a retrial.