Generally, the principle adopted for allocating the burden of proof in a patent infringement action is that 'the necessity of proof always lies with the person who lays charges',1 and it's the patentee who bears the burden of proof on infringement fact, compensation amount, etc.,. When there is no evidence or the evidences are not strong enough to support the patentee's allegation, the patentee shall undertake unfavorable consequences, even the risk of losing the lawsuit. 2 But for a process for the manufacture of a new product, the Patent Law explicitly stipulates that the accused infringer shall furnish proof to show that the process he used is different from the patented process, that is, the burden of proof is reversed. 3
However, in practice, it's hard for the patentee to collect evidences in many cases, for example, the infringing product cannot be got by purchase, the infringing product or method, the financial book are actually controlled by the infringer, which brings a lot of trouble for the patentee to enforce his right. Recent years, with the increasing of protection for intellectual property in China, the People's Court assigns the burden of proof reasonably for the parties based on the actual situations during the trial of the infringement cases, which lessens the burden of the patentee to some extent and plays an active role in protecting the legitimate rights of the patentee.
This article will lay out the practice and tendency of the Principle on how the burden of proof is allocated in Chinese patent infringement litigation in combination with the exemplary cases from the People's Court.
1. Applicability of the Basic Principle 'the necessity of proof always lies with the person who lays charges'
The basic principle for allocating the burden of proof is 'the necessity of proof always lies with the person who lays charges'. With the example of a product patent infringement, generally, the patentee is responsible for producing evidences to prove that the infringing product comes from the accused infringer, the infringing product is within the protection scope of the patent right and also evidences on the compensation amount. The proof standard here follows the high probability criterion, i.e., the fact can be determined by the People's Court if the evidence produced by even only one party can prove the fact alleged with high probability.
In an infringement dispute case for design patent, Tianjin Research Institute of Cosmetics Science and Technology Co., Ltd, Tianjin Pulanna Natural Plant Cosmetics Group Co., Ltd (Cosmetics Research Institute Co., for short) v. Tianjin Meisheng cosmetics Co., Ltd (Meisheng Co., for short), 4 the patentee the Cosmetics Research Institute Co. purchased the infringing packing box under notarization, which had the name, address, production license, sanitation license and the trademark 'Zhongxiangtang' of the Meisheng Co. thereon, and had the same inner packing of the packing box as the inner packing of the product of the 'Zhongxiangtang' pearl series advertised on its own website of Meisheng Co. Accordingly, the patentee claimed that the alleged infringing product was produced and sold by Meisheng Co. In the absence of the counter-evidence proving the accused packing box was not produced and sold by the Meisheng Co., the first instance, second instance and retrial courts decided that the infringement act of producing and selling the said infringing product by the Meisheng Co. was established.
But if the patentee cannot prove that the infringing product is from the accused infringer, he shall be responsible for his inability to produce evidences and undertake the risk of losing the lawsuit. In the dispute case for the utility model patent infringement, Beijing Jerrat Springs Damper Technology Research Center (Jerrat Center, for short) v. Beijing JZTH Buffer Technology Co., Ltd (JZTH Co., for short), 5 the patentee, Jerrat Center, obtained the infringing product from the third party and disassembled it without under notarization. Even though the patentee claimed that the infringing product was produced and sold by the JZTH Co., it couldn't be confirmed whether the product disassembled by the patentee was the one obtained from the third party due to no necessary preservation for the infringing product. Therefore, the courts of the first instance, second instance and the retrial all believed the existing evidences couldn't prove the infringing product was produced and sold by the JZTH Co., so the infringement act could not be established.
Certainly, in patent infringement lawsuits, the patentee bears the burden of proof. However, it doesn't request for a perfect evidence chain to be produced by the patentee, as long as there is a higher possibility to enable the judge to affirm the fact asserted by the patentee based on the existing evidences and in connection with the life experience and transaction practice.
