On August 9, the Supreme
People’s Court ruled on the patent infringement case against Double Medical
Technology Co., Ltd. by Swiss Synthes, a subsidiary of Johnson & Johnson
Medical Orthopedic Company in the United States. 

Last year, the Supreme People’s Court has already issued a civil judgment (2021) Supreme People’s Court No. 148, fully supports the claims of Synthes RMB 20 million yuan for damages and RMB 100 thousand for reasonable expenses.

However, the defendant Double
Medical refused to accept the above judgment and filed a retrial with the
Supreme People’s Court. The Supreme People’s Court will form a collegial panel
to conduct a review and make a final judgment.

Retrial Request and Counter Opinions

There are four points in Double
Medical’s retrial request:

1. The
   reason for the second-instance judgment that the accused infringing product
   falls within the scope of protection of the patent involved lacks factual and
   legal basis. The alleged infringing product does not contain the features
   defined in the patent at issue “A device for the treatment of femoral fractures”,
   so it did not fall within the scope of protection of the patent involved. The
   second-instance judgment protects the patent in question as an invention of
   use, but the patent in question is a product invention, and it protects the
   structure of the product, not the invention of use.
2. There is
   an error in the admission of the evidence of the first instance by the court of
   second instance.
3. The
   judgment of the second instance in the compensation amount of  RMB 200 million lacks factual and legal basis.
4. The accused
   infringing main nail is an existing technology and prohibiting Double Company
   from producing and selling the accused main nail is unfair to Double Company
   and detrimental to public interests.

Based on the
above reasons, Double Medical requested a retrial of this case and a correction
of the second-instance judgment.

Synthes also submitted five
counter opinions:

1. It has
   tried its best to prove Double’s infringing acts and infringing profits, but Double’s
   refusal to comply with the requirements of the court of first and second
   instance on disclosing relevant evidence and documents constitutes an obstacle
   to producing evidence.
2. The
   accused infringing main nail and screw blade are only components of the accused
   infringing product, not independent products.
3. The
   first-instance evidence in the first- and second-instance proceedings of Double
   Companyfully expressed their cross-examination opinions, and
   the first and second instance courts accepted the evidence correctly.
4. The
   amount of compensation determined in the second-instance judgment has legal and
   factual basis.
5. Even if
   the accused infringing main nail can be used in conjunction with other bone
   fixation elements, such coordination is beyond the scope of this case.

SPC Judgements

The collegial
panel of the Supreme People’s Court believes that there are four main disputes
in this case, mainly four points for retrial against Double Medical. In this
regard, the Supreme People’s Court held that:

1. Whether
there is an error in the judgment of the second instance that the accused
infringing product falls within the scope of protection of the patent involved

According to
the records of the claims of the involved patent, the claimed patent is “device
for treating femoral fractures”, including the main nail and the helical blade. The main nail and the helical blade must be used together as a set, and neither
the main nail nor the helical blade alone can achieve the effect of treating
femoral fractures.

At the same
time, Double’s medical device registration certificate, product catalog and
instruction manual all record that the above disputed points are not
independent products and must be used together.

Double
Company’s claim that the alleged infringing main nail and screw blade are
independent products, and do not constitute the main nail and screw blade that
must be matched one by one as defined in the claims of the patent involved “device”
claims, which do not match the facts.

For the
treatment of femoral fractures”is a limitation on the use of the device claimed
by the patent in question, and the second-instance judgment did not recognize
the patent in question as a use Inventions are protected.

Therefore, it
is not inappropriate for the second-instance judgment to determine that the
accused infringing product falls within the scope of protection of the patent
involved. Double Company’s corresponding retrial application grounds cannot be
established, and this court does not support it.

2. Whether
there was an error in the admission of evidence by the court of second instance.

Regarding the
first-instance evidence. Double Company claimed that the notarization of the
first instance evidence violated the law. However, after review, whole process from purchasing the alleged
infringing product in the first instance evidence is notarization process clearly recorded, Double
Company did not provide contrary evidence to overturn the above notarization
certificate.

