Supreme People's Court, Annual Report on Intellectual Property Cases (2010) (Abstract)

1. Trial of Civil Patent Cases

(1) Several principles that should be complied with when interpreting claims

In the Sun Shouhui vs. KFC Corporation et. al. patent infringement case [(2009) Min Shen Zi No. 1622], the Supreme People's Court applied the first paragraph of Article 56 of the Patent Law effective as of July 1 2001, complying with principles such as that the description and drawings can be used to interpret the claims; where a term in the claims is not given a particular explanation in the description, the normal understanding of such term should be used; that related technical terms used in different claims should be interpreted has having the same meanings; and that consideration be given to the restrictions placed on the scope of protection of a patent by the patentee in a patent grant procedure or patent invalidation procedure in order to ensure that it secures the patent or maintains the validity of the patent in correctly determining the scope of protection of the patent in question.

(2) When a different understanding of the contents of a claim exists, interpretation should be effected based on the description and drawings

In the New GEP et. al. vs. Taishan Forerunner patent infringement case [(2010) Min Shen Zi No.871], the Supreme People's Court held that, pursuant to the first paragraph of Article 56 of the Patent Law, if a different understanding of the contents of a claim arises, resulting in a dispute over the scope of protection under a claim, the description and drawings can be used to interpret the claim. In this case, solely from the textual description of the relationship among “bamboo, wood, plant fibres” in claim 1 for the patent in question, it is difficult to determine whether there is an “and” or an “or” relationship between the three items. From the embodiment in the description for the patent in question reading, “the magnesian gelling plant fibre layer is a compound made from magnesium chloride, magnesium oxide and bamboo fibre or wood sawdust or plant fibre”, it can be seen that the meaning of “bamboo, wood, plant fibre” should encompass an “or” relationship, namely any one of them will do.

(3) If a term in a claim is specifically defined in the description, its use in the claim should be interpreted in light of its definition in the description

In the Fujian Duoling Steel vs. Qidong Baling Gangwan patent infringement case [(2010) Min Shen Zi No.979], the Supreme People's Court held that, in respect of a technical term in the claims for a patent that is disputed by the parties, where such term does not have a clear definition in the relevant industry or sector, but the description for the patent in question assigns it a specific meaning and such definition clarifies the scope of protection under claim 1 for the patent in question, the meaning of the term in the claim should be understood in the light of the definition given in the description.

(4) Determination of the equivalence of technical features in a patent infringement dispute

In the Jingye vs. Yongchang patent infringement case [(2010) Min Shen Zi No.181], the Supreme People's Court held that, when determining whether a technical feature of the alleged infringing product is equivalent to a technical feature of the patent, not only does consideration need to be given as to whether the technical feature of the alleged infringing product is a technical feature that a person having ordinary skill in the art could think of without doing any creative work, but consideration also needs to be given as to whether the technical feature of the alleged infringing product, when compared to the technical feature of the patent, is essentially an identical technical means, realises an essentially identical function and achieves an essentially identical result. The two can be determined to be equivalent technical features only if the foregoing two conditions are satisfied.

(5) Revision of a claim to overcome the flaw that the description does not support a claim may result in the applicability of the doctrine of estoppel

In the Aonuo vs. Wushi et. al. patent infringement case [(2009) Min Ti Zi No.20], the Supreme People's Court held that, from the approval file for the patent in question, it could be seen that the revisions by the patent applicant were made in view of the State Intellectual Property Office's review opinion that held that the scope of protection under the claim in the publicly disclosed version of the patent application in question was overly broad and, in fact, was not supported by the description; and as the relevant technical feature of the alleged infringing product was a technical solution that the patentee had relinquished during the patent grant procedure, it should not be deemed equivalent to the technical feature described in claim 1 and therefore included within the scope of protection of the patent.

(6) A statement of opinions by a patentee during a grant or confirmation procedure may result in the applicability of the doctrine of estoppel

In the Youta vs. Vanguard et. al. patent infringement case [(2010) Min Ti Zi No.158], the Supreme People's Court, pursuant to the statements of opinion made by the patentee during the procedure for the grant of the patent in question and the patent invalidation procedure, and a comparative analysis of the technical results under the relevant different process conditions stated in the description for the patent in question, determined that the relevant technical feature in the alleged infringing product was not equivalent to the corresponding technical feature in the patent in question, consequently, the alleged infringing product did not fall within the scope of protection under claim 1 of the patent in question.

