Top Ten Patent Re-examination and Invalidity Cases of 2018
Patent re-examination and invalidation requests, as administrative procedures for patent authorization and confirmation of rights, are indispensable components of China's intellectual property system. They have consistently played a significant role in achieving high-quality examination, conveying positive information to society to protect innovative entities and promote scientific and technological progress.
The top ten patent re-examination and invalidation cases of the year were released during the "4.26" National Intellectual Property Administration Open Day event. These cases not only attracted significant public attention and involved substantial economic interests, having a major impact on relevant industries or sectors, but also provided in-depth interpretations from multiple perspectives of the legal connotations and enforcement standards of patent laws and regulations in re-examination and invalidation reviews. The selection and release of the top ten annual patent re-examination and invalidation cases help promote the patent protection system, raise the awareness of patent protection among innovative entities and the general public, and improve their ability to utilize the patent system, thereby achieving the protection and encouragement of innovation. This newspaper specially publishes the top ten patent re-examination and invalidation cases of 2018 in a special section for readers.
Apple-Qualcomm series invention patent invalidation request case
【Case Introduction】
Since 2018, Apple has filed invalidation requests for more than 40 patents held by Qualcomm. This series of cases involves three of these patents.
Patent No. ZL201310491586.1 relates to micro-innovation technology in graphical user interfaces (GUI). The panel ultimately decided to uphold the validity of the patent. Patent No. ZL201480013124.1 relates to multi-layer metal interconnect structures in integrated circuits at deep sub-micron process nodes. It is the only case in the series of invalidation requests that involves the field of integrated circuit manufacturing. The original Patent Re-examination Board upheld the validity of the patent after review. Patent No. ZL200880004304.8 relates to devices and methods for locating, tracking, and retrieving wireless communication equipment. The original Patent Re-examination Board declared the patent invalid after review.
【Typical Significance】
The examination decision of Patent No. ZL201310491586.1 analyzed the separate comparison principle for novelty judgment. It has typical reference significance in returning to the technical essence of GUI, accurately determining the scope of protection of the claims, and judging novelty and inventiveness in the GUI field. Based on the position of technicians in this field, the examination decision of Patent No. ZL201480013124.1 accurately determined the scope of protection of the claims, laying the foundation for drawing correct conclusions in subsequent infringement proceedings. The examination decision of Patent No. ZL200880004304.8 accurately grasped the technical essence, analyzed the relationship between the technical solution and the prior art, and comprehensively and objectively evaluated the prior art to judge the presence or absence of technical inspiration, providing guidance for the judgment of inventiveness.
Invalidation request case for the utility model patent "An integrated selfie device"
【Case Introduction】
Applicants Shenzhen Yunmei Shijie Technology Co., Ltd. and Dongguan Pinyao Hardware Co., Ltd. filed separate invalidation requests for the utility model patent ZL201420522729.0 held by Yuandesheng Plastics and Electronics (Shenzhen) Co., Ltd. (hereinafter referred to as Yuandesheng Company).
This patent involves a selfie stick that does not require temporary assembly during use and does not require extra space for folding and storage. This patent won the Gold Award of the 20th China Patent Award and generated hundreds of millions of sales for Yuandesheng Company. At the same time, a large number of counterfeit and infringing products appeared in the selfie stick market, and Yuandesheng launched large-scale litigation and rights protection actions nationwide. Currently, multiple applicants have filed a total of 26 invalidation requests for this patent, attracting widespread attention from all sectors of society.
The original Patent Re-examination Board made a review decision on the invalidation request No. 35919, maintaining the validity of the patent based on claims 2-13.
【Typical Significance】
This case provides a guiding review approach for determining the public disclosure date of online evidence. It is also a typical case of innovative entities using the patent system for rights protection, reflecting the important role and value of patent administrative confirmation of rights procedures in protecting the legitimate rights and interests of patent holders.
Another typical significance of this case is that it inspires innovative entities to pay attention to balancing the relationship between the scope of patent protection and technical contribution when writing patent application documents, and to implement layered protection of patent rights, making the scope of protection of claims clear and reasonable.
