General Rule
In patent infringement cases, the burden of proof is outlined in Article 2 of the Supreme People's Court's Several Provisions on Evidence in Intellectual Property Civil Proceedings. In these civil intellectual property matters, including patent disputes, the plaintiff is responsible for the initial burden of proof, which requires them to present preliminary evidence to support their claims. For example, the plaintiff must show that the accused infringing technical solution contains the same or equivalent technical features as those specified in the patent claims, thus falling within the scope of the patent's protection. Once the plaintiff provides adequate preliminary evidence, the burden of proof shifts to the defendant, who can then raise defenses such as non-infringement or prior art and must substantiate these claims with evidence.
Judges also have some discretion in determining how the burden of proof is allocated. Throughout the trial, judges can assign the burden based on the arguments presented by both parties, the facts that need to be established, the evidence available to each side, and their ability to present that evidence. This method encourages parties capable of providing evidence to do so, thereby avoiding situations where critical facts remain unproven.
Process Patent Exception
In cases involving patent infringement related to new product processes, the Patent Law introduces a different burden of proof framework, reversing the usual allocation. According to Article 66 of the Patent Law, when a patent pertains to a manufacturing method for a new product, the entity or individual producing the same product must demonstrate that their manufacturing method is distinct from the patented process. However, this reversal is contingent upon the plaintiff initially providing evidence that the product made using the patented process is indeed new and that the defendant's product is identical to that produced by the patented method. Therefore, the plaintiff must still fulfill their initial burden of proof before the burden can be reversed.
Stringent Criteria for Reversal Burden
The criteria for applying this reversal are theoretically more stringent than those for new product process patents, necessitating a more rigorous initial burden of proof from the plaintiff. Article 3 of the Supreme People's Court's Several Provisions on Evidence in Civil Litigation of Intellectual Property Rights states that if the product made by the patented process is not new, the plaintiff must provide evidence to establish:
that the defendant's product is the same as that produced using the patented process;
a higher likelihood that the defendant's products were made using the patented process; and
that the plaintiff made reasonable efforts to prove the defendant's use of the patented process.
Once the plaintiff presents this evidence, the court may then require the defendant to demonstrate that their manufacturing method differs from the patented one. However, the determination of facts (2) and (3) may largely depend on the trial judge's interpretation of the plaintiff's evidence.
Judicial Practice
Judicial practice indicates that in patent infringement disputes, the plaintiff must provide sufficient evidence to suggest that the alleged infringement likely falls within the patent's protection scope before they can be deemed to have met their preliminary burden of proof, after which the burden shifts to the defendant or is reversed.
In instances where the plaintiff does not present sufficient evidence to demonstrate that the alleged infringing technical solution falls within the patent's protection scope, the plaintiff will face negative consequences for this lack of evidence.
Case 1: In the infringement dispute involving Zhongshan Haomei Electronic Plastic Products Co., Ltd. and Guangdong Baoyue Xingchen Optoelectronics Technology Co., Ltd.(2019) Zui Gao Fa Zhi Min Zhong 76
the Supreme People's Court ruled that the claims of the utility model patent for a microwave induction device encompass not only identifiable components like lighting fixtures and antennas but also various modules whose names and functions are not easily discernible.
The court emphasized that a circuit diagram of the allegedly infringing product is necessary for a proper comparison with the patent claims.
Haomei Company, as the plaintiff, was responsible for providing evidence of infringement, but the circuit diagram it submitted was not specific to the alleged infringing product.
Consequently, Haomei did not meet its initial burden of proof and faced adverse consequences for failing to provide adequate evidence.
Case 2: In the case of Liaoning Lante Technology Development Co., Ltd. v. Shenyang Coking Coal Co., Ltd. (2019) Zui Gao Fa Min Shen 3515
the Supreme People's Court noted that while a previous judgment found Shenyang Coking Coal Company had infringed the patent, this did not imply ongoing infringement. Lante Company, as the plaintiff, bore the initial burden of proof.
