China: Repetitive Litigation Based On The Principle Of Double Jeopardy Zhiming LI v. Wuhan Jinchen Industrial Co.,Ltd. (Article No. 29 From "China Patent Case Review 2015" by Beijing East IP Ltd.)

Children Toothbrush

Zhiming LI v. Wuhan Jinchen Industrial Co.,Ltd. Litigation Based on the Principle of Double Jeopardy (Civil Judgment (2011) Shan Zhong Fa Min San Chu Zi No.104 by Shantou Intermediate People's Court on September 3, 2012)

Repetitive litigation, as a legal concept, relates to the principle of double jeopardy (non bis in idem). The principle of double jeopardy is an important principle that is commonly involved in the civil legal practice, and is also an important principle in the Chinese legal system in accordance with two basic value goals of civil litigations, i.e., efficiency and justice. The principle originated from a basic legalprinciple and system about "consumption of litigious right" in the Roman law. The so-called consumption of litigious right refers to the fact that all of the litigious rights would be consumed due to a litigation dependency, and the second litigation dependency is not allowed for the same litigious right or petition right. That is, once a case is in a litigation dependency, a claim cannot be put forward with respect to this case.

Nowadays, this principle is not recorded definitely in the civil procedure law of China, and it is only prescribed in Article 124 (5), "with respect to cases in which a judgment, an order or a settlement has already taken legal effect, but either party brings a suit again, the people's court shall advise that party to file an appeal instead, except when the order of the people's court is one that permits the withdrawal of a suit".

It can be seen from this provision that the principle of double jeopardy should include at least two meanings: (1) the effect of litigation dependency, that is, the plaintiff cannot bring the suit twice, with respect to a case for which a suit has been brought, in the litigation dependency; and (2) res judicata, that is, once a judgment is made, the concerned parties cannot bring a suit with respect to the same case for which the judgment has been made.

The involved case made it clear that one situation should belong to the issue of "repetitive litigation" in patent infringement litigations, that is, if the infringer making the infringing product had borne the infringement liability for infringing the patent right in accordance with a previous effective litigation judgment, the following action should be deemed as a repetitive litigation and should not be tried again in principle, that is, the patentee brings a suit against the maker of the infringing product again for the infringement action of continuing to sell the same object (the same infringing product) caused by other parties.

The patentee of this design, Zhiming LI, holds a design patent No. ZL03319125.5, titled "Toothbrush Handle", which was granted and announced on September 17, 2003. On the same day of the announcement, the patentee authorized Guangdong Sugere Daily Chemicals Co., Ltd. ("Sugere Company" hereinafter, the legal representative of this company is Zhiming LI himself) to make and sell the patented product exclusively.

Thereafter, Zhiming LI found out that the children toothbrushes of Jinchen SW-02 sold by many sellers were suspected of infringing his design patent right, and these toothbrushes were produced by one of the defendants of this case, Wuhan Jinchen Industrial Co., Ltd. ("Wuhan Jinchen" hereinafter). With respect to the infringements, Zhiming LI had complained to the administrative agency and subsequently brought suits to the judicial organs.

The determination of whether the involved product falls into the protection scope of the design patent right is relatively simple and non-controversial. However, several time points and concerned parties made this litigation complicated and finally resulted in the problem of "repetitive litigations."

The following are the many time points and facts of this case that should be especially paid attention to:

(1) On September 2008, Zhiming LI complained to the Shantou Intellectual Property Office that the Shantou Wal-Mart infringed his patent for selling the children toothbrushes of Jinchen SW-02; and on January 9, 2009, Zhiming LI reached a settlement with the Shantou Wal-Mart, in which the Shantou Wal-Mart promised not to sell the children toothbrushes of Jinchen Sw-02 (the administrative procedure).

(2) On August 2009, Zhiming LI brought a suit to the Guangzhou Intermediate Court, suing Guangzhou Pinbo and Wuhan Jinchen infringed the involved patent for producing and selling the children toothbrushes of Jinchen SW-02. After the first and second instances, an effective judgment was delivered as the final civil judgment No.91 (2011) made by the third civil tribunal of the Guangdong High People's Court. The court found that Wuhan Jinchen infringed the involved patent right, and Wuhan Jinchen was ordered Wuhan Jinchen to stop making, selling, and offering to sell the products infringing the involved patent, and to pay RMB 60,000 (around USD 10,000). This judgment was legally effective on May 13, 2011 (the first litigation).

(3) On both May 14, 2011 and August 22, 2011, Sugere Company bought five children toothbrushes of Jinchen SW-02 in Shantou Wal-Mart through a notarization. Based on this purchase, Zhiming LI brought a suit to the Shantou Intermediate People's Court on September 27, 2011, suing Shantou Wal-Mart and Wuhan Jinchen infringed the involved design patent right (the present litigation).

