The intellectual property rights (IPR) protection of China has become a worldwide hot topic. China, as a manufacturing giant, will inevitably become a country with a large number of intellectual property related disputes related to manufacturing in transnational corporations (TNCs). Patent litigation is increasingly common in China. According to recent statistics, the number of intellectual property litigation cases in 2014 is about 133863, among which the number of patent litigation cases is about 10187. The authors of this paper participated in a patent litigation case in China through judgment as the Defendant and directly experienced patent litigation’s procedure and features in China. This paper intends to share with readers the authors’ observations and insights based on their personal experiences and will perhaps serve to address some of the concerns associated with patent litigation in China. This paper also provides some comparisons with United States (“U.S.”) practice.

1. Case history and background

The present case involves an invention patent related to automobile engine technology, in particular a subsystem of an automobile engine and its construction and operating methods. The Plaintiff is a subsidiary of the patentee within the territory of China (hereinafter referred to as the Plaintiff A). There are three Defendants, including a subsidiary of an auto parts maker in China, headquartered in the United States (hereinafter referred to as the Defendant B), a leading Chinese vehicle manufacturer (hereinafter referred to as the Defendant C), and its distributor (hereafter referred to as the Defendant D). The Plaintiff filed a lawsuit in March 2012, requesting the Court to order the three Defendants to stop infringement and compensate the Plaintiff for its damage (including reasonable expenses) in excess of 30 million Yuan RMB. The Court made a first instance judgment against the Plaintiff in late 2014. Plaintiff A has filed an appeal, and this case is in the process of conducting a second instance trial.

2. Jurisdiction

Defendant A and D in this case are both located in an eastern coastal city of China, namely the city S. Defendant B is located in the city H and the Defendant C is located in the city W. Plaintiff A filed a lawsuit to the Intermediate People’s Court located in the city S.

There are two types of litigation jurisdiction in China: territorial jurisdiction and court- level jurisdiction. Territorial jurisdiction determines that the court has the power to hear cases that appear within the geographical range of its region. Court-level jurisdiction determines at which level of the court a case appears within such geographical range would be heard. Therefore, a Chinese court would decide which specific court has jurisdiction over a case based on both “territorial jurisdiction” and “court-level jurisdiction” sets of rules. It is worth noting that it is possible that multiple courts have jurisdiction over a case. In this case, the plaintiff can choose any court from the competent courts of city S, H or W, the domiciles of the defendants, which all have jurisdiction to engage in litigation as the domicile of the defendant.

Factors to be considered for choosing a court include the ability and experience of the judges to try similar cases and their precedents records, transparency and independence of the court overall as well as whether the court holds certain standpoint for similar cases. Usually, a party wishes to choose the place where he or she is located, while avoiding the opposing party’s location to carry out the trial.

Territorial jurisdictions The jurisdiction of the patent infringement case belongs to the defendant’s domicile or the place where the alleged infringement takes place (including the place where the infringement is carried out and where the infringement results occur). According to B, C, and D’s domiciles, the territorial jurisdiction of the present case included cities H, W and S. Meanwhile, because the Plaintiff A sued the Defendant D alleging that Defendant D sells infringing products in the city S; therefore, the city S was also the place where the alleged infringement took place.

Court-level jurisdictions In accordance with the provisions of the Supreme People’s Court of the People’s Republic of China (PRC), there are only a few Chinese courts that have jurisdictions over patent cases. These courts are generally Intermediate People’s Courts of the provincial capital cities or larger cities[1]. In the present case, the Intermediate People’s Court of the city S is the Court that has jurisdiction over patent cases and that was approved by the Supreme People’s Court.

