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Linda Liu & Partners

 
Prior art pleas, also called “widely-known technology pleas”, are a right of pleading enjoyed by the accused infringer to defend against the infringement claims put forward by the patentee. Before, the prior art plea was prescribed only in some related administrative regulations or judicial interpretations. For the first time, the prior art plea was stipulated as an independent article in the third amendment of Patent Law of the People’s Republic of China (hereinafter referred to as “Patent Law”). Article 62 of the amended Patent Law stipulates that “where the accused infringer can furnish evidence to prove that the exploited technique or design belongs to prior art or prior design in a patent infringement dispute, it shall not constitute an infringement to patent”. The prior art plea is applicable to the infringement disputes of patents of inventions and utility models while the prior design plea is applicable to the infringement disputes of design patents. For a better understanding of the applicability of the prior art plea system in the judicial practice, this paper will discuss the meaning and category of the prior art plea, evidence required of the prior art plea and a comparison of the prior art plea system through a case of patent utility model infringement between Wuxi Huage Power Capacitor Co., Ltd. and Jiangsu Xiandai Power Capacitor Co., Ltd. I will be honored if this article provides some reference to the readers.
 
I. Case Summary

(I) Facts

Jiangsu Xiandai Power Capacitor Co., Ltd., the plaintiff in the trial (hereinafter referred to as “plaintiff”), filed an application for a utility model entitled “double‘△’ model low-pressure power capacitor” (hereinafter referred to as “the patent involved”) on July 28, 2006 and was granted the patent right on August 22, 2007. During the validity period of the patent involved, the plaintiff found Wuxi Huage Power Capacitor Co., Ltd. who was the defendant in the original trial (hereinafter referred to as “defendant”) manufactured and sold a large number of products which contained the same technical features as the patent involved. The plaintiff claimed that the defendant’s acts had seriously infringed its patent right and caused serious economic loss. Thereby, the plaintiff filed a lawsuit with Wuxi Intermediate People’s Court. After the hearing, the Court decided that the defendant was responsible for patent infringement and should bear the legal responsibility. Dissatisfied with the judgment, the defendant appealed to the Jiangsu Higher People’s Court. After the hearing, the Court of second-instance made the final ruling and rejected the appeal and upheld the original ruling.

(II) The issue of the case

Whether the prior art plea counterclaimed by the defendant was tenable.

i. The plaintiff’s claims

The defendant manufactured and sold a large number of products which contained the same technical features as those of the patent involved which seriously infringed the patent right and caused serious economic loss. The plaintiff demanded an order for the defendant to stop the infringement, to destruct the infringing products, product instructions and the special production moulds, to compensate for economic loss of 300, 000 yuan and to bear the court costs.

ii. The defendant’s pleas

The technology applied in manufacturing its capacitor products was the prior art, so its acts of manufacturing and selling did not constitute patent infringement. The plaintiff’s claims should be rejected.
 
II. The Court’s Judgments

i. First-instance judgment

After the hearing, the first instance court held that when the court applies the principle of the prior art plea in a patent infringement lawsuit, the accused infringing technique should be a complete technical solution from the prior art instead of just one or some dependent technical features. In this case, the relevant evidence provided by the defendant could not prove that the complete technical solution reflected by the accused infringing products is a prior art. Thus the prior art plea counterclaimed by the defendant was untenable. The court thereby ordered the defendant to stop the infringing acts immediately and to compensate for the economic loss of 60,000 yuan.

ii. Second-instance judgment

During the second instance, the defendant submitted 10 new pieces of evidence to the court to prove that the technique it exploited is a prior art. After the hearing, the court identified this new evidence as follows:

The technical solution disclosed by the Exhibits 1, 3 and 6 was different from that of the accused infringing products; the publication date reflected by Exhibit 2 was later than the application date of the patent involved, so it could not be a reference document for the prior art plea; Exhibit 4 was the national standard and industrial standard of which the complete technical solution wasn’t disclosed; Exhibit 5 was the No.12517  Invalidation Decision made by the Patent Reexamination Board of the State Intellectual Property Office and only proved that part of the involved patent was invalid but could not prove that the accused infringing technology is prior art; Exhibit 7 was a product index document which could not be proved by Exhibit 8 that it was printed earlier than the application date of the patent involved. Moreover, since the product index is not public, these two pieces of evidence are not published where the public is able to have access to it and could not be a reference document for the prior art plea. The authenticity of Exhibits 9 and 10 could not be confirmed and thus could not serve as the basis of judgment.

