CHENG Cheng King & Wood Mallesons
In the top 10 patent reexamination & invalidation cases of 2019 announced by the China National Intellectual Property Administration (CNIPA), five are related to mechanical technologies. According to the CNIPA, these cases were selected for their guiding value in certain topics typical for patent examination, as well as the considerable social attention focused on them. The opinions reflected in the Decisions of these cases would undoubtedly impose great influence on the practices of both substantial examination and invalidation, and can be cited as supporting reference or evidence to benefit similar cases. Therefore, we summarize below the case brief and introduce the focuses of the five invalidation cases of mechanical invention.
Request for Invalidating Invention Patent “Swirl dry pulverized coal gasifier” (Invalidation Decision No. 39289)
Patentee: Company A
Patent number: ZL201310556488.1
Decision: patent right maintained
The patent involved in this case (“the Patent”) relates to the field of dry pulverized coal gasification, specifically the use of coal gasification reaction to convert low-cost, direct-burning and polluting coal into clean, high-value-added synthesis gas. In view of the low carbon conversion rate of the existing dry pulverized coal gasifier, the Patent provides a swirl dry pulverized coal gasifier, which, compared with the closest prior art (reference document 1, “D1”), sets the ratio of a diameter of a slag discharge port to a diameter of a reaction chamber to be 1:3 ~ 1:4 (one of the distinguishing features), so as to ensure that the slag discharge port will not be blocked and increase the residence time of dry pulverized coal in the reaction chamber, thereby facilitating the full conversion of carbon.
The focus of dispute in this case is the judgment of technical motivation in evaluating the inventive step, specifically whether the above-mentioned distinguishing feature is disclosed in another reference document and whether it is common knowledge in the art.
Regarding the above distinguishing feature, the Petitioner asserted that reference document 2 (“D2”) also involves entrained-flow bed reactors, and discloses the specific ratio of the slag discharge port and the reaction chamber, and that those skilled in the art can easily think of combining it with D1. However, the collegial panel did not support this view of the Petitioner.
The collegial panel held that, D2 and D1 are obviously different in terms of the feeding method and slagging form, and the purpose of setting the ratio of an inner diameter of the reactor to the diameter of the slag discharge port is also different from the Patent, and that on this basis, even if D2 discloses the ratio defined by the Patent, those skilled in the art would not think of combining it with D1.
Regarding the above-mentioned distinguishing feature, the Petitioner also asserted that based on the content disclosed in D2, it could be known that said feature belongs to common knowledge in the art. However, the collegial panel did not support this view of the Petitioner either.
The collegial panel held that, although it is known in the art that the carbon conversion rate can be increased by extending the residence time of pulverized coal in the reaction chamber, there are many specific ways to achieve extension of the residence time. The prior art usually adopts methods of changing the structure of the reaction chamber or the aspect ratio, for example, in D1, the reaction chamber is defined as having a specific larger upper and smaller lower shape, and D2 defines that the height and diameter of the reactor satisfy a specific ratio. The Petitioner did not provide any evidence to show that it is common knowledge in the art to adopt specifically the method of adjusting the diameter ratio of the slag discharge port and the reaction chamber to increase the carbon conversion rate.
Moreover, the Petitioner did not submit any evidence to show that the further adjustment of the above ratio to 1:3 ~ 1:4 is common knowledge in the art, and the Petitioner also recognized in the oral hearing that further design and experimentation is required for the above ratio adjustment, but failed to clearly illustrate the influencing factors of the ratio adjustment and the law of action of each factor.
The collegial panel held similar views on the non-obviousness of another distinguishing feature of the Patent compared to D1 over the prior art.
We are of the opinion that, when judging whether an invention creation is inventive, the “three-step method” given in the Patent Examination Guidelines should be followed. Especially when judging the “obviousness” of the invention creation, it is necessary to pay attention to the “overall consideration” of the technical solutions of the prior art. When judging whether the prior art gives technical motivation, it is necessary to comprehensively consider the overall solution disclosed, and comprehensively analyze and grasp the technical field, the technical problem to be solved, the overall technical means used and the technical effect obtained, and then judge the specific role of the corresponding technical means according to the specific situation, so as to evaluate the inventive step objectively and fairly, and avoid the hindsight.
For the judgment of common knowledge, it is required to analyze specifically whether the distinguishing feature is a well-known technical means, especially considering the technical problem actually solved by the invention. It cannot be estimated that a certain technical means is well-known based on theories known in the art, that is, there is no unique correspondence between technical principles and technical means.
