William Yang

 

Good news to our client, bad news to DJI, and caution to us all!

 

For the Shenzhen DJI Osmo Technology Co., Ltd. (hereinafter DJI Osmo) and its parent company, SZ DJI Technology Co., Ltd. ("DJI"), it is bad news, while for our client, the Guilin Zhishen Information Technology Co., Ltd. (Zhishen Information), it is good news for the two reasons: one, the Beijing Intellectual Property Court ruled in November 2019 that it maintained the Decision on the Request for Invalidation issued by the China National Intellectual Property Administration (CNIPA) at the end of 2017, declaring the design patent (201430207007.1) entitled "Gimbal Platform" owned by DJI Osmo (the original patentee was DJI) invalid; and two, CNIPA made a decision in February 2020, declaring the invention patent (201480002121.8) entitled "Gimbal Platform" owned by DJI Osmo (the original patentee was DJI) invalid. In other words, as the invalidation requester, Zhishen information has won the two lawsuits squarely. 

 

In this regard, we congratulate our team of attorneys and Zhishen Information on their victory, but we have no intention to ridicule DJI Osmo or DJI for two reasons: 1) litigation victory and failure are common; and 2) DJI is a true innovative business and the leader in the drone industry. In fact, we have thought a lot on the invalidation of the two patents and the facts involved, and feel very sorry for DJI. We also hope that the lawsuits would draw attention from other businesses, especially their management, and help them try to avoid similar painful dilemma.

 

In the CNIPA Decision on the Invalidation Request which declared DJI Osmo's design patent (201430207007.1) for the gimbal platform invalid, the Evidence 2 and Evidence 3 submitted by Panawell's attorneys on behalf of Zhishen Information are crucial, and CNIPA concluded therein as to the following:

 

Evidence 2 showed that the news center column on DJI's official website contained 42 pages of news, each of which carried several pieces of news that were respectively dated, and the latest was dated March 2, 2017. One of the news, dated 2014-06-25 and entitled "DJIRonin-Official Release in July", offered three video links: "Introduction to the Basic Features of Ronin Handheld Gimbal Platform", "Brainstorming of Ronin Handheld Gimbal Platform Advertising Series", and "Behind-the-Scene Shooting of Ronin Handheld Gimbal Platform Advertising", each of which one could play at a click.

 

The videos in Evidence 2 and Evidence 3, mutually confirmative, proved that the videos were disclosed before the filing date of the patent in suit, and the design shown therein could be used as the prior design to testify whether the patent in suit complies with Article 23.2 of the Chinese Patent Law.

 

A comparison of the patent in suit with the prior design showed that the two were almost exactly alike in overall shape, and the major differences between the two were proportionally small, and had no notable effect in terms of overall visual effect of the design. Accordingly, the patent in suit, not obviously different from the prior design, did not comply with Article 23.2 of the Patent Law.

Now, let's look at the CNIPA's Decision on the Request for Invalidation, which declared DJI Osmo's invention patent (201480002121.8) invalid. Of the 14 evidence submitted by Panawell's attorneys on behalf of Zhishen Information, Evidence 2 and Evidence 3 (known as Attachments 2 and 3 in the Decision) were the most important evidence submitted in the abovementioned design patent invalidation lawsuit. Following are the main points in the conclusion drawn by the panel in the Invalidation Decision:

Attachment 2 was found to show that the original patentee of the patent in suit released the news entitled "DJIRonin-Official Release in July" on its official website on June 25, 2014, in which a tri-axis handheld DJIRonin gimbal system specially designed for cinematographers were reported as to its major features, operation modes and hardware support, etc. The news also included three video links by the titles of "Introduction to the Basic Features of Ronin Handheld Gimbal Platform", "Brainstorming of Ronin Handheld Gimbal Platform Advertising Series", and "Behind-the-Scene   Shooting   of   Ronin   Handheld   Gimbal Advertisement". Attachment 3 showed that the original patentee of the patent in suit uploaded a video named "DJI Ronin basic features profile" onto the website Youku. The above text information or video news was publicized in different media or on different platforms on the same day for the same event; …

The preceding attachments, mutually confirmative, proved that the original patentee of the patents in suit presented and publicized its new product of DJI Ronin handheld gimbal platform on June 25, 2014 in news report (Attachment 2) and a video (Attachment 3) with a view to attracting attention from related or potential customers, and preparing for the subsequent release and sales of the new product. …

Attachment 4 showed an article entitled "Unpacking of Reliable Stabilizer - DJI Ronin Handheld Gimbal Platform" published on the website www.dgtle.com by the publicizer named "Half Bag Biscuit", with the date of August 7, 2014 shown on the upper left hand corner of the title. The article included the photos taken from different angles of the DJI Ronin handheld gimbal platform, and was attached, at the end thereof, comments that were not fully uploaded. ...

The above Attachments 2, 3, 4 and 9 (Attachment 9 is the notarized printout of the article entitled "Unpacking of Reliable Stabilizer - DJI Ronin Handheld Gimbal Platform" in Attachment 4) have formed a complete chain of evidence, proving that the release date of the DJI Ronin handheld gimbal platform should be no later than August 6, 2014, and preceded August 13, 2014, the filing date of the patent in suit. That is, the DJI Ronin handheld gimbal platform had been made known to the public before the filing date of the patent.

The above attachments, forming a complete chain of evidence, proved that the technical contents related to DJI Ronin handheld gimbal constitute the prior art of the patent in suit, and could be used to assess the novelty and inventive step of the patent.

The conclusions in the above two Decisions by the two CNIPA panels showed that DJI Osmo's two patents have been declared invalid entirely as a result of its own negligent. In other words, before DJI Osmo filed the two patent applications, its own team had publicly promoted and marketed the products incorporating the patented design and containing the patented technical solution, and it was exactly this public promotion and marketing activities that had ruined the validity of its own patents.

As we all know, an invention-creation for which a patent application is filed must be novel in that it is not an existing or prior technology or design, nor has any entity or individual filed before the date of filing with the CNIPA an application relating to the same as disclosed in the patent application publicized after the date of filing.

Therefore, any business should take precaution, make careful plan, and well coordinate and manage its corporate operation procedure when putting its invention-creations into commercial use, such as manufacture, promotion and sales, to make sure that its invention-creations follow the sequence of patent applications (or trade secrets protection) and FTO analysis → internal production → market promotion → market sales, and prevent its patents from being invalidated due to disclosure of the technical contents as a result of their own negligence or fault before proper protection is secured as shown in the preceding two lawsuits. 

The two lawsuits also remind other businesses to pay close attention to, and keep abreast of, what their competitors would do, make solid efforts to strategically distribute their intellectual property in their own industries, and make good use of the legal weapons to carry on their offense and defense in the fierce market competition in an effort to remain poised in coping with the risks and meeting the challenges posed by the market competition for the sake of their corporate growth.