(7) Extension of the protection of process patents

In the Zhang Xitian vs. Ouyi et. al. patent infringement case [(2009) Min Ti Zi No.84], the Supreme People's Court held that, pursuant to Article 11 of the Patent Law, the scope of protection of a process patent could extend only to the product that is directly derived from the patented process, i.e. the original product derived from using the patented process, and could not be extended to follow-up products derived from further processing of the original product.

2. Trial of Administrative Cases Involving the Granting and Confirmation of Patents

(8) Review and determination of whether a claim is supported by the description

In the administrative case for the invalidation of Eli Lilly's invention patent for a “stereoselective glycosylation process” [(2009) Zhi Xing Zi No.3], the Supreme People's Court held that the technical solution for which a claim requests protection should be a technical solution that a person skilled in the art could derive or broadly obtain from the fully-disclosed contents of the description, without exceeding the disclosed scope of the description; if the broad outline of the claim would cause a person skilled in the art to have reason to doubt that one or more subordinate concepts or selected methods included in the superordinate broad outline or juxtaposed broad outlines would not resolve the technical problem that the invention is intended to resolve and achieve an identical technical result, the claim should be determined as not being supported by the description.

(9) Basic method for determining whether designs are identical or similar and the design features to which attention should be paid

In the administrative case for the invalidation of Honda's “automobile” design patent [(2010) Xing Ti Zi No.3], the Supreme People's Court analysed the basic method for determining whether designs are identical or similar and held that, when determining whether designs are identical or similar, because a design feature that is common to products has a relatively limited impact on the visual sense of the average consumer, attention should be paid to the variation in other design features that are more likely to draw the attention of the average consumer.

(10) Consideration of design space in determining whether designs are identical or similar

In the administrative case for the invalidation of Wanfeng's “motorcycle wheel” design patent [(2010) Xing Ti Zi No.5], the Supreme People's Court held that design space was of important significance in determining the knowledge level and cognitive abilities of the average consumer of the relevant design product; in determining whether designs are identical or similar, design space, in other words, the designer's degree of creative freedom, should be taken into consideration so as to accurately determine the knowledge level and cognitive abilities of said average consumer; the size of the design space is a relative concept, one that is variable and, as such, when considering design space of a design product in a procedure for the invalidation of a patent, the state on the patent filing date shall prevail.

II. Trial of Copyright Cases

(11) Review and determination of the vesting of copyright in Chinese opera music works

In the Huang Nenghua, Xu Wenxia et. al. vs. Yangzijiang et. al. copyright infringement case [(2010) Min Shen Zi No.556), the Supreme People's Court held that, in an infringement action, the conduct of a review by the people's court of the vesting of the copyright is a necessary step in ascertaining the facts of the case; the music for voice together with the overture, intermezzo, chorus and other such scene music in the Shanghai opera in question should all be treated as one work and, historically, where the author of the music of the opera in question was inconsistently named and a person or persons not involved in the case who was/were named as the author of the music was/were not participating in the infringement action, making it impossible to ascertain relevant facts, the claim by one of the named authors that copyright is vested in him/her should not be upheld.

(12) Issue of whether registration of a work constitutes publication for the purposes of copyright

In the Queen Lines vs. Bahang Plant et. al. copyright infringement case [(2010) Min Shen Zi No.281), the Supreme People's Court held that the main function of registering a work was to evidence the ownership of rights and, in general, did not constitute publication for the purposes of the Copyright Law. Therefore, in the absence of other evidence, registration cannot be used to infer that the defendant had access to the plaintiff's work.

(13) The safeguarding of his/her lawful rights and interests by an overseas holder of copyright in a film/television work is not contingent on his/her having secured administrative approval

In the Zoke vs. Shuimu Nianhua Internet Cafe et. al. copyright infringement case [(2010) Min Ti Zi No.39), the Supreme People's Court held that the safeguarding of his/her lawful rights and interests by an overseas holder of copyright in a film/television work is not contingent on his/her having secured administrative approval.

