Authors: Hui Li, Shumin Pang, Intellectual Property group, King & Wood Mallesons
The China National Intellectual Property Administration (CNIPA) announced the top 10 patent reexamination & invalidation cases of 2020 on April 26, 2020. These cases were selected due to 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 have great influence on the practices of both substantial examination and invalidation, and can also be cited as supporting references or evidence to benefit similar cases. Amongst the top 10 cases, three are related to electrical technologies and we summarize below the case brief and introduce the focus of the three invalidation cases of electrical inventions.
1. Request for Invalidating Invention Patent “DISTRIBUTED POWER HARVESTING SYSTEMS USING DC POWER SOURCES” (Invalidation Decision No. 47400)
Patentee: SolarEdge Technologies Ltd
Petitioner: Huawei Technologies Co., Ltd
Patent number: ZL201210253614.1
Focus issue: rules of interpreting technical features of a claim
This case involves technologies regarding the photovoltaic industry that have developed rapidly in recent years. King & Wood Mallesons participated in the invalidation process on behalf of the Petitioner Huawei in this case. In response to the invalidation request, the Patentee amended the claims, and interpreted the amended claims during the oral hearing. One of the focuses of controversy in the hearing lies in whether the Patentee’s interpretation of the technical features of the claims is reasonable, and how the technical features of the claims should be understood.
The subject patent pursues a distributed power harvesting system using dc power sources. In response to the invalidation request, the Patentee incorporated additional technical features from dependents Claim 3 and 5 into Claim 1 and amended Claim 1 recites:
“1. An apparatus for maintaining the reliability of distributed power system, comprising:
a power converter, wherein said power converter is operative to convert input power at said input terminals to an output power at said output terminals; and
a controller adapted for controlling the power conversion of said power converter, and configured to
receive a temperature signal from a temperature sensor, wherein the temperature sensor is connected to an input terminal of the controller and is adapted to measure temperature in said power converter or in environment thereof, and
based on said temperature signal, reduce said input power at said input terminals;
wherein the controller is configured to set at least one of input voltage and input current at said input terminals with a control loop according to one or more predetermined criteria, and wherein said one or more predetermined criteria specifies maximize the input power based on said temperature signal as input from said temperature sensor.”
During the invalidation process, the Patentee and the Petitioner had a quite different understanding on the interpretation of “based on said temperature signal, reduce said input power at said input terminals” recited in allowed claims and the newly added technical features.
The Patentee believes that the above two technical features should be understood as: “when the temperature of the power converter is too high, the input power of the power converter is reduced, and at the same time, the power of the power converter shall be as large as possible according to the actual situation on a premise that the input power is reduced to ensure decrease in the temperature of the power converter.” That is to say, the power of the power converter is kept as large as possible while ensuring that the temperature is not too high. This interpretation correlates the operation of maximizing input power in the two newly added features with “based on said temperature signal reduce said input power at said input terminals” as recited in the allowed claim 1, and the Patentee believed that the reduction of input power should shall ensure maximization of input power at specific situations.
In this regard, the Petitioner holds a different view and contends that
1) Amended claim 1 does not define the above correlation between “reduce said input power at said input terminal” and “maximize the input power” as contended by the Patentee.
2) In the specification, no technical solution related to the solution claimed by the Patentee is disclosed.
3) According to the statement in the Specification, after the input power reduction is performed on the basis of maximizing the power, there is no possibility of maximizing the input power any longer.
In response to the above disputes, the Panel pointed out in its decision that the interpretation of the technical features should be made from the perspective of a person skilled in the art, based on the content of the patent disclosure, and in the usual meaning in the art, and can refer to the interpretation of Patentee if necessary. In this way, it can not only clarify the real meaning of concept of the subject invention but also ensure the public’s public reliance interest.
Based on such an understanding, the Panel interprets, in the invalidation decision, the solution of Claim 1 based on the disclosure related to the above technical features in the specification with reference to the description of the relevant drawings. Particularly, when the temperature signal is in a normal range, the maximum input power is output by the DC/DC converter, and when the temperature signal is out of the range, the maximum input power is reduced based on the temperature signal, thereby improving system reliability by means of reducing temperature stress and increasing the expected life of the converter.
At the same time, the Panel pointed out that the specification did not recite the Patentee’s interpretation that when the temperature is out of the normal range, the power of the power converter shall be as large as possible according to the actual situation and gave no any specific means there about either. Based thereon, the Panel believes that the Patentee had over-interpreted the newly added technical features and introduced a solution that is not recited in the original disclosure of the subject patent. Such interpretation not only fails to facilitate the understanding of the above-mentioned disputed features, but also damages the public’s opinion reliance interest. Therefore, the Panel did not support this interpretation of the Patentee.