Invalidation request case for the invention patent "Condensed imidazole-based imidazole as an antiviral compound"
【Case Introduction】
Applicant Médecins Sans Frontières (MSF) filed an invalidation request for the invention patent ZL201280004097.2 held by Gilead Sciences, Inc. (hereinafter referred to as Gilead). This patent relates to a core component of a pan-genotypic oral direct-acting antiviral drug combination regimen for the treatment of hepatitis C, with the drug name "Vemlidy".
"Vemlidy", involved in this case, and another drug for treating hepatitis C, "Sofosbuvir", are both star drugs successfully developed by Gilead in the field of antiviral drugs. The pan-genotypic combination regimen formed by the two was first approved in the UK in 2016 and was approved for marketing in China in May 2018. The invalidation requestor, Médecins Sans Frontières (MSF), is a global independent non-profit organization whose work includes supporting or personally submitting invalidation requests for certain drug patents. This case is its first challenge to a pharmaceutical giant's drug patent in China.
The original Patent Re-examination Board established a five-member panel to conduct an open hearing of this case and made an invalidation request decision No. 38394, upholding the validity of the patent.
【Typical Significance】
This case interprets how to grasp the examination standards for evaluating the inventiveness of compounds. The decision analyzes the selection of the closest prior art, the determination of the core structure of the compound, the judgment of technical inspiration, and the comparative analysis of technical effects, addressing many focal issues related to evaluating the inventiveness of compounds, and has a demonstrative effect on the application of relevant field examination standards.
Invalidation request case for the design patent "Computer with graphical user interface"
【Case Introduction】
Applicant Beijing Jiangmin Xinke Technology Co., Ltd. (hereinafter referred to as Jiangmin Company) filed an invalidation request for the design patent ZL201430324283.6 held by Qihoo 360 Technology Co., Ltd. and Qizhi Software (Beijing) Co., Ltd. (hereinafter referred to as 360 Company). This patent involves a computer with a graphical user interface (GUI).
360 Company believes that its GUI design patent has been infringed and sued Jiangmin Company to the Beijing Intellectual Property Court. This case is the first GUI design patent infringement case in China since 2014, when products involving GUI were included in the protection of design patents. Jiangmin Company then filed an invalidation request for the patent in question. As the first shot fired in the protection of GUI patents, the invalidation and infringement disputes of the patent in question have attracted widespread public attention.
The original Patent Re-examination Board made an invalidation decision No. 35196, declaring the patent completely invalid.
【Typical Significance】
This case provides a detailed analysis and determination of the scope of protection and comparative judgment for GUI appearance design, and also has important reference value for the understanding and application of relevant legal issues such as the novelty grace period. The enlightenment of this case for innovative entities is that, under the current legal framework of China, when submitting applications for appearance design patents in the GUI field, the GUI design should be highlighted, the hardware design as a carrier should be weakened, and the use function, human-computer interaction, dynamic design, etc. of the GUI design should be clearly shown, so as to achieve the maximum protection of the original intention of the GUI design.
Invalidation Request Case for the Invention Patent of "Electric Unicycle"
【Case Introduction】
The requesters, Lian Fangfang, Ninebot (Beijing) Tech Co., Ltd. (hereinafter referred to as Ninebot), and An Qiu锦, respectively filed invalidation requests for the invention patent ZL201110089122.9 of the patentee Shenzhen Tianlun Technology Co., Ltd. This patent involves the basic structure of an electric unicycle and is a fundamental patent in the field of electric balance vehicles.
As a new type of transportation tool, electric balance vehicles have experienced rapid development, and patent invalidity and infringement disputes have also emerged. Segway, Shane Chen, Hangzhou Qike Intelligent Technology Co., Ltd., and other industry pioneers holding patents have initiated "337" investigations and patent infringement lawsuits in the United States. The applicant of this patent, Chen He, is a related party of Shane Chen, and Ninebot, one of the requesters for invalidation, has a merger relationship with Segway. This patent has undergone 8 invalidation requests, and related patent infringement disputes involve many domestic electric balance vehicle manufacturers, attracting widespread social attention.