(14) Determination of the reproduction and distribution entity for a book published after the buying/selling of a book number, and determination of infringement

In the Li Changfu vs. Chinese Literature and History Press copyright infringement case [(2010) Min Ti Zi No.117), the Supreme People's Court held that, when a publisher sells a book number to a book dealer and the book dealer is responsible for editing, printing or distributing the book, the book dealer should be determined as being the actual entity that reproduced and distributed the book.

(15) Copyrightability of maps of administrative divisions and the extent of protection thereof

In the Liu Kai vs. Darhan Muminggan United Banner Government et. al. copyright infringement and unfair competition case [(2008) Min Shen Zi No.47-1), the Supreme People's Court held that an independently created and completed map can constitute a work for the purposes of the Copyright Law if, in its overall composition and in the selection and method of presentation of objective geographical elements is original; as the overall shape and location of an administrative division and the shapes and locations of its internal divisions on a map of such administrative division, etc. exist objectively, the method of their expression is extremely limited, therefore, they should not be considered when determining infringement.

III. Trial of Trademark Cases

1. Trial of Civil Trademark Cases

(16) Consideration of factors such as the subjective intent of the alleged infringer, historical use and current status of the relevant mark, etc. in determining whether trademarks are similar

In the Lacoste vs. Crocodile International et. al. “Crocodile Device” trademark infringement case [(2009) Min San Zhong Zi No.3], the Supreme People's Court held that trademark similarity for the purposes of infringement of the exclusive right to use a trademark should be taken to mean confusingly similar, i.e. so similar as to cause confusion in the market; due to the complexity of the circumstances surrounding disputed marks in different cases, in determining whether trademarks are similar, not only should the degree of similarity of the component elements be considered, but comprehensive consideration can also, depending on the specific circumstances of the case, be given to other relevant factors, such as the subjective intent of the alleged infringer, the historical use and current status of the registered trademark and disputed mark, etc., and the determination should then be made on this basis as to whether the disputed trademark is confusingly similar.

(17) Consideration of factors such as the distinctiveness and notoriety of a registered trademark in determining whether trademarks are similar

In the Jiahe County Forging Plant vs. Huaguang Machinery et. al. trademark infringement case [(2010) Min Ti Zi No.27], the Supreme People's Court held that, in determining whether the alleged infringing mark is similar to the registered trademark in which the rights are being asserted, the degree of distinctiveness of the trademark in question or its component elements, the trademark's market notoriety and other such concrete information should be taken into account, and, on the basis of consideration and a comparison of the fonts, pronunciation and meanings of the word(s), composition and colour of the device or the composite structure of the component elements, etc., a comprehensive analysis and determination of whether the whole or major portion(s) could potentially cause confusion in the market should be made.

(18) Rules for handling the conflict between an enterprise's trade name and the prior registered trademark of a third party

In the Li Huiting vs. Dalian Wangjiang trademark infringement case [(2010) Min Ti Zi No.15], the Supreme People's Court clarified the rules for handling cases of a conflict between an enterprise's trade name and the prior registered trademark of a third party, indicated that halting the use of the enterprise name and compliant use of the enterprise name are two different forms of liability and clarified the specific circumstances under which these two forms of liability apply.

2. Trial of Administrative Cases Involving the Granting or Confirmation of Trademark Rights

(19) Review of and determination on an application for the registration as a trademark of a sign containing a country name

In the administrative case re-examining the rejection of the trademark “中国劲酒” (Chinese Jing Wine) [(2010) Xing Ti Zi No.4], the Supreme People's Court held that, for the purposes of Item (1) of the first paragraph of Article 10 of the Trademark Law, the phrase “those that are identical or similar to the state name…of the People's Republic of China” means that the sign, as a whole, is identical or similar to the state name of China; if such sign contains a word or words that is/are identical or similar to the state name of China but it/they is/are combined with other elements and such whole ceases to be identical or similar to the state name of China, it should not be determined to be a sign that is identical or similar to the state name of the People's Republic of China.

