Whether or not product manuals are considered as publications as defined in the Patent Law

  ——Dispute over infringement on patent right for invention between ThyssenKrupp Airport Systems (Zhongshan) Co., Ltd. and China International Marine Containers (Group) Ltd., Shenzhen CIMC Tianda Airport Equipment Co., Ltd., and Guangzhou Baiyun International Airport Co., Ltd.. [1]

[Summary of the Judgment]

Product operation and maintenance manuals are delivered to users together with the sold products. Neither the users nor those who come in contact with the product have the duty of confidentiality. In addition, they can be accessed by the unspecified public and are considered as publications as defined in the Patent Law. The technical schemes recorded in the manuals shall be deemed as publicly accessible from the moment when the manuals are delivered to users.

[Case No.]

Supreme People’s Court (2016) ZGFXZ No. 179

[Cause of Action]

Dispute over infringement on patent right for invention

[Key words]

Patent for invention / infringement / product manual / publication

[Relevant Legal Provisions]

Article 22 of the Patent Law of the People’s Republic of China (revised in 2000) and Article 62 of the Patent Law of the People’s Republic of China (revised in 2008)

[Basic Facts]

In the dispute over infringement of patent for invention between the applicant ThyssenKrupp Airport Systems (Zhongshan) Co., Ltd. (hereinafter referred to as ThyssenKrupp Zhongshan) and the respondents China International Marine Containers (Group) Ltd. (hereinafter referred to as CIMC), Shenzhen CIMC Tianda Airport Equipment Co., Ltd. (hereinafter referred to as Tianda), and Guangzhou Baiyun International Airport Co., Ltd. (hereinafter referred to as Baiyun Airport), the Defendant of first instance, CIMC is the holder of the patent for invention No. 200410004652.9 (i.e. Patent Involved hereby in this Case) named “Supporting Device for Boarding Bridge and Boarding Bridge with the Device and the Control Methodology”. The Patent involved in this Case was applied on February 26, 2004 and authorized on August 22, 2007. The patent owner was CIMC at the time of authorization. On May 8, 2009, the holder of the Patent Involved in this Case was changed from CIMC to Tianda. CIMC and Tianda filed a lawsuit claiming that the implementation of the technical schemes of the Patent Involved in this Case by Baiyun Airport and ThyssenKrupp Zhongshan without permission from the patent holder had infringed upon their patent. During the first instance, ThyssenKrupp Zhongshan made its defenses based on prior technologies, and submitted testimonies of Raymond•K•Streat, chief operating director of ThyssenKrupp Zhongshan, and attached supporting documents to support its defenses about prior technologies. As recorded in the evidences, from October 2000 to March 2001, the on-site team sent by ThyssenKrupp to San Francisco International Airport developed a technical solution to eliminate the large amplitude of shaking. The solution included the installation of a hydraulic stabilizer on both sides of the beam/loading wheel of the boarding bridge, for the purpose of promoting the stability of the boarding bridge. It was called “cantilever beam design” or “cantilever beam device”. The user accepted and applied the suggestion of “cantilever beam design” or “cantilever beam device”, and then the production and installation work was carried out. Appendix Y “Hydraulic Stabilizer” of the Manual (hereinafter referred to as Appendix Y) was released and delivered to the user after being updated. ThyssenKrupp Zhongshan claimed that Appendix Y proved that they were using an prior technology. In first instance, Guangzhou Municipal Intermediate People’s Court of Guangdong Province held that, Appendix Y was an informal publication printed by the affiliated company of ThyssenKrupp Zhongshan. If ThyssenKrupp Zhongshan failed to prove its affiliated company had used the technology of “cantilever beam device”, it was difficult for the first instance court to confirm the authenticity of Appendix Y and the time when the manual was printed  to San Francisco International Airport. Because ThyssenKrupp Zhongshan failed to prove the technology of “cantilever beam device” had been publicized through Appendix Y in 2000-2001, the defense concerning prior technologies shall not be justified. The first instance court hereby made the judgment that ThyssenKrupp Zhongshan and Baiyun Airport should cease the act of infringement immediately, ThyssenKrupp Zhongshan should compensate CIMC and Tianda for their economic losses in the amount of RMB 500,000, and other claims by CIMC and Tianda were rejected. ThyssenKrupp Zhongshan refused to accept the judgment and filed an appeal. The High People’s Court of Guangdong Province rejected the appeal and upheld the original judgment in the second instance. ThyssenKrupp Zhongshan still refused to accept the ruling and applied to the Supreme People’s Court for a retrial. The Supreme People’s Court decided to bring this Case to trial, and on October 10, 2016 revoked the judgments made in first and second instances, and rejected the claims of CIMC and Tianda.

[Judgment Decision]

On September 24, 2012, Guangzhou Municipal Intermediate People’s Court of Guangdong Province made (2011) SZFMSCZ No. 107 Civil Judgment as follows: I. ThyssenKrupp Zhongshan and Baiyun Airport should cease the infringing act immediately; II. ThyssenKrupp Zhongshan should compensate CIMC and Tianda for their economic losses in the amount of RMB 500,000; III. Other claims by CIMC and Tianda were rejected. ThyssenKrupp Zhongshan refused to accept the judgment of the first instance, and appealed to the Higher People’s Court of Guangdong Province. On July 16, 2014, High People’s Court of Guangdong Province entered (2013) YGFMSZZ No. 38 Civil Judgment as follows: the appeal was rejected and the original judgment was upheld. ThyssenKrupp Zhongshan still refused to accept the ruling and applied to the Supreme People’s Court for a retrial. The Supreme People’s Court decided to bring this Case to trial, and made (2016) ZGFMZ No. 179 Civil Judgment on October 10, 2016: I. the (2013) YGFMSZZ No. 38 Civil Judgment made by the High People’s Court of Guangdong Province was revoked; II. the (2011) SZFMSCZ No. 107 Civil Judgment made by Guangzhou Municipal Intermediate People’s Court of Guangdong Province was revoked; III. Claims of ThyssenKrupp Airport Systems (Zhongshan) Co., Ltd. and China International Marine Containers (Group) Ltd. were rejected.

[Grounds for the Ruling]

During the trial, the Supreme People’s Court held that: in this Case, ThyssenKrupp Zhongshan made a defense of prior technologies, i.e. because Appendix Y was a publication, the technology it used was available as an prior technology and it did not constitute an infringement upon the patent involved in this Case. Publications as defined in the Patent Law refer to independent communication media containing contents of technologies or designs, with the time of release or publishing indicated in the publication or can be proved via other evidences. Appendix Y as a product manual for operation and maintenance had been delivered to the users along with the products sold, but neither the user nor those who had  contact with the product had the duty of confidentiality, which meant that Appendix Y was open and was accessible to the unspecified public through photocopies. In regard of this, Appendix Y was an independent communication medium, containing the technical features of the patented technologies involved, and it was possible to ascertain the time when it was delivered to San Francisco International Airport, i.e. the time of public release. So, Appendix Y conformed to a publication as defined in the Patent Law. The defense concerning prior technologies made by ThyssenKrupp Zhongshan related to Appendix Y had factual and legal basis, and therefore should be adopted.