In addition, the disputed amount (such as the amount of damages claimed by the plaintiff) of the case determines which level of the court will hold the first instance trial hearing. In addition to the Supreme People’s Court’s provisions on court-level jurisdiction, other provincial Higher People’s Courts also set its own standards on court-level jurisdiction within the scope of each of their jurisdictions and their corresponding authorities. For example, the Higher People’s Court of the province J where the city S is located provides that if the domiciles of the parties are within their administrative areas and the requested amount is more than 500 million Yuan RMB or if the domicile of one of the two parties is not within its administrative area and the requested amount is more than 300 million Yuan RMB or one of two parties is a foreign party and its requested amount is more than 100 million Yuan RMB, then it would require the Higher People’s Court of the province J to hear the first instance trial.

Jurisdiction in U.S. Courts. In the United States, the court system generally comprises state courts and federal courts. The state courts are not relevant to patent litigation and will not be mentioned further. The federal court system generally comprises district courts, appellate courts and the U.S. Supreme Court. The federal district courts are generally arranged according to the states in which they are located. The federal appellate courts hear appeals from the district courts and typically cover a number of districts in different states. All patent appeals are heard by the U.S. Court of Appeals for the Federal Circuit. The U.S. Supreme Court, located in Washington, D.C., hears cases from all of the appellate courts.

Three elements must be met to determine whether a given U.S. federal district court has jurisdiction namely, personal jurisdiction, subject matter jurisdiction and venue. Personal jurisdiction is the court’s ability to legally exert control over the parties in the case. Personal jurisdiction typically arises where the parties purposely avail themselves of the protections and benefits of the forum state, also referred to as the “minimum contacts” test. Subject matter jurisdiction concerns the subject or subjects which the court is authorized to hear and render decisions. U.S. federal district courts have original subject matter jurisdiction on all civil matters arising under the U.S. Constitution, laws or treaties. Patents arise under the U.S. Constitution and the federal patent laws. Finally, venue determines which court can hear a case within a jurisdiction. Venue is based upon the physical location of the defendants and where a substantial part of the events occurred. In the case of patent questions, the federal courts in the U.S. have original subject matter jurisdiction, hence, patent litigation is first filed in a U.S. federal district court, subject to that court also having personal jurisdiction and venue. Any U.S. federal district court may hear a patent case, however, all patent case appeals must be heard by the U.S. Court of Appeals for the Federal Circuit in Washington, D.C.

3. Judge, collegiate panel, and the jury

Chinese Courts. In China, cases are mainly tried by judges. Patent cases are usually tried by the collegiate panel which consists of three members designated by the court. Among these three members, one of them is the presiding judge who usually has a higher title and the most seniority; the other two are judges. Each case will have a responsible judge who may be either the presiding judge or another judge, and will be in charge of all routine matters of that case, including scheduling hearings, communicating with parties, organizing discussions among panel members, drafting judgments, and so on. The other two members will participate in all formal oral hearings, and panel deliberation. The panel will form the final majority opinion on how to judge, and how to issue the written judgment.

There are also “people jurors” in China’s proceedings. Yet, these jurors are not randomly selected to fulfill the general public citizen duties, but are specially engaged by the courts as the non-judge panel members. The juror may participate in trial as a member of the collegiate panel along with the judges. However, the trial of the case is still primarily led by the judge.

U.S. Courts. In the U.S. a single judge hears the case in the first instance at the federal district court level. The litigants have the right to try the case to a jury, or, only to the judge, also known as a bench trial. If a jury is seated, the jurors, usually from six to twelve in number, will hear the evidence given at trial and render a verdict based upon the law as provided by the judge. An appeal to the Federal Circuit is typically heard by a three judge panel. There is no jury at the appellate level.

4. The Plaintiffs burden of proof

For patent litigation in China, a plaintiff usually needs to provide three aspects of evidence to support its litigation claim, namely (a) evidence to prove that the plaintiff has the patent right and standing to sue; (b) evidence to prove that the defendant committed infringement; (c) evidence to support the claim for damages. It is possible during the course of a case for the burden of proof to shift from the plaintiff to the defendant on a given issue. For example, in the face of weak evidence from the plaintiff, the court may still require a defendant to affirmatively demonstrate it does not meet all elements of a claim.

