Retroreflective Article and Method of Making the Retroreflective Article
3M Company v. Zhejing Daoming Investment Co., Ltd.- Patentee's Burden of Proof in Infringement Case Involving Patented Process for Obtaining New Product (Civil Judgment (2011) Hu Gao Min San (Zhi) Zhong Zi No.73 by Shanghai High People's Court on May 2, 2012)
According to Article 61, Paragraph 1 of the Chinese Patent Law (2009), a patentee may choose to shift its burden of proof for infringing process to the defendant when the patented process is for obtaining new product. However, to take use of such convenience, the patentee has to satisfy some preconditions. This case illustrates that the patentee have to submit preliminary evidence regarding "new product." Based on this case, this article will discuss all the preconditions for application of Article 61, Paragraph 1 with an overview.
3M Company (hereinafter "3M") owns a Chinese invention patent (No. ZL95193042.7) named as "Retroreflective Article and Method of Making the Retroreflective Article". 3M sued Zhejing Daoming Investment Co., Ltd. (formerly Zehjiang Daoming Reflective Material Co., Ltd., hereinafter "Zhejinag Daoming" ) for its products infringing Claims 1, 17 and 19 and the manufacture process infringing Claim 10 of its patent.
Claim 10 is the method of making the retroflective article as claimed in the same patent. Regarding the infringement upon Claim 10, the Court requires 3M to provide evidence to prove that its patented process is for obtaining a new product. Since 3M petitions to shift the burden of proof to Zhejiang Daoming. 3M and the Court differs as follows:
3M argues that the No. 15959 Invalidation Decision of the Chinese Patent Review Board (the PRB) rendered on December 27, 2010 maintained the validity of the patent. Such decision has confirmed the novelty and inventiveness of the patent and fulfils the burden of proof regarding new product. Since Zhejiang Daoming does not furnish proof showing that its manufacture process is different from the patented process, the infringement should be established.
The Court of the first instance held that: to shift the burden of proof, the patentee has to satisfy some preconditions. In this case, the PRB's decision cannot waive the 3M's submission of such evidence. The patentee still needs to prove its product or the manufacture process has not been known by the public prior to the application date of the patent. Since 3M does not provide the evidence regarding its new product, the burden of proof for infringement cannot be shifted to Zhejiang Daoming. 3M should bear the unfavorable consequences of no infringement.
Thus, the Court of the first instance held that the infringement of Zhejiang Daoming based on claim 10 is not established due to lack of evidence. The court of the second instance affirmed.
First, according to Article 61, Paragraph 1, of the Chinese Patent Law (2009), where any infringement dispute relates to an invention patent for a manufacture process of a new product, the defendant manufacturing the identical product shall provide proof to show that the process of the product is different from the patented process. Based on this provision, there are two preconditions to the application of this Article: the infringement involves "new product," and the sued infringer manufactured the "identical product."
The first question is what kind of product should be deemed as "new"?
According to Rule 17 of Interpretations of the Supreme People's Court on Certain Issues Concerning the Application of Law in the Trial of Patent issued by the Supreme People's Court (SPC), if the product or the manufacture process thereof has been known to the public, the people's court should not deem such product as new product under Article 61, Paragraph 1 of the Chinese Patent Law (2009). In view of this, the patentee must establish that the product or the manufacture process thereof has not been known to the public. Common practice tells us the proof of such non-occurrence is difficult to provide as there usually has no evidence left for submission. In light of the foregoing, the difficulty in proof of "new product" is obvious.
In 2012, the SPC's retrial case for Xi'an Qinbang v. Wuxi Longsheng has given more practical opinions.1 The SPC held that: if the manufacture process brings the resulted product's new structural feature(s) which is/are different from the similar product prior to the application date of the patent, the resulted product should be deemed as new product in Article 57, Paragraph 2 of the Chinese Patent Law (2001).2
In Guidelines for Judgment on Patent Infringement issued by the Beijing High People's Court in September, 2013 (hereinafter BHPC's Guideline), opinions are provided regarding "new product" which refers to the product first manufactured and has significant difference in terms of composition, structure, or quality, property and function from the similar products prior to the application date of the patent.
Regarding the "new product," we are of the view that some aspects below may deserve attention:
- "New product" does not share the same meaning of "novelty" of patentability. With reference to the Article 34, Paragraph 1 for shift of burden of proof and Article 27, Paragraph 1 for patentability of the Agreement On Trade-related Aspects of Intellectual Property Right (TRIPS), both use "new" instead of different words.3 However, in a piece of document from the WIPO in 1986 regarding Article 24 of Patent Law Treaty (similar to Article 34, Paragraph 1 of TRIPS4), it indicates that "new product" means absolute (worldwide) sense but does not necessarily have the same meaning as the term 'new' in the context of novelty and in particular, the product pending but not yet published patent application should not be deemed as lacking novelty for the purpose of the "reversal of the burden of proof."5
- The comparison standard for novelty may be used as reference in
judging "new product." Although, BHPC's Guideline
sets forth that the difference between "new product" and
the similar products prior to the application date of the patent
should be "significant," in the retrial case of
Xi'an Qinbang v. Wuxi Longsheng, the SPC held that
Considering the practicability, it may be easier to take use of the comparison standard regarding the examination of novelty. If the standard for "new product" was set higher than that for "novelty," it would be complicated to judge what kind of "significant difference" should be recognized and it may involve the examination of "inventiveness." However, we are of view that, the application of Article 61, Paragraph 1 of the Chinese Patent Law (2009) should not be dependent on the "significance" of difference of the patented product from the similar products or the inventiveness thereof.
