Written by:Mao Jin（Intellectual Property）
I.Case in brief
This case relates to a patent for a cooled regenerated catalyst circulating method in the field of catalytic cracking, which is mainly used for catalytic cracking of heavy raw materials and catalytic upgrading of gasoline. The patent involved has achieved commercial success in the society and won the national science and technology award after it was published. The title of the patent is: “Method and equipment for circulating cooled regenerated catalyst”. Specifically, it relates to a fluidized catalytic cracking process where hydrocarbon feedstock is caused to contact and react with the catalyst in the riser reactor, the reactant flows into the settler to separate the catalyst from oil and gas, the separated catalyst to be regenerated is stripped in the stripping section and then enters the regenerator for coking regeneration, and thereafter, the regenerated catalyst is returned to the riser reactor for recycling. Claim 1 recites “fluidized media distribution facilities are provided at the lower part, and a catalyst mixing buffer space is provided in the downstream”, and such technical feature is also described in the description accordingly. The key technical dispute in this case focuses on the “mixing buffer space” located “downstream”.
As for this case, multiple litigation procedures have been performed, including the Decision of the Reexamination Department to maintain the validity of the patent right, the Judgment of the Court of First Instance to revoke the Decision of the Reexamination Department, the Judgment of the Court of Second Instance to overrule the Judgment of First Instance, and the Judgment of the Supreme Court to overrule the Judgment of Second Instance and maintain the Judgment of First Instance. Although the results of the litigation procedures wobble, King & Wood Mallesons (KWM), acting for the Petitioner, successfully invalidates the patent involved in the end.
1.The Reexamination Department decided to maintain the patent valid
On behalf of the Petitioner, the KWM put forward that the patent involved does not give a clear and complete description of the catalyst cooler in the description, but the collegial panel holds that the drawings and description of the patent involved have fully explain that the “mixing buffer space” is an arrangement for performing mixing buffer treatment on the cooled regenerated catalyst. As to whether this “mixing buffer space” possesses inventiveness under Article 22.3 of the Chinese Patent Law, the collegial panel opined that the setting of the mixed buffer space in the catalyst cooler does not belong to the common knowledge in the field, and it thus can be considered as a distinguishing technical feature. Therefore, the collegiate panel decided to maintain the patent right in question valid.
2.The Court of First Instance decided that the decision of the Reexamination Department is wrong
The Court of First Instance held that the focus of the dispute in this case is: whether the description of the patent involved is fully disclosed and whether the identification of the distinguishing technical features is wrong.
As to whether the description of the patent involved is sufficiently disclosed, the Court of First Instance decided that: from the description, FIG. 1 and the relevant description thereof, it can be explicitly obtained that the “mixing buffer space” is not a specific term; mixing and buffer are the functions of the space; those skilled in the art could envision such arrangement; therefore, that the description is not sufficiently disclosed is not established.
As to whether there is a distinguishing technical feature, the Court of First Instance opined that: although the evidence submitted by the Plaintiff (our party) does not clearly state that there is a mixing buffer space in the catalyst cooler, as viewed from the technical principle perspective, a space for mixing and buffering is actually formed on the grounds that: the catalyst comprised of solid particles flows out of the catalyst outlet after heat exchange in the catalyst cooler, and before flowing out, the catalyst needs to be fluidized with the aid of a fluidizing medium so that the catalyst can be mixed and buffered more or less. However, since the patent involved does not further limit or explain the size and specific composition of the “mixing buffer space”, “a catalyst mixing buffer space is provided in the downstream” does not formulate the distinguishing technical feature of the patent involved over the evidence. As such, the patent does not possess inventiveness, and the decision of the Reexamination Department is wrong.
