In a civil second-instance judgment regarding a dispute over infringement of an invention patent between Company A (the patentee), the allegedly infringing party Company B (which manufactured, sold, and offered to sell the allegedly infringing products), and Company C (which used the allegedly infringing products), the Supreme People's Court pointed out that the allocation of the burden of proof in the first-instance judgment was improper. Under the circumstance that the inspection conditions are not available, if the patentee has made every effort to present evidence and sufficiently demonstrates a high likelihood that the allegedly infringing technical solution falls within the protection scope of the patent claims, the burden of proof shifts from the patentee to the allegedly infringing party. If the allegedly infringing party, though capable of presenting counter-evidence, fails to do so, it shall bear the adverse consequences.
Company A was the patentee of the invention patent at issue. Company A filed a civil lawsuit on the grounds that the allegedly infringing products used by Company C, manufactured, sold and offered to sell by Company B infringed upon its patent, requesting the court to order Company B and Company C to cease the infringement and compensate for the damages. As the allegedly infringing products had been installed within a large-scale pipe network, making on-site inspection infeasible, Company A claimed using the structural diagrams of the same series of products displayed in the product manuals and electronic brochures published on Company B's website as the basis for comparison, and provided evidentiary explanations to demonstrate a high likelihood that the technical solution implemented by the allegedly infringing products fell within the protection scope of the patent claims.
The first-instance court held that Company A failed to submit evidence proving that the allegedly infringing products were consistent with those displayed in the product manuals and electronic brochures of Company B, which was acknowledged by Company A. Consequently, since Company A failed to fulfill its due burden of proof for the infringement and the evidence it submitted was insufficient to shift the burden of proof to Company B, the court rendered a judgment to dismiss Company A's claims.
Company A, dissatisfied with the judgment, filed an appeal. The Supreme People's Court made a final civil judgment: revoking the first-instance judgment and ordering Company B to cease its acts of manufacturing, selling, and offering to sell products that infringe upon the patent at issue, and to compensate Company A for economic losses and reasonable expenses incurred in enforcing its rights.
The Supreme People's Court held in the final judgment that the series numbers of the product structural diagrams published on Company B’ website in the electronic brochures were identical to those of the allegedly infringing products, and there was a high likelihood that the technical solution implemented by the allegedly infringing products was consistent with the structural diagrams of the same series of products displayed in the electronic brochures. Company A had fulfilled the preliminary burden of proof, and the burden of proof shall be shifted to Company B. Although Company B claimed that there were distinguishing technical features between the technical solution implemented by the allegedly infringing products and the structural diagrams of the same series of products displayed in the electronic brochures and product manuals, the court clarified that Company B failed to submit materials such as the technical agreements for the allegedly infringing products. As the drawings submitted could not be verified for authenticity because no original carrier was provided, its argument that the allegedly infringing technical solution was different from the structural diagrams of the same series of products in the electronic brochures lacked evidentiary support. Therefore, given that Company B failed to provide sufficient counter-evidence, considering factors such as the evidence possession status and the burden of proof capabilities of each party involved, Company B shall bear the adverse consequences of failure to meet its burden of proof. It shall be presumed that the technical solution implemented by the allegedly infringing products was consistent with that displayed in the structural diagrams of the same series number products displayed in Company B's product manuals and electronic brochures. Upon comparison, the allegedly infringing technical solution fell within the protection scope of the patent at issue, and Company B shall bear civil liability for infringement by ceasing the infringement and compensating for the damages.
In accordance with the relevant provisions of the Civil Procedure Law and its judicial interpretations regarding the allocation of the burden of proof, a party has the responsibility to provide evidence in support of the facts on which their claims are based, or the facts it relies on to refute the opposing party's claims. Where a party fails to provide evidence, or the evidence is insufficient to prove its claims, the party with the burden of proof shall bear the adverse consequences. In addition to the above-mentioned conventional distribution principle of burden of proof, the Supreme People's Court has stipulated circumstances for the shift of the burden of proof in its several provisions on evidence in intellectual property civil litigation. Specifically, based on the progress of case hearings, the people's court may, in accordance with the parties' claims, the facts to be proven, the parties' evidence possession situations, and their abilities to present evidence and the like, request the parties to provide relevant evidence. If, upon being lawfully requested by the people's court to submit relevant evidence, a party refuses to do so without just cause, submits false evidence, destroys the evidence, or engages in other acts that render the evidence unusable, the people's court may presume that the claims of the opposing party regarding the matters to be proven by such evidence are established.
As can be seen, the allocation of the burden of proof is not immutable. Under circumstances compliant with legal provisions, the court may transfer the burden of proof between the parties based on the progress of case hearings. When the court clarifies that failure to submit evidence will result in burden of adverse consequences, it means that the burden of proof has been shifted. The party bearing this burden must actively provide evidence in response and refrain from adopting a passive or denial-based litigation strategy, so as to avoid bearing the adverse consequences of failing to meet its burden of proof.
(2022) Zui Gao Fa Zhi Min Zhong No. 1316
If you have any question about the protection of intellectual property rights, please feel free to send us emails. For patent-related matters, please send to info@afdip.com. For trademark/litigation/legal matters, please send to info@bhtdlaw.com.
