China’s top 20 patent cases of 2020: Ericsson v. CNIPA

China IP,[Patent]

 

Docket number of the case in the first instance: 6121, first instance (初), administrative case (行), (2015) Beijing Intellectual Property Court (京知)
Docket number of the case in the second instance: 513, second instance (终), administrative case (行), (2019) Beijing High People’s Court (京)
 
[Basic Facts]
Appellant (Plaintiff in the case in the first instance): Ericsson Telephone Co., Ltd. (Hereinafter: Ericsson)
Appellee (Defendant in first trial): China National Intellectual Property Administration (CNIPA)
Third party in the case in the first instance: Huawei Technologies Co., Ltd (Hereinafter: Huawei)
 
The patent involved (Patent No. 200880129948.X) refers to the invention patent named "Method and Equipment for Random Access in a Telecommunications System" (hereinafter: the Patent). The application date is December 15, 2008, the priority date is June 19, 2008, and the authorization announcement date is May 7, 2014. Ericsson is the patentee. Claims 1-4 of this patent include:
 
1. A method in which a user device (110,500) in a radio base station (120,400) can perform contend-based random access. It can assign to the radio base station (120,400) the first set of synchronized code pools before non-dedicated random access and the second set of synchronized code pools before dedicated random access. The method is characterized by the following steps:
 
Determine the synchronous code identifier RAPID before random access (201);
 
Transmit a message (202) that contains the identified RAPID to the user device (110,500); and receive (203) from the user device (110,500) a synchronous code before non-dedicated random access that is selected according to RAPID contained in the transmitted message.
 
2. The method as described in Claim 1, where the steps in determining RAPID described in (201) include: Select pre-configured RAPID associated with the first set of synchronous code before non-dedicated random access.
 
3. The method described in claim 1, where the steps in determining the RAPID described in (201) include: Select RAPID associated with the first set of synchronous code before non-dedicated random access.
4. Either method as described in Claims 1-3, where the transmission steps (202) include: Transmit the message containing RAPID on the Physical Downlink Control Channels (PDCCH).”
 
Regarding this patent, on November 14, 2014, Huawei filed a request for invalidation with the former Patent Reexamination Board of the China National Intellectual Property Administration (hereinafter: the Patent Reexamination Board), and submitted Evidence 1 (Application Announcement Specification of CN101682870A Chinese Invention Patent, the application date is May 16, 2008, the priority date is May 24, 2007, and the announcement date is March 24, 2010). Upon review, the Patent Reexamination Board made a decision on reviewing the request for invalidation of No. 26030 patent (referred to as the decision) on May 21, 2015, declaring Claims 1-7, 12, 14-20 and 25 of this patent invalid and continuing to maintain this patent in effect on the basis of Claims 8-11, 13, 21-24 and 26.
 
Ericsson refused to accept the decision and filed a lawsuit with the Beijing Intellectual Property Court. The first-instance court held that Evidence 1 met the formal requirements for contravening the application. Claim 1 for this patent has no novelty relative to Evidence 1. Similarly, Claim 14 of this patent has no novelty. Evidence 1 has disclosed additional technical features of Claim 2 of this patent. So Claim 2 for this patent has no novelty relative to Evidence 1. Evidence 1 has disclosed the transfer of a message containing ID number of a condition code by switching messages; Claim 4 for this patent replaces the transmission of messages by switching messages to the transmission of messages via PDCCH, which is a direct replacement of conventional means in this area. Therefore, Claim 4 for this patent has no novelty relative to Evidence 1. Similarly, Claims 15 and 17 of this patent have no novelty relative to Evidence 1. Based on these grounds, the court ruled in first instance: dismiss Ericsson's litigation request.
 
Ericsson refused to accept the verdict of first instance, and appealed to Beijing High People’s Court. The second-instance court held that, Claim 4 for this patent further defines "the transmission of the message containing RAPID on the Physical Downlink Control Channels (PDCCH)”, while Evidence 1 transmits messages by means of switching messages. The two don’t constitute a direct replacement of conventional means. Based on these grounds, the court ruled in second instance to: annul the first-instance judgment and decision. The China National Intellectual Property Administration shall make a new decision.
 
[Typical Significance]
The case involves the basic patent in the 5G technology area, and the focus of dispute lies in the identification of "direct replacement of conventional means" in the judgment process of novelty. In patent authorization cases, there is the concept of "conventional means" in the determination process of novelty and creativity. In the second instance, this case clarifies that although conventional means in this area under novelty is an inferior concept of common knowledge in this area under creativity, there is a significant difference between the two, that is, in the judgment process of novelty, the replacement of conventional means shall be "direct replacement". In "direct replacement”, it not only requires that the relevant technical means can be replaced, but also requires that the replacement of different technical means in the invention involved and comparison documents will not affect the cooperation and collaboration between such technical means and other technical features. For technicians in this area, even if the replacement of relevant technical means is easy to think of, but other technical features required to cooperate with such technical means need to be adjusted after the replacement of relevant technical means, it shall not be considered to have no novelty, though the invention involved may not be creative.
 
In this case, the second-instance court strictly adopts the judgment criterion of novelty in the trial, and asserts some claims for the patent involved have novelty, fully embodying the judicial policy of equal protection of legitimate rights and interests of Chinese and foreign parties concerned, showcasing the attitude of actively providing judicial guarantee for creating a fair and transparent business environment and providing a reference for the judgment of similar cases in the future.
 
This case was selected as one of the “Top10 Judicial Protection Cases of Intellectual Property Rights Tried by Beijing Courts in 2020".

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