[Zhichanli] Quotation of Non-free Prior Art in Prior Art Defense

August 13, 2018 Zhichanli

Author: Tao Guandong

Abstract: Prior at defense is an important measure taken by the alleged infringer against the claim made by the patentee, based on the theory that the protection scope of patent right does not include any prior art. Although prior art is publicly known, it is not necessarily at public domain. Some prior arts may be patent technologies in force (i.e. non-free prior art), and the public (including the defendant) may bear relevant legal liability when using such prior arts. When quoting the above-mentioned prior art defense, the defendant in a pending case will be faced with unpredictable legal risk and it will affect the trial process to some extent.

Based on the legal status (i.e. whether the prior art can be freely used or not), the prior art quoted in prior art defense is divided into free prior art and non-free prior art. Free prior art is at public domain and can be freely used by any person including the defendant; as for non-free prior art, when the defendant uses non-free prior art in prior art defense, the defendant may be faced with different legal issues.

I. Cognition of non-free prior art

For the defendant or the public, non-free prior art is mainly embodied in the sense of law. If any prior art can not be freely used according to the law, the defendant or the public may only use the non-free prior art after gaining permission from the relevant obligee, otherwise the defendant or the public shall bear relevant legal risk which may be from other subjects or the plaintiff. Legal risk above means that any person shall not manufacture, sell, offer for sale or import any relevant product during the patent right protection period without the permission of the patentee, otherwise such person shall undertake relevant civil liability. The right subject of non-free prior art or any other art may be the plaintiff, the defendant or any other person not involved in the case. The quotation of non-free prior art by the defendant is disputable. [1]As for this issue, Beijing High People's Court has not made any specific stipulations in Guidelines for Determining Patent Infringement published in 2013 (hereinafter referred to as the Guidelines). However, the author of Understanding and Application of the Guidelines for Determining Patent Infringement published thereafter hold a tendentious opinion that non-free prior art can be quoted as prior art. Beijing High People's Court published the new edition of Guidelines for Determining Patent Infringement in 2017. Article 138 of the Guidelines expressly stipulates that “prior art……also includes non-public art within the patent right protection scope and other online patent technologies owned by the patentee……” [2].

In fact, neither Article 62 of the Patent Law nor Article 14 of Interpretation by the Supreme People’s Court On some Issues Concerning the Application of Laws to the Trial of Patent Infringement Disputes has distinguished prior art from other arts. Although prior art defense is a legal issue, whether any art belongs to prior art shall be subject to the application date of the art. Any prior art (whether such prior art can be freely used or not by the public including the defendant) prior to the application date shall be prior art and the quotation of such prior art by the defendant shall not be treated differently in law or during case trial. Given that prior art has not been distinguished from other arts by the Patent Law and related judicial interpretation, distinguishing free prior art from non-free prior art will not cause any substantial legal risk, and the court will not order the defendant to undertake any legal consequence more unfavorable resulting from the use of non-free prior art by the defendant. Any legal risk caused by the quotation of non-free prior art is due to external factors rather than the pending case.

II. Distinction of right subjects of non-free prior art

According to the 2017 edition of the Guidelines published by Beijing High People's Court, the owner of non-free prior art may be other people, i.e. person not involved in the case, or the patentee, i.e. the plaintiff in the pending case. Different obligees are faced with different situations. Of course, in the pending case, the legal consequences undertaken by the person not involved and the plaintiff have no substantial difference. In other words, once the prior art defense is set up, the defendant needs not to bear any civil liability and if the defense is not established, the defendant shall bear the relevant civil liability. The defendant may be faced with different problems, depending on whether the defendant has obtained permission from the obligee of non-free prior art.

If the obligee of non-free prior art is a third party, and the defendant has obtained the authorization and permission from such third party, and in case the prior art defense is established, the defendant does not need to bear any legal liability in the pending case, and needs not to worry about any potential legal risk incurred due to the quotation of such prior art defense. If the defendant has not obtained the authorization and permission from the obligee, the defendant may be subject to the claim made by the obligee of non-free prior art whether the prior art defense is established or not. According to the law, if the defendant uses non-free prior art without permission, the defendant shall bear the relevant liability. However, neither the court nor the plaintiff in the pending case is entitled to make any claim in lieu of the obligee of non-free prior art. As a judicial authority, the court shall take a passive position and adhere to the judicial principle of “no trial without complaint”; the plaintiff in the pending case is not the obligee of non-free prior art and has not suffered any loss, and therefore has no reason to make any claim against the defendant. In this case, most of the legal risks faced by the defendant are from the plaintiff in the pending case. If the infringement alleged by the plaintiff is not established, the plaintiff may feel hatred strong resentment and inform the obligee of non-free prior art of the relevant situation and the defendant may be subject to infringement action as a result.