In addition, except for situations where there is no need to provide evidence, such as publicly known facts and laws of nature, the invalidation Petitioner shall bear the burden of proof for the assertion of common knowledge. Especially for the judgment of technical motivation in regard to distinguishing features that include a numerical range, it is usually necessary to consider whether there is a conventional value range in the art and the relationship between the value range and the corresponding numerical range, whether the prior art provides a technical motivation of how to perform the selection of value range, and whether the technical effect achieved by the value range is consistent with the technical effect that can be foreseen in the prior art.
Request for Invalidating Invention Patent “Restaurant service system” (Invalidation Decision No. 41958)
Patentee: Company A
Petitioner: Company B
Patent number: ZL200680037518.6
Decision: patent right maintained
PCT publication number: WO2007068426A1
Decision: patent right maintained based on amendment
The patent involved in this case (“the Patent”) relates to a restaurant service system. Aiming at the technical problems of manual service in existing restaurants that consume labor and time costs, or the lack of convenience in self-service restaurants where customers fetch meals by themselves, the Patent proposes a restaurant service system that saves labor and is convenient for customers. The main technical points include the construction of a conveyor system consisting of a rail system that conveys meals or beverages by gravity. The conveyor system extends from a back kitchen working area to a dining table, so that after catering food such as meals and beverages have been cooked or prepared in the back kitchen. The catering food can be placed on rails, and is slid and transported to a customer’s dining table by gravity on the rails. Therefore, neither the waiters provide the serving service nor the customers fetches the meal by themselves, which solves the above-mentioned problems in the existing restaurant service system.
The focus of dispute in this case is still the judgment of technical motivation in evaluating the inventive step, namely whether there is sufficient motivation and teaching in the prior art, so that those skilled in the art can obviously obtain the technical solution of the Patent on the basis of the closest prior art.
The Petitioner asserted that the amended claims are not inventive over Evidence 1 in combination with Evidence 2 and common knowledge. However, the collegial panel did not support the Petitioner’s assertion.
The collegial panel held that, according to the identified distinguishing features of the Patent over the closest prior art Evidence 1, “the back kitchen working area is connected to or can be connected to at least one dining table in the customer’s dining area through at least one rail line”, the Patent can transport meals and/or beverages directly to the customer’s dining table with the aid of gravity, which saves labor and time costs and will not cause inconvenience or unsatisfactory dining experience to customers, thereby providing a novel dining mode, bringing customers a novel dining experience, and reflecting a new application of mechanical structures in the catering field. It can be seen that the previously mentioned distinguishing features reflect the fundamental difference between the Patent and Evidence 1 in terms of the invention concept. The Patent and Evidence 1 are different in terms of the technical problem actually solved, the technical means used, and the technical effect achieved, and thus the technical solution of the Patent is nonobvious over Evidence 1.
We are of the opinion that, this case illustrates the core role of invention concepts in judging the inventive step. According to the collegial panel’s point of view, the manual service mode in the catering industry involved in this case is a traditional service mode in the industry. Even cafeterias still need related manual services, and the manual services cannot be cancelled or replaced. The same applies to the technical solution provided by Evidence 1. Therefore, based on the essential difference between the invention concepts, the starting point of the technical solution proposed by the Patent and that of Evidence 1 are essentially different, and the technical problems to be solved, the technical means used and the technical effects achieved are different.
It is not difficult to understand that the invention concept reflects the technical improvement ideas proposed by the inventor in the process of seeking solutions to solve the technical problems faced by him/her. The contribution of invention creations to the prior art is not only reflected in the selection of technical means, but also in the proposal of invention concepts. In this case, the Patentee broke through the shackles of the traditional operation mode of the catering industry and innovatively proposed an invention concept to solve the technical problem in the traditional service mode of the catering industry. In fact, to a certain extent, it has the meaning of “an invention opening up a whole new field” introduced in Part II, Chapter 4, Section 4.1 of the Patent Examination Guidelines, that is, “a totally new technical solution which is unprecedented in the history of technology.”
Request for Invalidating Utility Model Patent “Keyboard switch for generating pressing sound” (Invalidation Decision No. 40870)
Patentee: Company A
Petitioner 1: Company B
Petitioner 2: Wu
Patent number: ZL201621037804.X
Patent number of the patent for invention filed on the same day: ZL201610802371.0 (PCT publication number: WO2018041270A1)
Decision: patent right maintained
The patent involved in this case (“the Patent”) relates to a keyboard switch that generates sound when pressed. The keyboard switch is applied to a mechanical keyboard, which can give people a good feel and produce sound feedback when pressed, thereby solving problems related to the pressing feel of the thin mechanical keyboard and sound generation, and improving user experience.