2. Reversion of the Burden of Proof
Except the basic principle for allocating the burden of proof, the provisions for reversion of the burden of proof, i.e., the accused infringer should bear the burden of proof to prove ways he used are different from those of the patent holder, is applied for the patent infringement case relating to a process of the manufacture of a new product. But, applying the provisions for reversion of the burden of proof requires two preconditions, i.e., the involved patent is a method patent and the product manufactured according to the patented method is a new product. The provisions for reversion of the burden of proof may be applied only if the preliminary evidences produced by the patentee meet the two preconditions. A patent is on a manufacturing method or not, generally, can be determined by reviewing the technical solution protected by the claims. It should be noted that, for other types of method patents, such as application method, processing method, etc., the provision for reversion of the burden of proof cannot apply in the infringement litigation. As for whether the product produced according to the patented method is a new product, People's Court usually thinks that the product is not a new product if the technical solution of the product or the method for producing the product is well known to the public in domestic and/or overseas before the filling date. 6 In practice, the patentee usually entrusts a professional science technology novelty searching institution to conduct search for the novelty of a product, and the searching report can be submitted to the court as the evidence proving the product involved is a new product. It should be noted that if a patent includes a product claim and a method claim for manufacturing the product, the patentee cannot take the decision of maintaining the product claim valid made by the Patent Reexamination Board as an evidence of proving the product is a new product, and then ask for applying the reversion of the burden of proof in patent infringement litigation on the method for manufacturing the product.
In the infringement dispute case for invention patent, Dalian Great Golden Horse Infrastructure Group Co., Ltd, (the Great Golden Horse Co., for short) v. Dalian Beixing Component Hosting Transport Co., Ltd, (the Beixing Co., for short), 7 the patent involved refers to a product claim which is 'the prefabricated tip of the pre-stressed square pile' and a method claim which is 'the processing method for the prefabricated tip of the pre-stressed square pile'. The patentee, the Great Golden Horse Co., claimed that the Beixing Co. used the manufacturing method claimed in the patent involved without authorization and infringed its patent. In this case, the Great Golden Horse Co. entrusted the Dalian research institution of science and technology information to search for sci-tech novelty of the product 'the prefabricated tip of the pre-stressed square pile' and the search result showed that there was no relevant documents being retrieved disclosing the same structure as the involved patent. Because the Beixing Co. didn't produce evidences to prove the product of the patent involved was not a 'new' product during the trial, in the condition that the alleged infringing product is the same with that of the patent, the court held that "the Beixing Co shall submit the evidences which can prove the manufacturing method of the alleged infringing product is different from the method of the patent". However, the Beixing Co. didn't submit evidences to prove that its method was different from the manufacturing method of the patent in the time period for producing evidences, so it should undertake the unfavorable consequences. In the end, the court decided that the alleged infringing method for the manufacture of the product was within the protection scope of the patent involved, so the infringement was established.
3. New Tendency for Allocating the Burden of Proof
According to the existing law and regulations, only the patent infringement lawsuits referring to the manufacturing method of a new product can apply the provision for reversion of the burden of proof. But in practice, the patentees face lots of difficulties when collecting evidences in many special types of infringement lawsuits, and applying the principle of 'the necessity of proof always lies with the person who lays charges' by rote, will result in that the rights of the patentee cannot be protected effectively, which goes against the original intention of protecting the invention and creation by the Patent Law. Therefore, in the trials of several special types of patent infringement lawsuits, the People's Court assigned the burden of proof reasonably between the right holders and the accused infringer according to the details of the case, which can be referenced by the patentee for exercising his patent right. The cases will be discussed below.
3.1 Large scale equipment type of products
If exercising the patent right based on the product claim, generally, the patentee can collect evidences by purchasing the infringing product in the market. But for the large scale equipment, there are several problems as below when collecting the evidence: first, due to the high price of the large scale equipment, millions usually, purchasing the suspected infringing product brings severe economic pressure to the patentee; second, some of large scale equipment are customized made, so it's hard to purchase it in the market via regular channels; third, the large scale equipment is usually controlled directly by the accused infringer, so the patentee can hardly get to it. Due to the existing problems described above, the patentees of such products can hardly collect the infringement evidences with the regular measures and then it's hard for them to protect their own rights.
