Prior to the 17th World IP Protection Day, the Supreme Court released the Top 10 IP Cases Decided by Chinese Courts in 2016 and the Summary of judgment points for patent disputes of the 50 typical cases decided by Chinese courts in 2016 at a press conference in Beijing.

Below are 12 patent cases of the 50 typical cases. I. Patent civil cases

1. ThyssenKrupp Airport Systems Co.(Zhongshan) Ltd. V. China International Marine Containers (Group) Ltd. (CIMC) & Shenzhen CIMC-TianDa Airport Support Ltd. & Guangzhou Baiyun International Airport Company Ltd. on invention patent dispute [The Supreme People’s Court (2016) IP Tribunal’s Civil Second Judgement No. 179]

Significance: making it clear whether product specifications are public disclosures in the sense of patent law. For this case, the Supreme Court points out that product manuals and maintenance instructions are handed out to users when the product is sold. Neither its users, nor people who came into touch with it bear any confidentiality obligation. Plus such manuals or instructions are accessible to random public; therefore, they are deemed as publications from the perspective of patent law. The publication date of the technical solutions in them shall be counted from the time when the user receives the product.

2. M Bridge Machinery & Technology co., ltd V. Tien Heng Machinery Co., Ltd. on non-infringement action concerning patent disputes [Jiangsu Higher People’s Court (2016) Jiangsu Civil Judgement No. 610]

Significance: The function of non-infringement action concerning IP rights lies in providing judicial relief to those who have been feeling anxious for a long time after receiving warning letters from right owners (or the senders of letters) who are tardy in filing litigations. The fundamental purpose of such relief is to reign in uncontrolled sending of infringement warnings so as to stabilize market orders. For this case, the Supreme Court points out that though the right owner withdrew the lawsuit and said it will pullback the warnings against the plaintiff and its clients, the owner noted that it still reserved the right to press charges in an unspecified time in the future. As the owner did not make a clear-cut expression to end its claim to hold plaintiff accountable for infringement, such withdraw of action and warnings are insufficient to neutralize the negative effects of sending warning letters. In such cases, the receiver of warning letters could file non-infringement action directly. 

3. Wenzhou Ningtai Machinery ltd. V. Wenzhou Qianfeng Technology Co. Ltd. on patent right infringement [Zhejiang Higher People’s Court (2016) Z hejiang Civil Judgement No. 506]

Significance: the court decided that it is within the scope of the plaintiff’s cause of action and that the opponent constituted infringement as the infringing product had equivalent technical features with plaintiff’s patent, though the plaintiff claimed that the alleged infringing product had the same technical features with the involved patent. The court held that the “same” or “equivalent” saying is not the regarded as the plaintiff’s claim, rather, it is viewed as detailed cause as to why the infringement is decided. That is to say, even if a right owner claims infringement on ground of “same”, court could decide infringement is constituted on ground of “equivalent” basing on the circumstances.

4. ESCO Corporation V. Ningbo City Lu Kun international trade limited company on invention patent dispute [Zhejiang Ningbo Intermediate People’s Court (2015) Zhejiang Yongzhi Civil Judgement No. 626]

Significance: further highlight the principle of infringement judgement. That is the protection scope of an invention patent shall be based on its Claims, whereas the Specification and Drawings are used to explain the Claims. The principle for deciding infringement on invention patents is: to see if the alleged infringing technical solution includes the same or equivalent technical features with all those recorded in the Claims of the patentee; if the answer is yes, then the alleged technical solution shall be deemed as falling within the protection scope of the patent right. Otherwise, if the technical features of the alleged technical solution lack one or more technical features, or have one or more technical features that are not the same or equivalent with all those recorded in the Claims of the patentee, they shall not be deemed as 

5. HCNT Technology V. Hangzhou Alibaba Advertising Co. Ltd. & Jianyang Shunyi Trading Limited on invention patent dispute [Fujian Higher People’s Court (2016) Min Final Civil Judgement No. 1345 ]

Significance: this case provides good reference in terms of determining whether the notification of patentee to network service provider, after the patent right is infringed under the network setting, is valid. In occurrence of patent right disputes, is it justifiable for network providers to require patentees to provide preliminary evidence of infringement? Shall such notifications be considered as invalid if evidence submitted to a network provider is incomplete? The court holds that it is justifiable for network providers to ask patentees for preliminary evidence materials signifying the alleged infringement, considering that the determination of patent right infringement is a serious and highly professional business. Faced with flooded amounts of malicious and improper claims, the submission of preliminary evidence can weed out certain number of improper complaints, thereby ensuring the efficacy and efficiency of the entire process.

