Yong WANG   Partner, Lawyer, Patent Attorney

Feng XU         Partner, Lawyer, Patent Attorney

 

In recent years, Chinese courts received patent infringement lawsuits have been on a constant rise. Among all the defenses, patent invalidation defense is undoubtedly a powerful tool in dealing with patent infringement allegations and litigations.

 

Invalidating a patent is no less than waging a fierce battle. How to put together the specific circumstances of every single patent, make reasonable use of the organically connected legal provisions, and launch a defense in a hierarchical, step-by-step and cooperative manner with a view of finding and attacking the weak points of a patent in question, requires the patent attorney to have solid professional proficiency and ethics.

 

Following is an overview of the factors that would impact the utility model patent invalidation proceedings requested by the party our Firm represents, as well as the role our patent attorneys plaid in the proceedings.

 

I. Background

 

The utility model patent relates to a chip box assembly structure and pencil sharpener, namely a new type of pencil sharpener. The patentee, Company A, sued Company B for patent infringement. Company B initially invited a patent attorney from an intellectual property firm to invalidate the utility model patent. In December 2022, the CNIPA held that Company B's requested invalidation of Company A's utility model patent was partially established, and the patent was kept valid on the basis of Company A's amended claim. However, a month later, the court of first instance found Company B's products constituting patent infringement against Company A also based on Company A's amended claim, and required Company B to cease and desist from manufacturing and selling its pencil sharpeners. In August 2023, the Intellectual Property Tribunal of the Supreme People's Court rejected Company B's appeal and upheld the first-instance ruling that the infringement was established, and Company B was deep into the most dangerous situation at this time.

 

After the first-instance trial, Company B reached our Firm for an effective coping strategy, hoping that the Panawell lawyers and attorneys could help and try their best to save the current unfavorable situation. After carefully studying and analyzing the facts of the invalidation proceedings, Mr. Feng XU, a partner of our Firm, and his team put forward the lawyer's suggestion to invalidate Company A’s utility model patent once again.

 

While the law does not prohibit the number of invalidation requests to be filed regarding a patent, since the patent in question has gone through an invalidation proceedings, the Patent Reexamination and Invalidation Department of the CNIPA would reject the invalidation request based on the same evidence and the same grounds according to the no matter in idem doctrine. Therefore, Company B must file a new invalidation request with new evidence or on new grounds.

 

During the first invalidation proceedings, the patentee amended claim 1 in response to the invalidation requester’s evidence and invalidation grounds, adding the feature of the original claim 6 to claim 1, and the amended claim 1 goes as follows:

 

1. The chip collection box assembly structure, characterized in that it comprises the upper shell used for installing the pencil sharpening mechanism and the chip collection box that collects pencil scraps produced by the pencil sharpening mechanism when sharpening pencils, the upper shell and the chip collection box form the shell of the pencil sharpening machine, the chip collection box comprises the bottom and the circumferential side part, the upper section of the circumferential side part is the first connecting part, the lower part of the upper housing is the second connecting part, and the first connecting part and the second connecting part are fixed by thread or buckle structure, and the first joint portion is in close contact with the second connecting portion; the butt part of the upper housing and the chip box is provided with an annular protective cover. (Note: the underlined part is the feature added at the invalidation stage.)

 

In the first invalidation decision, the collegial panel of the Reexamination and Invalidation Examination Department held that comparing the technical solution of claim 1 with the content disclosed in Evidence 1, the difference between the two is at least that there is an annular protective cover (i.e., a feature added when the claim was amended) outside the butt of the upper shell and the chip box. Based on the distinguishing technical feature, the collegial panel determined that the technical problem to be solved by the patent in question was to improve the firmness of the assembly structure and the overall aesthetic appearance and sense of touch.

 

Based on this understanding, the collegial panel concluded that the protective ring in Evidence 5 from the invalidation requester had a significantly different effect from the annular protective cover of the patent in question, and held that Evidence 5 did not disclose the above-mentioned distinguishing technical feature, and did not give corresponding technical revelation, so that the requestor's claim that the amended claim 1 did not possess inventiveness was not established.

 

II. Case Analysis

 

Judging from the contents disclosed in the application documents of the patent in question, those disclosed in the reference, and the above-mentioned trial process of the collegial panel, the collegial panel's conclusion that the patent in question possesses inventiveness seems to be unassailable.