(20) Consideration of existing similar registered trademarks of the respondent when determining whether a well-known trademark has been reproduced or imitated

In the administrative case re-examining the opposition to the trademark “萍果男人” (Pingguo Nanren) [(2009) Xing Ti Zi No.2], the Supreme People's Court held that, when determining whether the opposed trademark constitutes a reproduction or imitation of a well-known trademark, if the respondent, before applying to register the opposed trademark, already owned similar registered trademarks in the same class of goods, the court should compare the degree of similarity between the opposed trademark, on the one hand, and the respondent's own registered trademark(s) and the well-known trademark of the third party, on the other hand. If there is a higher degree of similarity between the opposed trademark and the respondent's trademark(s) already registered in the same class of goods, the opposed trademark should not be determined to constitute a reproduction or imitation of the well-known trademark of the third party.

(21) Can the name of a pharmaceutical be accorded protection as a right of priority under the Trademark Law?

In the administrative “可立停”(Keliting) trademark dispute case [(2010) Zhi Xing Zi No.52], the Supreme People's Court held that the name of a pharmaceutical that has been actually used and has a significant influence can be accorded legal protection as a right of priority as provided in Article 31 of the Trademark Law.

(22) Effect of the rights claimant's intent in, and act and effect of, using the disputed sign on the protection accorded it by the law

In the administrative “索爱¹” (Suoai) trademark dispute case [(2010) Zhi Xing Zi No.48], the Supreme People's Court held that, with respect to the disputed trademark “索爱”, regardless of whether it was taken as an abbreviation of an unregistered trademark, or the abbreviation of an enterprise name or of the name particular to a well-known good, the pre-condition to its being accorded legal protection was that the party asserting the rights in such mark had actually used such mark and such mark could distinguish the source of its goods. Prior to the filing date for the disputed trademark, Sony Ericsson did not have the intent or carry out any act of using the disputed trademark as its commercial logo, and reports on its mobile phone products by relevant media could not create civil rights and interests that were subject to legal protection for that company.

IV. Trial of Competition Cases

(23) The infringement by a registered trademark of the rights and interests in the trade name portion of a prior enterprise name of another constitutes unfair competition

In the Welsun vs. Shunde Zhengye et. al. unfair competition case [(2008) Min Ti Zi No.36], the Supreme People's Court held that an enterprise name, particularly the trade name portion thereof, that is subject to the protection of the Anti-unfair Competition Law is, in essence, a property right and the related rights and interests arising therefrom can be succeeded to. Applying to register as a trademark and using an enterprise's trade name that has prior use and a significant degree of notoriety in the market is sufficient to confuse the relevant public as to the source of the goods, infringes the rights and interests in the prior trade name of the enterprise and constitutes unfair competition, and accordingly, civil liability should be borne by halting the use of such registered trademark.

(24) Conditions for according the protection of the Anti-unfair Competition Law to commercial opportunities

In the “kelp quota” unfair competition case [(2009) Min Shen Zi No.1065], the Supreme People's Court held that, under normal circumstances, commercial opportunities that the obtaining of can reasonably be anticipated can become a legal interest that is subject to the protection of the law, in particular, the Anti-unfair Competition Law. However, due to the open nature and uncertainty of commercial opportunities, only the obtaining by a competitor through illegitimate means, by ignoring the principle of good faith and breaching generally-accepted commercial ethics, of a commercial opportunity of which the obtaining can reasonably be anticipated by another is prohibited by the Anti-unfair Competition Law.

(25) Conditions and criteria for applying the general provisions of the Anti-unfair Competition Law in determining unfair competition

In the aforementioned “kelp quota” unfair competition case, the Supreme People's Court held that, application of the principles and provisions of Article 2 of the Anti-unfair Competition Law in determining unfair competition is subject to the following conditions: (1) there are no specific provisions in the law addressing the competitive act in question; (2) the lawful rights and interests of other business operators were actually harmed by such competitive act; and (3) such competitive act is unfair, in other words, censurable, because it genuinely violates the principle of good faith and generally-accepted commercial ethics. With respect to the propriety of competitive acts, particularly acts that are not addressed in Part Two of the Anti-unfair Competition Law, the basic criterion for judging them should be whether they violate the principle of good faith and generally-accepted commercial ethics. In the Anti-unfair Competition Law, the principle of good faith is principally manifested in generally-accepted commercial ethics. What is manifested in commercial ethics is a type of business moral principles, which are standards of behaviour that are jointly and universally accepted by transaction participants, and should be assessed based on the moral standards of market transaction participants, i.e. economic persons, in the specific commercial sector.

