Discussion on the Different Effects of the Same Evidence in Patent Right Determination and Right Protection Procedure

by Liu Lindong, Yi Ang,[Patent]

 
In design patent infringement litigation, the accused infringer has a variety of defense measures, among which the existing design defense and patent validity defense usually involve the same evidence. The defense of the validity of patent rights is to file an invalidation request to the China National Intellectual Property Administration (hereinafter referred to as "CNIPA") against the plaintiff's involved patent. The existing design defense is to raise an existing design defense in the litigation process. In practice, in order to ensure the success of the litigation case, the accused party usually adopts the above two defense measures at the same time. This article will take a recent case as a perspective to explain in detail the different functions of the existing design defense in the litigation procedure and the same evidence in the patent invalidation procedure.
 
Basic case introduction
 
The case involved in this article is Shenzhen BW Company v. Beijing RDAD Company for infringement of design patent rights [1]. The involved patent is the design patent named "antenna (MF-AF-01)", and the patent number is ZL201330515332.X. Shenzhen BW Company sued the Beijing Intellectual Property Court on the grounds that the products manufactured and sold by Beijing RDAD Company were identical to its patents and infringed its patent rights, demanding the defendant Beijing RDAD Company to stop manufacturing and selling infringing products and compensate for the losses.
 
After receiving the notice of response to the suit, Beijing RDAD, as the petitioner, filed a request for invalidation of the patent in question to CNIPA, and filed a request to the court to suspend the trial, and the trial was suspended in the first instance. In the invalidation procedure, Beijing RDAD submitted three pieces of evidence, including the KR100887454B1 Korean patent (referred to as the “Korean patent”) as a comparative design evidence, and believed that the plaintiff’s patent was not significantly different from the above evidence alone or in combination. After the trial, CNIPA finally determined that the three pieces of evidence, including the patent design involved in the case and the Korean patent, were clearly different individually or in combination, and maintained the validity of the plaintiff's patent involved.
 
Since then, the court continued to hear the case. The defendant Beijing RDAD responded in a civil lawsuit and submitted three pieces of evidence, including Korean patents that are the same as the above-mentioned invalidation procedures, and filed an existing design defense, believing that the Korean patent constitutes an existing design. After the trial, the court found that the alleged infringing product had no substantial difference with the Korean patent, and the existing design defense was successful and all the plaintiff's claims were rejected.
 
Case Legal Review
 
In this case, CNIPA’s invalidation decision had determined that the plaintiff’s patented design was clearly different from the existing design, and the defendant claimed that the existing design defense was untenable. So, does the court support the defendant’s existing design defense claims? Is it contradictory to CNIPA’s invalidation review decision? To answer this question, we first need to recognize the difference between the two in review and trial standards.
 
Criteria for identifying existing designs in patent invalidation procedures
 
The first and second paragraphs of Article 23 of the "Patent Law" respectively stipulate that the patent involved should not belong to the existing design, conflicting applications, and have obvious differences compared with the existing design or the combination of existing design features.
 
When examining a design patent, CNIPA compares the design patent requested to be invalidated (referred to as the involved patent) and the comparative design; it does not belong to the existing designs, including the absence of the same or substantially the same appearance of the design. The patent in question is not significantly different from the existing design or the combination of existing design features, and also includes the conversion of the existing design, the existing design and the combination of its features, etc. The following will illustrate the criteria for identifying existing designs in patent invalidation procedures through specific cases.
 
The first is the identification of the same or similar product types. The product involved in the patent is an antenna, and Comparative Design 2 discloses a "patch antenna". The two have the same or similar uses and belong to the same or similar types of products.
 
