Written by: Hui Li, Shumin Pang
In the top 10 patent reexamination & invalidation cases of 2019 announced by the China National Intellectual Property Administration (CNIPA), two are related to electrical 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 focuses of the two invalidation cases of Electrical and Electronic invention.
- Request for Invalidating Invention Patent “METHOD FOR TRANSMITTING UPLINK SIGNALS” (Invalidation Decision No. 39900)
Patentee: Company A
Petitioner: Company B
Patent number: 200880112278.0
Decision: patent right maintained
The patent involved in this case (“the Patent”) relates to the field of mobile communication technology, and specifically to a solution of transmitting uplink signals. The Patent provides a solution of transmitting uplink signals by efficiently arranging ACK/NACK signals and other control signals in a resource region based on priority among them.
The Patent claims benefits of four preceding priority applications, the first three of which are US provisional applications listed as follows:
The first priority application: US 60/972244
The second priority application: US 60/987427
The third priority application: US 60/988433
One of focuses of dispute in this case is the judgment whether reference documents used in the Invalidation Request belong to the prior art, and specifically whether the Patent can enjoy a right of priority to the priority applications.
During the invalidation process, the Petitioner asserted that the Patent could not enjoy a right ofpriority to the above three priority applications. The Patentee gave up the right of priority to the first priority application in court during the oral trial. Regarding the second priority application, the Petitioner believes that the “2-dimensional resource range” recited in Claim 1 of the Patent contains reference signals, but the second priority application mentions nothing about that. Particularly, the second priority application recites a first mapping method by which the information sequence to be transmitted on the uplink is mapped to a (12×12) matrix in a way of arranging the sequence preferentially on the time axis but the matrix does not contain the above two reference signals. Therefore, the technical solution of claim 1 cannot be directly and unambiguously determined from the second priority application document, and Claims 1-4 cannot enjoy the right of priority to the second priority application. For similar reasons, Claims 1-4 cannot enjoy of the right of priority to the third priority application either.
Regarding the above assertions, the collegial panel asserted that those skilled in the art can directly and unambiguously determine, according to the description of the first mapping method and related figures in the second priority document and the description of the first mapping method on page 4 in the translation, that the 2-dimensional resource range shown in the second priority document includes RS symbols used as reference signals and another (12×12) matrix of uplink information sequence. In addition, in conjunction with the mapping sequence and position arrangement of the control signaling, data information, and reference symbols shown in Figure 9 in the second priority application, it can be known that the second priority application also discloses how to sequentially multiplex the signals to the above 2D resource range including RS symbols and the matrix and how to rewrite the related content of ACK/NACK. Therefore, based on the above understanding, the collegial panel concluded that the technical solution of claim 1 can be determined directly and without doubt from the second priority applicationand the Petitioner’s assertion that Claims 1-4 of the Patent cannot enjoy of the right of priority to the second priority is untenable.
For similar reasons, the Petitioner’s assertion that Claims 1-4 of the Patent cannot enjoy the right of priority to the third priority is unreasonable, too. And based thereon, the collegial panel believes that the Reference document 8 with a publication date between the second priority date and the third priority date cannot constitute the prior art of the Patent to access the novelty and inventiveness of the Patent; the Reference document 9 with a publication date between the first priority date and the second priority date can constitute the prior art of the Patent to access the inventiveness of the Patent.
We opine that upon judging whether a patent or patent application can enjoy of the right of priority to a preceding application, one should follow a principle about whether the application or patent application belongs to an invention or utility model of the same subject. In other words, the patent/patent application should be compared with the priority documents in terms of technical fields, technical problems to be solved, adopted technical solutions and expected effects, and then it should be determined whether they are substantially the same in these aspects. Particularly, when judging whether the technical solutions are substantially the same, one should not only pay attention to the literal statement in the description and the drawings, but also understand the essence of the solution based on the overall technical solution, and analyze the solutions from the perspective of and to the knowledge of those skilled in the art, to determine correctly whether the technical solutions are substantially the same.
- Request for Invalidating Invention Patent “Graphical User Interface for Mobile Communication Device” (Invalidation Decision No. 41733)
Patentee: Company A
Patent number: ZL201730667916.7
The patent involved in this case (“the Patent”) relates to a graphical user interface for sharing videos, through the user’s interactive operation of the graphical user interface, thereby realizing video/live sharing. Specifically, the user interface with multiple sharing icons can be displayed in the mobile device, each sharing icon at the bottom of the interface can be clicked for video/live sharing, and each icon on the interface can be used for human-computer interaction.
