Authors: Cheng Cheng, Intellectual Property group, King & Wood Mallesons
In the top ten patent reexamination & invalidation cases of 2020 announced by the China National Intellectual Property Administration (CNIPA), three 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 typical significance of these cases.
- Request for Invalidating Utility Model Patent “Sheet Material Loading and Unloading Device and Mobile Phone Glass Processing Center” (Invalidation Decision No. 35297)
Patentee: Company H
Petitioner: Company C
Patent number: ZL201520396790.X
Decision: patent right maintained
The patent involved in this case (“the Patent”) relates to the field of mobile phone glass processing, in particular to a sheet material loading and unloading device of mobile phone glass processing equipment. The Patent proposes a mobile phone glass processing center with a shared trough. The sheet material loading and unloading device realizes rapid replacement between the to-be-processed sheet material and the processed sheet material on a processing table through rotating a rotating rod and a rotating block by 180 degrees at a time, thereby solving the technical problem of long time for taking and placing materials in the prior art.
The focus of dispute in this case lies in the interpretation of the scope of protection of Claim 1 and the understanding of the closest prior art upon evaluation of inventiveness.
The Petitioner asserted that Exhibit 1, which is the closest prior art, discloses that high productivity of sheet material processing is achieved through cooperation of a support shaft, a conveying manipulator and its suction cups, a temporary placement platform, a lift and its suction cups, and other components. The conveying manipulator of Exhibit 1 rotates (swings) 90 degrees around the support shaft, and swings between a vertical posture of hanging down from the support shaft and a horizontal posture of extending from the support shaft to the side of processing machine. While arguing that the Patent is non-inventive, the Petitioner also asserted that Claim 1 lacks an essential technical feature “rotation angle of 180 degrees” of the rotating rod. The Petitioner was of the opinion that the description regarding the rotating rod and rotating block in Claim 1 is only about “a rotating mechanism having a rotating rod” and “a rotating block installed on the rotating rod, both front and rear sides of the rotating block being fitted with taking-and-placing parts suitable for taking and placing the sheet material”. However, based on such description, the technical solution of Claim 1 cannot solve the technical problem related to simultaneous loading and unloading of sheet materials. In commenting on the inventiveness, the Petitioner further asserted that Exhibit 1 records that the support shaft is equipped with a conveying manipulator rotating (swinging) 90 degrees around the support shaft, and thus the disclosed support shaft and the conveying manipulator correspond to the rotating rod and rotating block of the Patent.
The Patentee insisted that although Claim 1 of the Patent does not specify the rotation angle, the context of Claim 1 implies the technical content of 180 degrees of rotation angle. Moreover, the structure of the above support shaft and the conveying manipulator disclosed in Exhibit 1 does not correspond to the rotating rod and rotating block of the Patent.
In this regard, the Collegial Panel (“the Panel”) held that the understanding of the scope of protection of the claims encompasses not only an accurate understanding of each of the technical features recorded in the claims, i.e. the exact understanding of the meaning of each of the technical features and the meaning of the sentence in which they are written, but also an accurate understanding of the interrelationship between all of the technical features in the claims and the reasonable interpretation of the common meaning of the interrelated technical features.
Claim 1 of the Patent not only defines the technical features of the rotating rod and the rotating block, but also recites “a first drive mechanism for bearing the rotating mechanism to move in the direction of the arrangement of sheet materials and in the direction of up and down” and “a processing table disposed in the direction of the arrangement of sheet materials for further treatment of the sheet materials. Based on the technical features of rotating rod, rotating block, taking-and-placing parts, processing table and other technical features defined in Claim 1, those skilled in the art can clearly understand that the sheet material loading and unloading device takes and places the sheet materials by means of the taking-and-placing parts on both front and rear sides of the rotating block. Therefore, the rotation angle of the rotating rod and its associated rotating block shall be a rotation angle that is required to achieve taking and placing operations of the processed sheet material and the to-be-processed sheet material on the processing table through the rotating block’s taking-and-placing parts on said two sides. That is to say, based on the technical features of components of the sheet material loading and unloading device, and the structure and position among the components defined in Claim 1, combined with the whole claim, it can be determined that the claim covers a technical solution of taking and placing the processed sheet material and the to-be-processed sheet material on the processing table by means of the rotating rod and the rotating block that can be rotated by 180 degrees.