In the invalidation examination process, the correct interpretation of the technical solution or technical feature of the claims is an important process. On one hand, it would affect the determination of the protection scope of the subject patent, and on the other hand, it might also have a significant impact on the technical comparison concerning novelty and inventiveness. In our opinion, when interpreting a technical solution or technical features of a claim, one should first consider the wording of the claims and at the same time, refer to the technical problems to be solved by the subject patent, the technical solution adopted and the expected effects to get a reasonable interpretation. If necessary, the inventive concept and related implementations that can be reasonably derived from the subject patent disclosure can also be used as a reference. However, any interpretation of the technical solution of the claims should not exceed the scope of the patent application disclosure, or the ordinary understanding of those skilled in the art after reading the specification.
2. Request for Invalidating Invention Patent “Wireless Communication System” (Invalidation Decision No. 46741)
Patentee: Sharp Co., Ltd.
Petitioner: OPPO Guangdong Mobile Communication Co., Ltd.
Patent number: ZL01819676.4
Focus issue: Examination criterion of claim amendment during a patent invalidation procedure
This case relates to an invention patent titled “Wireless Communication System” owned by Sharp Co., Ltd. During the invalidation process, the Patentee amended the claims and one of the focus issues in the case is whether the Patentee’s amendments to the claims are acceptable.
The Patentee Sharp amended the claims as follows:
1）The Patentee amended the “intra-frame frequency band” in claims 4 and 6 to “intra-frame band” to correct obvious errors in the claims;
2）The Patentee incorporates the feature regarding a synchronization means at the mobile terminal side as recited in claim 1 into the claims at the base station side to further limit these claims.
Regarding the above-mentioned amendments, the Petitioner argues that
1) It does not belong to “correction of obvious errors” to modify “inner-frame frequency band” to ” inner-frame band;”
2) The amendments to claims 3 and 4 do not further limit the subject matter “base station” of the claims. The operation of the newly added technical feature “synchronization means” is actually implemented at the mobile station, instead of at the base station. Meanwhile, the base station does not need to make any corresponding adjustments for this synchronization operation of the mobile station, either. Thus, such amendments do not further limit the operation of the base station essentially.
3) The amendments to claims 3 and 4 go beyond the scope of the original disclosure, too. Neither the original specification nor the claim set of the subject patent recites a technical solution that the “base station” includes such a “synchronization device”.
With regard to the above amendments, the Panel made the following decision:
1) Regarding correction of obvious errors
The Panel cites stipulations concerning “obvious errors” during substantial examination and opines that, in the invalidation procedure, the obvious error in the claim should also be errors such as grammatical errors, wording errors, typos, etc., which could be obviously recognized by those skilled in the art and the correction should be definite and solely derived from the specification.
Based on the above understanding, the Panel believes that neither one skilled in the art could identify any obvious error from the additional technical features of claim 6 of the subject patent; nor can they identify the error from the original specification and claims; moreover, the corrected content cannot be solely derived from the text of the specification and its context, either and instead, there is probably other explanation or modification. Therefore, the alleged error does not belong to any of obvious errors as stipulated in the Guidelines for Examination. Therefore, these amendments to claims 4 and 6 cannot be considered as correction of obvious errors.
2) Regarding further limitation
The Panel holds that further limitation refers to incorporating into a claim one or more technical features recited in other claims, to further narrow the protection scope of the original claims. Such amendment shall substantially narrow the protection scope of the claimed subject matter instead of only formally adding additional features.
The Panel believes that allowed claims 3 and 4 respectively pursue a base station in a wireless communication system. The newly-added feature “the synchronization means” further limits components of the wireless communication system, instead of the base station. Meanwhile, operation of the synchronization means is actually performed by the mobile station, and the base station does not need any corresponding operations adapted for the “synchronization” operation of the mobile station, in other words, the synchronization operation of the mobile station will not affect the operation of the base station in claims 3 and 4. Moreover, the specification dose not recite any operation related to the synchronization at the base station, and thus such amendments go beyond the amendment manner that the public can reasonably expect.
Therefore, the technical features newly added to claims 3 and 4 do not further limit the protection subject of “base station” substantially, and cannot effectively narrow the protection scope of the claims.
Based on the above reasons, the Panel concludes that the amendments to the claims does not comply with the stipulated amendment manners and thus cannot be approved.
In addition to meeting the basic amendment principles, the amendment of a claim during the invalidation process also needs to comply with the stipulated amendment manners. According to the stipulations of the Guidelines for Patent Examination, manners of claim amendments allowed during the invalidation process are generally limited to deletion of a claim, deletion of solutions, further limitation of a claim, and correction of obvious errors.
In our opinion, correction of an obvious error must be an error that can be easily and obviously identified by a person skilled in the art, and the corrected content must be uniquely determined from the specification. In other words, if an error is not obvious or the corrected content is not solely derived from the specification, the Patentee cannot correct it by means of “correction of obvious error.”
