Key words civil/infringement of invention patent/method patent implemented by multiple subjects/calculation of damages for infringement/burden of proof/patent technology contribution
Referee Points
1. If the accused infringer solidifies the substantive content of the patented method in the accused infringing product for the purpose of production and operation, this act or the result of the act has played an irreplaceable role in the full coverage of the technical features of the patent claims If the end user can naturally reproduce the process of the patented method when using the accused infringing product normally, it should be determined that the accused infringer implemented the patented method and violated the rights of the patentee.
2. The patentee claims to calculate the amount of damages based on the profits from the infringement and has completed the preliminary proof of the fact of the scale of the infringement. If the basic facts cannot be ascertained, the people's court may not support the defense raised by the accused infringer that the contribution of the patent involved in the case to its infringement profits should be considered.
Relevant laws
Article 1, Paragraph 1 of Article 11, Paragraph 1 of Article 64 of the Patent Law of the People's Republic of China (amended in 2020) Article 11, paragraph 1, Article 59, paragraph 1)
basic case
The plaintiff Shenzhen Dunjun Technology Co., Ltd. (hereinafter referred to as Dunjun Company) claimed that: Shenzhen Jixiang Tengda Technology Co., Ltd. (hereinafter referred to as Tengda Company) manufactured, promised to sell, and sold without permission. A variety of commercial wireless routers (hereinafter referred to as the accused infringing products) sold without permission by the Jinan Lixia Haowei Electronic Product Operation Department (hereinafter referred to as the Haowei Operation Department) fell into the name of "One A simple method of accessing network operator portals" (Patent No. ZL02123502.3, hereinafter referred to as the patent involved), requesting an order to order Tengda Company, Hongkang Operations Department, and Haowei Operations Department to stop infringement and compensate The loss and reasonable expenses for stopping the infringement totaled 5 million yuan.

The defendant Tengda Company argued that: 1. The patent involved in the case and the alleged infringing product have different orientations when accessing any website, and the access process is not the same. Tengda Company did not infringe Dunjun Company's patent right involved in the case. Moreover, the patent involved in the case protects a network access authentication method. Tengda Company only manufactured the accused infringing product, but did not use the technical solution protected by the involved patent. Therefore, its act of manufacturing and selling the accused infringing product is not constitutes patent infringement; 2. The amount of compensation claimed by Dunjun Company is too high and lacks factual and legal basis. The technical contribution of the patent and the existence of alternatives to the patented technology involved in the case should be considered in the calculation of the compensation amount.
Hongkang Business Department and Haowei Business Department jointly argued that the accused infringing products they sold were legally purchased from agents, and they were not the producers of the accused infringing products, so they should not bear the responsibility.
After the trial, the court found that: Dunjun Company clearly claimed its rights based on claims 1 and 2 of the patent involved in the case, the content of which was as follows: 1. A method for simply accessing the portal website of a network operator, which is characterized by including the following processing steps: A. The underlying hardware of the access server directly submits the first uplink HTTP packet before the authentication of the portal business user equipment to the "virtual Web server". Realized by the "Web server" module; B. The "virtual Web server" virtualizes the website that the user wants to visit and establishes a TCP connection with the portal service user equipment, and the "Virtual Web server" returns a message containing redirection information to the underlying hardware of the access server , and then the underlying hardware of the access server sends a message redirecting to the real portal website Portal_Server to the portal service user equipment according to the normal forwarding process; C. After receiving the redirect message, the browser of the portal service user equipment automatically initiates Access to the real portal Portal_Server. 2. A method for simply accessing a network operator's portal website according to claim 1, characterized in that: in the step A, the portal service user inputs any correct domain name, IP address or any number, forming an uplink IP message; in the step B, the "virtual Web server" is virtualized into a website with the IP address of the IP message.

Dunjun purchased one each of "Tenda Router W15E" and "Tenda Router W20E Enhanced" from Hongkang Operations Department and Haowei Operations Department through notarized purchase, and visited the network operator for "Tenda Router W15E" under the supervision of the notary The process of the portal website carried out a technical demonstration, and the demonstration results showed that there were method steps corresponding to claims 1 and 2 of the patent involved in the process of using the "Tenda Router W15E".
The accused infringing products are sold in both the official flagship store of JD.com and the flagship store of Tenda on the "Tmall" website, and the sales volume is huge. The webpage of the official flagship store of JD.com shows a picture of the "Tenda (Tenda) W15E" router, which is priced at 199 yuan on JD.com, with a cumulative evaluation of 10,000+; "Tenda (Tenda) G1" router, Jingdong price 359 yuan, cumulative evaluation 10,000+ and other information. The webpage of the Tenda flagship store on the "Tmall" website shows pictures of the "Tenda (Tenda) W15E" router, a promotional price of 179 yuan, a monthly sales volume of 433, a cumulative evaluation of 4342, installation instructions, technical support and other information.
On December 13, 2018, the court of first instance issued a notice in accordance with the law, the main content of which was: order Tengda to submit to the court of first instance within 10 days the complete information on the production and sales of the "router" products involved since July 2, 2015 and Complete financial books. If you do not submit within the time limit, you will bear the corresponding legal responsibility. However, when the judgment of the second instance was made, Tengda Company did not submit relevant evidence.
referee result
The Intermediate People's Court of Jinan City, Shandong Province made a civil judgment (2018) Lu 01 Minchu No. 1481 on May 6, 2019: 1. Tengda Company immediately stopped manufacturing, promising to sell, and selling the router products involved in the case; 2. Hongkang Business Department, Haowei Business Department immediately stopped selling the router products involved in the case; 3. Tengda Company shall compensate Dunjun Company for economic losses and reasonable expenses totaling 5 million yuan within 10 days from the date when the judgment takes effect; 4. Other claims of Dunjun Company are rejected. The first-instance case acceptance fee of 46,800 yuan shall be borne by Tengda Company. After the verdict was pronounced, Tenda appealed to the Supreme People's Court. On December 6, 2019, the Supreme People's Court issued the (2019) Supreme Law Zhimin Zhong No. 147 Civil Judgment, rejecting the appeal and affirming the original judgment. Referee reason
The Supreme People's Court held that: the focus of this case includes three aspects:
1. Regarding whether the use process of the accused infringing product falls within the scope of protection of the patent claims involved

