On August 23rd, 2011, the patent infringement case of Tensar International Ltd. and Tensar Geosynthetics (China) Co. Ltd. (collectively, Tensar) v. Chengdu Peak Earthwork Materials Co., Ltd. (Chengdu Pike) was concluded in Beijing No. 2 Intermediate People’s Court. The first-instance enjoined Chengdu Pike from infringement of Patent No. ZL03154700.1 for “Geogrid and the Method of Manufacturing Same,” and awarded damages in an amount of 300,000 yuan to the plaintiff. The decision marks the initial success of Tensar in protecting its TriAx Geogrid in China.

About TriAx Geogrid
Reportedly, Tensar is a worldwide leader in the manufacture of geosynthetic materials and the provision of soil reinforcement and ground stabilization solutions. Established in 1952, through over 50 years of research and development (R&D), production and sale, it has won extremely high reputation in the civil engineering industry in the world, thanks to its high-quality products and technical support. Following the geonet, Dr. Brian Mercer invented the geogrid—a milestone in the history of Tensar. Up to date, billions of square meters of geosynthentic materials of Tensar have been applied in roadway, railway, water conservancy, water transportation and municipal engineering. They cover such areas as urban road expansion, soft roadbed treatment, steep slope maintenance and greening, embankments, retaining walls, asphalt reinforced pavements, and urban dump grounds, as well as large parking lots, wharfs and ports. The increasing international demand and the R&D of applied technologies have led to very good social and economic benefits for Tensar.
On June 23rd, 2006, Tensar Corporation was formed with the successful merger of Tensar Group Limited in the United Kingdom and Tensar Earth Technologies in the United States. The new company successfully integrated and optimized the global market resources. Now, it has grown to be one of the largest manufacturers of geonets and geogrids, and the largest multinational provider of consultation and design services for soil reinforcement. Through research, improvement and practice by cooperating with internationally well-known universities and colleges and research and design institutions in past scores of years, Tensar has passed the certifications of such global certifying agencies as the British Board of Agrément (BBA), the Deutsches Institut für Bautechnik (DIBt), and Geotechnical Engineering Office in Hong Kong.
In recent 30 years, Tensar has continuously studied and improved geogrids. With its technical know-how and skills, it invented the TriAx Geogrid by re-engineering the fundamental structure of geogrids. In 2007, the launching of the product brought a technical transformation to the geogrid industry. As the first-generation triangular geogrid patent of Tensar, it stood out among geogrid products, roadway reinforcement solutions and other similar areas for its excellent performance. Widely applied in roadway, railway, foundation and other infrastructure construction, it has been named the fourth-generation material after steel, cement and wood. The trafficking trials at the University of Nottingham and the larger-scale trials at the Transport Research Laboratory of the United Kingdom, which included comprehensive and strict construction damage analyses, foundation bearing analyses and site trials at various locations, proved that the TriAx Geogrid performs much better than the traditional biaxial geogrid.
Tensar did not access the Chinese market until the early 1990s. Through lectures and seminars, it promoted the application of geosynthetic materials, and developed and grew the market. The incorporation of Tensar Geosynthetics (China) Co. Ltd. in January 2003 was to land its fourth manufacturing base in China after the first three in the United Kingdom, the United States and Japan (licensed manufacturer). Now Tensar China, which employs more than 100 employees, takes advantage of its applied research and leading technologies, to offer full-range technical consultations and solutions. In 2009 and 2010, consecutively, the TriAx Geogrid was awarded the Innovative Product Award by the International Geosynthetics Society China Commission and China Geosynthetics Engineering Society for its pioneering triangular structure design.