The evidence presented did not sufficiently demonstrate that Shenyang Coking Coal Company utilized the patented method, leading the court to dismiss Lante's claims.
Case 3: In Dongguan Zhonghou Intelligent Machinery Co., Ltd. v. Shenzhen Weiguo Intelligent Automation Equipment Co., Ltd. No.: (2019) Zui Gao Fa Zhi Min Zhong 67
the Supreme People's Court ruled that Zhonghou Company, as the plaintiff, failed to preserve evidence and confirmed that the physical object of the alleged infringement no longer existed.
The court stated that Zhonghou Company did not meet its burden of proof, as the evidence on record was insufficient to establish that the alleged infringing product fell within the patent's protection scope.
If the plaintiff provides preliminary evidence indicating that the alleged infringing technical solution likely falls within the patent's protection scope, the burden of proof shifts to the defendant.
Case 4: In Lanzhou Shengyasi Technology R&D Co., Ltd. v. Gansu Hongda Aluminum Profile Co., Ltd. (Case No.: (2019) Zui Gao Fa Zhi Min Zhong No. 763)
the Supreme People's Court acknowledged the challenges patent holders face in obtaining evidence.
The court determined that Shengyas Company had met its initial burden of proof by providing brochures and notarized evidence of the alleged infringing product.
The defendants failed to present sufficient counter-evidence, resulting in adverse consequences for them.
Case 5: In Beijing Baidu Netcom Technology Co., Ltd. v. Beijing Sogou Technology Development Co., Ltd. (Case No.: (2018) Jing Min Zhong No. 498)
the Beijing Intellectual Property Court ruled that the burden of proof could shift based on the evidence presented.
Sogou Technology demonstrated that the alleged infringing product possessed the functions outlined in the patent, prompting Baidu Netcom to clarify the differences between its product and the patent.
Baidu's failure to provide adequate evidence led to negative consequences for them.
For patents related to manufacturing methods, once the plaintiff has met its initial burden of proof, the burden shifts to the defendant to demonstrate that their method differs from the patented process.
Case 6: In Huarui Tongkang Biotechnology (Shenzhen) Co., Ltd. v. Nanjing Norman Biotechnology Co., Ltd. (Case No.: (2020) Zui Gao Fa Zhi Min Zhong No. 342)
the Supreme People's Court ruled that the accused infringer must prove that their manufacturing method is distinct from the patented process.
Huarui Tongkang Company did not establish that the products in question were "new products," nor did it prove that Norman Company's products were the same as those produced under the patented process, resulting in the court not supporting Huarui Tongkang's claims.
Case 7: In Shanghai Jinshen Construction Engineering Co., Ltd. v. Shanghai Dingjin Construction Engineering Co., Ltd. (Case No.: (2021) Zui Gao Fa Zhi Min Zhong No. 1558)
the Shanghai Intellectual Property Court found that both the defendant's construction technology and the patented method produced similar products.
Given the shared knowledge of the patented process among the relevant personnel, the court concluded that it was likely the defendant's products utilized the patented method, leading to a ruling in favor of Jinshen Company.
Summary of Key Points
In patent infringement cases, the plaintiff is responsible for proving the facts related to the alleged infringement. Typically, the plaintiff must present at least preliminary evidence to establish that the accused technical solution falls within the scope of the patent. If the plaintiff meets this initial burden, the burden of proof then shifts to the defendant. If the plaintiff fails to provide sufficient evidence, they may face negative consequences.
In cases involving patents for manufacturing methods, there is a "reversal of the burden of proof." However, the plaintiff must first fulfill their preliminary burden of proof.
For a new product manufacturing method patent, the plaintiff must demonstrate that the product made using the patented process is indeed new and that the defendant's product is the same as that produced by the patented method. Only then can the burden shift to the defendant to prove that their method differs from the patented one.
For non-new product process patents, the plaintiff must establish that the defendant's product is the same as that produced by the patented process, that it is more likely to have been made using the patented method, and that reasonable efforts were made to prove the defendant's use of the patented process.