How to solve these problems? In an infringement dispute case for invention patent, the Manfred A. A. Lupke (the Lupke, for short) v. Zhongyun Tech Co. Ltd (Zhongyun Co., for short) and Tianjin Shengxiang Plastic Pipe Co. Ltd (Shengxiang Co., for short), the patentee owns an invention patent on traveling mode, and he sued the Zhongyun Co. for infringing his patent on the traveling mode which was inside the corrugated pipe equipment used by Shengxiang Co. and manufactured and sold by Zhongyun Co. However, the traveling mode couldn't be obtained without disassembling the corrugated pipe equipment, and the corrugated pipe equipment using the traveling mode is a large- scale mechanical equipment used for manufacturing a corrugated pipe, so it's hard for the patentee to get the accused infringing product in the market via regular channels. In order to prove that the traveling mode used by the accused infringer has infringed his patent, the patentee adopted many ways to provide evidences, e.g., applying to the court for evidence preservation, and engaging the technical expert for expert opinion, and the like, he also applied to the People's Court for technical appraisal on the accused infringing product. But the manufacturer Zhongyun Co., the user Shengxiang Co. refused to provide the equipment drawings and refused the request for disassembling the equipment, so the patentee couldn't learn some technical features of the accused infringing product, which led to the infringement comparison of these technical features with those the claims of the patent involved impossible. Because this case relates to the product claim, so if strictly sticking to the basic principle of burden of proof, that is, 'the necessity of proof always lies with the person who lays charges', the patentee failed to provide sufficient evidences to support his allegation. But according to the provision of the Regulations on Civil Action Evidence issued by Supreme People's Court, Article.75,8 the first instance and the second instance courts both believed that the alleged infringing product has infringed the patent involved based on the existing evidences, so the allegation of Lupke was tenable. The Zhongyun Co. was dissatisfied with the decision of the second instance court and applied for retrial to the Supreme People's Court. Through the trial, the Supreme People's Court believed that 'the accused infringing equipment in this case is of high price and large size, and is actually controlled by the Shengxiang Co., so there're lots of actual difficulties for Lupke to collect evidences by himself. Lupke provided the evidence materials of the relevant notarized materials, the pictures of evidence preservation by the court, and the comparison analysis opinion from technical experts, etc., which almost cover all the legitimate ways of evidence collection that can be adopted by Lupke, so he has already fulfilled his responsibility. The two accused infringers, Zhongyun Co. and the Shengxiang Co. should undertake the unfavorable consequences in the case that the patentee already provided the evidences as possible as he could and the evidences could preliminarily prove that the infringement fact is established; the two accused infringers the Zhongyun Co. and the Shengxiang Co., refused to provide the drawings of the accused infringing equipment and refused to cooperate on the identification without any justified reasons which made the identification couldn't be done ; and the accused infringers did not provide evidence to prove that the technical solution of the accused infringing equipment is different from the patent involved and doesn't fall into the protection scope of the patent involved. So according to Regulations on Civil Action Evidence issued by Supreme People's Court, Article 75, it can be inferred that Lupke's claim is tenable. The Supreme People's Court rejected the request of the Zhongyun Co. for retrial eventually.
3.2 Manufacturing method for existing product
In the infringement actions referring to a manufacturing method for product, it's hard for people to learn the specific content of the manufacturing method adopted by the accused infringer, because the manufacturing method is generally used within the enterprise of the accused infringer. We know that the regulation of reversion of the burden of proof can be applied in the infringement litigation on the patent involving the manufacturing method of a new product. But it's a bit harder to win the infringement action by collecting the precise evidences for most of the manufacturing methods for the existing products.
According to this situation, the Opinions on Trial Functions into Full Play the Role of Intellectual Property to promote development and prosperity of socialist culture and promote the coordinated development of economic autonomy Issues9 drafted by the Supreme People's Court indicates that 'in the situation that the product manufactured with the method of a patent is not new product; the patentee can prove that the accused infringer manufactures the same product, but cannot prove with reasonable efforts that the accused infringer uses the method of the patent, according the specific conditions and combining with the existing facts and daily experiences, if it can be determined that it is highly possible the accused infringing product is manufactured with the method of the patent, the patentee shall no longer be requested for further evidences, but the accused infringer shall submit the evidences to prove that its manufacturing method is different from the method of the patent in accordance with the relevant regulations of judicial interpretation on civil litigation evidence.'