As for the evidence stated above in (a), because the Plaintiff A was not the patentee, the Plaintiff A submitted the license agreement between the patentee and itself, to prove that it obtained the patentee’s authorization and permission to exploit the patent and had standing to institute a civil action as the Plaintiff. In addition, the Plaintiff A must also provide proof of the annual fee payment or a copy of the valid patent registration book and any other documents necessary to prove the validity of the disputed patent.

As for the evidence stated above in (b), the Plaintiff A sent a staff member to the Defendant D’s place to purchase an alleged infringing automobile engine, hired a qualified notary to witness and notarize the purchasing process, and obtained the notarization certificate issued by the notary. In addition, the Plaintiff A also applied to the Court for carrying out evidence preservation against the companies B and C in order to obtain evidence of their relevant sales agreements, design drawings and other alleged infringing product samples and so on.

To prove the alleged infringing products, the Plaintiff A also hired an American professor who is well-known in the field of engine as its expert witness. To this regard, this professor issued three testimonies. The content of the testimonies mainly involved that the entrusted professor measured and analyzed the alleged infringing products in his laboratory. He then obtained a series of measured results, and gave his opinion the technical features of the alleged infringing products matched with the technical features of the Plaintiffs patent. To reinforce this testimony, the Plaintiff A used this professor to conduct further tests and analysis, and then issue a supplementary testimony. At the same time, the Plaintiff A also provided a video about the entire measurement process.

It is worth mentioning that getting the notary evidence is a common way for carrying out evidence collection for patent litigation in China. Because the parties need to collect their own substantial evidence, in order to prove the sources of their self-collected evidence are legitimate, unaltered and are not disturbed. The parties often get help from a notary. The notary witnesses and supervises the process of the evidence collection, and seal the collected evidence in order to submit it to the court. According to the Civil Procedure Law of the PRC, the people’s court shall admit legal facts and documents that are notarized in accordance with the applicable legal procedures as its basis for ascertaining facts, unless there is evidence to the contrary that is sufficient to invalidate the certificate of notarization.

Another common way of providing evidence for patent litigation in China is to engage expert witness. Because patent cases often involve complicated professional and technical issues, the parties may engage authoritative scholars and technical experts to testify or explain some technical issues in order to help judges to understand and clarify certain technical facts. In addition to the expert witnesses, some plaintiffs also entrust professional institutions, such as research institutes and university laboratories or qualified appraisal institutions to analyze some technical issues and issue institution reports as the evidence to support one’s own claim.

As for the evidence stated above in (c), the Plaintiff submitted the published annual sales data of the Defendant C (a listed company) in its annual report, and a third party consulting firm’s research report which shows the average profit margin of the automobile industry. These proofs were combined by the Plaintiff as evidence that the Defendant C earned a profit in excess of 30 million Yuan RMB by committing infringement. Plaintiff A also submitted evidence related to the expenses incurred by the present ligation case such as attorney’ s fees, notary fees and purchase fees of the alleged infringing product samples and claim for compensation.

5. Application for the evidence preservation to the Court

Plaintiff A, at the same time of filing a bill of complaint, also applied to the Court to preserve the evidence on site at the premises of the Defendants (i.e. requesting the Court to collect certain specific evidence). Upon the Plaintiff A’s application, the Court sent judges and bailiffs to Defendant B and C’s business premises without advance warning to serve litigation documents and to preserve the evidence on-site. Also, the Court requested the Defendants B and C to separately submit evidence of the purchase agreements between them, design drawings and samples of the core components of the alleged infringing products and other relevant evidence.

