Posted on August 26, 2016

Recently, a ruling of civil judgment has put a case lasting for 15 years to n end. The client represented by Unitalen has won the ultimate victory of the case, which meanwhile has historical significance as it is the first case in which the protest made by the Supreme People’s Procuratorate was rejected by the Supreme People’s Court.

Mr. Zhigang Hao is the inventor and Chinese invention patent holder of “roller-type mill”. The patent is granted exclusively to Shenxiang company (Shenxiang) for use. When finding Hunan Guangyi Technology Co. Ltd. (Guangyi) infringed on the above-mentioned patent, Shenxiang started a lawsuit at Hunan Changsha Intermediate Court on May 10, 2001 demanding cease of the infringement and compensation for its economic losses. Due to the patent invalidation procedures and the first instance and second instance of the administrative litigations undergone during the period, it took more than 3 years for Changsha Intermediate Court to issue the civil judgment on December 15, 2004 confirming the defendant’s infringement, which was further sustained by Hunan Higher Court.

Guangyi refused to accept the second instance judgment and requested retrial by Hunan Higher People’s Court, during which the second-instance judgment was revoked and the defendant’s products were considered as not infringing.

Under such unfavorable circumstances, Shenxiang entrusted Unitalen to claim a retrial by the Supreme People’s Court. Appointed by the Supreme Court, Hubei Higher People’s Court retried the case and revoked the retrial judgment made by Hunan Higher People’s Court. The defendant’s infringement was held as constituted.

Even after the retrial judgment rendered by Hubei Higher People’s Court took effect, Guangyi was still unsatisfied and petitioned for protest to be made by the Supreme People’s Procuratorate through Hubei Higher People’s Procuratorate. On February 26, 2013 the Supreme People’s Procuratorate brought a protest before the Supreme People’s Court. On September 12, 2013 the Supreme People’s Court held a hearing for this case and the Supreme People’s Procuratorate had a procurator to attend the court to show its support to the protest.

During the hearing, the court focused on the following issues: 1. The application of doctrine of estoppels; 2. The determination of functional limit; 3. The determination of identical features (all of these focuses are of typical significance, however this article won’t conduct further analysis due to the technical complexity). Although the case has undergone a long period of time and both the technical and legal issues involved are extremely complex, the Supreme People’s Court managed to go through each focus points thoroughly along with the professional examination conducted by the members of the collegiate panel.

The conclusive judgment was made after 3 years of examination and discussion by the juridical committee since the case was accepted by the Supreme Court in 2013, maintaining the civil judgment rendered by Hubei Higher People’s Court and Shenxiang ultimately won over.

Lasting over 15 years from the first start of litigation to the final ruling rendered by the Supreme Court, this case had experienced almost all the available procedures for a IP lawsuit, and therefore it is of typical significance. In particular, it is rare for the Supreme People’s Procuratorate to make protest on patent cases. According to the information open to the public so far, the Supreme People’s Procuratorate had only filed one protest to Beijing Higher People’s Court in 2007 concerning a patent administrative judgment, but not yet any precedential case of protest made to the Supreme People’s Court concerning patent infringement civil case.