Contributed by: Yang Cosmos, Aikesong

Editing by Yang Yuanchu and Akerson

About the focus of this dispute《Patent law of China》Article 11, paragraph 2, provides: "After the grant of the patent right for a design, no entity or individual may, without the authorization of the patentee, exploit the patent, that is, make, offer to sell, sell or import the product patented for the purpose of production or business." According to the facts identified in the first instance trial, without the permission of Jingcheng Sanhe Company, the company displayed the infringing products in the Tiansu Home Taobao store operated by it, expressed its intention to sell to the outside world, and recognized the sale of the infringing products, and the notarial certificate submitted by Jingcheng Sanhe Company also showed that the infringing products chain had actually taken place after the transaction. Therefore, the plastic company constitutes sales and promises to sell infringement. Without the permission of Jingcheng Sanhe Company, Beaufeit Company sold the accused infringing products to the company through Aliwangwang, QQ, wechat and other online means, which constitutes sales infringement. In addition, according to the chat records submitted by the plastic company and the Beaufit company, combined with the fact that the Beaufit company stated in the first instance trial that it produced the infringing products according to the photo requirements provided by the plastic company, the court found that the Beaufit Company produced the infringing products, which constituted manufacturing infringement. As to whether the plastics company constituted a manufacturing infringement, the Court held that,The manufacturing behavior in the sense of patent law can be judged based on two aspects: first, the actual production, processing and other manufacturing behavior; The second is that although the production and processing behavior is not actually implemented, it provides the source of patented design schemes or technical schemes. In the case of commissioned processing of patented products, if the entrusting party requires the processing party to manufacture patented products according to the design scheme or technical scheme provided by the entrusting party, or the formation of the patented products reflects the design elements or technical requirements proposed by the entrusting party, the two parties may be deemed to have jointly carried out the act of manufacturing the patented products. Otherwise, it does not constitute a joint manufacturing act. In this case, the relevant chat records show that the plastic company and Beaufit company negotiated the style of the timer dial, and sent the pictures of the dial to Beaufit company, and Beaufit company produced the accused infringing products in accordance with the dial design requirements provided and confirmed by the plastic company, which constitutes a commissioned processing relationship between the two. The pattern of the dials of the accused infringing products is similar to the pattern of the dials of the patent involved, and the visual effect is similar, so it falls into the scope of protection of the design patent right involved. Although the company did not directly produce the products, it provided the source of the design scheme of the accused infringing products, and there was a subjective division of labor and cooperation with Beaufit Company. The production of the accused infringing products was the result of joint efforts between Beaufit Company and Beaufit Company. Therefore, as far as the design of the product involved is concerned, the Plastic-adding company constitutes a manufacturer in the sense of patent law, and its behavior constitutes a joint manufacturing infringement with Beaufit Company. On this basis, the defense of the company that the alleged infringing products sold by the company are of legal origin naturally cannot be established.

To sum up, the company sold and promised to sell the accused infringing products for the purpose of production and operation without permission, and jointly carried out manufacturing activities with the company, and the company manufactured and sold the accused infringing products for the purpose of production and operation without permission. All of them have infringed the design patent right of ZL20153022×××× ×.8 "timer (mt952)" enjoyed by Jingcheng Sanhe Company, and shall bear the responsibility to stop the infringement and compensate for the loss. As for the design patent certificate with patent number ZL20173047×××× ×.x "Mechanical timer (T423)" submitted by the Plastic Company and Beaufitt Company to prove that the product involved in the case has a legitimate patent right, because the application date of the design patent is October 9, 2017, which is obviously later than the application date of the patent involved in the case. Therefore, it cannot be used as the basis for claiming that the accused infringing product has a legitimate patent right. In addition, in view of the fact that Jingcheng Sanhe Company's first instance in court abandoned the lawsuit request to Taobao company, it is the legal disposition of the parties to their own litigation rights, and the court no longer judges the infringement issue of Taobao company.

As for the amount of compensation to be borne by the company and the company, it is difficult to determine the losses suffered by the company and the benefits obtained by the company and the company due to the infringement, and the company clearly requires the application of statutory compensation. Therefore, the court comprehensively considers the types of patents involved, the authorization time, the nature and circumstances of the infringement. The amount of compensation shall be determined as appropriate according to the legal compensation method for factors such as the sales scale of the infringing product. At the same time, the court noted the following facts: 1. The patent involved is a design patent; 2. Laminating Company and Beaufit Company jointly commit manufacturing infringement; 3. Jingcheng Sanhe filed a utility model patent lawsuit against the accused infringing product at the same time; 4. Jingcheng Sanhe Company shall pay the corresponding litigation agent fees and notarization fees for protecting the rights of the case.