(26) Determination of the propriety of the act of planning the establishment of a new company by an employee while employed by the employer where such company is in competition with the employer

In the aforementioned “kelp quota” unfair competition case, the Supreme People's Court held that the planning of the establishment, by an employee while employed by an employer, of a new company that is in competition with the employer in order to make suitable preparations for his/her livelihood after he/she leaves service is not necessarily improper. Such act can itself be determined to be improper only if it breaches a statutory or contractual non-compete obligation.

(27) Determination of the propriety of an employee who has left the employ of his/her employer using his/her skills to work for a company that is in competition with his/her former employer

In the aforementioned “kelp quota” unfair competition case, the Supreme People's Court held that the knowledge, experience and skills mastered and accumulated by an employee in the course of his/her work, with the exception of things that fall within the scope of trade secrets of the employer, constitute part of his/her person, and he/she has the freedom to use the same as he/she wishes after leaving employment. Where he/she has neither breached a non-compete obligation nor infringed trade secrets, the use by a worker of the knowledge, experience and skills learnt with his/her former employer to provide service to another entity that is in competition with his/her former employer should not be straightforwardly determined to constitute unfair competition under the principles and provisions of Article 2 of the Anti-unfair Competition Law.

(28) Can the design of a good for which a design patent was obtained be accorded protection under the Anti-unfair Competition Law once the patent expires?

In the “particular trade dress of M&G pens” unfair competition case [(2010) Min Ti Zi No.16], the Supreme People's Court held that a design does not inevitably enter the public domain once the design patent expires. Where specific conditions are met, protection to stop confusion may then be secured pursuant to the provisions of the Anti-unfair Competition Law on the packaging and trade dress particular to famous goods.

(29) Conditions for the external form and structure of a good to be accorded protection as the trade dress particular to a famous good

In the aforementioned “particular trade dress of M&G pens” unfair competition case, the Supreme People's Court held that any externally visible decoration that has the function of beautifying a good constitutes trade dress, which, usually, includes two types, a text and design type, and a form and structure type. As compared to trade dress consisting of text and design extrinsic to a good, the conditions that trade dress consisting of form and structure intrinsic to a good is required to satisfy to constitute trade dress particular to a famous good are much more stringent. Generally, these conditions, at minimum, include: (i) such form and structure shall have distinctive features that set it apart from commonly seen designs; and (ii) the relevant public has associated such form and structure with the specific producer or provider through use thereof in the market, in other words, through use, the form and structure have secured a second meaning.

V. Trial of Intellectual Property Contract Cases

(30) The validity of franchise contracts executed by franchisers that fail to satisfy the “two stores, one year” condition

In the Guangxi Higher Court request for instructions case [(2010) Min San Ta Zi No.18], the Intellectual Property Division of the Supreme People's Court held, in its official reply, that the second paragraph of Article 7 of the Regulations for the Administration of Commercial Franchising, effective as of May 1 2007, providing that, “a Franchiser that wishes to engage in Franchising activities shall have at least two stores that it operates directly and have been in business for more than one year” constitutes a mandatory provision of an administrative nature of administrative regulations. Accordingly, the failure by a franchiser to satisfy the aforementioned condition does not inevitably result in the invalidity of the franchise contract executed by it with a third party.

(31) The validity of franchise contracts executed by entities or individuals other than enterprises as the franchiser and determination of the franchiser

In the Guangxi Higher Court request for instructions case [(2010) Min San Ta Zi No.19], the Intellectual Property Division of the Supreme People's Court held, in its official reply, that the second paragraph of Article 3 of the Regulations for the Administration of Commercial Franchising, effective as of May 1 2007, providing that “an entity or individual other than an enterprise may not engage in Franchising activities as a Franchiser”, can be determined to be a mandatory provision of administrative regulations that is required to establish validity. Accordingly, a franchise contract executed with a third party by an entity or individual other than an enterprise as the franchiser may be determined to be invalid. Additionally, in the trial of specific cases, courts need to take into account factors such as the owner or actual controller of the franchising resources, information on file with the competent commerce department, the actual provider of services such as business guidance, technical support and vocational training, the signatory of the contract in question and the capacity in which such contract is executed, as well as the legal relationship between the signatory and the owner or actual controller of the franchising resources so as to accurately determine the franchiser under the contract in question and duly try relevant cases in accordance with the law.

