This matter represents one of the most comprehensive "grand slam" victories seen in Chinese patent enforcement. The proceedings encompassed patent administrative adjudication, subsequent administrative litigation, civil infringement proceedings at both first and second instance, patent invalidation proceedings, related administrative litigation at both first and second instance, and a subsequent second invalidation challenge. GEN Law secured favorable outcomes for the client throughout, and the resulting judgment has been fully enforced.

Introduction

In patent enforcement, rights holders often face a practical challenge: even where they are confident that a competitor's product infringes, obtaining evidence of infringement can prove difficult, let alone securing success in the subsequent infringement proceedings. The challenge is particularly acute for large-scale, customized, or non-publicly sold equipment.

This case arose in precisely that context. GEN's client, one of the world's leading suppliers of substrate-processing, printing, and converting equipment, discovered that a competitor appeared to be implementing its patented technical solution and selling the relevant equipment to selected customers. Because the equipment was supplied to specific purchasers and largely made to order, with no inventory held at the manufacturer's premises, it was virtually impossible to preserve evidence through a conventional test purchase. The client therefore faced a significant evidentiary barrier at the outset.

In response, the GEN Law team developed and implemented an enforcement strategy centered on identifying the end user first, securing evidence through administrative adjudication, and then pursuing civil infringement claims against the manufacturer. The team also coordinated the client's response to the subsequent invalidation and related proceedings. The client ultimately obtained sustained success across multiple administrative and judicial proceedings, achieving a full-spectrum victory in a single matter.

The case is not only a successful example of patent enforcement, but also one of the relatively rare examples of a foreign patent owner using coordinated administrative and judicial proceedings to protect its rights in China.

The matters were handled by partners Jerry Xia, Ning Dong, and Simon Du, with support from team members Maoming Yu and Ruyi Cheng.

The client is a well-known Swiss manufacturing company with a long-standing presence in the high-end equipment sector. Its equipment incorporates an innovative solution of considerable technical and commercial value.

During market monitoring, the client identified equipment introduced by a competitor that appeared to use its patented technical solution. Unlike consumer products or standardized industrial goods, the equipment at issue was a large industrial installation, approximately ten meters in length. It was typically sold only to selected customers and installed inside end users' factories. As such equipment is generally custom-made and manufacturers do not ordinarily hold inventory, the rights holder could neither purchase an infringing product on the open market nor readily access the installation site to preserve evidence.

Rather than following the conventional route of bringing a civil action directly against the manufacturer, GEN Law first investigated and identified the actual user of the equipment. Because use of the accused equipment could itself constitute patent infringement, GEN Law represented the client in filing a request for administrative adjudication of the patent infringement dispute with the competent local intellectual property authority and sought an on-site inspection of the equipment in use. Following thorough pre-filing communications and factual submissions, GEN Law successfully secured an on-site inspection by the authority and preserved key evidence establishing infringement by the equipment at issue. The local intellectual property authority subsequently issued an administrative decision ordering the cessation of infringement.

The opposing party then commenced administrative litigation and simultaneously initiated patent invalidation proceedings, including related administrative litigation and a subsequent second invalidation challenge. Building on the administrative adjudication, GEN Law continued to represent the client in civil proceedings against both the manufacturer and the user of the infringing equipment. The courts ultimately found infringement at both first and second instance, awarding RMB 1.6 million in damages and reasonable enforcement expenses. The award has been fully enforced.

After all relevant administrative and judicial proceedings had concluded, GEN Law secured a complete victory for the patent owner: the patent was maintained in force, infringement was established, cessation of infringement was ordered, and damages were awarded.

Case Highlights

The case has four principal highlights:

1. A Practical Solution to the Evidentiary Challenge in Large Customized Equipment Cases

In cases involving large equipment, manufacturers often do not hold inventory, while rights holders may have no direct access to the accused products. GEN Law identified a critical point in this case: use of the accused equipment could also constitute infringement. By first identifying the user, initiating administrative adjudication, preserving evidence of infringement, and then bringing civil claims against the manufacturer, the team established a complete path from on-site evidence collection to infringement determination and accountability at the source.

2. The Practical Value of Patent Administrative Adjudication in Complex Infringement Disputes

In appropriate cases, administrative adjudication can be an effective mechanism for establishing facts, preserving evidence, strengthening the infringement finding, and creating an advantage for subsequent civil litigation. This matter is a representative example of the effective integration of administrative adjudication with subsequent judicial proceedings.

3. The Importance of Procedural Design in Cross-Border Patent Enforcement

Through a patent licensing arrangement, the client's Chinese subsidiary was able to participate in the litigation as an eligible claimant. This significantly reduced the burden of foreign-related formalities and improved the efficiency of the proceedings. The approach offers a useful practical reference for foreign rights holders seeking to enforce their rights in China efficiently.

4. The Real Challenge Was Not a Single Breakthrough, but a Sustained Victory Across Multiple Proceedings

In patent infringement matters, it is not unusual to obtain support in one proceeding. The greater challenge is to coordinate infringement findings and patent validity issues across administrative adjudication, administrative litigation, civil infringement litigation, patent invalidation proceedings, and related administrative litigation, while maintaining favorable outcomes throughout. That is precisely what this case achieved: a full-spectrum result spanning the patent right itself, the infringement determination, and the overall procedural strategy.

The case also illustrates that, in high-value patent disputes, rights holders must be prepared to operate across multiple fronts simultaneously. Infringement litigation, invalidation proceedings, and administrative litigation are never truly separate. Only by adopting an integrated strategy from the outset, and ensuring that the factual record, legal arguments, and procedural approach reinforce one another, can a rights holder achieve success throughout the entire process, from evidence preservation and infringement determination to maintenance of the patent's validity.