There is no procedure similar to the United States discovery process in China’s civil procedure. The plaintiff has the obligation to prove the establishment of its proposition. However, the Civil Procedure Law of the PRC clearly provides that where it is likely that evidence may be destroyed, lost or become difficult to obtain later on, the plaintiff has the right to apply to the people’s court for the preservation of the evidence. In the present case, the Plaintiff exercised this right and obtained evidence that is difficult to collect on its own through the Court, such as agreements between the Defendants B and C, design drawings of the alleged infringing products and so on.

In the United States each party is allowed to conduct discovery before the trial after the complaint is filed. Discovery is a court supervised process wherein each party is entitled to request and receive testimony, documents and things from the other party in support of its case. Discovery typically takes place after the case is filed. It does not include surprise visits by the court to the defendant’s facilities to collect evidence. Participation by each party in discovery is mandatory and sanctions are available for failure to comply with a proper discovery request or order. Sanctions can include dismissal of the case. Through discovery each party is able to prepare its best possible presentation for trial. It encourages settlement by allowing each party to learn of the strengths and weaknesses of its case as well as the case of the opponent.

6. The Defendants procedural rights and time limit

The Court served legal documents to the Defendants B and C and preserved the evidence on the same day. According to the notice sent by the Court, the Defendants B and C have to file a statement of defense within 15 days and submit the evidence to the Court within 30 days.

In China’s litigation procedure, while the plaintiff can be fully prepared before litigation, the defendant is at a disadvantage in terms of time. After the court served the procedural document, the defendant can only respond within the limited time ruled by the court. For example, entities domiciled in China only have 15 days to consider whether to raise an objection to jurisdiction (foreign entities have a statutory period of 30 days), and submit a written defense; but they usually have about 30 days to collect and submit evidence.

In fact, after the defendant learns of the litigation, the most important thing is to immediately hire an experienced patent litigation lawyer, and to deal with the harsh lawsuit time limit under the guidance of the lawyer. For example, it is difficult for most defendants to form a thoughtful statement of defense and strategy of providing evidence regarding a complicated patent litigation in such a short period of time. It is not conducive and not required for the defendant to submit a rushed statement of defense that is not comprehensive, because not submitting the statement of defense within 15 days will actually have no impact on the litigation rights and interests of the defendant. The defendant still has the opportunity and the right to submit the statement of defense anytime later in the proceeding. Therefore, an experienced defendant’s lawyer will usually make a strategic delay by not providing a written statement of defense until a deliberate defense strategy is duly formed. However, in general, the written statement of defense should be submitted before the first hearing of the case begins in order for the judge to understand the propositions of both parties in advance and to make the trial more efficient. In addition, if the defendant cannot completely provide all the evidence within 30 days, he or she can also submit a written application to the court to extend the time limit, which is a usual scenario in patent litigation and such application can generally obtain the approval of the court.

On the other hand in the U.S. an Answer must typically be filed by the defendant within 21 days of the date of service of the summons and complaint. This can extend up to 90 days if sent to a defendant outside the U.S. However, the Answer does not need to be comprehensive and it only needs to present a brief statement of defense to each claim for relief in the Complaint and to admit or deny any allegations.

6. The Defendants arguments and evidence

From the defendant’s perspective, the final argument strategy is directly related to the collected and provided evidence. The defendant has also the obligation to provide evidence in support of his or her allegations. According to the Patent Law of the PRC, the defendant could have various defense strategies. In the present case, the Defendants made two arguments, including (i) the fact that the alleged infringing product does not have all the technical features of the patent claims and (ii) the prior art argument.

To prevail in a patent litigation, the patentee must prove that all limitations in the independent patent claim are present in the accused device and therefore in the scope of protection of the patent. If a single claim limitation is not present in the accused device then the case fails. The prior art consists of all available technical knowledge known to those skilled in the art before the critical date of the patent. The critical date is typically the filing date of the application.

In order to prove that the Defendants’ products do not fall within the Plaintiff’s scope of protection, the Defendant B first requested for interpretation of the claim. To support its opinion on the claim interpretation, the Defendant B also provided evidence of the file wrapper of the concerned patent and the record of the previous invalidation proceedings. Furthermore, the Defendant is allowed to provide the patent family’s prosecution history in other countries such as Japan (JP), the United States (U.S.), and Europe (EP).

