On September 20, 2016, a judgment was issued by Beijing IP Court on a patent infringement case, finding that the act of the defendant Changzhou Airwheel Technology Co., Ltd. ("Airwheel") has infringed the Chinese patent no. ZL201330266398.X owned by the plaintiff The Full United (Beijing) Technology Co., Ltd.("Full United") . Airwheel was ordered by the court to pay damages of CNY 400,000 (USD 60,000).
To be noted, the fight between the plaintiff and the defendant has also begun in the United States. Ninebot (Tianjin) Technology Co., Ltd., which is the subsidiary company of Full United (the plaintiff of Full United v. Airwheel above), filed an application of investigation before US International Trade Committee ("USITC"), alleging that Airwheel and the other 11 companies violated Section 337 by way of unlawful importation into the United States, selling for importation, and/or selling within the U.S. after importation certain personal transporters, components thereof, and packaging and manuals therefor that infringe one or more claims of U.S. Patent Nos. 6,302,230 and 7,275,607. On September 15, 2016, USICT decided to institute the section 337 investigation.
In the Chinese patent litigation Full United v. Airwheel above, evidence of infringement was successfully collected through notary public, forming strong backbone of the case and eventually leads to full victory. Evidence collection through notary public is an important way of collecting evidence in China. Unlike the United States and other jurisdictions, discovery procedure in which attorney may request information from the other party is not available in China, making it very hard to collect evidence for plaintiff. This is especially true for patent infringement litigation, characterized in hidden act of infringer.
Why not just buy the infringing product ?
Plaintiff and attorney may collect the evidence of infringement themselves and submit it before the court. However, evidence collected this way may be vulnerable in the cross examining proceeding in trial. For instance, the attorney may collect the evidence by buying the allegedly infringing product online and order it to be shipped to his office or home. Then the attorney may submit the evidence of product bought, the shipping receipt, the printed copy of the webpage of the infringing product to the court. The other party may be likely to object by claiming that the product was not shipped from him. Or he may claim the product was not produced by him due to the fact that the address on the package is different than his business address . He may even delete the infringing product webpage after he was served with the complaint and thus he may claim that the printed copy of the webpage submitted by the plaintiff is not from his website. One defect in the chain of evidence may lead to total failure in proving the infringement. Due to the uncertainties and weaknesses in evidence collection by the plaintiff or the attorney themselves, we usually do not recommend submitting the product directly bought by the plaintiff or attorney from the infringer.
Why collect evidence through notary public?
According to Some Provisions of the Supreme People's Court on Evidence in Civil Procedures
Article 9 The facts as mentioned below need not be proved by the parties concerned by presenting evidences:
6. The facts that have been proved in the valid notary documents.
The facts as mentioned in items 1, 3, 4, 5, 6 of the preceding paragraph shall be excluded if they can be overthrown by contrary evidences of the parties concerned.
The article above indicates that the strongest evidence that does not require proving include notary document, make it very hard for the other party to challenge in the cross examining proceeding in trial.
Type of evidence suitable for collection through notary public
For invention patent, plaintiff and attorney may file a petition to the notary office to notarize the act of manufacturing, using, selling, offering to sell and importing of infringing goods. In practice, the most frequent types of evidence collected through notary public is the act of offering to sell and selling.
- Offering to sell
According to Supreme People's Court's provisions on application of law in the hearing of patent infringement
Article 24 Offering to sell as referred in Article 1 and Article 63 of Patent Law of P.R. China means intention of selling the goods through advertisement, displaying in showcase, exhibiting in the trade show or any other means.
Displaying the infringing product in a webpage shall be deemed an act of offering to sell. If the infringer displays the product at issue in the website, plaintiff or attorney may consider collecting the evidence of the act of offering to sell through notary public . Plaintiff or attorney may file a petition to notary public to notarize the webpage of the infringing product. Upon acceptance of the petition, the plaintiff or attorney will be invited to the notary office to perform steps from opening of the web browser to opening of the webpage that contains the infringing product under the witness of the notary public. Every steps will be recorded in written form and every page will be copied and included in the notary document.
In the Full United v. Airwheel case mentioned above, Beijing Fangyuan Notary Office issued a notary document (no. 23501), notarizing the product description page, sales page, after sales service page, news page etc. that include any self balancing vehicle with model no. "S3" in www.airwheel.cn(Airwheel's official website), Tmall.com (one of the biggest B2C online market under alibaba.com in China ), taobao.com(one of the biggest C2C and B2C online market under alibaba.com in China) and jd.com (one of the biggest B2C online market in China ).
If the product is available in the shop, plaintiff or attorney may file a petition before notary office to notarize defendant's act of selling the infringing product. Upon acceptance of the petition, a notary public will be assigned by the notary office to go to the shop on the designated date and time together with the attorney or the plaintiff to make the purchase of the product. Notary public is not required to indicate his identity as a notary public in the course of evidence collection. Besides the infringing product, name card , invoice with the seal of the infringer's company and preferably infringer's catalogue should be collected on site. Notary public will include the written record of purchasing process, detail address, description of surroundings, copy of the invoice, name card and product catalogue in the notary document. Notary public will also seal the package of the product , proving that the package has never been opened or altered by anyone until the seal is destroyed and the package is opened in trial before the judges.
In the Full United v. Airwheel case mentioned above, beside the notary document proving defendant's act of offering to sell mention above, Beijing Fangyuan Notary Office issued another notary document (no. 23511), notarizing that the notary public went to Dinghao Electronic Market (address: No. 3, Haidian Boulevard, Haidian District, Beijing) and bought a "Airwheel" brand self balancing vehicle with model "S3". The product itself was sealed by the notary public. In the photos of the notary document, the company name of "Changzhou Airwheel Technology Co., Ltd" is indicated in the product description. The invoice was issued by Beijing Dalishengtong Co. and the value was CNY 6,300 (USD 945).
The evidences collected through notary public are crucial to the success of the case. Such way of collecting evidence is especially suitable for infringing products readily available in the online market or in the defendant's shop or factory.