Therefore,
the second-instance court’s acceptance of the above-mentioned evidence was not
improper, and the grounds for Double’s corresponding retrial application cannot
be established, and this court does not support it.

3. Whether the
compensation amount of RMB 20 million determined by the judgment of the second
instance is appropriate.

Article 27 of
the Interpretation of the Supreme People’s Court on Several Issues Concerning
the Application of Law in the Trial of Patent Infringement Disputes (2)”.

During the
second instance, Double Company did not provide the corresponding sales data of
the infringing products and the original documents related to the sales data
when the court explicitly requested it to submit evidence materials, although Double
Company disagreed with the amount claimed by the patentee, but only objected to
the calculation method of the patentee, and refused to provide the evidence
that it possessed, it can be presumed that the compensation amount claimed by
the patentee was established.

Therefore, it
is not inappropriate for the second instance of this court to find that Double’s
passive implementation of the court’s order constituted obstruction of
evidence. After the patentee has tried his best to provide evidence, the
second-instance judgment, based on the claims of Synthes and the evidence
provided, determined that the profits of Double Company due to infringement
exceeded RMB 20millionyuan, which was appropriate.

Double
Company’s corresponding retrial application grounds cannot be established, and
this court does not support it.

4. Whether
there was an error in the judgment of the second instance in which Double
Company stopped the production and sales of the accused main nail.

The
first-instance court ordered Double to immediately stop manufacturing, selling,
and promising to sell products that infringed the patent involved in the case
of Sentis, and did not separate the main nail from the accused infringing
product. Therefore, the second-instance judgment upheld the judgment, which was
not inappropriate. . Double Company’s corresponding retrial application grounds
cannot be established, and this court does not support it.

In
conclusion, the retrial application of Double Medical Technology Co., Ltd. is
rejected.

Comments

Judging from
this retrial request and results, it is speculated that Double Medical should
hope to pass the appeal, the main purpose is to try to reduce the amount of
compensation, and to separate the alleged infringing product from the parts
protected by the patent claim, so as to achieve the purpose of reducing the
amount of compensation.

It is not
difficult to find that Chinese enterprises in the medical device industry
generally have low innovation ability and imitation. Some medical device enterprises still need to improve their
awareness of respecting intellectual property rights. However, some medical device companies do not think so,
but feel that their patents are very valuable.

In this
regard, Double Medical also gave a good example by taking the initiative to
file a lawsuit.

Double Medical

Double
Medical was established in Xiamen in 2004, mainly engaged in the research and
development, production and sales of high-value medical consumables. The main
products are orthopedic trauma implant consumables, spinal implant consumables,
neurosurgery implant consumables and minimally invasive surgical consumables.

The company’s
main business is the production, research and development and sales of
high-value medical consumables. The main products include orthopedic trauma
implant consumables, spinal implant consumables, neurosurgery implant
consumables and minimally invasive surgical consumables. Traumatic implant
consumables products contribute to the main operating income. Traumatic implant
consumable products are mainly used for pathological and traumatic fracture
repair or orthopedic needs of adults and children in the upper, lower limbs,
pelvis, hip, hand and ankle. etc. surgical treatment. Products include
intramedullary nails, metal bone plates, bone pins, screws and other internal
fixation systems and external fixation brackets.

Sales of
spinal implant consumables have grown rapidly. Spinal implant consumable
products are mainly used for the surgical treatment of various spinal diseases
caused by trauma, degeneration, deformity, or other pathological reasons. The
products include pedicle screw system, spinal bone plate system, interbody cage
series, etc. Neurosurgery implant consumables are mainly used for skull bone
fragment fixation or defect repair, maxillofacial fracture or orthopedic
osteotomy and other surgical treatments. Products include maxillofacial
titanium mesh, maxillofacial bone plate, skull titanium mesh, and skull bone
Internal fixation systems such as plates and screws.