Written by:Mao Jin( Intellectual Property)

 

 

 

I.Case in brief

The present case, which relates to a series of patent infringement disputes between Shenzhen Goodix Technology Co., Ltd. (hereinafter referred to as Goodix) and Shanghai Silead Microelectronics Technology Co., Ltd. (hereinafter referred to as Silead Micro) in connection with fingerprint recognition, is of great significance.  The subject patent is an inventive patent No.ZL201410204545.4 entitled “Terminal Based on Fingerprint Recognition and Login Method and System in Standby State” owned by Goodix.  Goodix accused the GSL6277 chips manufactured by Silead Micro of infringing the above-mentioned patent.

The key point of the case lies in two acts of Goodix.

1.Goodix filed multiple patent infringement lawsuits against Silead Micro during the equity restructuring project, hindering the project of the Silead Micro

During the equity restructuring project where the GegaDevice Semiconductor (Beijing) Inc. acquired the equity of Silead Micro, Goodix, as a competitor of Silead Micro in the same industry, filed six consecutive patent infringement lawsuits with a total compensation amount of up to 363 million yuan within 3 months at the time when the China Securities Regulatory Commission was reviewing and verifying the restructuring project of Silead Micro.  As a result, the equity restructuring project of Silead Micro had to undergo on-site inspections of the Securities Regulatory Commission, causing a delay in the restructuring project.  Entrusted by the Silead Micro, KWM responded to the above-mentioned series of cases, offered a legal opinion on the impact of the above-mentioned infringement cases on the M&A project at the Securities Regulatory Commission, and eventually assisted the client to successfully pass the examination.

2.In the proceedings, Goodix claimed to compare the “Data Booklet” of the product with the claims of the subject patent for determining infringement

In the patent infringement lawsuit, Goodix submitted the “Data Booklet” of the product downloaded from the third-party website “Electronic Engineering World” and claimed that the Booklet can be compared with the claims of the subject patent.  By formulating a rigorous chain of counter-evidence and submitting the same to the court, KWM challenged the authenticity of the “Data Booklet” evidence.  Finally, the court decided in the second instance that it is improper to use the “Data Booklet” as the basis for infringement comparison, and that a new trial should be held to determine whether the alleged infringing products fall within the scope of protection claimed in the claims of the subject patent.

II.First and second instance judgments

The first-instance court held that, since the alleged infringing products having the trademark “Silead” and the model type “GSL6277FC” printed thereon, it is sufficient to determine that the alleged infringing products are manufactured by the Silead Micro.

However, through examination, the second-instance court held that: when determining whether the alleged infringing technical solution falls into the protection scope claimed in the claims of the subject patent, comparison should be made between the technical solution embodied by the alleged infringing products and the claims of the subject patent; if the technical comparison is performed based on the technical solution as recited in the product instruction, manual, drawings, and the like, the authenticity of the comparison object and the correspondence thereof with the technical solution of the alleged infringing product.  In the present case, the existing evidence is not sufficient to verify the authenticity of the Data Booklet, nor has the defendant confirmed the authenticity of the Data Booklet.  Moreover, the existing evidence is not sufficient to prove that the Data Booklet corresponds to the alleged infringing product.  In the presence of the infringing products, the original court directly judged whether the infringing technical solution falls within the protection scope of the claims of the subject patent on the basis of the Data Booklet not confirmed by the concerned party, which is an inappropriate object of comparison.  Therefore, a new trial should be conducted on whether the infringing products fall within the protection scope of the claims of the subject patent to fully protect the right of Silead to express its opinions on the prior art defense.  In the end, the second-instance court revoked the judgment of the first instance in accordance with the law and sent the case back to the original court for retrial.

III. KWM strategies and key points in the case

1.Assisting the client in smooth passage of the equity restructuring project

In the present case, the primary KWM strategy is as follows: to solve, in addition to the patent infringement litigation, the problem caused by on-site inspections performed the Securities Regulatory Commission during the M&A project due to the patent infringement cases, so as to help the client pass the examination smoothly.

At the time when the China Securities Regulatory Commission was reviewing and verifying the restructuring project of Silead Micro, Goodix, as a competitor of Silead Micro in the same industry, filed six consecutive patent infringement lawsuits with a total compensation amount of up to 363 million yuan within 3 months.  As a result, the equity restructuring project of Silead Micro had to undergo on-site inspections performed by the Securities Regulatory Commission, causing a delay in the restructuring project.  Entrusted by the Silead Micro, KWM responded to the above-mentioned series of cases, offered a legal opinion on the impact of the above-mentioned infringement cases on the M&A project at the Securities Regulatory Commission, and eventually assisted the project to successfully pass the examination.  The process and outcome of this series of cases have positively echoed the opinions issued by the Shanghai High Court on strengthening the protection of intellectual property rights of companies involved in the science and technology innovation board.  It is of positive significance in effectively safeguarding the legal rights and fair competition of science and technology enterprises, and also gives insight to settle other intellectual property disputes involved in science and technology innovation enterprises at the issuance and listing examination stage.

2.Submitting a rigorous chain of counter-evidence to the court to challenge the authenticity of the other party’s evidence, so as to rule out the key “evidence” on which the other party relies for patent infringement comparison

In the present case, the KWM strategy is as follows: in the patent infringement litigation procedure, to focus on collecting, organizing, and submitting the rigorous chain of counter-evidence in favor of our point of view, and to further convince the court step by step by questioning the authenticity of the other party’s evidence, so as to exclude the key “evidence”, namely “Product Data Booklet”, on which the other party relies for patent infringement comparison and infringement compensation.

During the trial of the first instance, Silead Micro clearly indicated that: the alleged infringing products are not publicly sold in the market, and the Data Booklet is confidential material and will not be disclosed to the public; and the authenticity of the Data Booklet submitted by Goodix and its correspondence with the product are in doubt.  However, in the condition that there still lacks sufficient evidence proving the correspondence between the data Booklet and the alleged fingerprint chip, the court of the first instance insisted on comparing the Data Booklet not confirmed by Silead Micro and then drew the conclusion of infringement.

The key point of the case lies in how to convince the court to exclude the “Data Booklet” from the “evidence” in this case because it is not authentic, nor does it correspond to the accused fingerprint chip product.  From this perspective, KWM actively collected, organized and submitted the chain of counter-evidence to the court.

In the course of the second trial, with respect to the GSL6277 Chip Data Booklet for infringement comparison conducted in the first trial, KWM assisted the Silead Micro to further provide corresponding counter-evidence, to demonstrate that the Chip Data Booklet is not authentic, nor does the accused fingerprint chip correspond to the Data Booklet.  Wherein, the counter-evidence includes the evidence proving that it is Goodix that uploaded the Data Booklet for infringement comparison to the website of the Electronic Engineering World, and the evidence demonstrating that there are obvious differences between the accused fingerprint chip and the technical solution according to the Data Booklet, as well as the appraisal that the actual pins of the accused fingerprint chip are remarkably different from the Data Booklet.  From perspectives of the evidence source and the consistency with the alleged infringing product, efforts are made to rule out the Data Booklet from an unknown source from the valid evidence.  Eventually, the court of the second instance accepted the opinion from KWM and clearly set forth that the authenticity of the Data Booklet is doubtful, and the authenticity of the comparison object and the correspondence thereof with the technical solution of the accused product should be checked if infringement comparison is made between the Data Booklet and the patent technical solution.

The present case not only gives insight into how to deal with evidence cross-examination in patent infringement cases, and how to take drastic measures to handle the key “evidence” from the other party, but also is enlightening in determining the object for infringement comparison to ensure the accuracy of the trial result.