[Jiemian News] SIPCIntroduces Preliminary Rulingfor the First Time

February 14, 2019   Jiemian News

(Liu Sunan) Recently, a wiper invention patentee sued three companies for infringing on its patent rights. Shanghai Intellectual Property Court (hereinafter referred to as SIPC) introduced the preliminary ruling mechanism and made a preliminary ruling by ordering to stop the infringement based on partial ascertained facts of infringement. This is the first time that a Shanghai court has ever applied the preliminary ruling mechanism toan IP case.

　　The trial of a disputeover intellectual property infringement often takes a long time due to the difficulty in ascertaining the facts that can prove the infringement and justify the compensation. If a case remains pending, it will not just escalatethe loss of the obligee, but will also harm the trial efficiency and judicial credibility. Preliminary ruling, also known as partial ruling, is a term relative to the overall ruling. It refers to the ruling of the people's courts based on partial facts and requests that have been ascertained.

　　On January 22, SIPC made a preliminary ruling in adispute case over infringementuponinvention patentbetween the plaintiff Valeo Systèmes d'Essuyage (hereinafter referred to as Valeo) and the defendants Xiamen Lukasi Car Accessories Co., Ltd. (hereinafter referred to as Lukasi), Xiamen Fuke Car Accessories Co., Ltd. (hereinafter referred to as Fuke) and Chen. The ruling ascertained that the alleged infringing product fell into the protection scope of the plaintiff's patent rights, and ordered the defendants Lukasi and Fuke to immediately stop infringing on the patent for invention entitled "auto wiper connecter and adapter." The ruling on compensation and other issues would be made later. This is the first time that a Shanghai court has made a preliminary ruling in the field of IP cases.

The plaintiff of the case is the patentee of the invention named "auto wiper connecter and adapter." The patent is currently in effect. The plaintiff found that the wiper product manufactured, sold and offered for sale by the three defendants without permission fell into the protection scope of the involved patent's claims, which constituted an infringement of the plaintiff's patent rights. Therefore, the plaintiff filed a lawsuit with SIPC, requesting the three defendants to stop the infringement and pay its economic loss and reasonable expenses totaling RMB 6 million yuan.

The defendants Lukasi, Fuke and Chen jointly argued that the alleged infringing product did not fall into the protection scope of the involved patent's claims, and their act didn't constitute infringement. The two sides strongly disagreed on whether the alleged infringing product had actually committed infringement or not.

　　During the trial, the plaintiff found that the act of infringement was still going on. Believing that the on-going act of infringement had seriously affected the sales of its patented product, and the pending litigation had affected its business, the plaintiff requested that the court make a preliminary ruling that the alleged infringing product fell into the protection scope of the involved patent's claims 1-10, and order the three defendants to immediately stop the infringement.

The three defendants argued that the plaintiff had no evidence to prove the act of infringement was still going on, and that the plaintiff's application had no factual or legal basis. So they requested the court to reject the plaintiff's application for preliminary ruling.

　　SIPC held that, given that the two sides strongly disagreed on whether the alleged infringing product fell into the protection scope of the involved patent's claims 1-10, and that the disagreement, as the case's core issue, was directly related to whether the alleged infringing product had actually committed infringement and to the ascertainment of civil liability, the plaintiff's request that the court make an ascertainment on this issue in advance wasn't against the law but instead would help determine the necessity of further investigation and ascertainment of the large amount of compensation evidence in this case, thus saving judicial resources.So the court upheld the plaintiff's requestin accordance with the Article 153of the Civil Procedure Law of the People’s Republic of China.

As reported byPeople's Court Daily, the people's courts generallycan’t make a ruling until all the facts have been ascertained, regardless of the number of plaintiff's claims. A preliminary ruling must be made with great prudence, and can only be made after the facts of the case have been fully ascertained. A preliminary ruling is part of the overall ruling. The preliminary ruling and the latter ruling constitute the overall ruling of a case. A preliminary ruling has the power of a ruling. The party involved may appeal to reverse it.

　　During the trial of this case,the collegial panel of SIPCarrangedthe two sides to have a full round of evidence presentation, cross-examination and debate regarding the basic facts of the case, the patented technology involved, the alleged infringing technical solution, and technical comparison.On top of that, Cheng Xiaoming, a technical consultant employed by SIPC and associate professor of the School of Mechanical Engineering of Shanghai Jiaotong University, and Chen Liyi, a technical investigator, conducted a joint investigationon the alleged infringing product. Finally, the court determined that the alleged infringing product fell into the protection scope of the involved patent's claims 1-3 and 6-10, and made the preliminary ruling in accordance with the law that the two defendants should immediately stop the act of infringement mentioned above.