Petitioner 1 and Petitioner 2 successively filed invalidation requests against the Patent, and the collegial panel conducted a joint trial of this case.
Compared with the prior art cited by the two Petitioners, the Patent has different features: a guiding inclined surface is provided on a base, an end portion of an elastic piece is located above the guiding inclined surface, and a pressing block is located at a side of the guiding inclined surface. According to the distinguishing features, it can be determined that the technical problem actually to be solved by Claim 1 is enabling the elastic piece of the keyboard to generate sound by hitting through cooperation of the guiding inclined surface and the pressing block.
The focus of dispute in this case is the judgment of technical motivation in evaluating the inventive step, specifically whether the above-mentioned distinguishing features are common knowledge in the art and whether the closest prior art provides technical motivation.
The collegial panel did not support the claims of the two Petitioners. The collegial panel held the opinion as follows.
Regarding whether the distinguishing features belong to common knowledge, it should be understood in the context of the technical solution. It is inappropriate to understand the distinguishing features without considering the technical solution, and it is inappropriate to understand said features by unreasonably disassembling the inherently related features into scattered elements. In this case, the above-mentioned distinguishing features define that the guiding inclined surface and the pressing block are located in different components, and the two cooperate with each other to act on one end of the elastic piece to realize the function of sounding. Therefore, the distinguishing features embody not only the difference in the setting position of the guiding inclined surface, but also the cooperating relationship between the components, and there is no evidence to prove that the distinguishing features belong to common knowledge in the art.
Regarding whether the prior art provides a technical motivation of improvement in relation to the distinguishing features, although the prior art discloses that in addition to an upper cover, the hitting position of the elastic piece can also be realized by deformation of the elastic piece to rebound and hit a base or lateral deformation thereof to rebound and hit a pressing member, the technical solutions in the prior art are based on the elastic piece hitting the upper cover as an example, wherein the guiding inclined surface is provided under the convex corrugation on the side of the pressing member, which does not disclose the way of arrangement of the guiding inclined surface and other components when the elastic piece hits the base and other parts, and thus does not give a technical motivation for setting the guiding inclined surface on the base to cooperate with the pressing block.
We are of the opinion that, the trial of this case by the collegial panel is similar to the second case “restaurant service system” mentioned above, which also focuses on the investigation of the invention concept of the Patent and the technical routes of the respective prior art references. Only by correctly grasping the technical route of the prior art can those skilled in the art accurately judge whether the prior art provides a technical motivation of improvement.
As far as this case is concerned, although the prior art also involves the technical solution for the thinning of the mechanical keyboard and sounding of the key, its technical route only focuses on the “elastic hitting on the upper cover” instead of the “elastic hitting on the base” of the Patent. Moreover, according to the technical route of the prior art, even if considering changing the position where the elastic piece hits to generate sound, the reasonable expectation of those skilled in the art is still to use the conventional means in the prior art such as spring deformation to hit the base, instead of adopting the above-mentioned distinguishing features involving a specific structure and cooperation relationship between the components.
As for judging whether the above-mentioned distinguishing features belong to common knowledge in the art, it can be seen from the comments of the collegial panel that, each element of the distinguishing features cannot be mechanically separated from the technical solution for independent examination, but should be regarded as a complete technical means for overall consideration from the perspective of technical concept. In this case, each of the above-mentioned distinguishing features is a common general-purpose component, but when the various elements are combined into an overall technical means for hitting and sounding according to the technical solution of the Patent, these element components are no longer isolated from each other, and they cooperate with each other to solve the technical problem of sounding of the thin keyboard, which reflects the creative contribution to the prior art.
Request for Invalidating Utility Model Patent “Multi-rotor ring unmanned aerial vehicle” (Invalidation Decision No. 35449)
Patentee: Company A
Petitioner: Company B
Patent number: ZL201220686731.2
PCT publication number of the patent family: WO2014075609A1
Decision: patent right invalidated
The patent involved in this case (“the Patent”) relates to an integrated structure of upper and lower housings of a multi-rotor wing unmanned aerial vehicle (“UAV”), which is an important technology of the multi-rotor wing UAV. The patent family members of the Patent also involved infringement disputes in the United States. Company A and Company B have started a patent war in China and the United States since 2015, involving multiple invention patents for the integrated structure of the upper and lower housings of the multi-rotor wing UAV. In 2018, Company A and Company B initiated the “337 investigation” and patent infringement lawsuits on the UAV technology in the United States. These patent disputes caused widespread public concern.