In summary, in accordance with Articles 2, 8 and 15, paragraph 1 (1) and (6) of the Tort Liability Law of the People's Republic of China,《Patent law of China》Article 11 (2), Article 23 (4), Article 59 (2), Article 65, Articles 21 and 22 of the Provisions of the Supreme People's Court on the Application of Law in the Trial of Patent Dispute Cases, Articles 8 and 10 of the Interpretation of the Supreme People's Court on Several Issues concerning the Application of Law in the Trial of Patent Infringement Dispute Cases, Article 64 (1) of the Civil Procedure Law of the People's Republic of China and the provisions of Article 92 (1) and Article 108 of the Interpretation of the Supreme People's Court on the Application of the Civil Procedure Law of the People's Republic of China, the Court of First Instance ruled on February 27, 2020: First, the company immediately stop manufacturing, selling, promising to sell infringement of Jingcheng Sanhe company patent number ZL20153022××××.8, name "timer (mt952)" design patent products; 2. Beaufitt Company shall immediately stop manufacturing and selling products that infringe on the design patent right of Jingcheng Sanhe Company, whose patent number is ZL20153022××××.8 and whose name is "Timer (mt952)"; 3. Add Plastic Company shall compensate Jingcheng Sanhe Company for its economic losses and reasonable expenses of 15,000 yuan to stop the infringement within 10 days from the date of legal effect of the judgment, and Beaufitt Company shall bear joint and several liability for 10,000 yuan; 4. Beaufitt Company shall, within 10 days from the date of the legal effect of the judgment, Jingcheng Sanhe Company shall suffer economic losses and pay reasonable expenses of 20,000 yuan to stop the infringement, of which 10,000 Yuan shall be jointly and severally liable; 5. Reject other litigation claims of Jingcheng Sanhe Company. If the payment obligation is not fulfilled within the period specified in the judgment, the interest on the debt during the period of delay shall be doubled in accordance with the provisions of Article 253 of the Civil Procedure Law of the People's Republic of China. The case acceptance fee of 3,300 yuan, by Jingcheng Sanhe Company to pay 1,265 yuan, by the plastic company to pay 872 yuan, by the Beaufitt company to pay 1,163 yuan. The Plasticizer Company shall be jointly and severally liable for $582 of the amount borne by the Beaufitt Company, and the Beaufitt Company shall be jointly and severally liable for $582 of the amount borne by the Plasticizer Company.

During the second instance, Jingcheng Sanhe Company, Taobao Company and Tianshu Company submitted no new evidence to the court of second instance, while Beaufeit Company submitted the design patent document with patent number ZL20113042××××.7 to the court of second instance, intending to prove that the accused infringing product used the existing design. The cross-examination of Jingcheng Sanhe Company believes that there is no objection to the authenticity of the evidence, but it is not related to the case, and the accused infringing product is neither the same nor similar to the existing design. Taobao does not dispute all three aspects of the evidence. The plastic company did not submit a cross-examination opinion. After examination, the court of second instance found that the authenticity of the evidence could be confirmed and whether it could achieve its purpose of proof will be reviewed below. In addition, in the second instance, Beaufitt Company applied to the court of second instance to suspend the lawsuit on the grounds that "it has filed a request for invalidation of the patent involved with the State Intellectual Property Office on October 23, 2019". The court of second instance held that the request for invalidation made by Beaufit Company for the patent involved was made after the defense period of the first instance, and did not meet the conditions that the litigation should be suspended as stipulated in Article 9 of the Provisions of the Supreme People's Court on the Application of Law in the Trial of Patent Dispute Cases, and the court of second instance did not allow its application.

The facts ascertained by the court of second instance in the second instance are consistent with those ascertained by the court of first instance. The Court of second instance held that, based on the appeal request and reasons of Beaufit Company, as well as the defense opinions of Jingcheng Sanhe Company and Taobao Company, the dispute focus of the second instance of this case is: first, whether the existing design defense advocated by Beaufit Company can be established; If the existing design defense is not established, whether the amount of compensation determined by the first instance judgment is appropriate.

As for the focus of dispute 1, there are three existing design comparison documents claimed by Beaufit: 1. The design patent with patent number ZL20073000××××.6, named "circular timer"; 2. Design patent with patent number ZL20113042××××.7; 3. Japanese patent with announcement number JPD1311264. The above three patent authorization announcements can be compared as existing designs before the patent application date. After comparison, the above three comparison documents compared with the accused infringement design, there are the following differences: 1. The shape of the base of the lower round table is different. The accused infringing design has multi-layer convex design, and the comparison documents are smooth surface. 2. The middle screw of the dial is fixed differently. The alleged infringement design is opaque circular thread shape, and the comparison documents are transparent circular. 3. The scale line, text pattern and pointer design on the scale plate are different. The number on the dial of the alleged infringing design is on the inside of the scale line, while the comparison file is on the outside of the scale line. There are also differences in the English letters on the dial and the design of the central axis of the hands. Jingcheng Sanhe Company maintains that the above differentiation points account for a relatively large proportion of the overall, and the two do not constitute similar. Beaufit Company maintains that the above distinction has no impact on the overall visual effect, and the alleged infringing design is similar to the above three comparison documents. The Court of second instance held that although the three comparison documents and the accused infringing design all include the upper round table dial, the lower round table base and the base ring, and the dial has a scale plate, there is still a large design space for the specific shape and pattern of the above parts. The difference between the two lower round tables with convex edges and without convex edges accounts for a large proportion of the product, and the dial is easy to be concerned by consumers when the product is in normal use. The screw thread shape, scale line, text pattern in the center of the dial, especially the design of the central axis of the pointer, has a significant impact on the overall visual effect, so the accused infringement design and the comparison file are not similar. The existing design defense asserted by Beaufit cannot be upheld.

In summary, the Beaufit company's appeal request cannot be established and should be rejected according to law. The first instance judgment clearly identified the facts, correctly applied the law, and should be upheld in accordance with the law. In accordance with the provisions of Article 170, paragraph 1, paragraph 1 of the Civil Procedure Law of the People's Republic of China, the judgment is as follows: The appeal is rejected and the original judgment is upheld.

Source: Comprehensive win in IP, Zhejiang High People's Court

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