After review, the Patent Reexamination Board issued invalidation decision No. 36591, declaring part of the patent invalid.
【Typical Significance】
This case gives a clear explanation of the meaning of "first filing a patent application in China" in Article 29 of the Patent Law concerning domestic priority, and interprets the technical solution comparison standard for judging whether priority is established, which has guiding significance for the determination of domestic priority.
Invalidation Request Case for the Invention Patent of "Eye Drops"
【Case Introduction】
The requester, Jiangsu Hengrui Medicine Co., Ltd., filed an invalidation request for the invention patent ZL01815617.7 of the patentees Santen Pharmaceutical Co., Ltd. and Asahi Glass Co., Ltd.
This patent is closely related to the product "Tepros" eye drops developed and marketed by the patentee. "Tepros" has been launched in more than 60 countries and regions, and entered the Chinese market at the end of 2015. It is Santen Pharmaceutical's main product for treating glaucoma in ophthalmic drugs and has broad market prospects. The focus of this case is whether the features in the claims are new uses based on the new performance of the product, or merely a description of the effects of the inherent properties of the known product.
After review, the Patent Reexamination Board issued invalidation decision No. 31135, declaring the patent entirely invalid. The first-instance judgment of the Beijing Intellectual Property Court revoked the invalidation decision; however, the Beijing Higher People's Court supported the view of the invalidation decision and revoked the first-instance judgment.
【Typical Significance】
This case is highly typical in the pharmaceutical field in terms of how to interpret the function and use features of method claims. By carefully examining the facts of the case, the decision interprets how to consider the limiting effect of the effect and function features in method claims and their relationship with the subject matter of the claims, which has guiding significance for unifying the trial standards of such cases. At the same time, this case can inspire innovative entities to think about the definition of the scope of protection of claims and to attach importance to the drafting of patent application documents.
Invalidation Request Case for the Utility Model Patent of "Charger Rental Machine"
【Case Introduction】
The requesters, Shenzhen Lai Dian Technology Co., Ltd. and Shenzhen Street Dian Technology Co., Ltd., respectively filed invalidation requests for the utility model patent ZL201320826793.3 of the patentee Shenzhen Tote Electronic Co., Ltd. (hereinafter referred to as Tote Electronics). This patent involves the rental of mobile power supplies, i.e., shared power banks.
Shared power banks are a sub-sector that emerged during the "sharing" boom and were selected as one of the "Top Ten New Words in Chinese Media in 2017." After a sharp increase in 2017, the shared power bank industry experienced reshuffling the following year, and numerous patent invalidity and infringement disputes have attracted widespread social attention. Tote Electronics exclusively licensed the patent involved in this case to Shenzhen Zudidian Intelligent Technology in 2013. The independent claims of this patent involve the basic architecture of shared power banks, so the existence of this patent right will have a great impact on the subsequent market development.
After review, the Patent Reexamination Board issued invalidation decision No. 36684, declaring the patent entirely invalid.
【Typical Significance】
The typical significance of this case lies in providing a reference for how to accurately grasp the technical inspiration in the closest art in determining the inventiveness of utility model patents.
When the closest prior art discloses the overall architecture of the patent claims except for the subject matter name, the technical fields of the two are determined to be similar technical fields instead of being generalized as the same technical field. The prior art in the similar technical field requires clear technical inspiration to evaluate the inventiveness of the utility model patent.
Invalidation Request Case for the Invention Patent of "Glucoamylase Variant with Altered Properties"
【Case Introduction】
The requester, Yichang Dongyang Pharmaceutical Co., Ltd., filed an invalidation request for the invention patent ZL200780037776.9 of the patentee, Danisco US Inc. This patent involves a series of glycoside hydrolase variants obtained by site-directed mutagenesis technology based on known enzymes.
