Written by:Mao Jin（Intellectual Property）
I.Case in brief
China began to implement exhaust emission standards in 2001, which has gone through five stages and will soon enter in the sixth stage (CHINA VI). The exhaust gas reduction technology used in each stage is different accordingly. The two patents involved in this case protection is a metering pump device being used for exhaust gas purification, and the two involved exhaust gas reduction technologies meet CHINA V emission Standards and will not be adopted by CHINA VI Standard. Once China fully enters the CHINA VI era in terms of exhaust emission standards, the metering pump devices claimed in the two patents conforming to the CHINA V Standards will be completely obsolete. Therefore, for the Plaintiff (i.e. the Patentee), there is a technical timeliness limitation in the case, i.e., if the Plaintiff cannot win the patent infringement lawsuit before China fully enters the CHINA VI stage, the technologies claimed in the subject patents will be out of date, and the subject patents will also be useless.
In this case, King & Wood Mallesons (KWM) acted for Weifu Lida to defend against the Plaintiff’s two patents involved in the case and gained favorable results for the non-infringement defenses against the two patents. At the same time, the KWM also represented the Weifu Lida to file invalidation requests against the two patents of the Plaintiff. Specifically, the two subject patents have gone through an invalidation procedure performed by the Reexamination Department and a first-instance administrative proceeding. As a result, an independent claim of one of the patents has been successfully invalidated while the other of the patents still remains valid. Due to the professional and ingenious litigation strategy formulated by the KWM, the above-mentioned result obtained in the administrative litigation against the two patents plays an important and crucial role in the favorable outcome of the final non-infringement defense.
II. Case development
1.It is determined in the administrative litigation that one of the patents remains valid while independent claim 1 of the other patent is invalid.
In the invalidation examination against the subject patent 1, the China National Intellectual Property Administration (CNIPA) determined that: the feature “the center plate (40) is formed as a single component, and at least the metering pump (2) and the pre-mixing device (39) are disposed in the center plate (40)” conveys the meaning that “the pre-mixing apparatus” in the metering pump apparatus is an “integral” component; accordingly, it is determined that the subject patent 1 is different than the prior art and thus possesses novelty and inventiveness. In the subsequent administrative litigation, the Court confirmed the determination of the CNIPA and maintained the invalidation decision.
In the invalidation examination against the subject patent 2, the CNIPA determined that the technical solution claimed in the claims of the subject patent 2 is different than the prior art and thus possesses inventiveness under Article 22.3 of the Chinese Patent Law, and therefore maintained the subject patent 2 valid. In the subsequent administrative litigation, through evidence comparison, the Court held that claim 1 does not possess inventiveness. Considering that it is determined in the invalidation decision that dependent claims 2-12 possess novelty or inventiveness for the analogous reasons on independent claim 1, the Court decided that the inventiveness of the technical solutions claimed in claims 2-12 of the subject patent 2 should be reexamined by the CNIPA.
2.Based on the result obtained in the administrative litigation, a favorable outcome was attained in the final non-infringement defense in the civil infringement litigation.
On the basis of the administrative litigation, the Court conducted a trial on the civil case in connection with the two subject patents.
With respect to the subject patent 1, since the patent is maintained valid, the Court organized an investigation on the accused infringing product. After comparison, it was determined that: the pre-mixing device of the alleged infringing product is a detachable structure, rather than the “single integral component” as required in the subject patent 1, i.e., the pre-mixing device is not identical or equivalent to “the center plate (40) is formed as a single component, and at least the metering pump (2) and the pre-mixing device (39) are disposed in the center plate (40)” as recited in the subject patent 1; on the basis, the alleged infringing product does not fall into the scope of protection of claim 1 of the subject patent 1, nor does it fall into the scope of protection of claims 2-21. Therefore, the Court held that the alleged infringing product falls out of the protection scope of the claims of the subject patent 1.