First of all, the "first upstream HTTP message" in claim 1 of the involved patent should not be interpreted as the first message in the process of establishing a TCP "three-way handshake" connection between the user equipment and the actual website to be accessed, but should be interpreted as The first uplink HTTP packet sent by the user equipment that has not passed the authentication to the access server. Secondly, according to the notarization test results of the accused infringing products, the mandatory Portal process of the accused infringing products is the same as the steps and methods defined in claims 1 and 2 of the involved patent. The process of using all falls within the scope of protection of claims 1 and 2 of the patent involved.
2. Regarding whether the alleged infringement of Tengda Company constitutes an infringement
For the determination of patent infringement of methods in the field of network communication, the characteristics of this field should be fully considered, and the laws of innovation and development in this field should be fully respected, so as to ensure that the legal rights of patentees are substantially protected and realize sustainable innovation and fairness in this industry. compete. If the accused infringer solidifies the substantive content of the patented method in the accused infringing product for the purpose of production and operation, and this act or the result of the act has played an irreplaceable and substantive role in fully covering the technical features of the patent claims, That is to say, if the end user can naturally reproduce the process of the patented method when using the accused infringing product normally, it should be determined that the accused infringer implemented the patented method and violated the rights of the patentee. In this case: 1. Although Tengda Company did not implement the patented method involved in the case, the accused infringing products that it manufactured, promised to sell, and sold for the purpose of production and operation have the function of directly implementing the patented method. The product plays an irreplaceable and substantive role in the process of completely reproducing the patent method involved in the case. 2. Tengda Company's improper interests obtained from manufacturing, promising to sell, and selling the accused infringing products are closely related to the patents involved. 3. Because the use of the accused infringing product by the terminal network user to implement the patented method involved does not constitute a legal infringement, the patentee’s innovation investment cannot obtain due returns from the terminal network user who directly implements the patented method, such as patent If the interests of right holders cannot be compensated, it will inevitably lead to unsustainable R&D and innovation activities. On the other hand, as mentioned above, Tengda obtained the benefits originally belonging to the patentee due to the patent involved, and the distribution of benefits was seriously unbalanced and unfair. Based on the above factors, under the circumstances of this case, it should be determined that Tengda Company’s behavior of manufacturing, promising to sell, and selling the accused infringing products is infringing in nature and it should bear the civil liability for stopping the infringement and compensating for losses.
3. Whether the amount of compensation determined in the first-instance judgment is appropriate

Where the patentee claims to determine the amount of compensation based on the profit obtained from the infringement, the scale of the infringement shall be the basic fact for the calculation of damages. The patentee bears the initial burden of proof for this basic fact. In the case that the patentee has completed the preliminary evidence and the accused infringer refuses to provide corresponding evidentiary materials on the basic facts of the scale of infringement without justifiable reasons, the defense raised by it should consider the contribution rate of the patent involved to its infringement profits, etc. Reasons may not be considered. Specific to this case: 1. Dunjun Company claimed to calculate the amount of compensation based on the infringer’s profits from the infringement, and submitted in the first instance the quantity and sales volume of the accused infringing products sold by Tengda Company in the official flagship stores of JD.com and Tmall.com respectively. In view of the fact that the sales quantity and price are from Tenda’s own official flagship store on the formal e-commerce platform, the data is relatively credible. Although Tenda pointed out that there is a possibility of double counting and false reporting when the cumulative evaluation is used as sales volume, No definite evidence was submitted, and considering the ability of Dunjun Company to prove this fact, it should be determined that Dunjun Company has fulfilled the preliminary burden of proof for the basic facts of the scale of infringement. 2. In the first instance, Dunjun Company applied to Tengda Company to submit financial account books and materials related to the alleged infringing product based on the preliminary evidence of the scale of infringement it had submitted. The court of first instance also ordered Tengda Company to submit Evidence such as complete financial account books that can reflect the production and sales of the accused infringing products, but Tengda Company did not submit it. Even though the court of first instance applied relevant judicial interpretations to fully support Dunjun Company’s high compensation of 5 million yuan, and Tengda Company raised objections to this in the second instance, it still failed to submit relevant financial account books and other materials. Since there is no objective obstacle in this case that Tengda Company cannot submit the evidence related to the scale of infringement it possesses, it should be determined that Tengda Company has not fulfilled the final burden of proof regarding the basic facts of the scale of infringement.

3. According to the existing evidence, there are reasonable grounds to believe that the actual sales volume of the accused infringing products far exceeds the number claimed by Dunjun Company. To sum up, when the facts of the infringement are relatively clear and there is evidence that the actual scale of infringement by Tengda Company is far greater than the scope of compensation claimed by Dunjun Company, if Tengda Company disagrees with the full compensation determined by the court of first instance, it should first Dunjun Company made a substantive defense on whether the basic facts on which the compensation was based were objective and accurate, but it could not avoid the basic facts of the scale of infringement, and separately claimed other defenses such as the contribution of patented technology. All defenses to establish that the damages were too high are disregarded.

(Effective judges: Zhu Li, Fu Lei, Zhang Xiaoyang)