American Rohm and Haas Company (Rohm and Haas Company), the largest fine chemical company in the U.S. as well as one of the largest suppliers of acrylate products in the world, requested a temporary restraining order against the products from two Shaanxi private enterprises before its lawsuit in a patent infringement. However, as the patents invalid declared, Rohm and Haas Company, in return, was sued by the Shaanxi enterprise, which claimed for 49 million yuan in compansation for its loss. Recently, the case is heard by Shaanxi higher people’s court.
Domestic private enterprises: to break the monopoly
With cold storage, flowers from Yunnan can still bloom in the north after a month and apples from the north could still taste sweet after a year. All along, cold storage has been the main technique in vegetables and fruits preservation but it is quite expensive. In recent years, a new plant preservative—1-MCP was discovered. This new preservative is better at preventing fresh fruits,vegetables and flowers from decaying, and is non-toxic. The United States as well as the developed countries in Europe refers it as a revolution in fruit and vigetable fresh-keeping technology.
Rohm and Haas Company is a multinational corporation specialized in the research, development as well as manufacture of fine chemicals and special materials. On June 30, 1999, its subsidiary company filed several patent applications on the technology of fruit and vegetable preservation in China, which were granted on March 29, 2006. Since then, the Rohm and Haas Company began to sell 1-MCP preservative products in China in the trademark of “Congmingxian”, which occupied the vast majority of the market share.
In 2006, Liang Xiqin, manager of the Shaanxi Liquan Xiqin Chemical Industry Co., Ltd (Liquan XiQin company) and his son, manager of the Xianyang Xiqin Biotechnology Co., Ltd. (Xianyang Xiqin company) invented a new technique to manufacture 1-MCP. Liang XiQin and Yan Wei, Professor of Xi’an Jiaotong University, then filed an invention application on April, 2006, which was granted by the State Intellectual Property Office in July 2007. The fruit and vegetable preservative made with the new technique possesses the characteristics of low-cost, ect. Meanwhile, the technique won the second prize of Science and Technology Award of Shaanxi province, became a major project in Shaanxi “13115” scientific and technological innovation projects, and got 4.5 million yuan support from the government.
The Rohm and Haas Company: files patent infringement case
During the research and patent pending of Liquan XiQin company, Rohm and Haas Company has been in contact with it for the purpose of cooperation or acquisition, but was refused due to its harsh requirement. On October 10, 2008, Rohm and Haas Company filed a lawsuit against the two companies in the Xi’an Intermediate People’s Court on the ground of invention patent infringement, and asked for compensation of 500, 000 yuan and so on. It claims that the 1—MCP fruit and vegetable preservatives, which the two companies offered for sale, had constituted patent infringement, and requested a preliminary injunction against the products.
On September 27, 2008, the Xi’an Intermediate People’s Court made a preliminary injunction against the two XiQin companies, banning Liquan Xiqin and Xianyang XiQin companies from selling products, which infringed the 1-MCP invention patents of Rohm and Haas Company.
Since then, Liang Xiqin as well as his two companies got into a hard time, whereas Rohm and Haas Company continued to dominate the Chinese market. According to its 2009 annual report, its sales in China reached one billion yuan.
However, in 2010, a dramatic change occurred in the case. On July 26, 2010, the Patent Reexamination Board of the State Intellectual Property Office first announced the Rohm and Haas Company’s patents on 1-MCP partially invalid, and then all.
The two Xiqin companies: to fight back
With the patents on 1-MCP announced invalid, the Rohm and Haas Company required the court to lift the ban on the two Xinqin comapnies. Soon, the Xi’an Intermediate People’s Court lifted the injunction which had lasted for 847 days.
On December 2011, the two XiQin companies sued the Rohm and Haas Company in the Xi’an Intermediate People’s Court on the ground of the improper preliminary injunction and claimed for over 49 million yuan in compansation for its loss.
According to patent law, that patents declared invalid did not exist from the beginning the Xi’an Intermediate People’s Court ruled that the preliminary injunction indeed caused losses to the two XiQin companied and ordered that the Rohm and Haas Company should compensate for the damage.
On February 25, 2013, Xi’an Intermediate People’s Court rendered the first-instance judgment that the Rohm and Haas Company should compensate the two Xiqin company for 4.5 million yuan in total.
Dissatisfied, both parties made an appeal respectively to Shaanxi High People’s Court. The two XiQin companies argued that the amount was far less than 49 million yuan that they expected. The Rohm and Haas Company asked a revocation of the first-instance judgment.
On June 24, Shaanxi High People’s Court heard the case. We will follow the development of the case.
(Source www.cipnews.com.cn)
