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THYSSENKRUPP AIRPORT SYSTEMS (ZHONGSHAN) CO., LTD. V. CHINA INTERNATIONAL MARINE CONTAINERS (GROUP) LTD., SHENZHEN CIMC TIANDA AIRPORT EQUIPMENT CO., LTD., AND GUANGZHOU BAIYUN INTERNATIONAL AIRPORT CO., LTD. (2016) ZGFMZ No. 179, SPC

Cause of action: Dispute over infringement of patent right in an invention

Collegial panel members: Li Jian | Song Shuhua | Wu Rong

Keywords: infringement, invention patent, product manual, publication

Relevant legal provisions: Patent Law of the People’s Republic of China (as amended in 2000), article 22 Patent Law of the People’s Republic of China (as amended in 2008), article 62

Basic facts: In the dispute over infringement of an invention patent between appellant ThyssenKrupp Airport Systems (Zhongshan) Co., Ltd. (hereinafter “ThyssenKrupp Zhongshan”) and respondents China International Marine Containers (Group) Ltd. (hereinafter “CIMC”), Shenzhen CIMC Tianda Airport Equipment Co., Ltd. (hereinafter “Tianda”) and Guangzhou Baiyun International Airport Co., Ltd. (hereinafter “Baiyun Airport”), CIMC was the defendant at first instance and the holder of invention patent No. 200410004652.9, entitled “Supporting Device for Boarding Bridge and Boarding Bridge with the Device and the Control Methodology”. The patent was filed on February 26, 2004, and granted on August 22, 2007, as published in the Gazette. On May 8, 2009, the holder of the patent was changed from CIMC to CIMC and Tianda. CIMC and Tianda filed a lawsuit claiming that the implementation of certain technical schemes by Baiyun Airport and ThyssenKrupp Zhongshan without CIMC’s and Tianda’s permission had infringed upon their patent.

At first instance, ThyssenKrupp Zhongshan made its defenses based on prior art, submitted the testimony of Raymond K. Streat, chief operating director of ThyssenKrupp Zhongshan, and attached supporting documents to support its assertions of prior art. As recorded in the evidence, between October 2000 and March 2001, ThyssenKrupp sent an on-site team to San Francisco International Airport, where it developed a technical solution to eliminate the large amplitude of shaking of the boarding bridge. The solution included installation of a hydraulic stabilizer on both sides of the beam/ loading wheel of the boarding bridge, for the purpose of promoting its stability. The team called it a “cantilever beam design” or “cantilever beam device”. The user accepted and applied the suggestion of a “cantilever beam design” or “cantilever beam device”, and the production and installation work was carried out.

 Appendix Y, “Hydraulic Stabilizer”, of the passenger boarding bridge manual (hereinafter “Appendix Y”) was released and delivered to the user after being updated. ThyssenKrupp Zhongshan claimed that Appendix Y proved that it was using a prior technology and not infringing on the patent. At first instance, Guangzhou Municipal Intermediate People’s Court of Guangdong Province held that Appendix Y was an informal publication printed by the affiliated company ThyssenKrupp Zhongshan. If ThyssenKrupp Zhongshan were to fail to prove that its affiliated company had used the technology of a “cantilever beam device”, it would be difficult for the first-instance court to confirm the authenticity of Appendix Y, as well as the time when the manual was printed and delivered to San Francisco International Airport. Because ThyssenKrupp Zhongshan did indeed fail to prove that the “cantilever beam device” technology had been publicized through Appendix Y in 2000–01, the defense concerning prior art was not found to be justified. The first-instance court therefore decided that ThyssenKrupp Zhongshan and Baiyun Airport should cease the act of infringement immediately, as well as that ThyssenKrupp Zhongshan should compensate CIMC and Tianda for their economic losses in the amount of RMB500,000, and it rejected CIMC’s and Tianda’s other claims.

ThyssenKrupp Zhongshan refused to accept the judgment and lodged an appeal. At second instance, the Higher People’s Court of Guangdong Province dismissed the appeal and affirmed the original judgment.

ThyssenKrupp Zhongshan still refused to accept the ruling and applied to the Supreme People’s Court for permission to appeal again. The Supreme People’s Court decided to hear the case and, on October 10, 2016, it overturned the judgments at first and second instances, and it rejected CIMC’s and Tianda’s claims.

Held: On September 24, 2012, Guangzhou Municipal Intermediate People’s Court of Guangdong Province delivered its judgment as follows ((2011) SZFMSCZ No. 107).

(a) ThyssenKrupp Zhongshan and Baiyun Airport should cease the infringing act immediately.

(b) ThyssenKrupp Zhongshan should compensate CIMC and Tianda for their economic losses in the amount of RMB500,000.

(c) CIMC’s and Tianda’s other claims were rejected.

ThyssenKrupp Zhongshan refused to accept the judgment and appealed to the Higher People’s Court of Guangdong Province. On July 16, 2014, the Higher People’s Court of Guangdong Province delivered its judgment, dismissing the appeal and affirming the original judgment ((2013) YGFMSZZ No. 38).

ThyssenKrupp Zhongshan still refused to accept the ruling and applied to the Supreme People’s Court for permission to appeal again. The Court delivered its judgment on October 10, 2016, finding that:

(a) the decision at second instance, of the Higher People’s Court of Guangdong Province, was to be overturned;

(b) the first-instance decision of the Guangzhou Municipal Intermediate People’s Court of Guangdong

Province was to be overturned; and (c) all claims made by CIMC and Tianda were to be rejected.

Reasoning: The Supreme People’s Court held that, in this case, ThyssenKrupp Zhongshan had based its defense upon prior art – that is, it argued that because Appendix Y was a publication, the technology it described was available as a prior technology and hence its use did not constitute an infringement upon the patent involved. “Publications” are defined under the Patent Law of the People’s Republic of China as independent communication media containing the detail of technologies or designs, the release or publication date of which, as indicated in the publication, can be verified by means of other evidence. Appendix Y, as a product manual for operation and maintenance, had been delivered to users along with the products sold, but neither the users nor those who had contact with it had the duty of confidentiality, which meant that Appendix Y was publicly available and accessible to the unspecified public by such means as photocopying. As a consequence, because 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 (that is, the time of public release), it fell into the scope of “publications”, as defined under the Patent Law, and ThyssenKrupp Zhongshan’s defense based on prior art as evidenced in Appendix Y had a basis in both fact and law. The defense was therefore to be sustained.