 

However, for an experienced patent attorney, understanding of a technical solution is not limited to the scope determined by the written expression of the claims, but should be combined with the specific scenarios mentioned in the description and the technical problems to be solved, so as to make a comprehensive determination to accurately understand the main points of the invention of the patent in question, and to understand the technical features of the claims and the roles they play.

 

There is a text description in the description of the disclosure of the annular protective cover in the patent in question, namely Paragraph [0039]: "In addition, the butt part of the upper shell 01 and the chip box 02 is provided with an annular protective cover, and the annular protective cover 03 is socketed outside the first joint portion 20 and the second connecting portion 10, which not only protects the connecting part of the two, so that the joint part is enhanced by a double-layer structure, the connection strength is enhanced, the structure is firmer after assembly, and the overall appearance and sense of touch of the pencil sharpener better at the same time", and corresponding Figures 1-5 give a diagram of the annular protective cover.

 

At first glance, the description of the patent in question appears to have clearly disclosed the structure of the annular protective cover, its connection with other components, and the function it plays. However, from or through the above paragraphs in the description, the Panawell team found that compared with the role played by the annular protective cover, for example, "not only the connection part of the two is protected, the connection part is strengthened by a double-layer structure, the connection strength is enhanced, the structure is stronger after assembly, and the overall appearance and the sense of touch of the pencil sharpener are better," and its corresponding structural features are: "the butt part of the upper housing 01 and the chip box 02 is provided with an annular protective cover, The annular protective cover 03 is socketed outside the first joint portion 20 and the second joint portion 10". There is a serious inconsistency between the annular protective cover it describes and its claimed technical effect (as shown in the diagram below). For those of ordinary skill in the art, it is impossible to know the specific way to achieve the above effect from the structure of the disclosed annular protective cover.

 

 

 

 

At the same time, in Paragraph [0041] of the description, it is said that "...... And the annular protective cover is assembled on the outer side of the second joint portion 10 through a buckle structure, and plays the role of reinforcing the connection and appearance modification", which is the only way in which the annular protective cover and the second joint are clearly written in the patent documents. In the schematic diagram of the decomposed pencil sharpener in the diagram above, it can also be seen that the annular protective cover is semi-circular in a way.

 

From this, the Panawell team preliminarily concluded that the annular protective cover is directly connected to the upper shell in a semi-annular manner, and the connection with the lower chip box or the connection part of the two is mechanically irrelevant and cannot play the role of enhancing the connection strength.

 

At the same time, to further support this point, the Panawell team further searched the official account hosted by the patentee, and obtained the patentee's publicity description of the product of baby bottle pencil sharpener" corresponding to the patent in question. It clearly can be seen from the publicity description that the designing of the butt part of the upper shell and the chip box is that the annular protective cover is connected to the upper shell in a semi-annular manner (as shown in the picture below).

 

 

Therefore, the Panawell team concluded that for those of ordinary skill in the art, after reading the patent in question, it is not clear how to achieve: "the connection part is strengthened by a double-layer structure, the connection strength is enhanced, and the structure is stronger after assembly" with the help of the annular protective cover. On the contrary, in addition to improving the aesthetic appeal of the product, the annular protective cover of the patent in question cannot achieve the technical effect claimed in paragraph 0039 of the description, and those skilled in the art cannot solve the technical problem claimed to be solved after adopting this method, that is, "the connection part is strengthened by a double-layer structure, the connection strength is enhanced, and the structure is stronger after assembly", so that it can be believed that the drafted description of the patent in question does not comply with the provisions of paragraph three of Article 26 of the Patent Law. namely, the description shall give a clear and complete description of the invention or utility model to enable those skilled in the art to realize or work the invention.

 

According to the relevant provisions of the Patent Law, the drafted application documents that do not comply with Article 26.3 of the Chinese Patent Law is one of the grounds for invalidation of the patent.