 
 
The second is the determination of the scope of protection of the patent involved. The patent in question is represented by a total of seven views in six orthographic projection views and a three-dimensional view. The color is not claimed for protection, and it is a simple shape design. The patent in question is a flat cuboid, the upper surface of the front is square, the four corners of the front are rounded and chamfered, and the front has a square that is parallel to the upper surface, slightly convex, and a smaller size. The small convex square has four corners. Four small chamfered corners, the four small chamfered corners correspond to the arc chamfer on the upper surface of the front, respectively, and the upper surface of the front and the side surface are slightly chamfered; the side of the patent involved is rectangular, and the bottom surface is with several squares grid, five rivet holes are evenly distributed on each of the four frames (see the attached patent drawings for details). Comparative design 2 discloses a patch antenna. The Chinese translation of its description, page 4, paragraph 3, publicly stated: "Fig.1 is an example view showing a traditional patch antenna. The patch antenna in Fig. 1 is also called the ceramic patch antenna on the door when the ceramic dielectric substrate is used. The patch antenna in Fig. 1 is sandwiced between the dielectric substrate 10 with a predetermined thickness, and a flat shape patch 12 is placed on one side (top) as the antenna, and the connecting floor 14 is installed on the other side (bottom).” As shown in Fig. 1, the product of Comparative Design 2 is a patch antenna formed by three parts: the ground plate 14, the dielectric substrate 10, and the patch 12. The whole is a flat rectangular parallelepiped. The front surface of the patch antenna is square, and the front four corners are rounded chamfers. There is also a slightly convex square parallel to the upper surface and a slightly smaller size on the front. The small convex square has four small cuts at the four corners. The four small cut corners correspond to the arc chamfers on the upper surface of the front, respectively. The side of the patch antenna is rectangular, the bottom of the patch antenna is not shown, and the bottom has a slightly smaller lamelliform earth plate with rounded corners.
 
 
 
Finally, the identification of the design content disclosed by the comparative design. After comparison, the differences between the involved patent and Comparative Design 2 include: (1) the involved patent is an antenna upper cover, Comparative Design 2 is a patch antenna, and Comparative Design 2 is not hollow inside, with patches on the upper surface and lower parts have a sheet-like grounding plate; (2) the upper surface of the involved patent square and the side surface are slightly chamfered, while the contrast design 2 does not; (3) the sides of the two sides have different rectangular aspect ratios; (4) the bottom surface of the patent involved is equipped with several square grids, and there are five rivet holes evenly distributed on the four frames. The Comparison Design 2 has not disclosed the bottom surface design.
 
In the invalidation procedure of this case, the collegiate panel finally determined 2: Comparative Design 2 is a patch antenna, and the interior of Comparative Design 2 is not hollow, and its overall structure is a three-layer upper, middle and lower design. Compared with Comparative Design 2, the involved patent has a substantial difference. On this basis, the patent in question is a product with a completely different overall composition structure compared to Comparative Design 2. It has a significantly different visual effect, and there is no evidence that the above-mentioned differences belong to the customary design in this field. Therefore, compared with the Comparative Design [2], the involved patent complies with the provisions of Article 23, paragraph 2 of the Patent Law. Accordingly, CNIPA decided to maintain the validity of the involved patent.
 
Existing design identification standard in existing design defense
 
Article 62 of the Patent Law stipulates: “In a patent infringement dispute, if the accused infringer has evidence to prove that the technology or design implemented by them belongs to the existing technology or the existing design, it does not constitute an infringement of patent rights.” Cases involving design defense usually involve three designs, namely, existing designs, designs of products accused of infringement, and designs of patents involved. In the proceedings, if the defendant raises an existing design defense, the court can only examine whether the accused infringing product adopts the existing design, and the object of comparison is the accused infringing product and the comparative design.
 
The existence of substantial differences (or similar judgments) is relative. If you simply compare the design of the alleged infringing product with the existing design, it may result in ignoring the differences between the two and the effects of these differences on the two as a whole. The impact of the visual effect has led to misjudgment, resulting in the situation where the accused infringing product design is similar to the existing design and the design patent. Therefore, in the case where the design of the alleged infringing product is not the same as the existing design, in order to ensure an accurate conclusion on the design patent infringement judgment, the existing design should be used as the coordinate, and the product design accused of infringement, existing design and design patents were compared respectively, and then a comprehensive judgment was made. In this process, it is necessary to pay attention not only to the similarities and differences between the alleged infringing product design and the existing design, and the impact of the differences between the two on the overall visual effect, but also the difference between the design patent and the existing design and its impact on the overall visual effect. Whether the design of the alleged infringing product makes use of the difference between the design patent and the existing design should be considered, and on this basis, whether the design of the alleged infringing product is not substantially different from the existing design is judged. [3] 
 
In the proceedings of this case, the court mentioned in the determination of the scope of protection of the involved patent that although the name of the patented product involved is "antenna (MTAF01)", based on the defendant’s statement in the invalidation procedure and the picture of the patent authorization text, the actual protection of the patented product is the antenna top cover without internal electronic components. The grid shown in the rearview is a pattern. The alleged infringing product is a circularly polarized antenna. Since this product needs to be used in combination with other products, its back usually does not appear directly during use. Therefore, when comparing features, only the top cover of the product is compared with the patent in question.
 
