Ningbo Roaby Technology Industrial Group Co., Ltd. (“the Client”) is the owner of the patent for invention entitled “A Large Anti-Scratch Variable Comb-Shaped Bridge Expansion Joint Device” (“the Involved Patent”). The Involved Patent had not only won the Chinese Patent Gold Award, but has also been included in the industry standard documents published by the Ministry of Transport as a standard essential patent. The Client sued Hebei Yideli Rubber Products Co., Ltd. and Hebei Jitong Road Bridge Construction Co., Ltd. (“the Defendants”) for infringing the Involved Patent. Although the first-instance court determined that the Defendants constituted infringements, it only supported a compensation amount of CNY 100,000 and reasonable expenses. The Client subsequently appealed to the Supreme People’s Court and entrusted attorney Meihua ZHOU to provide legal services for the second-instance of this case.
Business Difficulties and Highlights
On the one hand, the Client had sent a warning letter to the Defendants as early as 2016 which proved that they had already known about the existence of the Involved Patent. On the other hand, since the Involved Patent was a standard-essential patent, the relevant technical solutions, patent numbers and the contact information of the patentee had been disclosed to the public in the government’s recommended standard documents. Based on these two aspects, attorney ZHOU proved that the Defendants, who had known the existence of the Involved Patent, not only failed to actively seek a patent license but also re-implemented the Involved Patent without the Client’s permission, indicating a clear subjective fault.
In addition, the Client also faced the challenge of being unable to obtain the actual economic losses caused by the Defendants’ infringement. Therefore, attorney ZHOU used 5 methods to calculate the economic losses caused by the Defendants which demonstrated from multiple perspectives that the Client’s economic losses had exceeded CNY 3 million.
Ultimately, with the full argumentation by attorney ZHOU, the Supreme People’s Court overturned the first-instance judgment and fully supported the Client’s compensation claim in the amount of CNY 3 million. This case clarified that the subjective fault of the parties should be given priority to highlight the judicial policy orientation of protecting innocent actors when determining the liability for damages in standard-essential patent infringement cases. The case was selected as one of the National 50 Typical Intellectual Property Cases Selected by the Supreme People's Court in 2022 and the Typical Cases of the Intellectual Property Court of the Supreme People's Court of China in 2022, and later in 2024, it was selected as one of the 100 Typical Cases on the Fifth Anniversary of the Establishment of the Intellectual Property Court of the Supreme People's Court of China.