With respect to the subject patent 2, the KWM, acting for Weifu Lida, submitted to the Court the relevant opinion that the lawsuit should be dismissed for this case. Specifically, the KWM put forward: Rule 2 of Notice by the Supreme People’s Court on the Guiding Opinions on Unifying the Application of Laws to Strengthen the Retrieval of Similar Cases provides that: a people’s court handling a case under any of the following circumstances shall retrieve similar cases … (2) where there is no clear judgment rules or uniform judgment rules have not been formed …; the case falls into the above circumstance. In addition, the KWM submitted the Supreme Court’s (2019) Zui-Gao-Fa-Zhi-Min-Zhong No. 589 case, proposing that this case should follow the Judgment of Case No. 589. In the Case No. 589, it was determined in the first-instance administrative litigation that the independent claims 1 and 12 of the subject patent 2 do not possess inventiveness, and no comments are provided on the inventiveness of dependent claims. Subsequently, it was determined in the first-instance civil litigation of Case No. 589 that the lawsuit is dismissed because claims 1-12 of the subject patent 2 are deemed to be unstable in effectiveness on the grounds that the independent claims 1 and 12 do not possess inventiveness. The two cases both went to the Supreme Court, and the first-instance judgment was upheld. The Supreme Court specifically clarified “the reason for the inventiveness of dependent claims 2-11 is only that independent claim 1 possesses inventiveness; therefore, where the claim 1 does not possess inventiveness, there is no way to determine that dependent claims 2-11 possesses inventiveness; in the case, claims 1-12 of the subject patent are in an unstable state in effectiveness.” The Court finally agreed with the KWM and rejected the patent infringement lawsuit in connection with the subject patent 2.
III. KWM strategy and contribution in the case
In this case, the KWM’s strategy is that even if a non-infringement judgment cannot be attained for all the claims of the two subject patents due to objective constraints, every endeavor should be made based on an ingenious litigation strategy to strive for a favorable litigation result for the Weifu Lida. Starting from this point, the KWM formulated the litigation strategy from two aspects: ① since the subject patents are subject to limitation of technical timeliness, applying to the Court to reject the Plaintiff’s claims, so as to make the subject patents unfavorable in terms of litigation time during the CHINA V stage; ② when formulating the invalidation strategy, focusing on key technical features in the patent invalidation procedure, in order to obtain favorable official explanations for the infringement defense.
1.When formulating the invalidation strategy, making a backup plan, namely, making every effort to gain an official interpretation favorable to the non-infringement defense for the key technical feature even if the subject patents in the case were not invalidated.
On the one hand, the KWM developed an ingenious invalidation strategy. The difficulty involved in the non-infringement defense for the subject patent 1 lies in that a key feature in the claims is ambiguous, and different interpretations thereon may directly lead to an infringement conclusion. Therefore, when the KWM filed an invalidation request against the subject patents, the focus was deliberately put on the ambiguous key feature. As a result, although the CNIPA maintained the subject patents valid, a favorable explanation was also formed for the determination of non-infringement.
On the other hand, the KWM applied for a procedural change favorable to the smooth progress of the case. In order to clarify the subtle differences of different interpretations on the key feature to the Judges, the KWM applied for a collegial panel to hear the administrative litigation case. In the circumstance, the Presiding Judge could fully understand the importance of different interpretations on the key feature, which is important to determine whether there is a difference over the prior art and whether the infringement is established. Eventually, a non-infringement judgment was made although the patents were still maintained valid.
2.Starting from the limitation of the technical timeliness of the subject patents involved in the case, applying to the Court to dismiss the Plaintiff’s claims based on retrieval of key similar cases and in combination with the administrative litigation result that the validity status of the independent and dependent claims is uncertain.
On the one hand, based on the result that a claim of the subject patents has been invalidated, the KWM submitted an application for dismissal of the civil lawsuit in connection with the case. Regarding the subject patent 2, the Plaintiff sued the Weifu Lida for infringement based on a combination of the independent and dependent claims. Although the first-instance administrative litigation judgment overruled the invalidation decision that maintains the subject patent 2 valid, it was determined that independent claim 1 does not possess inventiveness and the CNIPA was ordered to make a new invalidation decision. Furthermore, nothing was provided on the inventiveness of dependent claims. Under this circumstance, the KWM submitted an application to the collegial panel to dismiss the civil lawsuit on the grounds that the subject patent is not stable.
On the other hand, based on an accurate search of similar cases, typical judgment documents were furnished to convince the collegial panel of the uncertainty of the validity of dependent claims. With respect to the above-mentioned application for dismissal of the civil lawsuit, the concerns of the collegial panel mainly concentrate on that the Plaintiff in the civil case claims infringement based on the independent and dependent claims, but the inventiveness of the dependent claims was not evaluated in the administrative litigation judgment. To this end, the KWM conducted sufficient research and finally found a previous Supreme Court’s precedent that was consistent with this case, and applied to the Court to reject the Plaintiff’s claims in accordance with the guiding opinions of the Supreme People’s Court on retrieval of similar cases, and gained the approval from the collegial panel.
In a word, with the aid of the invalidation procedure, a favorable non-infringement judgment or a ruling to dismiss the lawsuit are obtained for the two cases in different ways, which provides enlightenment for combining the invalidation procedure and the patent infringement civil procedure.