*AI-generated translation, for reference only.

Recently, the Intellectual Property Tribunal of the Supreme People's Court rendered a final judgment in an administrative adjudication case concerning an invention patent. The Tribunal held that the patentee bears the burden of proving that the product directly obtained by the patented method is a "new product" and that the accused infringing product is identical to the product obtained by the patented method. The people's court may, based on evidence such as novelty search consultation reports and patent prosecution documents submitted by the parties, compare whether the patented product is significantly different from existing products before the patent application date in terms of composition, structure, quality, performance, function, etc., and comprehensively determine whether it is a new product.

This case involves an invention patent titled "A molecular sieve coated aluminum foil and its preparation method" (hereinafter referred to as the patent-in-suit), owned by Wan [REDACTED] Company. The disputed claims mainly include claims 1, 4, and 6. Claim 1 reads: "A molecular sieve coated aluminum foil, characterized in that it comprises an aluminum substrate and a molecular sieve coating, wherein at least one side of the aluminum substrate is provided with the molecular sieve coating, the thickness of the aluminum substrate is 0.05–0.5 mm, and the thickness of the molecular sieve coating is 4–15 μm; the molecular sieve coating consists of molecular sieve and water-based acrylic resin, and the preparation method of the molecular sieve coated aluminum foil comprises the following steps: Step 1, subjecting molecular sieve powder to water treatment, placing the molecular sieve powder in water to form a mother liquor; Step 2, uniformly mixing the mother liquor obtained in Step 1 with water-based acrylic resin to form a mixed solution; Step 3, coating and curing, uniformly coating the mixed solution obtained in Step 2 onto the aluminum substrate, followed by drying and curing." Wan [REDACTED] Company argued that the product technical solution in claim 1 involves a new product and can be divided into four technical features: (1) "a molecular sieve coated aluminum foil"; (2) "comprising an aluminum substrate and a molecular sieve coating, wherein at least one side of the aluminum substrate is provided with the molecular sieve coating"; (3) "the thickness of the aluminum substrate is 0.05–0.5 mm, and the thickness of the molecular sieve coating is 4–15 μm"; (4) "the molecular sieve coating consists of molecular sieve and water-based acrylic resin." These four technical features all relate to the molecular sieve coated aluminum foil product. In addition, the remaining technical features in claim 1 relate to the preparation method of the molecular sieve coated aluminum foil.

Wan [REDACTED] Company claimed that the molecular sieve coated aluminum foil produced and sold by Jin [REDACTED] Company infringed the patent-in-suit. A certain [REDACTED] Market Supervision Administration accepted Wan [REDACTED] Company's request for resolution and conducted multiple on-site inspections and oral hearings against Jin [REDACTED] Company. On December 5, 2024, the [REDACTED] Market Supervision Administration issued the disputed ruling, finding that the technical features of the accused infringing product were identical to technical features 1 and 2 of claim 1 of the patent-in-suit, equivalent to technical feature 3, but lacked part of the technical content of technical feature 4. Therefore, the accused infringing technical solution did not fall within the scope of protection of claim 1 of the patent-in-suit, and the Administration ruled to reject Wan [REDACTED] Company's request. Wan [REDACTED] Company filed a lawsuit disagreeing with the ruling, arguing that technical feature 4 of the patent-in-suit involves a method patent, that it had provided evidence proving that the patented product is a new product, and that the accused infringing product is identical to the patented product, so the rule of reverse burden of proof should apply. During the administrative proceedings and the first instance trial, Wan [REDACTED] Company argued that the molecular sieve coated aluminum foil produced using the patented method belongs to a new product, and submitted evidence including a high-tech product certification, a scientific and technical novelty search report, and a new product determination consultation report.

The first instance judgment held that the molecular sieve coated aluminum foil produced using the patented method does not constitute a new product, and that the conditions for applying the reverse burden of proof were not met in this case. Therefore, Wan [REDACTED] Company should bear the burden of proving whether the accused infringing technical solution infringed the patent-in-suit. The technical solution of the accused infringing product did not fall within the scope of protection of claim 1 of the patent-in-suit. Wan [REDACTED] Company appealed the first instance judgment.

In the second instance, the Supreme People's Court held: The evidence submitted by Wan [REDACTED] Company in the first instance, including the high-tech product certification, scientific and technical novelty search report, and new product determination consultation report, could not prove that the molecular sieve coated aluminum foil produced using the patented method is a new product. Analyzing the patent prosecution documents, in light of the technical features added through amendments to claim 1 of the patent-in-suit, the manufacturing method of the patented product had been disclosed before the filing date or belonged to conventional technical means of a person skilled in the art, and the patented product had no significant differences compared to similar products. Although the new claim formed by Wan [REDACTED] Company after merging multiple claims from the original application was granted, the patent-in-suit did not introduce technical features sufficient to create a new product. Wan [REDACTED] Company still bore the further burden of proof to show that the accused infringing product and its manufacturing method infringed the patent-in-suit.

With respect to technical feature 4 of claim 1, Wan [REDACTED] Company failed to complete its burden of proving that the accused infringing product has the feature "the molecular sieve coating consists of molecular sieve and water-based acrylic resin" and the "Step 1 and Step 2 of the preparation method." With respect to technical feature 3 of claim 1, which involves the numerical ranges of the thickness of the aluminum substrate and the molecular sieve coating, these numerical values are specific choices made by the patentee regarding the critical points of their claimed technical solution, with clearly defined boundaries. The technical features of the accused infringing product do not fall within the numerical ranges defined in the patent. Moreover, the specification of the patent-in-suit neither records the functional effects of those thickness ranges nor reflects the numerical values corresponding to the accused infringing technical solution, thus failing to prove that the thickness of the aluminum substrate and molecular sieve coating of the accused infringing product are consistent with the functions and effects of the patent-in-suit. Therefore, the technical solution of the accused infringing product does not fall within the scope of protection of the patent-in-suit. The Supreme People's Court rendered a final judgment dismissing the appeal and affirming the original judgment.

This case clarifies that the right holder bears the burden of proving that the product directly obtained by their patented method is a "new product" and that the accused infringing product is identical to the product obtained by the patented method. The court's explanation of the relevant burden of proof in this case reflects a balance between protecting the rights and interests of the patentee and safeguarding the public interest.