In this case, the Petitioner submitted a large amount of evidence related to “disclosure by use” to prove that the Patent does not possess an inventive step.
The focus of dispute in this case is the determination of the authenticity and publicity of the various online evidence submitted by the Petitioner, and how to determine the standard of proof that it can achieve.
There are two important pieces of evidence in the evidence submitted by the Petitioner: Evidence 19 and Evidence 12.
Evidence 19 is composed of five parts of network evidence about the “disclosure by use” of the ninth Shanghai International Model Exhibition, which is specifically summarized as follows:
Evidence 19-1: A screenshot of the news report page of the NetEase News Center;
Evidence 19-2: A screenshot of the webpage on the website of Company S involving the model display when it participated in the exhibition;
Evidence 19-3: A screenshot of a webpage related to an article posted by a netizen on the “Model China Forum”;
Evidence 19-4: A screenshot of a webpage related to an article posted by a netizen on the “5iMX Forum”;
Evidence 19-5: A screenshot of the relevant video webpage on the Youku website.
Evidence 12 relates to the discussion and post on the topic “Overlapping Propeller Designs” initiated by a netizen on the “dronevibes” forum.
The Petitioner asserted that Evidence 19 proved that Company S exhibited a multi-axis aerial vehicle related to the Patent at the ninth Shanghai International Model Exhibition on August 29, 2012, and that the content disclosed in Evidence 12 can be used to evaluate the inventive step of the Patent.
For the above-mentioned evidence, the Patentee submitted relevant counter-evidence to challenge its authenticity and relevance.
However, the collegial panel did not support the Patentee’s claim. The collegial panel held the opinion as follows.
Regarding Evidence 19, the “Model China Forum” website and the “5iMX Forum” website involved in Evidence 19-3 and Evidence 19-4 belong to websites with a certain degree of popularity and credibility in the field. In the case that the Patentee fails to provide evidence to prove that the content of the article published on the webpage is false, the collegial panel recognizes the authenticity of the disclosed content of the evidence.
In Evidence 19-5, the time the user uploaded files on Youku represents the time when the video entered the server. The upload time was automatically generated by the Internet system, and can be selected whether to make it public when uploading. Although the Patentee’s claim that “the upload time is not necessarily the time of publication” may exist, the Patentee did not provide corresponding evidence to prove it. Under this premise, the probability of the video being published when it was uploaded is much higher than the probability of being unpublished as claimed by the Patentee, that is, there is a high degree of probability for the upload time “September 1, 2012” recorded in Evidence 19-5 being the release time.
In addition, the prior art disclosure in the Patent Law includes disclosure by use, and “disclosure by use” refers to the disclosure of a technical solution due to use, or a state where the technical solution is known to the public due to use. Although the Patentee used Counter-Evidence 7 to prove that the products involved in Evidence 19-3, 19-4 and 19-5 were not exhibited by Company S, whether said products were exhibited by Company S does not affect whether they were already in a state that the public could know before the filing date.
Regarding Evidence 12, the Petitioner provided a series of evidence to prove that the relevant forum website is a website and forum with a certain degree of popularity and credibility in the field of UAV, and the public can obtain information therefrom. Although the Patentee used Counter-Evidence 4 to prove that the registered city of the relevant forum “dronevibes.com” is Toronto and the registered country is Canada, thereby proving that Evidence 12 is extraterritorial evidence, the No. 09920 notarization has stated that the webpage can be obtained through domestic public channels. The “prior art” in the Patent Law refers to the technology known to the public at home and abroad before the filing date. Therefore, the technical content disclosed by the forum before the filing date of the Patent also falls into the category “prior art” of the Patent Law.
Accordingly, the collegial panel did not support the Patentee’s claim that the above-mentioned evidence is not authentic and relevant. Hence, based on the disclosure of the above evidence, the collegial panel determined that the Patent does not possess an inventive step.
We are of the opinion that, the main reasons why the collegial panel supports the Petitioner’s claim are as follows.
For Evidence 19’s proof of “disclosure by use”, the Petitioner provided a combination of multiple pieces of evidence, pointing to the same fact to be verified from different aspects, avoiding the situation where the evidence chain of separate evidence is incomplete, uncertain or flawed. In this regard, the multiple pieces of evidence mutually confirm each other, thus forming a complete evidence chain. The collegial panel determined the facts to be verified based on a highly probabilistic proof standard.