Moreover, the term “rotating block” as defined in the claims has a customary meaning in the art, and it is not specifically defined in the specification of the Patent, so that the understanding of this term by those skilled in the art should be based on its customary meaning in the art. In contrast, the conveying manipulator disclosed in Exhibit 1 with an L-shaped rod at one end and a flat square at the other and with a 90-degree swing during operation cannot be defined as a “rotation block” in the art. The conveying manipulator with such structure and the operation and the structure of the support shaft disclosed in Exhibit 1 actually constitute a swinging arm structure. Since this structure requires assistance of a temporary placement table and a lift to realize the replacement of the processed sheet materials and the to-be-processed sheet materials, the structure of taking and placing sheet materials in Exhibit 1 and that of the Patent are not the same, and the working principles of the two are also different. Therefore, Exhibit 1 cannot solve the technical problem to be solved by the Patent, nor can it achieve the technical effect of the Patent. Although the conveying manipulator of Exhibit 1 is provided with suction cups on opposite sides, it does not rotate 180 degrees to replace the processed and unprocessed sheet materials as the rotating rod and the rotating block of the Patent do. Thus, the rotating rod and the rotating block constitute the distinguishing features of Claim 1 of the Patent over Exhibit 1.
The Petitioner further alleged that another prior art Exhibit 3 discloses a structure of rotating rod and rotating block that functions the same as the Patent. However, as shown in Fig. 3 of Exhibit 1, its support shaft is inserted into a lift, and one end in an L shape of the conveying manipulator is connected to the support shaft. Such a structure makes it only possible to swing by 90 degrees as mentioned above. From the structure of the swing arm disclosed in Fig. 3 of Exhibit 1, it is not easy for those skilled in the art to change the structure of the support shaft inserted into the lift and the conveying manipulator to the structure of the rotating rod and the rotating block. Therefore, even if Exhibit 3 discloses the structure with the same function as the rotating rod and the rotating block of the Patent, due to the limitation of Exhibit 1 that is the closest prior art, those skilled in the art are unable to combine Exhibit 1 and Exhibit 3 to obtain the technical solution of Claim 1 of the Patent.
We are of the opinion that, the Petitioner alleged that Claim 1 of the Patent does not define the rotation angle of the rotating rod and the rotating block, that is, such rotation angle could be construed as an arbitrary angle, so that Claim 1 has a broader scope of protection. It can be understood from the Petitioner’s allegation that the ground for invalidation based on formality clauses serves as a pavement for subsequent comments on the inventiveness. However, this ground for invalidation failed to interpret the rotation angle of the rotating rod and the rotating block of Claim 1 as an arbitrary angle. That is to say, when making technical comparison between the support shaft and the conveying manipulator disclosed in Exhibit 1 and the rotating rod and rotation block of the Patent, the scope of protection shall not be defined as the rotation angle of the rotating rod and the rotation block being any angle simply because Claim 1 of the Patent does not directly define the rotation angle thereof. Therefore, the conveying manipulator and the support shaft, which can rotate (swing) 90 degrees, as disclosed in Exhibit 1, shall not correspond to the rotation block and the rotation rod of the Patent.
Moreover, the case illustrates that, in the process of examination of inventiveness, it is necessary to consider whether there is technical enlightenment from the “whole” of the prior art reference, instead of simply superimposing or piecing together the means in the prior art references. If the closest prior art reference itself does not have a basis for improvement, even if another prior art reference discloses distinguishing technical features that can achieve corresponding functions, those skilled in the art have no motivation to combine such prior art references.
- Request for Invalidating Utility Model Patent “Voice Coil Motor Driving Liquid Lens and Lens Set thereof” (Invalidation Decision No. 46459)
Patentee: Company A
Petitioner: Company H
Patent number: ZL201820385939.8
Decision: patent right maintained based on amendment
The patent involved in this case (“the Patent”) relates to the technical field of liquid lens, in particular to a voice coil motor driving liquid lens and a lens set thereof.
The focus of dispute in this case lies in whether a U.S. provisional application can be used as the basis for the right of priority for a Chinese patent application, whether the technical solution of the Patent and that of the reference document are the same, and whether the Petitioner shall explain the causes and relevant evidence when filing a request for invalidation.
The Petitioner alleged that Claim 1 of the Patent is lack of novelty over reference document 1 (D1). D1 is a Chinese patent application, of which the priority is a U.S. provisional patent application.
The Patentee amended Claim 1 to add some of the features of Claim 8 to Claim 1, and deemed that the amended Claim 1 possesses novelty and inventiveness. The Patentee also asserted that the priority document of D1 was the one formed by the U.S. provisional application, which was not disclosed to the public and could not be retrieved in China, so that the priority of D1 could not be established.
In the oral hearing, the Petitioner demonstrated the whole process of obtaining the U.S. provisional patent application by logging on the website of the U.S. Patent and Trademark Office, and asserted that the right of priority of D1 is established so that D1 constitutes a conflicting application of the Patent.
In this regard, the Panel interpreted it from the perspective of the Paris Convention and recognized the validity of the priority of D1. Specifically, if a foreign priority date of a reference document is prior to the filing date of the Patent and the filing date of the application of the reference document in China is after the filing date of the Patent, and the contents of the reference document are the same as the subject matter of its priority document, the technical solution for which the priority is established in the reference document can be used as a technical solution of a conflicting application for evaluating the patent in dispute.
With respect to novelty, although D1 constitutes the conflicting application of the Patent, the Panel held that the amended Claim 1 is different from D1.
