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Tips for defendants in patent infringement cases

Jacky Tan of Jiaquan explores the different defences available in patent infringement litigation

In China, civil actions regarding patents are mainly disputes about infringement, ownership and licence contracts. Infringement disputes make up more than 90% of patent litigation. In patent infringement litigation, defence grounds/options, procedures and strategies should be carefully considered as they are closely related to the success or failure of the cases.

Defence procedure

In patent infringement cases, the patentee is usually well prepared by comprehensive investigation before becoming a plaintiff, while the defendant, who is accused of infringement, is generally unprepared. According to Article 125 of the Civil Procedure Law of the People's Republic of China, the defendant must file a defence within 15 days from receipt of the petition and other documents sent by the courts. However, most patent cases involve complex technical issues, such as technical comparison, patent assessment, patent invalidation, defence options and related proof and grounds, as well as other matters. As a result, 15 days is a very short span of time for the defendant. This raises a key question: how does a defendant acquire more time in order to better prepare before filing a defence?

In legal practice, a defendant can raise an objection to jurisdiction over a case within the time limit for filing the defence, pursuant to Article 127 of Civil Procedure Law. The people's courts examine such an objection and make a first instance decision. An appeal could be filed if the defendant is not satisfied with the decision, and the appeal is decided upon by the people's courts at higher level for second instance. By filing such an objection, the defendant could obtain enough time to analyse the case and prepare proof for defence.

Besides objection to jurisdiction, the defendant can initiate an invalidation proceeding against the plaintiff's patent. This has the following three benefits:

  • Firstly, according to Article 2 of the Interpretation by the Supreme People's Court on Several Issues Concerning the Application of Law in the Trial of Cases Involving Patent Infringement Disputes (II), "where a claim asserted by a patentee in a patent infringement lawsuit is declared invalid by the Patent Re-examination Board, the people's court hearing the patent infringement lawsuit may dismiss the lawsuit brought by the patentee based on the invalidated claim." Naturally, if the court dismisses the lawsuit, the defendant is successful.
  • Secondly, in examination of the patent invalidation, the patentee may further clarify the scope of protection and determine the technical features in the original claims so as to maintain the validity of the patent. The invalidation decision of the Patent Re-examination Board and the subsequent administrative decisions of first and second instance may also further define the scope of protection of the patent and set more limits on its technical features. Through these proceedings, the original scope of protection of the patent would probably be further restricted in patent examination archives, the written decision of invalidation as well as the statement of the plaintiff in oral proceedings (prosecution history estoppel). As an expected result, the alleged infringing product may not fall within the restricted scope of protection and therefore may not be an infringement.
  • Thirdly, regarding patent disputes concerning utility model or industrial designs which have been accepted by the people's courts, the defendant can request the suspension of the lawsuit on the ground that an invalidation request has been filed against the patent concerned within the defence period.

In conclusion, after raising objections to jurisdiction, a defendant could endeavour to further restrict the scope of patent protection by requesting patent invalidation and suspension of the infringement lawsuit, thus obtaining more time for a prepared defence.

Defence options

The defences utilised in patent infringement litigation mainly include non-infringement, prior art or design, infringement behaviour, exhaustion of rights, prior use, legitimate source and limitation of action.

Non-infringement defence

A defendant, using the defence of non-infringement, mainly argues that the alleged infringing product and the claims of the patent are neither identical nor equivalent in cases of invention patent or utility model. According to the principle of full coverage, in patent infringement analysis, the defendant should consider whether the accused technical product lacks any technical feature of the patented claims, or explore different technical features first and then apply the doctrine of equivalents to the features, so as to demonstrate the fact that the two do not have equivalent technical features. This means they are not using the same measure, the same function cannot be realised, the same effect cannot be achieved, and an ordinary person skilled in the art cannot think of the idea without creative work when the alleged infringement occurs.

In practice, there are only a few cases where the courts support the plaintiff's assertion that the distinguishing technical features of the alleged infringing product and technical features of the patent are equivalent. The reason for this is because the following four criteria have to be fulfilled in order to constitute equivalent: using the same measure, realising the same function, achieving the same effect, and an ordinary person skilled in the art is able to think of the idea without creative work when the alleged infringement occurs. Therefore, a defendant in infringement litigation should analyse in depth the four conditions required for the doctrine of equivalents. If necessary, textbooks, technical dictionaries, technical manuals, national standards and prior patents or technical journals can be cited as evidence.

In practice, there are only a few cases where the courts support the plaintiff’s assertion that the technical features of the alleged infringing product and technical features of the patent are equivalent

Regarding industrial design patents, it should first be considered whether the two designs belong to the same or a similar kind of product. Based on the knowledge and cognitive ability of ordinary consumers, the designs should be judged either identical or similar by applying overall observation, comprehensive judgment and the principle of main part observation. The non-infringement defence should be centred on proof that the two designs are neither the same nor similar types of products, nor identical or similar.