Glucoamylase (commonly known as glucoamylase) is the most widely used and consumed enzyme preparation, widely used in the food and condiment manufacturing and processing industries. Modifying natural enzymes using biotechnology to obtain enzymes with superior performance based on existing glucoamylases is one of the main research hotspots in the glucoamylase field.
During the trial of this case, the main points of contention focused on the judgment of the authenticity and probative force of experimental data, the relationship between the inventiveness of the invention and the experimental data recorded in the specification, and the reasonable grasp of the scope of protection of biological sequence claims, which are hot and difficult issues in the patent examination of biotechnology that have attracted much social attention.
The Patent Reexamination Board established a five-member collegial panel to conduct an open hearing of this case and issued invalidation decision No. 38452. Based on the amended claims submitted by the patentee during the invalidation request stage, the patent was maintained as valid.
【Typical Significance】
This case explains the general requirements for effect experimental data in the field of biotechnology and provides guidance on how to judge the inventiveness of enzyme variants with specific mutation methods. It also provides a reference for the examination ideas of invalidation reasons with multiple reasons and multiple pieces of evidence.
Invalidation Request Case for the Utility Model Patent of "Chemical Vapor Deposition Device"
【Case Introduction】
The petitioner, Weiyi Technology Precision Instruments International Trade (Shanghai) Co., Ltd. (hereinafter referred to as "Weiyi"), filed a request for invalidation of the utility model patent right ZL201220056049.5 held by the patentee, Zhongwei Semiconductor Equipment (Shanghai) Co., Ltd. (hereinafter referred to as "Zhongwei").
In April 2017, Weiyi filed a patent lawsuit against SGL, an equipment supplier to Zhongwei, in the United States District Court for the Eastern District of New York, seeking to prohibit SGL from supplying goods to Zhongwei. Zhongwei then sued Weiyi in the Fujian Provincial High Court, alleging infringement of the patent at issue. Weiyi subsequently filed a request for invalidation of the patent in this case. The MOCVD device involved in this patent is a core equipment for producing semiconductor devices such as light-emitting diode (LED) chips.
After review, the original Patent Re-examination Board issued a review decision, maintaining the validity of the patent based on the amended claims submitted by the patentee during the invalidation request phase. After the decision was made, Zhongwei obtained an injunction against Weiyi in the Fujian Provincial High Court. Subsequently, after a series of negotiations, the two parties reached a settlement.
【Typical Significance】
This case illustrates the examination concept of accurately grasping the technical essence in the evaluation of inventiveness, and the important role of the analysis of inventive concepts in the comparison of technical features and the judgment of technical implications. This case also demonstrates the important role of patents as effective and powerful weapons in corporate competition, and also reflects the importance that domestic enterprises attach to improving their ability to create, utilize, and protect intellectual property rights when actively participating in international market competition.
“Moxibustion Cup” Utility Model Patent Application Re-examination Request Case
【Case Introduction】
This case involves a re-examination request filed by Mr./Ms. Zhou concerning the rejection decision made by the Patent Office of the State Intellectual Property Office (SIPO) regarding the utility model patent application CN201620625135.1. The original Patent Re-examination Board issued Re-examination Request Review Decision No. 153870, upholding the aforementioned rejection decision.
【Typical Significance】
This case provides a way of thinking for the determination of medical and healthcare effects that include speculative content. For utility model patent applications involving medical and healthcare, given the complexity of human physiology and considering factors such as safety to the human body, if a person skilled in the art cannot determine from the disclosed content of the specification that the technical solution given in the specification will inevitably produce the claimed technical effect, the applicant should provide experimental evidence to verify the expected effect.
Currently, the quality of utility model patent applications in China still needs further improvement. The technical effects of many applications have not been verified in practice and are only predictions, theoretical possibilities with uncertain implementation effects. If such patent applications are authorized, they will mislead consumers and damage China's patent image. In view of this, this case proposes that utility model patent applications involving medical and healthcare and concerning life safety should be strictly examined in accordance with the law, and the verification of their effects should be strictly required, thereby guiding and further improving the quality of such utility model patent applications. (Content provided by the original Patent Re-examination Board of the State Intellectual Property Office)