With respect to the difference, the Petitioner held that, reference document 2 (D2) has disclosed all the technical features of Claim 1, and alleged that even if there are any different technical features between Claim 1 and D2, they all belong to common knowledge or common technical means in the art, so that Claim 1 is not inventive.
The Panel held that, according to the provisions of Part IV, Chapter 3, Section 4 of the Guidelines for Examination, for causes that are not explained concretely or evidence that is not used to support any cause at the time of submission of the request for invalidation by the Petitioner, if no further explanation is provided within one month from the date of filing the request, they will not be taken into account. In this case, according to the request for invalidation submitted by the Petitioner, the Petitioner neither identified the distinguishing features between Claim 1 and D2 nor specifically explained the relevant causes for invalidation accordingly, but merely pointed out hypothetically that even if the distinguishing features exist, such distinguishing features belong to the common knowledge. Therefore, the Panel did not consider the above-mentioned causes for invalidation of the Petitioner.
We are of the opinion that, this case explains in detail why the U.S. provisional application can be used as the basis for foreign priority of a Chinese patent application. In addition, this case provides enlightenment to the Petitioner for invalidation that, when arguing that the patent in dispute lacks inventiveness, one should not merely point out formally that even if there is a difference in the claims compared with the prior art, the difference belongs to common knowledge, but should identify the distinguishing features between each claim and the closest prior art, and make specific comments in combination with the common knowledge or other reference documents. Otherwise, such causes for invalidation not explained in combination with the evidence will not be considered by the Panel.
- Request for Invalidating Invention Patent “Flat Knitting Machine” (Invalidation Decision No. 47197)
Patentee: Company H
Petitioner: Company D
Patent number: ZL201610534695.0
European patent number of the patent family: EP3115491B1
Decision: patent right maintained
The patent involved in this case (“the Patent”) relates to the technical field of flat knitting machine.
The focus of dispute in this case lies in whether the specification of the Patent sufficiently discloses the claimed technical solution, whether the claims are clear, and whether the claims possesses novelty and inventiveness as compared with the prior art. One of the core issues is how to understand the meaning of a specific technical term accurately to define the protection scope of the claims correctly.
The Petitioner asserted that, in the solution of a flat knitting machine claimed in Claim 1 of the Patent, the term “针织锁扣” has no ordinary meaning in the art, and the specification of the Patent does not have any explanation on the meaning of this term, resulting in unclear scope of protection of Claim 1.
The Patentee held that the term “针织锁扣” corresponds to the German expression “Strickschlösser” and English expression “cam assembly”, and that its literal meaning clearly indicates that it is a component that acts as a lock used for knitting or during the knitting process, with its function also described in the specification, and it is usually called a tripod carriage in Chinese.
The Panel held that, when judging the meaning of a certain technical term in the claims, it should be understood from the perspective of those skilled in the art in conjunction with the specification and drawings. In this case, in the German priority document (EP15176118.6) of the Patent, the term corresponding to “针织锁扣” is “Strickschlösser” (“rope lock” in English), so that the term “针织锁扣” is the literal translation of the foreign word. Paragraph  of the specification of the Patent recites, “Fig. 1 shows a flat knitting machine 100 having a front needle bed 10 and a rear needle bed 10’ in cross section. A slider 20 can move through the needle bed 10, 10’, and front and rear rope locks 30, 30′ fixed at the slider, with which a knitting tool not shown in more detail can be triggered.” Referring to the schematic structural diagrams shown in Figs. 1 and 2, those skilled in the art can clarify identify that the rope locks 30, 30’ are located at the front and rear of the slider 20 and are used to trigger the knitting tool. Based on the description of the position, function and linkage relationship with other parts of the rope locks in the above text and drawings, those skilled in the art can ascertain that the term “针织锁扣” in the Patent refers to the tripod carriage commonly referred to in the art.
We are of the opinion that, the Patent actually involves the issue of interpretation of terms due to translation. Generally speaking, if the meaning of a term can be corroborated by the original text of the priority document, its original meaning can still prevail. In addition, even if the translation of a technical feature is not accurate, the specification of the patent still explains the function thereof, such explanation can also be used to explain the common expression used by those skilled in the art that the term actually refers to.
This case provides an examination approach with respect to how to accurately understand the meaning of a specific technical term, clarifying that when the specification does not give a specific definition to a specific term, the understanding of the term in the claims should take into account the common meaning in the art, and whether the common meaning is consistent with the content obtained by those skilled in the art according to the specification and drawings in the patent. Moreover, for the understanding of technical terms, it is possible to find out the true meaning thereof in combination with the “internal evidence” of the patent, such as the text of the priority document. This case clearly defines the protection scope of the patent right, providing the patentee with protection commensurate with the degree of innovation and contribution of the patentee, reflecting the examination concept of both strict protection of intellectual property rights and maintenance of public interest in the patent right determination procedure.