The Supreme People’s Court held in an administrative ruling case for an invention patent that the patentee bears the burden of proof for proving that the product directly obtained by implementing its patent is a “new product,” and that the alleged infringing product is identical to the product obtained by implementing its patent. The court may, after giving considerations to evidences, such as the Novelty Search Report and patent examination documents submitted by the party concerned, compare the patented product with the product existing prior to the application date of the patent to check if their compositions, structures or qualities, performances, and functions are obviously different, and then, comprehensively determine whether it qualities as a “new product” and decide the allocation of the burden of proof in accordance with the law.
This case involves an administrative judgment for an invention patent. The case circumstances are introduced as follows:
Company A is the patentee of an invention patent of a molecular sieve-coated aluminum foil and its preparation method (hereinafter referred to as the patent at issue). Major claims of the patent at issue include claims 1, 4, and 6. Claim 1 is:
a molecular sieve-coated aluminum foil, comprising an aluminum base and a molecular sieve coating, wherein;
at least one side of the aluminum base is provided with a molecular sieve coating, wherein the thickness of the aluminum base is 0.05-0.5mm, and the thickness of the molecular sieve coating is 4-15 μm;
the molecular sieve coating is composed of molecular sieve and water-based acrylic resin, and the preparation method of the molecular sieve coating aluminum foil includes the following steps:
Step 1, treat the molecular sieve powder with water: placing the molecular sieve powder in water, forming a mother liquor;
Step 2: Mix the mother liquor obtained in step 1 evenly with water-based acrylic resin to form a mixed solution;
Step 3, Coating and Curing by applying the mixture obtained in Step 2 evenly onto the aluminum base, and then having it dried and cured.
Company A claimed that the product technical solution in the Claim 1 involved the new product and could be divided into 4 technical features, which were: 1. “a molecular sieve-coated aluminum foil”; 2. “Comprising an aluminum base and a molecular sieve coating, wherein at least one side of the aluminum base is provided with a molecular sieve coating”; 3. “The thickness of the aluminum base is 0.05-0.5mm, and the thickness of the molecular sieve coating is 4-15 μm”; 4. “The molecular sieve coating is composed of molecular sieve and water-based acrylic resin.” These four technical features all relate to the molecular sieve-coated aluminum foil product. In addition, other technical features in claim 1 are the preparation method of the molecular sieve coating aluminum foil.
Company A claimed that the molecular sieve coating aluminum foil produced and sold by Company B infringed the patent at issue. The local Administration for Market Regulation (AMR) accepted Company A’s request for handling the infringement and carried out on-site inspections and oral hearings on Company B multiple times. On December 5, 2024, the local AMR made the challenged ruling, deeming that the technical features of the alleged infringing product were the same as technical features 1 and 2 in Claim 1 of the patent at issue, and were equivalent to the technical feature 3 therein, but lack partial technical contents in the technical feature 4; therefore, the alleged infringing technical solution did not fall into the protection scope of Claim 1 of the patent at issue, and Company A’s request was rejected.
Company A, dissatisfied, filed a lawsuit, arguing that: The technical feature 4 of the patent at issue was relevant to the method patent. Company A has submitted evidence, such as a High-tech Product Identification Certificate, a Technology Novelty Report, and a New Product Determination Consultation Report, to prove that the disputed patented product is a “new product.” The alleged infringing product and Company A’s “new product” were identical products, so the rule of the reversal of burden of proof should apply, and Company B should bear the burden of proof for proving that the manufacturing method of its product differs from that of the patent at issue.
The first-instance judgment held that the molecular sieve coating aluminum foil produced via the patented method did not qualify as a new product, and that the evidence submitted by Company A was insufficient for proving that the technical features of the alleged infringing product are identical or equivalent to all technical features of the product involved in Claim 1 of the patent at issue. This case did not meet the conditions for applying the reversal of the burden of proof, and Company A should bear the burden of proof for proving that the alleged infringing technical solution infringes the patent at issue. Therefore, the first-instance court rejected Company A’s lawsuit request. Company A filed an appeal.