In conclusion, the relevant evidence submitted by the defendant could not prove that the complete technical solution reflected by the accused infringing products is a prior art. The prior art plea counterclaimed by the defendant was untenable and the court rejected the appeal and upheld the original ruling.
 
III. Analysis

Through the case, we can learn that whether the prior art plea is tenable depends on the proof of the accused infringer. However, the writer referred to a number of cases in which it is rare that the accused infringers win the suit through the prior art plea. Mostly, it is because the accused infringer misunderstood the prior art plea and submitted evidence that was not strong or defective and thereby could not be adopted by the court. In this case, the evidence submitted by the defendant can not be adopted by the court because all the evidence was defective in a certain way. Some of the evidence did not reflect the complete technical solution of the accused infringing technique, had a publication date later than the application date of the patent, or were not publications. Therefore, the writer believes that it is necessary to fully understand the prior art plea system.       
   
(I)The meaning and category of “prior art”

Article 22(5) of the Patent Law stipulates that “prior art in this law refers to any technology known to the public within or outside the country before the application date.” It should be noted that the concept of “prior art” is explicitly introduced and defined in the amended Patent Law. However, “existing technology” was used in article 22 of the original Patent Law. The concept of “prior art” in the amended Patent Law is wider than “existing technology” in the original Patent Law (adding technology which has been publicly used abroad or is known to the public by any other means). Since all submitted evidence are publications, even though the judgment of this case was made according to the original patent law and regulations, the amendment of the patent law will not lead to a substantially different result.

According to the above provisions of the amended Patent Law, the prior art should possess the following two legal features:

The first is “prior” which does not mean present technology, but means “the technology existed before the application date of the patent”. Therefore, “prior” is relative to the act of patent application and there is a special requirement for the time point of the emergence of the technology. If the emergence time of the prior art claimed by a party is later than the application date of the patent, it will not be considered by the patent examiners or judges regardless of what the technical content is.  

The second is that the technology is known to the public through public disclosure in publications or public use. “Known to the public” also contains the following two meanings:

First, “public” refers to non-specific people who do not have the obligation of confidentiality. If the technology is only known to specific persons who have a confidentiality obligation, it is not deemed as known to the public.

Second, “known to the public” only demands a condition that “people can know when they want to”, but does not require the public to understand and master these technologies.

Back to the above case, Exhibit 2 submitted by the defendant in the second instance trial was not in accordance with the legal feature “prior” of prior art and thereby could not be used as a reference document for the prior art plea since its publication date was later than that of the involved patent application. Exhibits 7 and 8 do not belong to a publication which the public have access to and was not in accordance with the legal feature “known to the public” of the prior art and thereby could not be as a reference document for the prior art plea.

(II) Proof of the prior art

i. Burden of the Proof

The prior art is a kind of plea against the patentee’s allegation, so it should be claimed by the accused infringer. The court has no obligation to actively investigate or investigate ex officio. According to the principle “He who is affirming must prove”, the accused infringer bears the burden of proof of the prior art and the adverse consequences if it cannot be proved.

ii. Type of evidence

The key factor to determine whether the prior art plea is tenable is from the proof of the accused infringer. In practice, evidence which can prove the prior art include publications, the facts of public use and other means to make the technology known by the public.

(i) Publications

In the sense of Patent Law, publications refer to any independent dissemination carriers recording the technology or designing contents which should indicate or have other evidence to prove the disclosure date or publication date. There are three types of publications which are in accordance with the above definition: various printed or typed paper documents such as patent literature, science and technology magazines and books, academic theses, professional literature, textbooks, technical manuals, officially published meeting minutes or technical reports, newspapers, product samples, product catalogues, advertisement brochures etc; audio-visual materials such as microfilms, videotapes, CDs, etc; or other documents existing on the internet or in the form of other online databases.