In an infringement dispute case for invention patent right, Yibin Changyi Pulp Co., Ltd (Changyi Co., for short) v. Weifang Henglian Paper Pulp Co., Ltd (Henglian Co., for short), 10 the patentee, Changyi Co., who holds the invention patent of 'manufacturing method for modifying wood pup', sued the Henglian Ltd for infringing its patent with the manufacturing method of the product of the viscose wood pulp. Because the viscose wood pulp product is not a new product, so the dispute focused on how to allocate the burden of proof for parties. In the first instance, the Changyi Co., provided the evidences to prove the viscose wood pulp product manufactured by the Henglian Co. was the same as the product manufactured with the method of the patent, and applied for evidence preservation for the method producing the viscose wood pulp product which could not be done for two times due to the noncompliance of the Henglian Co. Therefore, in comprehensive consideration of the evidences provided by parties and the distance to the evidence, etc., the first instance court assigned the burden of proof about the manufacturing method of the product involved to the Hengliang Co. But the Henglian Co. refused to provide the evidence on the manufacturing method of the product involved without reasonable reasons, so the first instance court decided that the manufacturing method of the viscose wood pulp product of the accused infringer fell into the protection scope of the patent involved, and the accused infringer infringed the patent of the Changyi Co. The Henglian Co. was dissatisfied with the decision of the first instance and appealed to the second instance court, and the second instance court rejected the appeal based on the same reason. Then the Henglian Co. applied for retrial to the Supreme People's Court, which decided that 'there is no specific provision in relevant laws and judicial interpretations on the allocation of the burden of proof in the infringement dispute for invention patent on the method for the manufacture of the existing product. Generally, the usage of manufacturing method patent is shown in the process of manufacturing which refers to the process steps and technological parameters, but the specific proceeding and the data can be learned only in the manufacturing site or by checking the production record. Usually, it's hard for the patentee to access the manufacturing site and production record to get the complete evidences on the manufacturing method. So in the situation that the evidences on the manufacturing method of the product is fully controlled by the accused infringer, if simply applying the basic principle of 'the necessity of proof always lies with the person who lays charges', which means the patentee should produce the evidence to show the manufacturing method for the same product used by the accused infringer, without analyzing the possibility of establishing patent infringement and the ability of the parties to produce evidences, it will go against with the equity principle and is not good for finding out the facts. In this case, the Changyi Co. has fulfilled his responsibility to prove the product involved was the same as the product manufactured with the method of the patent involved, and tried its best to prove the manufacturing method fell into the protection scope of the method patent involved by providing the video materials of the manufacturing site and applying for evidence preservation to the court under the condition that the manufacturing method of the patent involved is fully controlled by the Henglian Co. Even though the Henglian Co. denies ever producing and selling the product involved and claims the involved product is viscose cotton pulp different from the product manufactured with the method of the patent, there is no powerful evidence to rebut. Meanwhile, The Henglian Co. didn't cooperate with the court for the evidence preservation on the manufacturing method it controlled, which resulted in that the court could not obtain the evidence of on the alleged infringing method of manufacture. According to the said facts and daily experiences, it can be inferred that the Henglian Co. has a high possibility of infringement, so the burden of proof for the manufacturing method of the product involved could be assigned to the Henglian Co. In the case that the Henglian Co. doesn't provide effective evidences to prove the manufacturing method he used is different from the method of the patent, the Henglian Co. should undertake the unfavorable consequences. The Supreme People's Court rejected the request of the Henglian Co. eventually.
3.3 Features determined in operation state
As to the product claim, it's generally limited by structure features, but in some special cases, it can be limited by function features, effect features, method features, physical and chemical features or using state features, and the like. When comparing these non-structural technical features of the infringing product with those of the patent, these features can't be reflected by the structure of the product, so generally it's hard for the patentee to determine if the accused infringing product falls into the protection scope of the patent right before filing a lawsuit.
In an infringement dispute case for invention patent, Changshu Textile Machinery Co., Ltd (Changshu Co., for short) v. the Staubli Faverges Co., (Faverges Co., for short), 11 the Faverges Co. holds the invention patent entitled 'rotating dobby and the loop with such a dobby', and sued the Changshu Co. to the Jiangsu Province Suzhou Intermediate People's Court for the Changfang ED607 electronic dobby produced and sold by the Changshu Co. infringing its patent. The claim 1 of the patent involved includes a technical feature limiting the working state of the actuator, which is 'when said levers are engaged with said wedging surfaces, one of said lever is out of range of an actuator belong to said reading device' . In the trial of first instance, the patentee manually demonstrated the working state of the accused infringing product, and the Changshu Co. argued that the demonstration didn't show the above technical feature. The first instance court believed that for the technical feature limiting the working state, the judging of the working state of the actuator of the reader device of the accused infringing product should be done in combination with the technical solution of the alleged infringing product and the technical purpose of said technical solution. Upon verifying in court, the alleged infringing product had the same function with the function to be achieved by the patent involved and its structure was the same with the structure of the patent involved too. The accused infringer denied on that but did not provide reasonable interpretation. Therefore, it could be inferred that the alleged infringing product had the said technical feature in actual operation. The first instance court held that the alleged infringing product fell into the protection scope of the claims of the patent involved and decided the infringement was established. The Changshu Co. was dissatisfied with the decision of first instance and appealed to the Jiangsu Province Supreme People's Court (second instance count), which held that even though the working state demonstrated by of the manual operation in the first instance trial might be different from the actual working state, which was mainly in the operating speed and the load, the moving trails and the relative positions of their elements were the same, the technical features to be compared were exactly indicated by the relative positions among the elements. So it was acceptable to compare the technical features of the alleged infringing product with those of the patent involved by verifying the technical features of the alleged infringing product by way of manual operation. In addition, there were one-to-one correspondences between the elements of the alleged infringing product and the patent involved, so it could be inferred that they were basically the same in mechanical structure, function, principle, etc.,. In order to further ascertain the facts, the drawings, technical materials corresponding to the elements of the alleged infringing product could be analyzed to determine if the alleged infringing product had the said technical feature. In consideration that the relevant drawings of the alleged infringing product were controlled by the Changshu Co. who could collect the relevant evidence easily without increasing the litigation cost, so the court decided to assign the burden of proof on the design, assembling, and processing drawings of the alleged infringing product to the Changshu Co. During the time period of producing evidences, the Changshu Co. didn't submit the technical materials about the said relevant drawings and the operating range of the reading device, so it should undertake the unfavorable consequences. The second instance court decided that the alleged infringing product comprised all technical features of the patent, including the technical feature('when said levers are engaged with said wedging surfaces, one of said lever is out of range of an actuator belong to said reading device'),and thus infringed the patent.
