Since 1999, Chint and Schneider have been suing each other over patent infringements, which have become a common method to kick out competitors. Rumor says that Schneider Electric kept trying to acquire Chint and filed repeated lawsuits as a means to pressure or retaliate against Chint. Eventually, Chint decided to fight back, initiating a lawsuit in East China's Zhejiang Province, asserting that Schneider and its distributor, Star Electronic Equipment Co. Ltd. of Zhejiang, had infringed Chint's patent. The case is really a milestone of patent enforcement in China.
In 2009, a patent infringement suit was settled between Schneider Electric Low-Voltage (Tianjin) Co., Ltd (Schneider) and Chint Group Corp (Chint) represented by the senior consultant of Genuineways. For the worldwide settlement, Schneider agreed to pay 157 million RMB (about 23 million USD) to Chint to finish the lawsuit. According to the first instance court decision, Schneider is announced to pay 330 million to Chint. The litigation fees of the first instance and the second instance reached up to 1.71 million separately. The case is undoubtedly taking an important position in Chinese patent field for the huge amount of compensation, the long time cost and the broad area of the lawsuit. We would be very glad to introduce the case as follows:
【First Instance】
Chint arose a lawsuit against Schneider for patent infringement of its patent under the No. of 97248479.5—Decision of Wen min san chu zi 135(2006)
Complaint: Chint Group Corp (Chint)
Defendant 1: Schneider Electric Low-Voltage (Tianjin) Co., Ltd. (Schneider)
Defendant 2: Leqing Branch of Star Electric Equipment Co. Ltd.
In July 2006, the senior consultant Zhao Guohong of Genuineways (primary senior consultant of Beijing Jinxida consultant Ltd), in the name of Chint, initiated a lawsuit against Schneider (Tianjing) and its distributor Leqing Branch of Star Electric Equipment Co. Ltd. for their producing or marketing of Miniature Circuit Breaker with the model of C65A、C65H、C65L、C65N、EA9AN, from August 2, 2004 to July 31, 2006. Chint asserted that Schneider has infringed its utility model patent ZL97248479.5, requesting Schneider to cease infringement immediately and compensate the loss of 500,000 RMB.
During the Evidence Preservation process of the case, Chint found that the profit of Schneider for the alleged infringement is far more than the claimed 500,000 RMB. Therefore, Chint applied for altering compensation up to 330 million.
The case is one of the biggest patent enforcement litigation until the end of the year of 2009.
【Invalidation process】
As a kind of counterattack, Schneider submitted an invalidation request before the Patent Reexamination Board. The patent was maintained valid against Schneider’s request
Invalidation requestor：Schneider Electric Low-Voltage (Tianjin) Co., Ltd. (Schneider)
Patentee：Chint Group Corp (Chint)
Schneider sought to invalidate Chint's patent in a separate proceeding with the State Intellectual Property Office. Schneider argued that Chint's patent was invalid because the technology had been publicly disclosed both in China and abroad before the patent was granted. Therefore, in August 21, 2006, Schneider filed an invalidation request to Patent Reexamination Board against Chint’s relative patent. Following with the request Schneider has submitted 6 sets of evidences in total to certify that claims 1-4 of the relative patent should be invalided.
As the authorized agent of the Patentee, Ms. Zhao Guohong suggested the patentee to initially amend the claims by combining the original claims 1 and 2 into a new claim 1. Thus the new claims 1-3 replaced the original claims 1-4, which made the new claims more stable.
In April 25, 2007, the Patent Reexamination Board made a decision maintaining the patent right on the basis of the new claims submitted in February 17, 2007.
The brief points of the decision are:
1. When the publish date of a publication is in doubt, the provider of the publication has the responsibility to put forward further proof to certify the publish date.
2. If the enclosures of a contract are apparently inconsistent with the contract itself, no determination should be made on the basis of the enclosures.
【First Instance Decision】
Chint win the first instance lawsuit against Schneider
In September 29, 2009, Wenzhou Intermediate People's Court announced that Schneider and its authorized distributor Star Electric Equipment Co. Ltd. in Zhejiang, were guilty of patent infringement. Under the ruling, Schneider shall cease infringement and make a RMB 330 million compensation to Chint Group. It was the largest compensation ever in a domestic intellectual property dispute.
【The administrative litigation】
Chint win in the Administrative litigation for patent invalidation
Complaint: Schneider Electric Low-Voltage (Tianjin) Co., Ltd. (Schneider)
Defendant: The patent reexamination board of SIPO
The third person: Chint Group Corp (Chint)
In July18, 2007, Schneider initiated an administrative litigation to Beijing No.1 Intermediate People’s Court for not being satisfied with the No. 9744 decision of the Patent Reexamination Board of SIPO. Our senior consultant Ms. Zhao Guohong was named as the representation of Chint Group for this case.
In December 4, 2008, Beijing No. 1 Intermediate People’s Court announced to maintain the invalidation decision of No. 9744.
【Final Decision of the Administrative Litigation】
Chint win in the final decision of the Administrative Decision
In February 3, 2009, Schneider initiated an appeal to Beijing Higher People’s Court for being not satisfied with the Beijing No. 1 Intermediate People’s Court’s decision. The senior consultant of Genuineways, Ms. Zhao Guohong was the representation of the third person Chint Group.
In February 26, 2009, Beijing Higher People’s Court announced in the decision of Gao xing zhong zi 116 (2009) to reject the appeal and maintain the original decision.
【Global Compromise】
Global compromise of Chint v. Schneider case
Schneider appealed to Zhejiang Higher People’s Court for not being satisfied with the decision of Wen min san chu zi 135(2006). In April 15, 2009, Zhejiang Higher People’s Court held a compromise process. Wherein the following compromise is reached between Schneider and Chint:
1. Within 15 days after the compromise taking into effect, Schneider shall pay 157.5 million RMB to Chint Group. Otherwise, Chint may ask for carrying out the decision of Wen min san chu zi 135(2006), in which 330 million RMB shall be paid by Schneider to Chint;
2. The fees for the first instance, 1.7 million RMB, shall be borne by Schneider. The fees for the second instance shall be split between Schneider and Chint after 50% discounted.
Except for the settlement of the right case，the two rivals also reached a global compromise, but details were not released. Finally, the case between Chint and Schneider ended after 3 years arguments through both civil and administration routes.