VI. Bearing of Liability for Infringement of Intellectual Property

(32) Determination of a multiplicity of actions in cases of copyright infringement by digital libraries and the determination of the liability for compensation

In the Li Changkui vs. Chaoxing Shutu, Guizhou University et. al. copyright infringement case [(2010) Min Ti Zi No.159], the Supreme People's Court held that, in infringement actions instituted by a rights holder against an operator of a digital library and different users, due to the fact that the alleged perpetrators of the infringement are not entirely identical and the claims are not covered by one another, they do not constitute a multiplicity of actions. However, whether the claim by the rights holder for compensation for losses can be upheld, requires comprehensive consideration. If the compensation obtained by the rights holder in a previous action is sufficient to compensate it for the actual losses incurred as a result of the infringement in the current case, the defendant in the current case should not be required to bear liability for compensation toward the rights holder again.

(33) Determination of the liability for compensation of a seller of goods that infringe upon the exclusive right to use a registered trademark

In the Puma vs. Guangkeyu trademark infringement case [(2009) Min Shen Zi No.1882], the Supreme People's Court held that where infringement by a seller does not constitute contributory infringement with that of the manufacturer and the seller is not required to bear joint and several liability, it is required to bear the attendant liability only for its sales acts and should not additionally be required to bear the liability bearable by the manufacturer, let alone be required to compensate for all of the losses incurred by the rights holder as a result of the infringement.

(34) Determination of the compensation bearable by a patentee that erroneously applied for customs seizure of goods

In the Zhaoying vs. Ager patent infringement case [(2010) Min Shen Zi No.1180], the Supreme People's Court held that, in the event that an intellectual property rights holder erroneously applies for customs seizure of another's export goods, resulting in the other's actual delivery date being in breach of contract, the liquidated damages payable by the other for late delivery pursuant to the contract are its economic loss.

VII. Evidence and Procedure in Intellectual Property Legal Actions

(35) Should a People's Court accept a dispute arising over the vesting of the right to apply for registration of a trademark?

In the case for confirmation of the vesting of the right to apply for a trademark between Jiuye and Xiangxi et. al. [(2010) Min Jian Zi No.407], the Supreme People's Court held that a dispute arising between parties over the vesting of application rights in the course of an application for the registration of a trademark is a civil dispute, and so long as the conditions set forth in Article 108 of the Civil Procedure Law are satisfied, the People's Court should accept it.

(36) The Supreme People's Court, Provisions on Several Issues Concerning Jurisdiction Over Foreign-related Civil and Commercial Actions do not apply in foreign-related intellectual property cases

In the Adidas vs. Adivon et. al. trademark infringement and unfair competition case [(2010) Min Shen Zi No.1114], the Supreme People's Court held that the Supreme People's Court, Provisions on Several Issues Concerning Jurisdiction Over Foreign-related Civil and Commercial Actions do not apply in foreign-related intellectual property cases.

(37) The effect of an administrative action for the invalidation of a patent on a civil action involving infringement of such patent

In the Zhang Baozhong vs. Qianjiang Electrical Equipment Factory et. al. patent infringement case [(2010) Min Shen Zi No.1038], where, at appeal a judgment that the defendant was required to bear liability for patent infringement was rendered but prior to such appeal judgment the patent had been declared invalid and an administrative action had been instituted in respect of the request for an examination of the invalidation decision, the Supreme People's Court held that, as the patent invalidation decision rendered by the Patent Re-examination Board of the State Intellectual Property Office was tied up in the administrative action and the review of the application for a retrial was contingent on the outcome of the trial of the administrative case, the action in the current case should be suspended and the enforcement of the previous judgment should also be suspended until the aforementioned administrative action is concluded.

(38) Should evidence not provided by a party during the administrative procedure be admitted?

In the administrative case re-examining the cancellation of the trademark “国医” (Guoyi) [(2010) Zhi Xing Zi No.28], the Supreme People's Court held that, in general, a people's court should not admit new evidence submitted by the plaintiff in the course of an administrative action, but this does not mean that all such evidence should not be admitted. The precondition for refusing to admit such evidence is that, in accordance with the law, the plaintiff was required to provide such evidence but refused to do so.