Additionally, the Defendant B also hired a famous university professor who speaks fluent Chinese as its expert witness to express different opinions and arguments against the opinions of the Plaintiff A’s expert witness. At the same time, in order to contest Plaintiff A’s expert witness’ approach for measuring the alleged infringing products, the Defendant B also engaged an authoritative research institution in the technology field to measure and analyze its products, and have the entire measurement process notarized.

To reinforce the argument that it uses technology different from the patented technology, the Defendant B also provided to the Court its original research and development documents and records of the accused products.

As for the prior art argument, the Defendants B and C each provided prior art evidence to prove that its accused products were experimentally obtained based on prior arts. Such prior art evidence was also applied to support the Defendant B’s interpretation on the patent claim.

7. Launching a patent invalidation procedure

In Chinese patent system, the trial court for the patent infringement does not have the power to evaluate and judge the validity of the patent directly. The validity of patent is solved through a separate procedure, namely the patent invalidation proceeding, which should be triggered by submitting a written request for the invalidation of the patent to the PRB in Beijing. The PRB usually can issue its decision within six months. If the parties are not satisfied with the decision, either party may, within three months from receipt of the notification of the decision, initiate a litigation against PRB in front of the

Beijing IP Court[2]; and either party may further appeal against the judgment made to the Beijing Higher People’s Court.

As soon as the Defendant B received notice about the patent infringement litigation, it launched a patent invalidation request under the counsel’s advice, and submitted the request and evidence documents to the Patent Reexamination Board (PRB) of SIPO in Beijing. PRB issued its decision on the patent validity within 10 months.

There are two reasons for triggering the invalidation proceeding. First of all, if the patent is successfully invalidated or partially invalidated, the plaintiff would not have a case anymore. Secondly, the Doctrine of Estoppel could also be applied for any claim and waiver of rights in invalidation proceedings.

In the U.S. the federal court is empowered to rule on patent validity. The court conducts a two-step analysis during a case. First, the court will determine if the asserted patent claims are valid. If the claims are found valid the court then moves on to the infringement question. In addition to relying on the court’s authority to address validity, a defendant may also initiate certain processes at the U.S. Patent and Trademark Office (“USPTO”) to invalidate one or all of the patent claims. The court has the discretion to stay a case if patent validity is under review at the USPTO.

The mutual influence between the patent invalidation procedure and the patent infringement proceeding is a problem that has not been fully resolved in China. For the invention patent, even if the defendant immediately files the patent invalidation request after being sued, the court usually would not stop the trial of the infringement case, unless there are obvious reasons and evidences showing that the concerned patent is most likely to be declared as invalid[3]. In addition, because the invalidation procedure can usually finish within six months, if the defendant files an invalidation request at the beginning of trial, the PRB’s examination decision can usually be obtained before the end of the infringement proceeding. In the event the validity of the patent is in question, the judge has discretion to conduct ex parte communications with the PRB to ask questions about the patent.

8. Claim Construction and claim chart

In China’s patent litigation, there is no specific procedure such as the MARKMAN HEARING in the U.S. which can solve the problem of interpreting a claim. On the contrary, the interpretation of the claim often becomes the focus of the dispute between both parties and runs through the entire trial. For the patents entered into China via PCT and translated into Chinese based on the original foreign languages, the dispute may also arise due to the translation.

Also, to determine whether there is an infringement, the parties would prepare the claim chart to compare the features of the alleged infringing product and the patent claims. However, the methodology of preparing the claim chart could be very different due to different propositions of the parties. Each party will prepare an interpretation which favors its case, the patentee in favor of coverage and the defendant against coverage. Since the plaintiff’s interpretation is typically broad, upon the party’s request, the prior art may be brought into play even though the court cannot rule on validity. The prior art is used to frame coverage of the asserted claims since the claims cannot read on the prior art. In addition, the defendant may also raise prior art defense, i.e. arguing that the defendant’s alleged infringing technology is identical with the p^or art instead of the patented technology.