 

In addition, based on the preceding facts and reasons, the Panawell team also believes that the role of the above-mentioned annular protective cover in the patent in question is only purely aesthetic in nature and has nothing to do with technology (especially unrelated to its claimed invention concept). Since the technical features of the solution of the patent in question are only purely aesthetic in nature, and have nothing to do with technology, they cannot give any technical feature or any technical structure to the claimed product, and cannot derive any technical function or technical effect. Therefore, the distinguishing feature, alone or in combination with the other features in the claims, cannot make the claimed technical solution achieve any technical effect, does not solve any technical problems relative to the prior art, and does not comply with the provisions of Article 2.3 of the Chinese Patent Law on the subject matter of utility model protection.

 

The fact that the claimed subject matter does not comply with the provisions of Article 2.3 of the Chinese Patent Law is also one of the grounds for patent invalidation.

 

However, as the Panawell patent attorneys’ experience from their years of work and practice shows, the examiners of the Reexamination and Invalidation Board are usually more cautious when it comes to defects in drafted application documents, such as non-compliance with the definition of the invention or utility model patent, lack of complete description of the invention or utility model in the patent description, non-compliance with the requirements on the clarity of the patent description and claims, and absence in the independent claims of the necessary technical features to solve the technical problem. A decision to invalidate a patent will not be made lightly because of a drafting error or defect in the application unless the error or defect is obvious and fundamental.

 

Therefore, to make invalidation of the patent in question something more certain, it is necessary to find a stronger killer weapon or tool.

 

On the basis of the above understanding of the patent documents involved in the case, the Panawell team further reviewed the entire first invalidation proceedings, especially the inventiveness reasoning process of the collegial panel to have kept claim 1 valid, and found a breakthrough in their favor.

 

In this process, the collegial panel recognized the difference between Evidence 1 from the requester and claim 1 of the patent in question in that "there is an annular protective cover outside the butt of the upper shell and the chip box", that is, the feature added by the patentee when amending claim 1.

 

Based on the description in Paragraph [0039] of the description of the patent in question, the collegial panel held that the patent in question "actually needs to solve the technical problem of improving the firmness of the assembly structure and the overall aesthetic appearance and sense of touch". However, through the above analysis of the annular protective cover structure, one can be convinced that the effect of "improving the firmness of the assembly structure" claimed by it is not supported in the description, and the effect of the claim does not exist at all. Therefore, it can be concluded that the collegial panel's understanding of the technical problem to be solved by the patent in question at the time of the first invalidation proceedings incorrect and needs to be corrected. The most accurate statement should be "the actual technical problem to be solved is how to improve the overall aesthetic appearance of the product" or something like this.

 

Based on the above-mentioned re-identified technical problem, the Panawell’s team conducted further targeted searches for the distinguishing technical feature of "annular protective cover", and found a number of references in the field related to pencil sharpeners that used the technical means similar to "annular protective cover" to solve the technical problem. At this point, the analysis and material preparation were made for filing the second invalidation request.

 

III. Invalidation Strategy Development

 

In terms of invalidation strategy preparation, the Panawell team, based on the above understanding, worked out an offensive strategy: first clearing the peripheral obstacle and then launched a focused attack on the core issues.

 

The so-called peripheral obstacle is the understanding of the specific structure of the annular protective cover. First of all, it is necessary to apply Article 26.3 of the Chinese Patent Law, that is, the description of the patent in question does not fully disclose the structure of the annular protective cover, and those skilled in the art would find it impossible to know how to make the connection part strengthened with a double-layer structure with the help of the annular protective cover, so that the collegial panel must focus the dispute on the function and realization structure of the annular protective cover of the patent in question. Since the interpretation of the technical feature in the invalidation proceedings can only be based on the contents disclosed in the patent documents and the common knowledge in the art, the patentee will not be able to reasonably explain how to use the semi-annular protective cover to be assembled on the outside of the second joint through the bayonet structure, so that the connection part is reinforced by a double-layer structure. In this way, the mystery that the annular protective cover has the effect of "double structure reinforcement, joint strength, and stronger structure after assembly" has been stripped away. Even if the patent in question cannot be invalidated under Article 26.3 of the Chinese Patent Law, the structure and function of the annular protective cover can be clarified, and the scope of protection would undoubtedly be greatly limited.

 

After clearing the peripheral obstacle to the interpretation of the annular protective cover, the Panawell team then attacked the core bastion (i.e., the inventiveness of the patent claims in question).