(39) Recognition of evidence in the form of pictures downloaded from the internet and allocation of the burden of proof

In the Getty Images vs. Chongqing Waiyun trademark infringement case [(2010) Min Ti Zi No.199], the Supreme People's Court, at retrial, accepted evidence provided by Getty Images in the form of pictures downloaded from the internet, etc. of which the purpose was to substantiate title to the works in question and, based on the signature on such downloaded pictures and in view of specific circumstances such as the fact that Chongqing Waiyun did not submit counter-evidence, determined that the signer of the downloaded pictures was the author; furthermore, it inferred, from the fact that Chongqing Waiyun failed to submit evidence showing that its use of the works in question had a lawful basis, that the works in question had been published before being used by Chongqing Waiyun, in other words, it recognised the fact that Chongqing Waiyun had actually had access to the works in question.

(40) Allocation of the burden of proof in a dispute over infringement of a manufacturing process patent for a new product and determination of “new product”

In the aforementioned Zhang Xitian vs. Ouyi et. al. patent infringement case, the Supreme People's Court held that, pursuant to the second paragraph of Article 57 of the Patent Law, in a dispute over infringement of the manufacturing process patent for a new product, certain preconditions have to be met if the burden of proving that the manufacturing process for the alleged infringer's product is different from the patented process is to fall on the alleged infringer, namely that the rights holder can establish that the product manufactured using the patented process is a new product, and that the product manufactured by the alleged infringer is a product that is identical to the product manufactured using the patented process. When determining whether a process patent is a manufacturing process patent for a new product, such determination should be based on the product derived directly from the patented process. The term “product derived directly from the patented process” means the original product derived from using the patented process, excluding follow-up products derived from further processing of the original product.

(41) Allocation of the burden of proof in disputes over infringement of an invention patent for a pharmaceutical preparation method and ascertainment of the alleged infringing technical solution

In the Eli Lilly vs. Hansoh patent infringement case [(2009) Min San Zhong Zi No.6], the Supreme People's Court emphasised the conditions under which the burden of proof in respect of the manufacturing process for a new product instead fell on the alleged infringer and, in ascertaining the related technical facts, determined that the patentee bore the burden of proof in respect of the relevant technical content of the preparation method for the alleged infringing pharmaceutical. Furthermore, based on evidence such as basic knowledge of chemical theory, the technical content disclosed in the patent description and articles published in journals and the conclusion of the definitive experiment additionally provided by the alleged infringer, the Supreme People's Court determined that the inference of the relevant technical content of the alleged infringing technical solution in the conclusion of the forensic analysis had a factual basis and the acceptance thereof by the previous court was not unjustified.

(42) Ascertainment of the alleged infringing technical solution in a patent dispute

In the aforementioned Youta vs. Vanguard et. al. patent infringement case, the Supreme People's Court held that, based on the existing evidence, it was possible to ascertain the full production process for the alleged infringing products and that it was not necessary, pursuant to Article 75 of the Supreme People's Court, Several Provisions on the Evidentiary Rules in Civil Actions, to infer that the production process for the alleged infringing product was equivalent to the patent due to the fact that the production process was incomplete. Even if it was held that the alleged infringer did not produce the alleged infringing product using the production process specified in the existing evidence, evidence preservation should be carried out in accordance with the law, e.g. onsite investigation, placement under seal and seizure of production records, etc., instead of simply making an inference.

(43) Examination of the defence by the alleged infringer in a dispute over infringement of a manufacturing process patent for a new product that it exploited its own process

In the aforementioned Zhang Xitian vs. Ouyi et. al. patent infringement case, where the forensic analysis institution was unable to manufacture the alleged infringing product based on the process claimed by the alleged infringer and the alleged infringer claimed that there was certain skill and know-how involved in exploiting its process, the Supreme People's Court, at the request of the parties, conducted an onsite test of the process used by the alleged infringer to manufacture the relevant product, with the alleged infringer verifying the test. The outcome of the test and the other evidence mutually corroborated each other, establishing that the alleged infringer could manufacture the alleged infringing product using its own process. Accordingly, the Supreme People's Court upheld the alleged infringer's claim that it exploited its own process.