China’s Supreme People's Court (SPC) recently publicly announced its ruling to overturn a lower court's pre-suit injunction (also called “pre-suit behaviour preservation”) in a patent infringement case. 

The case marks the first application of its kind since the implementation of the new "Behavior Preservation Review System" on 1 November 2023. This system allows parties to appeal behaviour preservation rulings made by lower courts in technical IP and monopoly cases directly to the top court’s Intellectual Property Tribunal. 

In this case, the SPC’s ruling offers clarity on the standards for reviewing pre-suit behaviour preservation applications in patent infringement cases and signals a cautious approach by the court towards granting such measures.

Case background

Plaintiff Dreame Innovation Technology (Suzhou) and defendant Beijing Roborock Technology are both prominent manufacturers of robotic vacuum cleaners in China. The accused infringing product is a self-cleaning robot mop.

Dreame sought a pre-suit injunction order from the Quanzhou Intermediate People's Court in Fujian Province. The Quanzhou Court granted the request, citing several reasons:

• Likelihood of Infringement: Based on third-party assessments, the technical solution implemented by the accused product fell within the scope of the patent claims, indicating a high likelihood of patent infringement.

• Urgency: The infringement was deemed urgent due to the upcoming "618" e-commerce promotion (similar to Black Friday), which was expected to significantly scale up the infringing activities.

• Irreparable Harm: Failure to take preservation measures would cause irreparable harm to Dreame, outweighing the potential damage to Roborock.

Following the injunction order, Roborock had to remove the accused product from e-commerce platforms before the "618" sale but it appealed to the SPC.

SPC ruling

The SPC concluded that the injunction in this case did not meet the prerequisites Specifically, the SPC noted that:

• Lack of urgency: The infringement did not pose an imminent threat to the patent itself or cause irreparable damage to its value, nor did it involve any infringement on personal rights. Moreover, the accused infringing activities started as early as August 2023, yet Dreame only filed for preservation in June 2024, despite various promotional events occurring during this period. This delay suggested a lack of urgency.
  

• Disputed infringement: There was significant contention between the parties regarding whether the accused technical solution possessed the technical features claimed in the patent, making it unclear whether infringement was highly probable at this stage.

• Compensable economic loss: The harm caused by the alleged infringement was primarily economic, which could be compensated through damages awarded in litigation. There was insufficient evidence to prove that the infringement would cause uncontrollable damage or significantly reduce Dreame’s market share.

• Potential harm to defendant: Both parties were well-known in the robotic vacuum cleaner industry. The injunction could also harm Roborock, and there was no conclusive evidence that not granting the injunction would cause Dreame more harm than it would cause Roborock.

Context and Implications

Historically, behaviour preservation measures in patent infringement cases have been rare compared to other types of intellectual property infringements. According to judicial interpretations, courts must consider several factors when reviewing preservation applications:

• Factual and legal basis: Whether the applicant's request has a factual and legal basis, including the validity of the intellectual property right and whether the accused solution falls within the patent protection scope.
  

• Irreparable harm: Whether not taking preservation measures would cause irreparable harm to the applicant's legitimate rights or make the judgment difficult to enforce.

• Balance of harm: Whether the harm to the applicant from not taking preservation measures exceeds the harm to the respondent from taking them.

• Public interest: Whether the preservation measures would harm public interest.

For pre-suit behaviour preservation, urgency is also required. 

These factors are challenging to satisfy in most patent cases. For instance, the courts are almost unable to assess the validity of patents. According to CNIPA, in invalidation cases in 2022, only 56.7% of invention patents were upheld, and 39.9% for utility model patents. 

Additionally, patent infringement cases often require complex technical comparisons to determine infringement. Issuing behavior preservation orders without the trials or CNIPA’s validity decisions pose significant risks for the courts.

Example of a Rare Case

The FMC Agro Singapore v Zhejiang Yongtai Technology patent infringement case is one of the few that has met these stringent criteria. The involved patent protected the compound chlorantraniliprole, a commercially successful original research insecticide. 

The patent is stable, while the infringement could be readily identified via the compound name and CAS number. Yongtai repeatedly participated in large exhibitions offering chlorantraniliprole, indicating a high likelihood of continued infringement. 

Furthermore, the patent was nearing expiration, and the remaining protection period was insufficient for complete litigation, underscoring the urgency to stop the infringement. The timing also coincided with the traditional peak sales season for pesticides, increasing the urgency.

Cautious approach advocated by SPC

The SPC's decision underscores a cautious approach to behavior preservation in patent infringement cases. Such measures can have swift and severe impacts on competitors, such as e-commerce product delistings, which not only affect short-term sales but also erase accumulated sales data and consumer reviews, making it difficult to recover even if relisted. 

The SPC has observed increasing misuse of these measures. 

In 2023, the SPC issued a "reverse behavior preservation" guiding case. In this case, TMall was ordered to restore sales links for a product previously delisted due to a first-instance court's infringement finding. During the second instance of infringement proceedings, the asserted patent was invalidated, pending judicial review. The SPC granted the defendant's request to relist the product in light of the imminent “Double Eleven” (another Black Friday) sales event, emphasising the potential for irreparable harm if the links were not restored.

With the implementation of the Behavior Preservation Review System, the SPC now holds the authority to review behaviour preservation in patent cases, which is expected to make lower courts more cautious in granting such measures. This might be good news for many large companies, as an unexpected injunction could significantly impact their business.