The Petitioner submitted 6 evidences, among which Evidences 2-3 were network evidences downloaded using a downloading tool PP Assistant application, and Evidence 4 was a post on the third-party forum. During the invalidation process, the Patentee also submitted a Counter-Evidence 1 to prove that the downloading tool PP Assistant was un-reliable and the contents and dates shown in the Evidence 4 were contradictory.
One of focuses of dispute in this case is about ascertainment of the non-patent Evidences 2 to 4, including issues on the legality of the evidences, accuracy of the PP assistance, whether the date shown by the PP Assistant is the publication date in the sense of the Patent Law, whether the date shown in the third-party forum can be deemed as the publication date of a post, etc.
Regarding the above Evidences 2 to 4, the Patentee asserted as follows:
1） For Evidences 2 and 3, the Patentee opines that the use of PP Assistant to download software lacks the legality and accuracy; the date show by the PP Assistant cannot be considered as the publication date in the sense of the Chinese Patent Law, and the Counter-Evidence 1 shows that software cannot be downloaded from the PP Assistant successfully, or the software cannot be opened after being downloaded, the software can be downloaded successfully but cannot be logged in, or etc.; the publication date shown in Pea Pod (another download assistant tool) cannot be recognized, and the software version downloaded by PP Assistant and Pea Pod does not correspond to versions available from the official website of the patentee and thus no evidences prove the release date of TikTok V1 .6.4 and V1.6.5.
2) For Evidence 4, the Patentee believes that the Jianshu website is a personal forum, and the Petitioner did not explain the management and operation mechanism of the website, and thus could not prove the date shown in the website is publication date of the post or the article. At the same time, Counter-Evidence 1 shows there are contradictory contents and different dates. It cannot prove the publication date of the TikTok app.
3) The user interfaces of the same software version shown in Evidence 2 and Evidence 3 are different in many aspects and it cannot prove that the downloaded version is an officially-released version and its date is the official website released date.
The collegial panel did not agree to the above assertions of the Patentee, but opines that the Patentee’s opinions were untenable.
Specifically, regarding the legality, the collegial panel held that the legality of evidences means that the formation and acquisition of evidences comply with relevant provisions of the laws. Evidence 2 notarized the evidence preservation process of the design 2-3 in detail, and the evidences acquisition method as shown in Evidences was not obviously inappropriate. At the same time, the Petitioner asserted that the “TikTok v1.6.5〡49.02MB Date: 2017-12-15” on the PP Assistant application software is originated from the Patentee, and the Patentee neither denied the assertion nor submitted anything substantial evidences that overturns the Petitioner’s claims.
Regarding accuracy, the collegial panel opines that Evidence 2 shows that the PP Assistant software was used by about 25.69 million people upon notarization. Although the Counter-Evidence 1 recorded that some users reported that there were some problems in downloading and using PP Assistant, there are also a large number of users’ positive reviews after downloading, installing and using. Some problems during the downloading and installation process cannot overturn the fact that the software can be downloaded, installed and used normally, which led to the disclosure of the corresponding graphical user interface.
Regarding the differences between user interfaces of the same version in Evidence 2 and Evidence 3, the collegial panel holds that the above differences are regular changes in icons that appear during the normal use of the APP. Regarding the official website version and the official release date, the collegial panel believes that the Petitioner did not contend that the downloaded TikTok application and its publication date are from the official website of the Patentee, the Patentee rebuttal does have pertinence; at the same time, as the owner of the TikTok application downloaded in the evidences, the Patentee neither submitted any evidence to prove its official version and official release date, nor provided evidence proving the evidences source being illegal.
Therefore, the collegial panel concluded that the Patentee’s questioning opinions and counter evidences cannot support the Patentee’s assertions and thus these assertions cannot be accepted.
We opine that for the legality of the network evidences, it should be verified that whether the subject of the evidence acquisition, the acquisition method, the evidence acquisition procedure, and the extraction method comply with the legal requirements. Regarding the authenticity of the network evidences, it shall be checked that the source, form, production process, and equipment of the network evidences to determine whether the content is authentic, whether it is tailored, patched forged, and tampered. In the case of inconsistencies of some contents, detailed analysis should be made based on specific conditions.
For the network evidence acquisition, there are many approaches. When the software is downloaded directly from the website, without contrary evidence enough to overturn the conclusion, the upload time, update date, or the like shown on the website can be regarded as the date when the software is available for the public, i.e., the publication date. If the software is downloaded from an application market, the software download assistant or similar assistant APPs installed in mobile device, the date of the corresponding software version displayed in the assistant APP can be regarded as the date when the software is available to the public without any contrary evidence enough to overturn the conclusion. For posts or articles published on the website, if there is no contrary evidence sufficient to overturn the conclusion, the date marked on the article webpage can be regarded as the publication date.