(4) In addition, on December 30, 2008 and November 6, 2009, Wuhan Jinchen requested the Patent Reexamination Board ("PRB" hereinafter) to invalidate the involved design patent twice during the administrative procedure and the previous litigation; however the PRB finally maintained the patent's validity.

In the present litigation, the plaintiff, Zhiming LI, put forward the following claims: 1) ordering Shantou Wal-Mart to stop selling the children toothbrushes of Jinchen SW-02 immediately; 2) ordering Wuhan Jinchen to stop producing and selling the children toothbrushes of Jinchen SW-02; 3) ordering Wuhan Jinchen to destroy the mold for making the infringing products; 4) ordering Shantou Wal-Mart and Wuhan Jinchen to pay the economic loss of RMB 500,000 (around USD 80,000); and 5) ordering the two defendants (Shantou Wal-Mart and Wuhan Jinchen) to bear all of the costs occurred in the present litigation.

With respect to these claims, Shantou Wal-Mart argued that the sold products were obtained from a legal source, and thus it should not bear the compensation liability; and Wuhan Jinchen refused to appear in the court without presenting any justified reason.

On the basis of the above facts, the Shantou Intermediate Court held that:

(1) Shantou Wal-Mart should bear the civil liabilities, stop the damage and compensate the loss for its infringement, because (a) Shantou Wal-Mart knew that the producing and selling of the children toothbrushes of Jinchen SW-02 were not licensed by the patentee, and (b) Shantou Wal-Mart had made a settlement with Zhiming LI previously to promise not to sell the involved product, but breached its settlement by selling the infringing product again. Thus the actions of Shantou Wal-Mart did not satisfy as the situation stipulated under Article 70 of the Chinese Patent Law (2009), where any person, who, for production and business purpose, uses, offers to sell or sells a patent infringement product, without knowing that it was made and sold without the authorization of the patentee, shall not be liable to compensate for the damage of the patentee if he can prove that he obtains the product from a legitimate channel. Furthermore, in determination of the specific amount of compensation for the patent infringement, since the plaintiff did not provide any evidence to prove his loss or the infringement gains of Shantou Wal-Mart, the amount of compensation was RMB 20,000 (around USD 3,000) on the court's discretion; and

(2) as for Wuhan Jinchen, because Wuhan Jinchen had borne the compensation liabilities in the final civil judgment (2011) Yue Gao Fa Min San Zhong Zi No.91 by the third civil tribunal of the Guangdong High People's Court, the present litigation for Wuhan Jinchen related to the issue of "repetitive litigation," and additionally a second civil ruling (2011) Shan Zhong Fa Min San Chu Zi No.104 by the third civil tribunal of the Shantou Intermediate People's Court to reject the appeal.


According to the principle of double jeopardy, a repetitive litigation initiated with respect to a legally effective judgment, ruling, and settlement based on the same facts and reasons should not be tried twice.

As can be seen from the above inductions of the involved case, Wuhan Jinchen, one of the defendants of this case, had borne the compensation liabilities for its infringement and paid Zhiming LI RMB 60,000 (around USD 10,000), and should have stopped the behaviors of making, selling, and offering to sell the products infringing the involved patent according to the effective previous judgment, which was legally effective on May 13, 2011.

That is, the plaintiff had been compensated for the infringement of Wuhan Jinchen. Unless the plaintiff had sufficient evidences to prove that the children toothbrushes sold by the Shantou Wal-Mart on May 14, 2011 were made by means of the continuous infringement behavior of Wuhan Jinchen after the judgment made by the Guangzhou Intermediate Court was effective on May 13, 2011 (this is highly unlikely given the date), the children toothbrushes sold by Shantou Wal-Mart were still produced and made by means of the previous infringement behavior of Wuhan Jinchen (that is, the infringement behavior where the compensation liabilities had been borne according to the judgment from the Guangzhou intermediate court). Obviously, Wuhan Jinchen should not bear compensation liabilities twice for the same infringement, because this would violate the principle of double jeopardy. Therefore, in the judgment from the Shantou Intermediate Court, it was right and reasonable that the request of Zhiming LI for ordering Wuhan Jinchen to stop the infringement and pay the economic loss was related to the issue of "repetitive litigation."

On the other hand, from the perspective of the plaintiff, Zhiming LI, he should provide sufficient evidences to prove that the toothbrushes sold by Shantou Wal-Mart were made additionally after the previous judgment was effective, that is, he should prove that these products were made in a different infringement without being compensated when he decided to list Wuhan Jinchen as one of the defendants for the second time. In this case, the present litigation relates to a new type of infringement, and thus would not be regarded as the same litigation that had been judged, and therefore would not relate to the issue of "repetitive litigation."

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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