When determining whether the designs are identical or similar, features of the granted design and the alleged infringing design should be comprehensively compared based on the overall visual effects of the design. What should not be taken into consideration are the features mainly dictated by technical functions, the product's materials, internal structure and other features that have no influence on overall visual effects. However, compared with other parts in a granted design, the following two factors are usually most influential when considering overall visual effect – the part that can easily be observed directly in normal use and the distinguishing feature. The two designs are deemed as identical only when there is no difference in the overall visual effects between the granted design and the accused design or similar only when there is no substantial difference in the overall visual effects.

Regarding the second factor mentioned above, the court, taking a neutral stance in the trial, does not analyse the main points of the granted design on its own initiative. Instead, the court usually admits the main points of the design as stated in the brief introduction of the plaintiff's patent. Generally speaking, the stated main points of the design will be the overall shape or pattern of the product. The most representative picture or photo is the perspective view. Such a general brief explanation leads to an extension in the scope of protection. Therefore, for the defendant, prior design search and analysis are recommended as a first step in order to find out all prior designs before the application date of the patent involved. After analysis, the prior designs that have the same features or elements can be selected and submitted to the court as evidence. With the help of evidence, the court can decide the design features of the patent involved, which should be distinctive from the existing designs. According to the principle of main part observation, these main points should be most influential in the overall visual effect. Therefore, if the accused product is different from the patent when these points are kept in mind, the two designs should be deemed as neither identical nor similar.

Prior art defence

Prior art can be searched and supplied to prove that all the technical features of the accused product falling within the scope of protection of the plaintiff's patent are the same or not substantially different from the corresponding technical features of prior art. The accused product, as the implementation of prior art, should not be deemed as patent infringement.

Prior design defence

Prior designs can be provided to prove that the accused design is the same or not substantially different from the prior design. The accused design, as the implementation of prior designs, will not be an infringement either.

Infringement behaviour defence

A defendant is able to defend itself based on evidence that none of the following behaviours exist in cases of invention patent and utility model: exploiting the patent for production or business purposes, that is, make, use, offer to sell, sell or import the patented product or use the patented process, and use, offer to sell, sell or import the product directly obtained by the patented process. Regarding design patents, a defendant can prove that it did not make, offer to sell, sell or import the product incorporating the patented design for production or business purposes.

Exhaustion of rights defence

This defence is based on Article 69 of China Patent Law. Using, offering to sell, selling or importing any patented product or product directly obtained under the patented process after the said product is sold by the patentee or by its licensed entity or individual, shall not be deemed an infringement upon a patent right.

Prior use defence

The defendant is able to submit evidence to prove that the same product has been made, the same process has been utilised or the necessary preparation has been done for its making or using before the application date of the plaintiff's patent. It shall not be deemed as patent infringement to continue making or using it only within the original scope.

Legitimate source defence

When applying this defence, evidence should be provided to prove that the defendant, for production and business purposes, uses or sells a patented product or a product that was directly obtained by using a patented process, without knowing that it was made and sold without the authorisation of the patentee. As a result, the defendant will not be liable for the damage suffered by the patentee, provided that it obtains the product from a legitimate source. If the business or person using the infringing product can prove that reasonable cost has been paid for it, they can keep using the product.

Limitation of actions defence

The period of limitation for filing a lawsuit concerning the infringement of a patent right is two years, counted from the day on which the patentee or the interested parties became aware or should have become aware of the act of infringement. Thus, evidence can be provided to prove that the lawsuit is filed after two years so it is out of the limitation.

Defence strategies

If any one of the above-mentioned defences is successful in patent infringement litigation, the court will dismiss the plaintiff's petition. In infringement lawsuits, the defendant should first file a jurisdictional objection in order to obtain more time for investigation and evidence collection. After preparation, favourable evidence should be submitted as far as possible and multiple defences should be combined along with an invalidation request. In this way, the defendant will be well prepared. As long as one of the defences or the invalidation works, the defendant can be successful in the lawsuit.

Patent infringement litigation can be a long process as it includes first instance, second instance, retrial and executive procedure. The defendant may also initiate an invalidation proceeding. If the defendant can find out any further evidence like prior published documents at home and aboard or disclosure by use, one or more new invalidations can be requested based on this new evidence. As long as the patent concerned can be invalidated before the second instance decision in infringement litigation, the defendant will be successful. In case the patent is invalidated after the second instance of infringement litigation, the defendant can request a retrial procedure to recall the valid decisions of first and second instances. The successful invalidation often helps the defendant turn the tide through a retrial procedure. All of the above strategies can increase the chance of success for the defendant effectively.

Jacky Tan
Mr Tan joined Jiaquan in 2009. As a result of his exemplary skills, talent and leadership, he is now a partner at Jiaquan IP Law. Prior to his career in IP law, Mr Tan worked at a large electronics group for integrated circuit design and production. Subsequently, he joined an international mobile phone manufacturer and assisted with the development of operating systems for computer software and GPRS modems.

Mr Tan is specialised in electrical, computer software and hardware, and telecommunications engineering. He has handled over 300 patent applications and roughly 100 intellectual property lawsuits. He is also an infringement judgment expert for the Guangdong Intellectual Property Office and has served as an expert witness in numerous cases. He has substantial experience in judicial identification of intellectual property rights and intellectual property protection, particularly in the context of trade fairs where expeditious action is vital.

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