Regarding “further limitation of a claim”, this means incorporating into a claim one or more technical features recited in another claim to narrow the protection scope of the claim. According to this regulation, the incorporated feature should be one or more integral technical features, and its purpose is to narrow the scope of protection. Therefore, if any of incorporated technical features is not an integral technical feature, or it cannot serve the purpose of narrowing the scope of protection, the amendment manner does not belong to further limitation of a claim. This typical case further clarifies that the limitation needs to be a substantial limitation on the subject matter of the claim. If this limitation is unrelated to the subject matter itself, it cannot be considered as a further limitation on the claims. Therefore, in the following invalidation processes, when the Patentee would like to amend the claim by means of “further limitation of a claim”, he/she shall further determine whether the amendment substantially narrow the protection scope of the claim so as to effectively take the opportunity of patent invalidation amendment.
3. Request for Invalidating Invention Patent “A Rental Method, System and Terminal for Powerbank” (Invalidation Decision No. 44977&44984)
Patentee: Shenzhen Laidian Technology Co., Ltd.; Beijing Bohe Wisdom Technology Co., Ltd.
Petitioner: Zhixiang Technology (Shanghai) Co., Ltd. Shenzhen Street Electronics Technology Co., Ltd.; Shenzhen Yunchongba Technology Co., Ltd.
Patent number: ZL201580000024.X
Focus issue: Examination Criterion of inventiveness of inventions related to business rules
This case relates to an invention patent titled “A method, system and terminal for renting powerbank”, which is a rental solution of shared powerbank that has become rather popular in recent years. As a scheme for renting a shared powerbank, the patent unavoidably involves business rules. In this case, the Panel provides a clear and specific criterion manner for the determination of inventiveness of business rules used in a different scenario.
The subject patent provides a technical solution of powerbank rental based on the interaction of mobile terminals, mobile powerbank rental terminals and cloud servers and includes specific processes of the transmission and reception of the first, second and third rental instructions among the three parties in the rental process, as well as specific operation concerning determining identity of a powerbank and identity of the powerbank rental terminal by the identification numbers, and determining powerbank rental based on the above data information either.
The Petitioners Zhixiang Technology (Shanghai) Co., Ltd. (hereinafter referred to as the first Petitioner), Shenzhen Street Electronics Technology Co., Ltd. (hereinafter referred to as the second Petitioner) and Shenzhen Yunchongba Technology Co., Ltd. (hereinafter referred to as the third Petitioner) respectively filed patent invalidation requests against the subject patent. The three Petitioners recited two types of the references as follows to challenge the inventive step of the subject patent:
Type I: References relating to powerbank or recharger rental with all rental operations implemented at a rental device.
Type II: References relating to article rental (such as shared bicycle rental) based on three-party interaction architecture.
The Panel holds that a business rule applied to an application scenario different from the prior art involves an inventive step if the business rule and the processing operations in the new scenario support each other and interact therewith so that the signal process and information control manner have changed greatly and significant differences in the processing process have been caused therefrom, and such an application can achieve advantageous effects different from the prior art.
Regarding references of Type I, the Panel believes that the references involve the rental of powerbank or recharger but the rental solution is totally implemented at the powerbank rental vending machine instead of among three parties including the mobile terminal, cloud server, and powerbank rental terminal. Meanwhile, they do not involve specific processes of the transmission and reception of the first, second and third rental instructions among the three parties in the rental process, and contains no specific operation concerning identifying identity of a powerbank and identity of the powerbank rental terminal by the identification numbers, and determining powerbank rental based on the above data information either.
Regarding references of Type II, the Panel indicates that they disclose a three-party rental architecture including a mobile phone, a server, and a rental terminal, but the rental scenarios are different and none of them discloses the specific operations of rental instruction interactions among the above three parties in the rental process or teaches the specific operations concerning identification of powerbank, and mobile power rental terminal, and rental determination operation based on the data information. In scenarios of these references, the rental of articles like a bicycle is implemented while the renter can observe the rented article; in the subject patent, however, the powerbank cannot be seen or selected by the renter, and instead, the rented powerbank is judged, selected, and provided by the system architecture composed of the mobile terminals, the mobile power rental terminal, and cloud server. Due to differences in rental scenarios, their processing processes are quite different. Therefore, the person skilled in the art will not conceive the above-mentioned distinguishing technical features without exerting inventive efforts. In addition, no evidence shows that the above-mentioned distinguishing technical features belong to common knowledge in the field, and the above-mentioned distinguishing technical features could also bring the beneficial technical effect, i.e., convenient rental of mobile powerbank. In view of this, the subject patent involves inventive steps over the cited references and common knowledge.
In recent years, solutions related to business rules already became patentable objects if they are not pure business rules and methods. Regarding examination of inventiveness thereof, the Guidelines also clearly stipulate that when examining the inventiveness of an invention patent application containing both technical features and algorithmic features or business rules and method features, an algorithmic feature or a business rule or method feature functionally supporting with a technical feature and having interaction therewith shall be considered with the technical feature as a whole.” However, in legal applications, issues on inventiveness of an invention related to business rules are still difficult. This case provides a specific assessing manner for inventiveness of inventions related to business rules applied in a different scenario, which is more easily applied in practice. For similar cases, the Patentee could argue the inventive step based on difference of scenarios and processing operations, causality between the scenario differences and the processing differences and the technical effects achieved by these processing differences.