If the obligee of non-free patented technology is the plaintiff in the pending case, the defendant has obtained the technology authorization and license from the plaintiff, and the prior art defense is established, the defendant will not bear any legal liability even though the relevant obligee is the plaintiff. If the defendant has not obtained authorization and license from the plaintiff, both the defendant and the court will be faced with difficulties. If the defendant makes confession in the pending case, especially when the prior art defense is not established upon technical comparison, the defendant shall undertake the liability for tort; if the prior art defense is established, it is not fortunate for the defendant either. The right subject of patent technology or non-free prior art is the plaintiff, and may make claim against the defendant, requiring it to stop the infringement act, make compensation and bear other civil liability. If the prior art defense is not established, the court may try the case based on the plaintiff’s request and the defendant’s defense. If the prior art defense is established, it means the defendant has applied the plaintiff’s patent technology and the only difference lies in whether the patent technology in the pending case or other patent technology has been applied, which will affect the trial significantly.

III. Conflict between claim and patent technology evidence

In patent infringement litigation, the evidences provided by the plaintiff to support its claim include right evidence, infringement evidence and claim evidence. [3] Right evidence is the fundamental identification evidence used by the plaintiff to assert its right, including patent document, patent certificate, annual fee payment certificate and copy of patent register. Infringement evidence and claim evidence are based on right evidence. If right evidence is not in correspondence with the pending case, the plaintiff will have no basis for filing the case, and the follow-up determination of infringement subject and the comparison with alleged infringing product cannot be the claim evidence. In this case, if the prior art defense of the defendant’s non-free prior art is established, and the obligee is the plaintiff, can the court directly determine that the defendant is convicted of infringement act, and order the defendant to bear the relevant civil liability after the court have sufficient evidences to determine that the prior art applied by the defendant is the plaintiff’s patent according to the defendant’s confession, court inquisition, technical evaluation and other technical means? The author has a negative attitude towards this issue.

Generally, in patent right infringement dispute, the plaintiff makes a claim to require the defendant to stop its infringement act, compensate for economic loss and eliminate effects based on the actual evidence. If the defendant has stopped its infringement act when the plaintiff files a lawsuit, the request of desistance from infringement will not be included in the claim. If the defendant is found to carry out any infringement act again during the trial, the request of desistance from infringement may be included in the claim. Claim of any kind made by the plaintiff shall be based on evidence and be specific. In the patent right infringement dispute, when requesting the court to order the defendant to stop its infringement act, the plaintiff shall indicate specifically the object of the infringement act to be stopped, and the court will accordingly require the defendant to stop its infringement against the related patent technology. During the trial, the plaintiff may change its claim. However, the change shall be a quantitative one (i.e. increase or decrease of claim, or adjustment of action object) rather than the qualitative adjustment which has significant influence on substantive hearing of the case (i.e. change of patent technology based on which the claim is made), otherwise it will cause great damages to the normal trial of case, invalidate the work of case filing and investigation, case hearing, proof-proving and defense of the defendant, and render the pending case meaningless. During the trial, the plaintiff and the defendant may provide or withdraw their evidences according to their own needs. However, the provision or change of evidence shall be in a timely manner, [4]and shall not have any unfair influence on the normal hearing of case and the protection of the defendant’s right.

In a patent right infringement dispute, if the plaintiff changes the right foundation only on the ground that the patent technology based on which the claim is made can not come into play as expected, and continues to make claim based on non-free prior art or other patent technology owned by it, the case hearing will be in a never-ending status, and the defendant will suffer endless litigation which will cause adverse effects on its normal production and operation. From the practical aspect, although the plaintiff, as the obligee of non-free patent technology, cannot make a claim in the case, it has not been prevented from making any claim in other cases by laws or judicial office.

Conclusion

If the non-free prior art defense is established, the plaintiff or the obligee not involved may make claim against the defendant by filing another lawsuit. The society is complex and the obligee can exercise its patent right by various means. Filing a lawsuit with the court is the major way, but not the only way. Whether the obligee selects to file a lawsuit depends on many non-legal factors. Even if the defendant uses non-free patent technology, it will not necessarily undertake legal liability for applying other people’s patent without permission, and may only bear some legal risk in most cases.