In the judgment of this case, the court determined that for the defendant’s existing design defense, the accused infringing product and the comparison design were all antenna products. The overall shape was also a flat cube design. The four corners of the square were all designed with arcs and chamfers on the front. The square was parallel to the upper surface, slightly convex and smaller in size, and the sides are also rectangular. The difference between the two is only the aspect ratio of the side rectangle. Therefore, there was no substantial difference between the alleged infringing product and the comparative design, and the defendant's existing design defense is established.
 
The difference between the existing design identification in the procedure of right confirmation
 
From the above analysis, it can be seen that although the comparison objects of the rights confirmation and rights protection procedures are completely different, they are also related. In this case, even if CNIPA concluded that the patented design and the comparative design are clearly different, it will not affect the court's comparison of the alleged infringing product and the comparative design.
 
 
 
In the judgment of this case, the court also responded to the question of whether the defendant’s existing design defense is inconsistent with CNIPA’s invalidation decision: “There is no substantial difference between the accused infringing product and the Comparative Design 2. Moreover, in the case where the invalidation decision No. 45470 has determined that the involved patent and comparative design 2 do not constitute a similar design, this court believes that the defendant’s existing design defense is established and the alleged infringing product does not constitute an infringement of the involved patent." [4] This shows that the court found that there is no substantial difference between the alleged infringing product and the Comparative Design 2, that is, according to the decision, it is determined that the Comparative Design 2 and the involved patent do not constitute a similar design. It can be analogized that the alleged infringing product and the involved patent do not constitute a similar design. The design will not infringe the patent right of the plaintiff. Therefore, the court found that the existing design claimed by the defendant was established, which was clearly different from the patent and the comparative design in the invalidation decision, and was not contradictory.
 
Conclusion
 
The comparison of existing design evidence in design patent litigation and invalidation procedures is shown in Fig. 3. In the figure, Route 3 is the patent invalidation procedure, and the object of comparison is the involved patent and the existing design. In the patent invalidation procedure, if the examination agency finds that there is no obvious difference between the involved patent and the existing design, the involved patent will be declared invalid, and the plaintiff will no longer enjoy the patent right to the involved patent. Due to the loss of the patent right foundation, the litigation procedure will naturally be terminated; if the patent involved is not invalidated, then the parties need to compare Route 2 and Route 1 in the proceedings. If Route 2 (the existing design defense) is successful, the parties do not need to compare Route 1, that is, there is no need to further determine whether the alleged infringing product falls within the protection scope of the patent in question; if the existing design defense is unsuccessful, then the party has to make a further Route 1 comparison to determine whether the alleged infringing product falls within the protection scope of the patent involved in the case.
 
In summary, in design patent infringement litigations, the role of existing design evidence in different procedures should be accurately and fully considered. First of all, the distinguishing features of the comparison objects should be identified and sorted out according to different comparison objects, sequences and definition standards. On this basis, the same and different distinguishing design features should be analyzed to define functional features and customary design features, as well as the impact of features that are not easy to see during use on the overall visual effect, accurately assess the feasibility and possibility of defending the existing design and requesting the invalidation of the patent involved, and rationally plan the direction and strategy of the defense, finally facilitates the adjudicator and judges to find out the design features and the accurate application of the law, so as to protect the legitimate rights and interests of the parties to the greatest extent.
 
 
 
 
 
1 Beijing Intellectual Property Court (2020) Jing 73 Min Chu No. 89 Judgment.
2 China National Intellectual Property Administration No. 45470 Review Decision on Request for Invalidation.
3 The Supreme People's Court (2010) Min Ti Zi No. 189 Civil Judgment.
4 Beijing Intellectual Property Court (2020) Jing 73 Min Chu No. 89 Judgment.

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