Multi-dimensional protection
Since 2009, Tensar has found widespread infringement of the TriAx Geogrid in Beijing, Hebei, Shandong, Sichuan, Jiangsu, Anhui and Chongqing, etc.. Even some unauthorized manufacturers and sellers go to bid for major national projects of railway, roadway or others. They seriously infringe the Patent No. ZL03154700.1, damage the goodwill of the patentee, and led to huge economic losses to the patentee and related stakeholders.
In early 2010, Tensar engaged Unitalen Law Office in Beijing to issue attorney’s letters to prospective infringers with regard to the TriAx Geogrid patent in China. The act, however, failed to curb the wide spread infringement, due to the huge profit margin and the low entrance barrier of the TriAx Geogrid products. To protect its legal interests and reputation, Tensar began to investigate and collect infringement-related evidence from the above regions, and then had such evidence notarized. After the primary work was done, it initiated lawsuits in Beijing and Shandong, requesting the courts to order the infringers to immediately cease their infringement and pay damages.
Our journalist discovered during the interview and by reading the attorney’s attorney letters to prospective infringers and by filling lawsuits against patent infringement, Tensar has tried to protect its patent multi-dimensionally.
“Tensar has invested many years to develop the TriAx Geogrid. It is a major breakthrough in the field of civil engineering materials, following the first-generation uniaxial geogrid and the second-generation biaxial geogrid. Some domestic manufacturers do not innovate their products, but take advantage of the utility model patent which does not require substantive examination. They have applied for many similar or equivalent utility model patents, and their applications are easily granted. To protect its legal interests, Tensar filed a number of invalidation requests regarding those utility model patents. In the invalidation of the utility model Patent No. ZL200920042404.1 of Yixing Huatai Civil Engineering Materials, which case has been concluded, it won the support the Patent Reexamination Board and the utility model patent was declared null and void,” David Gong, General Manager of Tensar Geosynthetics (China) Co. Ltd. told China IP.

Points of dispute at the court
According to Li Hongjiang of Unitalen Law Office, the attorney of Tensar, mainly three points were raised during the court proceedings.
1. Whether Chengdu Pike was the manufacturer of the infringing product. Regarding the allegation that it was the manufacturer of the infringing product, Chengdu Pike contested that the alleged infringing product was purchased from a third party, Junhuan Industrial and Trade Co., Ltd. in Xintai City. But, in terms of preponderance of evidence, the evidence of Tensar held much more weight than the counterevidence of Chengdu Pike. Therefore, the court determined that Chengdu Pike was the manufacturer of the infringing product.
2. Whether the infringed product was a new product. A “new product” is defined as a product that is manufactured for the first time in a nation, which is distinctively different from prior products of the same category before the patent application date of such new product, with respects to its composition, structure, quality, performance or function. Before filing the action, Tensar commissioned an assessor to determine whether the TriAx Geogrid was a new product. The assessment showed that the TriAx Geogrid was new, because no identical or similar products had been reported before the patent application date. The result was affirmed by the court. Article 61 of the Patent Law of the People’s Republic of China provides that “Where a patent infringement dispute involves an invention patent on the method of manufacturing a new product, the entity or individual that manufactures the identical product shall prove that such identical product is manufactured using a method different from the patented method.” In the case, after the patented product was affirmed, Chengdu Pike failed to produce evidence that the alleged infringing product was manufactured using a method different from the patented method.
3. Whether the alleged infringing product falls into the protected scope of the patent. By comparing the alleged infringing product with the patent claims, the court finally determined that the alleged infringing product that Chengdu Pike manufactured and sold falls entirely into the protection scope of the patent, constituting identical infringement; and that the method that Chengdu Pike used to manufacturing the alleged infringing product falls into the protected scope of the patented method.
Moreover, following the infringement action filed by Tensar against Baoyuan Engineering Elastomers and Plastics Co., Ltd. in Hebei Province, the defendant Baoyuan Engineering Elastomers and Plastics Co., Ltd. filed a jurisdictional challenge to the court and a request to thePatent Reexamination Board of the State Intellectual Property Office to invalidate the TriAx Geogrid patent. On August 31st, the Patent Reexamination Board affirmed the argument of the patentee Tensar by deciding to maintain all the patent claims in the infringement action.
At trial, the court found that the invention patent was valid and enforceable, and protected under the laws of the People’s Republic of China. According to Article 11 of the Patent Law of the People’s Republic of China, “...no entity or individual may, without the authorization of the patentee, exploit the patent, that is, to make, use, offer to sell, sell or import the patented product... for production or business purposes.” Tensar, which is the existing patentee of the Patent No. Z L03154700.1 “Geogrid and the Method of Manufacturing Geogrid,” may enjoy the legal patent right under the protection of the laws of China.
Considering the duration of the infringing act, the price of the infringing product and the price of the patented product, the court decided at its discretion that Chengdu Pike shall pay 300,000 yuan in damages for the economic losses sustained by Tensar.