In the U.S. before the infringement trial occurs a court will conduct a special hearing to properly interpret the claim terms. This is referred to as the Markman hearing. During the Markman hearing each party argues in favor of a particular definition for each claim term. The court then renders its decision as to the proper definition of each claim term. The court’s definitions are binding on the parties and they govern the patent claims during the trail. In the U.S. it is common for a case to settle once the claim interpretation is made by the court.

9. Verification and assessment of the Court on technology facts

In China, only very few judges who hear patent cases have a technical background. To clarify and understand relevant technical matters, the judges have to rely on various means and methods jointly or separately, which are summarized as the following:

A. Convene a special hearing to identify technical facts, listen to expert witnesses’ statements and opinions expressed from both parties

In the present case, both parties hired authoritative experts in the field of technology as their expert witnesses to appear in Court, make statement and answer questions related to technology. Expert witnesses from both parties held similar or different opinions on the technical issues involved in this case. Therefore, the judge gradually narrowed down the trial focus. Unlike western practice, these hearings are typically scheduled only a few weeks in advance. This requires each party to have its case in a state of readiness so it is prepared when the judge sets a hearing. Further, multiple hearings may be conducted at the judge’s discretion.

B. Ex parte communications with the expert witnesses or technicians from each party

The judge conducted ex parte meetings with the expert witnesses or technicians from both parties at various times in order to have a thorough and comprehensive discussion regarding some critical technical matters. This can be a challenging aspect of a case for those unfamiliar with Chinese practice. This contrasts with U.S. practice wherein the court will only communicate with a party expert during a hearing when both parties are present.

C. Engage qualified appraisal institutions to identify technical issues

In many cases, the court may entrust an independent institution to assess and measure the disputed technical issues, and issue reports and conclusions. The court has a strict selection of the institutes, and only those with judicial appraisal’s qualification and listed in the court’s direction may be engaged.

D. Consult with technical experts

In some scenarios, the judge may also directly consult with independent technical experts in the field to address the questions or concerns. Some courts even have expert databases, and the judges may utilize the databases as a resource in the course of a case trial and deliberation.

In the present case, the judge engaged an expert advisory group consisting of three experts to help with clarification and understanding of the relevant technical issues. This is similar to U.S. practice where the court may also appoint independent experts to advise the court on technical matters.

10. Judgment

Finally, after 32 months of trial, the Court finally determined that the Defendants did not infringe the patent right alleged by the Plaintiff A. The main basis and reasons provided by the Court was that the scope of protection of the patent should be reasonably defined, and should be predictable by the public; and the Defendants’ products do not fall within the scope of protection. Although the courts are usually expected to conclude a patent case within one year, it is still possible for the case to take longer depending on the complexity of the technology and legal issues.

This judgment is a trial judgment which may be further appealed to the upper level court. The time limit for appeal is 15 days for entities domiciled in China, and 30 days for those which do not have a domicile in China, calculated from the date the written judgment is served. The court of second instance for this case would be the Higher People’s Court of the Province J where the city S is located. One can expect it to take from one to four months to transfer the case file from the lower court to the upper level court.

11. Conclusion

Based on the author’s collective experience, the patent litigation system in China is not yet perfect and there are still many unclear provisions. However, overall, there is a great similarity between the Chinese and the western systems. In regard to the provisions not expressly provided by the Chinese law, the actual practice can be very flexible and diverse. Understanding and participating in the Chinese IP legal system is a necessary and indispensable part of any business plan for China. It is prudent for any western company engaged in the global market to become thoroughly familiar with Chinese IP practice as part of a comprehensive global IP strategy.