Regarding the information disclosed by foreign websites or forums, the domestic public lacks understanding of the nature, scale, and operating mechanism of the relevant websites or forums, so that the determination of their popularity and credibility requires evidence support. However, the considerations for the authenticity of the substance of the evidence (such as authenticity and publication date) are not essentially different from those of domestic websites.
It can be seen that, the collegial panel’s view on the authenticity of network evidence is that for domestic websites with high credibility, such as the NetEase News Center in this case, the content is generally assumed true and credible without evidence to the contrary. For websites outside the territory or with uncertain credibility, such as foreign forums in this case, various factors (the operating entity’s nature, scale, popularity, interest, operating mechanism, and modification mechanism and the like) should be integrated into consideration. Regarding the determination of the publication date of network evidence, it is necessary to consider whether the displayed timestamp is automatically generated. If there is a network situation where the publicity status is optional when the user uploads a file (such as the video evidence in this case), other evidence should be combined to infer its purpose of publication and the publication date shall be judged in a comprehensive way.
Request for Reexamination of Application for Invention Patent “” (Reexamination Decision No. 185132)
Reexamination Petitioner: Company A
Application Number: CN201710733227.0 (now issued)
Decision: revocation of decision on rejection
The patent application involved in this case (“the Application”) relates to the field of semiconductor chips, and in particular, to a technology for manufacturing a 3D NAND flash memory.
In the decision on rejection of this case, the Examiner held that the difference between the Application and the closest prior art reference document 1 (“D1”) is mainly that: a chemical mechanical polishing (“CMP”) cut-off layer is formed on a multilayer stack structure, a top-level selective gate tangent layer is formed on the CMP cut-off layer, the excess top-level selective gate tangent material is removed by the CMP, and then a plug oxide is deposited. Regarding these distinguishing features, the Examiner held that another reference document 2 (“D2”) discloses the formation of a CMP cut-off layer, a functional layer is formed thereon, the excess part of the functional layer is removed by CMP, and then the CMP cut-off layer is removed; and that D2 discloses the technical solution of forming trenches, filling oxides and planarizing, so that those skilled in the art can easily think of adopting the technical solution proposed by D2 when facing the technical problem of how to form trench oxides, and thus the Application is not inventive over the combination of D1 and D2.
The focus of dispute in this case is the influence on the judgment of technical motivation by the motivation for improvement of those skilled in the art upon examination of inventive step, which is specifically reflected in: (1) whether there is a need for improvement of the closest prior art D1; (2) whether D2 can provide a technical motivation for improvement.
The collegial panel did not support the Examiner’s views. The collegial panel held the following opinion.
Based on the above-mentioned distinguishing technical features, the technical problem actually solved by Claim 1 is to avoid depression of the plug oxide caused by the difference in etching rates, thereby improving the curvature of the longitudinal section of a contact hole.
The technical solution of D1 does not involve the use of different processes to form a stacked functional layer, so that it cannot envisage that the use of different processes to form the stacked functional layer will lead to a difference in subsequent etching rates and the occurrence of defects related to the depression of the plug oxide. Therefore, the technical solution of D1 does not involve the technical problem faced by the Application.
D2 relates to shallow trench isolation technology and does not involve the manufacture of semiconductor memory. Although D2 discloses formation of a polishing stop layer on a surface of a substrate, the role of the polishing stop layer in D2 is: in the subsequent planarization process, producing a topography compensation effect with a polishing process different from that of a polishing buffer layer formed on the polishing stop layer and the insulating material in the shallow trench, so that the flatness of the insulating material in the shallow trench is better after the planarization process is completed. Therefore, the object to be achieved by the technical means disclosed in D2 is different from the object of the above-mentioned distinguishing technical features providing a CMP cut-off layer in Claim 1. It can be seen that D2 does not involve the technical problem solved by the Application, and does not provide a technical motivation for adopting corresponding technical means to solve the technical problem.
We are of the opinion that, for the relatively mature technical routes such as the field of semiconductor chip manufacturing, current improvements to the technical routes are mostly reflected in improvements in specific process details. In the semiconductor manufacturing process, technicians focus on the technical issues that lead to defects of product performance. The Application put forward a corresponding technical solution based on the above-mentioned specific technical problem, and the above-mentioned distinguishing features relate to a set of continuous processes, wherein the respective process steps relate to each other and the corresponding technical means cooperate with and support each other. Therefore, in the evaluation of the inventive step, similar to the third case “Keyboard switch for generating pressing sound” above, each element (here, each process step) of the distinguishing features cannot be mechanically separated from the technical solution for independent review, and it is necessary to consider the technical problem solved by the Application as a whole and judge whether the prior art provides a motivation for improvement as a whole.