Afterthoughts
“After being engaged, we set up a team of lawyers specializing in patent protection. We acted in an all-round way, to investigate infringement-related evidence, conduct a professional search for related patent invalidations, and initiate the patent infringement action,” Li Hongjiang told China IP. “We believe that the multi-dimensional actions will help protect the legal interests of the patentee, and curb the spread of the rampant infringing acts.” He also kindly reminded that dealers of civil engineering materials should never sell infringing products; or will incur liabilities in law.
“In the existing patent infringement litigation system of China, the plaintiff has a heavier burden of proof. It is essential to develop a chain of evidence which reflects the constitution o f infringement by the acts of the alleged infringer. The case at hand has its own characteristics for the alleged infringing product was not a toy, home appliance or other consumer product, but the triaxial geogrid in the geosynthetic field. We encountered a great number of difficulties in investigating, collecting and notarizing infringement-related evidence,” said Li Hongjiang.
In addition, David Gong told our journalist frankly, “Tensar pays equal attention to both technology and the development of markets, especially the market of China. When we are developing the Chinese market, however, we meet with many practical problems and perplexities. First, there is a growing phenomenon of infringement in certain sectors in China. The quantity of infringements and their spreading speed are astonishing. For instance, more than ten companies announce publicly that they CAN manufacture or sell our TriAx Geogrid. Second, some companies take advantage of the different patent application system of China. They copy the technologies of others in large quantities, and use the copied technologies to apply for patents. When the applications are granted, they bring the suspected infringing products into the Chinese market. These suspected infringing products will not only lead to quality hazards in the works using them, but, in the longer term, will reduce the innovating capacity of domestic companies at large, if the infringers are not strictly punished. Third, it is very difficult for a patentee to protect its right, as the process is time consuming and the evidence is hard to collect. Fourth, compared with the profit going to the infringer, a much less amount will be awarded to the patentee who wins the case. The amount may not even cover up the losses of the patentee. This makes the infringer even more reckless.”
“If their patents are not effectively protected, foreign companies that are technically capable will not introduce new products, or add investments, to China. Therefore, we recommend that the court should help a patentee to preserve evidence, and impose heavier punishments to increase the cost of the infringer. We also wish that related authorities could strictly follow the procedures of patent application, examination and approval, and stop patenting technologies that are copied from others,” said David Gong.

Mature IP management
During the interview with David Gong, our journalist learnt that Tensar attaches much importance to the R&D and protection of intellectual property. In 1970s, it filed its first patent application and the application was granted. Now, it owned over 400 high-quality granted patents, including the Uniaxial Geogrid, the Biaxial Geogrid and the TriAx Geogrid in more than 40 countries and regions.
“As the world’s leading manufacturer and supplier in soil reinforcement and ground stabilization, Tensar has the duty to lead the research and development of geogrids. With years of expertise and experience, we pay much attention to R&D and innovation. We have a special R&D team, and over 3% of the annual income goes into R&D, mostly to develop and apply new products or products with a high added value. The TriAx Geogrid alone cost us 6 years and the joint efforts of almost 100 experts,” said David Gong.
Moreover, Tensar has developed special ways to manage its intellectual property. First, it set up Tensar Technologies Limited to manage its intellectual property-related matters globally, with respects to intellectual property rights application, registration and protection, and the formulation and operation of intellectual property strategies. Second, it emphasizes intellectual property protection in internal management by establishing a strict system of confidentiality and awards and by motivating technical staff in R&D. Third, it has a legal team with lawyers from the United Kingdom, the United States and China.
“We have welcomed our first success in China in the Tensar v. Chengdu Pike for patent infringement case. It helps solidify Tensar’s intellectual property strategy. We are satisfied with the judgment, though the compensation, short of our expectation, cannot fully make good our huge losses. Despite perplexities in our protection work, we remain confident with our business development in China. As China is increasing its protection of intellectual property, it will definitely protect our longer term development. With the winning of the current case, we are more confident to introduce more new technologies to China,” commented David Gong.

(Translated by Ren Qingtao)