 

After analyzing the references used in the first invalidation proceedings and the multiple researched references, the Panawell team first selected Evidence 1 used in the first invalidation proceedings as the closest reference, considering that Evidence 1 had been used to evaluate the inventiveness of claim 1 at the time of the first invalidation proceedings, and the content of its disclosure had been clarified by the collegial panel, and there was less controversy, and it could be easily determined that the main difference between it and the patent involved in the case was the annular protective cover. Since the content of the technical feature has been clarified in the previous stage, according to the three-step method of inventiveness evaluation set forth in the Guidelines for Patent Examination, when re-determining the technical problem to be solved by claim 1, it is logical to conclude that the actual problem to be solved by claim 1 is "how to improve the overall aesthetic appearance of the product" compared with Evidence 1, rather than "improving the firmness of the assembly structure and the overall aesthetic appearance and sense of touch" as determined by the collegial panel during the first invalidation proceedings. Then, in view of the re-determined technical problem, the inventiveness of claim 1 could be completely denied by using the original Evidence 1 in combination with other newly searched references or common knowledge.

 

On top of this, to invalidate the patent in question by making the fullest possible use of the inventive defects of the patent in question, the Panawell team also used the newly searched results and used a different document as the closest reference, combined with other references or common knowledge, as a side attack method to challenge the inventiveness of the patent in question.

 

IV. Satisfactory Ending

 

Thanks to the careful planning in advance and choice of the correct invalidation strategy, the second invalidation request hearings proceeded smoothly. Within three months after the oral hearing, the Reexamination and Invalidation Examination Board made an invalidation decision, finding that all the claims of the patent in question did not possess inventiveness, and the collegial panel basically accepted and adopted all the requester's invalidation opinions or claims.

 

Soon after receiving the second invalidation decision, Company A filed an administrative lawsuit with the Beijing Intellectual Property Court. The Panawell team also made full preparations and detailed explanations in the Beijing Intellectual Property Court, which quickly rendered a ruling, rejecting Company A's claims.

 

After receiving the invalidation decision, Company B promptly requested the Supreme People's Court to retry the infringement case, and the Supreme People's Court quickly revoked the effective infringement ruling, and our client’s legitimate rights and interests were safeguarded, its crisis eliminated, and losses avoided.

 

V. Revelation

 

The entire patent invalidation not only makes it possible for our client to avoids huge losses in infringement damages, but more importantly, clears the way for the future sale of its products and protection of its market share. However, the above discussion clearly shows that the reversal of the second invalidation result is by no means accidental, as it has condensed the patent attorneys’ diligent work and demonstrated their top level of professionalism. The patent invalidation defense is a quasi-judicial procedure with an adversarial nature, which not only requires the patent attorneys to have a strong professional and technical background, be able to analyze and understand the technical solutions involved in the patent, and accurately grasp the current state of the prior art, but also be capable of accurately understanding the legal provisions and grasp their organic relationship, so as to achieve a thorough understanding. Patent attorneys are also required to have high level of litigation experience, be proficient in analyzing complex technical concepts from the legal perspective, and developing reasonable litigation strategies. Only in this way can we truly protect the legitimate interests of the parties they represent, safeguard the normal market order, and promote the development of the market economy. All this is where the value of a good patent attorney lies in in a society governed by the rule of law.

 

Author:

 

Mr. Richard Yong WANG

 

Mr. Wang received his bachelor's degree in 1991 from the computer science department of East China Normal University, his master's degree from the Institute of Computing Technology of the Chinese Academy of Sciences in 1994, and also the degree of master of laws from Renmin University of China in 2005. Mr. Wang joined Panawell in 2007. In the past years, Mr. Wang has handled thousands of patent applications for both domestic and foreign clients, and he has extensive experiences in patent application drafting, prosecution, reexamination, invalidation, administrative litigation, infringement litigation, software registration, and layout designs of integrated circuit.

 

 

Mr. Feng XU

 

Mr. Xu received his Bachelor Degree in Thermal Energy and Power Engineering in 2006 and Master Degree in Power Machinery and Engineering in 2008 from Huazhong University of Science and Technology. Mr. Xu worked as an examiner in CNIPA from 2008 to 2015, and joined Panawell in 2017. He specializes in patent drafting, prosecution, reexamination, invalidation, administrative litigation, infringement litigation and infringement analysis in the field of mechanics.