- What kind of evidence could serve as "preliminary evidence"? It is worth noting that the patent's validity in this case had been maintained by the PRB. However, the Court did not waive 3M's burden of proof for submission of "preliminary evidence."
According to the PRB's invalidation Decision No. 15959, it is Zhejiang Daoming filing the invalidation request based on the ground such as inventiveness, lack of clarity. Although novelty is not raised as an argument, a patent should have novelty if it is deemed as inventiveness. We are of the view that the burden to submit such "preliminary evidence" should not be too strict, because it is easier for the defendant to provide rebuttable evidence. Thus, to exclude the PRB from using the "preliminary evidence" in invalidation decision remains for the public's discussion.
In addition, a judge comments in his article (not regarding this case) that, a patentee could submit a Search Report, and the Court may judge based on preponderance of evidence in favor of the patentee.6 Besides, for a patent involving drug, the patentee could consider submitting the court documents and materials to China Food and Drug Administration for new drug approval.
Second, a patentee should notice the difficulty of proof for manufacture of "identical product" under some circumstances.
In the SPC retrial case of ZHANG Xitian v. Ouyi Pharmaceuticals Co., Ltd. in 2010,7 the SPC decides that: when deciding whether a process patent is the patent of manufacture process for new product, it should be based on "the product directly obtained by the patented process." "The product directly obtained by the patented process" is the original product obtained by the patented process and does not include the product obtained by further process of the original product.
In the case of ZHANG Xitian v. Ouyi Pharmaceuticals Co., Ltd., "D-Tartrate of S-(-)-Amlodipine in combination of one DMSO-d6" is the product directly obtained by the process of Claim 1. Although, ZHANG Xitian provides the evidence proving the defendants manufactured Amlodipine Maleate and its tablets with S-(-)-Amlodipine as raw material, he cannot submit the evidence that the defendants manufactured "D-Tartrate of S-(-)-Amlodipine in combination of one DMSO-d6" ("D-Tartrate of S-(-)-Amlodipine in combination of one DMSO-d6" is a kind of intermediate for manufacture of S-(-)-Amlodipine). Thus, the SPC rejected Zhang Xitian's petition for his failure to prove the defendants manufactured the identical product with the product directly obtained by the patented process. The burden of proof shall not be shifted to the defendants even if the defendant's process is different from the patented process.
From the retrial case above, we understand that the patentee needs not only to prove the product directly obtained by the patented process is a "new product," but also to prove that the defendant manufactured "identical products" instead of "the product using the identical products." Another article indicates that the case of ZHANG Xitian v. Ouyi Pharmaceuticals Co., Ltd. limited the application of Article 61, Paragraph 1 of the Chinese Patent Law (2009).8 In accordance with this case, if the product directly obtained by the patented process ("original product") is the intermediate for a drug, it is hard to discover whether the sued infringing product contains the intermediate. Even if it is confirmed by technical analysis that the intermediate is contained, it is still hard to prove that the defendant manufactured the intermediate.
Based on the above, the convenience under Article 61, Paragraph 1 of the Chinese Patent Law (2009) is still open for observation in practice and the concepts and standard for this provision need to be further clarified. Patentee should not overlook its own burden of proof regarding "new product" and "manufacture of the identical product."
1.Xi'an Qinbang Telecom Material Co., Ltd. v. Wuxi Longsheng Cable Material Co., Ltd., SPC (2012) MinTi Zi No.3 (August 24, 2012).
2.The Chinese Patent Law (2001) applied in this retrial case has been amended in 2008 and Article 57, Paragraph 2 thereof corresponds to the Article 61, Paragraph 1 of the current Chinese Patent Law (2009).
3.Article 34, Paragraph 1:...Therefore, Members shall provide, in at least one of the following circumstances, that any identical product when produced without the consent of the parent owner shall, in the absence of proof to the contrary, be deemed to have been obtained by the patented process: (a) if the product obtained by the patented process is new....
Article 27, Paragraph 1: Patents shall be available for any inventions, whether products or processes, in all fields of technology, provided that they are new, involve an inventive step and are capable of industrial application.
4.Nuno Pires de Carvalho, The TRIPS Regime of Patent Rights, Kluwer Law International, 2005, P386.
5."It appears that the term 'new' is meant in the absolute (worldwide) sense but does not necessarily have the same meaning as the term 'new' in the context of novelty as a condition of patentability (see paragraph 52). In particular, products which are the subject of pending but not yet published patent applications and which therefore are considered as prior art in respect of subsequent patent applications (see document HL/CE/III/2 Supp. 3), do not seem to be treated as lacking novelty for the purposes of the reversal of the burden of proof.", WIPO document HL/CE/III 2 Supp. 4 of November 27, 1986, from Nuno Pires de Carvalho, The TRIPS Regime of Patent Rights, Kluwer Law International, 2005, P386.
6.Jun TAO, The recognition of new product and allocation of burden of proof in infringement case of process patent. Intellectual Property Right Daily, 2013-09-11, Page 008.
7.ZHANG Xitian v. Ouyi Pharmaceuticals Co., Ltd., et. al., SPC (2009)Min Ti Zi No. 84 (September 9, 2010)
8.Huaiwen HE, "Extended protection" and reversal of burden of proof in respect of patented process for obtaining new product: comments on the Supreme People's Court's review of Zhang Xian Case, China Patents and Trademarks No.2, 2011, Page 3-10.