In the second instance, the SPC upheld the first-instance judgment and provided the following analysis and explanation for the determination of a “new product” and the allocation of the burden of proof.
1. The molecular sieve coating aluminum foil produced via the patented method at issue does not qualify as a “new product.”
In this case, in the patent application documents, Claims 1 and 2 do not possess novelty, and Claims 3-10 do not possess inventiveness. Regarding the technical features added to Claim 1 of the patent at issue after amendment, the patented product at issue or its manufacturing method might have been disclosed prior to the application date or can be achieved through regular approaches by the person skilled in the art, and are not distinctively different from products of the same category. Though Company A managed to have the patent application granted by combining multiple claims in the original application documents, forming new claims, the patented claims involved did not introduce technical features sufficient for forming a “new product”.
On the other hand, Company A claimed that the molecular sieve coating aluminum foil produced via the patented method at issue qualifies as a “new product” and submitted evidence, such as a High-tech Product Identification Certificate, a Technological Novelty Report, and a New Product Determination Consultation Report. However, the High-tech Product Identification Certificate only records the product name and cannot be related to the patented method at issue; the Technology Novelty Report records a “new molecular sieve coating aluminum foil” product that is different from the molecular sieve coating aluminum foil produced via the patented method at issue; and the New Product Determination Consultation Report is a consultation opinion based on the material provided by a third party, which is only for reference. The evidence is insufficient for proving that the molecular sieve coating aluminum foil produced via the patented method at issue qualifies as a “new product”.
2. This case does not meet conditions for applying the reversal of burden of proof, and the patentee bears the burden of proof for proving the alleged infringing product and its manufacturing method infringe the patent at issue.
In the second instance, the SPC held that when determining the infringement of the patent related to the manufacturing method of a “new product,” one of the prerequisites for applying the reversal of the burden of proof as prescribed in Article 66 in the Patent Law is that the product produced in accordance with the patented method shall be a “new product,” and that the patented “new product” shall be distinctively different from the product of the same category existed prior to the application date of the patent in respect of their compositions, structures, or qualities, performances, and functions.
Following the abovementioned first point, as the product produced through the patented method at issue does not belong to a “new product,” this case does not meet the conditions for applying the reversal of the burden of proof, and Company A bears the burden of proof for proving that the alleged infringing product and its manufacturing method infringe the patent at issue. Otherwise, Company A shall bear the legal consequences of failure to present evidence.
As for whether the infringement stands, the SPC further specified that the value ranges of the thickness of the aluminum foil and the molecular sieve as limited in Claim 1 of the patent at issue are special choices that the patentee made to the critical point of the technical solution of its invention, and that the claims have a clear boundary, and the technical features of the alleged infringing product do not fall into the value ranges specified in the patent at issue, different from the technical features of the patent at issue. Meanwhile, the description of the patent at issue does not record the function or effect of the limited value range of the thickness, nor does it disclose the value corresponding to the alleged infringing technical solution. It cannot prove that the thickness of the aluminum foil and the molecular sieve have the same function and effect as the patent at issue. The technical features of the alleged infringing product are not identical to the technical features of the patent at issue. Therefore, the technical solution of the alleged infringing product does not fall into the scope of protection of the patent at issue. The SPC ruled in the second-instance judgment to reject the appeal and uphold the original ruling.
This case specifies the prerequisites for applying the reversal of burden of proof when determining whether a patent of a “new product” manufacturing method is infringed. The right holder shall bear the burden of proof for proving the product directly obtained through its patented method qualifies as a “new product”; otherwise, it shall bear the legal consequence of failure to provide evidence. The explanation for the relevant burden of proof in this judgment represents the balance between the protection of the right holder’s interests and the public interests and has a significant reference meaning for a better understanding and use of the laws.
(2025) Zui Gao Fa Zhi Xing Zhong No. 752
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.