It can be learned from the typical cases applying the provision on allocating the burden of proof, the People's Court assigns the burden of proof reasonably between the patentee and the accused infringer based on the actual conditions during the trial of the patent infringement cases, in addition to the typical cases applying the provision on reversion of the burden of proof. But anyway, the patentee should try his best to take the responsibility of the burden of proof so as to make it possible for the court to shift the burden of proof to the accused infringer. Under the conditions that the patentees are not able to get the alleged infringing product or access the alleged infringing method, they can at least take the following measures to enable the court to believe a high possibility of infringement, the measures including but not limited, applying for evidence preservation of the prosecuted product or method to the court, engaging the technical expert for expert opinion on the technical questions, and collecting relevant materials to make reasonable explanation, etc..
1. Law of Civil Procedure, Arc.64, Para.1 stipulates: the parties have the responsibility to provide evidence for their claims.
2.Several Provisions of the Supreme People's Court on Evidence in Civil Procedures, Arc.2, Para. 2 stipulates: where any party cannot produce evidence or the evidences produced cannot support the facts on which the allegations are based, the party concerned that bears the burden of proof shall undertake unfavorable consequences.
3.The Law of Patent, Arc. 61 stipulates: where any infringement dispute relates to a patent for invention for a process for the manufacture of a new product, any entity or individual manufacturing the identical product shall furnish proof to show that the process used in the manufacture of its of his product is different from the patented process.
4.The Civil Judgement of Er Zhong Min Chu Zi No. 13450 (2009) by Beijing No.2 Intermediate Court, the Civil judgment of Gao Min Zhong Zi No. 1640 (2011) by Beijing High People's Court, and the Civil Ruling Paper of Min Shen Zi No. 856 (2013) by Supreme People's Court.
5.The Civil Judgment of Yi Zhong Min Chu Zi No. 13772 (2009) by Beijing No.1 Intermediate Court, the Civil Judgment of Gao Min Zhong Zi No. 1867 (2010) by Beijing High People's Court, and Civil Ruling Paper of Min Shen Zi No. 1146 (2013) by Supreme People's Court.
6.Interpretation by the Supreme People's Court on Some Issues Concerning the Application of Laws to the Trial of Patent Infringement Disputes, Arc. 17 stipulates: where a product or a technical solution for manufacturing the product is known by the public in the country or abroad before the filing date of the patent, the People's Court shall determine that the product is not a new product as prescribed in Paragraph 1, Article 61 of the Patent Law.
7.The Civil Judgment of Da Min Si Chu Zi No. 23 (2011) by Liaoning Province Dalian Intimidate People's Court, and this case is selected into the 50 Typical Intellectual Property Cases by China Court 2013.
8.The Arc. 75 stipulates: where a party makes statements for its allegations but fails to provide other relevant evidences, the allegations thereof shall not be affirmed, unless the other party so affirms.
9.Opinions on Trial Functions into Full Play the Role of Intellectual Property to promote development and prosperity of socialist culture and promote the coordinated development of economic autonomy Issues9drafted by the Supreme People's Court, No.18 (2011).
10.The Civil Ruling Paper of Min Shen Zi No.309 (2013) by Supreme People's Court.
11.The Civil Ruling Paper of Su Zhi Min Zhong Zi No.0290 (2012) by Jiangsu Province Supreme People's Court.
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.