3.The Court of Second Instance overruled the Judgment of First Instance
The Court of Second Instance held that factual basis is missing for the judgment of the Court of First Instance that the evidence provided by our party discloses a space for mixing and buffering formed at the downstream of the catalyst cooler, and the evidence is not substantially the same as the “mixing buffer space” required by the patent involved. In addition, the Court of Second Instance found that although the function of the mixing buffer space belongs to common knowledge in the art, it is not easy for those skilled in the art to envision the “catalyst mixing buffer space” formed at the “downstream of the catalyst cooler”. Therefore, “a catalyst mixing buffer space is provided downstream of the catalyst cooler” is a distinguishing technical feature, the patent involved possesses inventiveness, and the decision of the Reexamination Department should be maintained.
4.The Supreme Court made a final judgment, and our party successfully invalidates the patent involved
In the final judgment, the Supreme Court found that the First-Instance Judgment is not improper and should be upheld. The Supreme Court believed that the focus of the dispute in this case is how to interpret the technical feature “a catalyst mixing buffer space is provided downstream of the catalyst cooler” and whether the patent involved possesses inventiveness.
Regarding the technical feature in dispute, the Supreme Court held that the mixing buffer space is only marked under the catalyst cooler in the accompanying drawings but not specifically described in terms of specific structure and technical effect in the description of the patent involved. Therefore, with reference to the common meaning thereof, the “mixing buffer space” should be understood as a specific space provided at the lower part of the catalyst cooler for mixing and buffering the cooled catalyst. For the determination of inventive step, the inventor has acknowledged “in the technical field to which this patent relates, the function of the mixing buffer space belongs to common knowledge”. In the relevant book submitted by our party, it is also clearly recorded that a space is reserved between the heat extraction tube bundle and the fluidized medium distribution facility. The Supreme Court held that: this fully proves that there is indeed a specific space below the catalyst cooler corresponding to the “mixing buffer space” in the patent involved although the reference document does not explicitly disclose that a mixing buffer space is provided below the catalyst cooler; and those skilled in the art would easily imagine that the specific space is configured to implement the function of mixing and buffering the cooled regenerated catalyst.
III. KWM strategy and contribution in the case
1.Starting from the legal provisions, formulating the invalidation strategy to force the Patentee to pick one out of insufficient disclosure of the description and lack of inventiveness
In this case, KWM clarified the loophole about the expression “mixing buffer space” in claim 1, that is, if it is considered that “a catalyst mixing buffer space is provided downstream of the catalyst cooler” is a distinguishing technical feature of the patent involved over the evidence, the patent falls into the circumstance that the description is insufficiently disclosed. This forces the Patentee to pick one out of insufficient disclosure of the description and lack of inventiveness, thus making it possible to win the case.
2.Starting from the essence and principle of technology, carefully studying the evidence to find out the key breakthrough in the complicated technical solution
The technical focus of this case, namely “mixing buffer space”, is actually a term coined by the Patentee, but the Patentee failed to fully expound the word or describe its implementation method. In the process of evidence mining, not limited to the expression itself, the KWM split the expression in terms of the objective function, dig out the technical essence of “mixing” and “buffering”, and attached great importance to evidence mining. That hard work pays off quickly. Eventually, the KWM found that the technical essence represented by the self-made term is actually a conventional design in the prior art. This has positive implications for similar cases in the future. When encountering claims that are deliberately misinterpreted and created by themselves, the attorneys could proceed from the essence of technology and dig out its principles, to crack the word game.
3.From the commercial point of view, correctly figuring out the logical relationship between the patent involved and the “commercial success” described by the Patentee
This case is of a far-reaching social significance. The patent involved in this case is a patent that has achieved great commercial success and has won technical awards in the corresponding field. However, the Supreme Court clearly states that there is no correspondence or causal relationship between “great commercial success” and “unexpected beneficial effects” and the “mixing buffer space” of the patent involved. Therefore, determining whether a patent right is valid should be always based on the essence of the patent solution, which has nothing to do with its social impact.
For a patent that concerns a complicated technology like this case, it is particularly important for the attorneys to formulate a reasonable invalidation strategy and prepare the corresponding evidence carefully and accurately. When provided with objective, true evidence and sufficient, convincing arguments, the courts at all levels can identify the objective facts without any difficulty. In a word, it is critical in patent invalidation cases to make every effort to dig out breakthrough points from complicated technical solutions.