(ii) The facts of disclosure by use

Disclosure by use means that by use the technical solution is disclosed or placed in a state that it is accessible to the public. Means of disclosure by use include manufacturing, using, selling, importing, exchanging, presenting, demonstrating, exhibiting and the like that allows the technical content to be accessible to the public. However, evidence does not belong to disclosure by use if there is no explanation of the technical contents disclosed through the above mentioned means and therefore a person skilled in the re1evant field of techno1ogy is unable to know the structure, function or material composition of the product.

(iii) Other means to make known to the public

Other means to make known to the public mainly refer to broadcasting, televising and cinematographing etc. that allow the technical contents to be known to the public.

In the above case, Exhibits 1, 3 and 6 were patent literature publications and there was no defect in this evidence. The reason they were not adopted by the court is because the technical solution disclosed was not the same as the accused’s.

 (III) Comparison of the prior art plea

The focus of the prior art plea is to analyze the relationship between the accused technique and the prior art. For this purpose, article 14(1) of the Interpretation of the Supreme People’s Court on Some Issues Concerning the Application of Laws in the Trail of Patent Infringement Dispute Cases enacted by the Supreme People’s Court on December 28, 2009 stipulates that “Where all the accused technical features which fall into the scope of patent right are identical with the corresponding technical features in a single technical solution of the prior art or there is no substantial difference, the People’s Court shall determine that the technology exploited by the accused infringer belongs to the prior art as prescribed in the Article 62 of the Patent Law” (hereinafter referred to as “Interpretation”).

In fact, the legal spirit of the above provision has already been reflected in judicial practice and the above case is a good example. In this case, the court compared all of the technical features of the accused infringing technique with the corresponding technical features of the prior art and the court made the decision that the accused infringing technique did not belong to the prior art. At the time the judgment was made, the Interpretation had not been enacted yet, but the way of comparison was completely in accordance with that of the Interpretation in the determination of the prior art plea by the court. According to this provision, the following three aspects should also be noticed in the comparison of the prior art plea:

First, “all the accused technical features which fall into the scope of patent right” refers to the technical features of the infringing technical solution accused by the patentee. Whether the feature falls in the scope of the patent right will not affect the determination of the prior art plea. That is, whether the accused infringing technical solution falls into the scope of patent right is not a precondition of the examination of whether the prior art plea is tenable, but serves to compare the accused infringing technique with the prior art. Whether the prior art plea is tenable or not will not affect the validity of the patent involved.   

Second, for the purpose of regulating the exercise of discretion and unifying judicial scale, the Interpretation limits the technical solution or design to only one which can be cited by the accused infringer to support its prior art or the prior design plea. That is, a combination of other features which do not belong to a single technical solution or design will not be upheld. However, that will affect the involved party to file an invalidation application against the patent right in the invalidation procedure. It is similar to the principle of independent comparison of the examination of the Novelty of patents prescribed in the Guidelines for Patent Examination. That is, in the comparison of the prior art plea, all the technical features of the accused infringing technique should be compared with each of the prior arts separately, rather than with several prior arts or a combination of several technical solutions contained in one reference document. 

Third, in the determination of the prior art plea in the patent infringement disputes of invention and utility models, the corresponding technical features of the prior art, rather than all the technical features in a technical solution of the prior art are to be compared with the accused technical features.. That is, as long as all the technical features of the accused infringing technique are identical or there is no substantial difference with the corresponding technical features in a technical solution of the prior art, the accused infringing technical solution belongs to the prior art. Nevertheless, the technical subject of the technical solution of the prior art should be the same with the accused infringing technical solution. Otherwise, even if the compared technical features are identical or have no substantial difference, it can not be determined that the prior art plea is tenable.   
 
IV. Conclusion

In conclusion, there is no direct relationship between the prior art itself and the scope of the patent right. Only the accused infringing technique needs to be compared with the prior art. Meanwhile, the right of the prior art plea is an important right of the accused infringer and the evidence provided should be valid and can be adopted by the court strictly in accordance with the relevant laws and judicial interpretation in giving evidence.
 

（2010）