6. Li Zhanquan V. Zhao Jinshan on utility model patent infringement dispute [Shandong Higher People’s Court (2016) Lu Final Civil Judgement No. 1684]

Significance: highlights the functions of patent right evaluation report. Under China’s current patent examination system, the validity of utility model patent rights is comparatively weak as utility model patents are granted without substantive examination. In view of this, it is provided that for patent infringement litigation filed after October 1, 2009, the plaintiff shall provide a patent evaluation report given by patent administrative organs. Where the plaintiff fails to submit such report to court without any justified reason, the court could suspend the litigation or sentence the plaintiff to bear all negative consequences this may bring.

7. Jiangsu Tengtian Industrial Furnaces Co. Ltd. V. Chongqing Works Technology Co. Ltd. & Tongyu Heavy Industry Co.,Ltd on invention patent infringement dispute [Shandong Higher People’s Court (2016) Lu Final Civil Judgement No. 2427]

Significance: whether sales contract signed before the application date could be the reason for being prior art. If there is no corresponding connection between a sales contract and a preservation product, and if there is no detailed recording of the involved technology in the sales contract, the involved technology shall not be deemed as having been disclosed and the prior art claim does not stand.

8. Hu Chongliang V. Foshan Nanhai Dili Decorative Material Factory & Dong Feng on design patent infringement dispute [Guangdong Higher People’s Court (2015) Yue Higher Court Final Civil Judgement No. 517]

Significance: this case concerns the determination of on-line evidence. It brings the question whether pictures shared in QQ Zone could be regarded as sufficient disclosure.  For this case, the court holds that as QQ Zone account is personal and kind of private, it thus shall be considered that pictures shared on this platform are not public. However, if a QQ Zone account is used by companies to promote their products, the pictures shared on it shall be considered as publicly disclosed.

9. Shenzhen Daily Necessities Co. Ltd. V. Shenzhen Silicone Electronics Co., Ltd. on design patent infringement [Guangdong Higher People’s Court (2016) Yue Final Civil Judgement No. 1036]

Significance: this case is typical in that it imposed severe punishment on repeated infringement. The tricky part is to distinguish between repeated prosecution and repeated infringement. The court of second instance decided that the infringer’s selling of infringing products constituted repeated infringement and thus imposed heavy punishment, which produced favorable legal and social impact.

10. Christian Louboutin V. Guangzhou Wentan Trading Limited & Guangzhou Beilingfei Cosmetics Co., Ltd. & Guangzhou Oumu Biological Technology Co. Ltd. on design patent infringement dispute [Guangzhou Intellectual Property Court (2016) Yue Civil Judgement No. 1,2,3]

Significance: injunction before litigation is an important measure in safeguarding the interests of parties involved. However, there is no specific provision stipulating what shall be examined for injunction before litigation in China’s current legal system. Under the current law and judicial interpretations, the court in this case initiated the following items that the examination for injunction before litigation shall include: 1. whether the patent involved is valid; 2. whether the respondent’s acts may result in possible infringement; 3. whether irreparable damages may be done to the legal interests of the applicant if no injunction is imposed; 4. whether the damage is less or similar to the applicant if the injunction is sentenced than compared with before; 5. whether public interests will be damaged after imposing injunction and 6. whether the applicant’s guarantee is valid and proper. 

11. US based Catalytic Distillation Technology Corporation V. Huahaoxuan New Energy Technology Development Co., Ltd. on evidence preservation before patent litigation [Xi’an, Shaanxi Intermediate People's Court (2016) Shan Civil Judgement No.2]

Significance: clearly stipulates what evidence falls into the circumstance of “when evidence might be lost or might not be acquired” as provided in Article 67 of Patent Law of the People's Republic of China.

II. Patent administrative cases

1. Lv Hanjie V. Shantou IP Office & third person Lin Minghai on patent administrative dispute [Guangdong Higher People’s Court (2016) Yue Final Administrative Litigation Judgment No. 1134]

Significance: this case is typical in that it highlighted the importance of keeping administrative enforcement efficient and in line with laws.