1. A Guangdong Company Accused Banyan Houseware Manufacturing Co., Ltd. for Patent Infringement

Case Summary 

Banyan Houseware Manufacturing Co., Ltd. is a manufacturer of household commodities. They received a summons from Fuzhou Intermediate People's Court, being accused of infringement on a patented teacup produced by a Guangdong enterprise. Banyan entrusted Jiaquan IP Law Firm to respond to the law suit.

Result

In the original disclosure, Claim 1 of the involved patent was deemed to be lack of novelty compared with a cited document in the examination stage. So the applicant amended the original Claim 1, clearly stating that the protected technique referred to the amended Claim 1 as recorded in the granted version. By comparison, the technique adopted by the alleged infringing product has already been disclosed by the cited document and was not in the protection scope of the patent involved. Therefore, it did not constitute infringement. Our attorney provided the relevant evidence to defend in the court, and finally the plaintiff agreed to withdraw the lawsuit.

Significance

In patent infringement lawsuit, it is important to confirm the protection scope of the involved patent. We should analyze how the applicant responded to the office actions during examination to confirm the actual protection scope in order to prevent the applicant fromattempting to apply the doctrine of equivalents to enlarge the protection scope.

  1. Zhongshan Taibao Electronic Technology Co., Ltd. v. Patent Review Board of SIPO

Case Summary

Zhongshan Taibao Electronic Technology Co., Ltd. is the holder of the utility model patent No. 201120184716.3 with the title of Remote Controller of Infrared Sensing Aircraft. They received a Decision from the Patent Review Board (PRB), indicating that the above patent was fully invalidated for the reason of lack of novelty due to a conflict design patent. Zhongshan Taibao Electronic Technology Co., Ltd. entrusted Jiaquan IP Law Firm to bring an administrative suit against the PRB.

Result

According to the China Patent Law, only invention or utility model patent applications can be the conflicting application to evaluate the novelty of the pending invention or utility model applications. In this case, a design patent was misused to be the relevant reference. Based on the above, our attorney appealed to Beijing IP Court, and finally the PRB was judged to withdraw the invalidation decision.

Significance

The protection objects are different between utility model patent and design patent, so is the protection scope. Duplicate grants do not exist between a utility model patent and a design patent, and of course they are not conflicting applications. Based on either of which, a design patent cannot be served as conflicting application to invention or utility model patent applications.

  1. Kaiping Luzhou Food Co., Ltd. v. Guangzhou Intermediate People's Court

Case Summary

Kaiping Luzhou Food Co., Ltd. (hereafter referred to as the plaintiff) is a private enterprise manufacturing healthy beverage. The plaintiff found an enterprise in Henan Province infringing their design patent and so brought an infringement suit. At the first trial, the alleged infringer made prior user rights defense and provided relevant evidence, e.g. the product, certificate of conformity and the packing cartons. Guangzhou Intermediate People's Court admitted the defense for the reason that the plaintiff could not prove the provided evidence was fabricated. The plaintiff refused to accept the judgment and put forward an appeal to Higher People's Court of Guangdong Province.

Result

Our  attorney  put  forward  ten  obvious  queries  during  the  second  trial  and  successfully proved that the evidences for prior user rights were fabricated. After the trial, the infringer finally signed an agreement and agreed to stop manufacturing and selling the infringing products, otherwise, they would be punished for 100,000 RMB (about USD 15,180).

Significance

This is a representative case of using prior user rights defense. When facing such kind of case, we should take the following into consideration: 1. To the patented product itself, only when the same products has been produced or has been well prepared for production before the patent application date can prior user right be established, but not including using, promising to sell, selling and importing the same products. 2. To claim prior user rights, the invention holder must prove that the invention comes from the inventor’s independent research and development, or the information of the invention is obtained legally.

  1. An Enterprise in Jiangmen Accused Many Tent Manufacturers in Heshan for Utility Model Patent Right Infringement

Case Summary

One enterprise in Jiangmen (hereafter referred to as the plaintiff) who is mainly engaged in the manufacturing of tents is the owner of a utility model patent in relation to tent pole component. The plaintiff brought a suit against many other tent manufacturers in Heshan (hereafter referred to as the defendants), requiring them to stop manufacturing tents and compensate the loss. These defendants received a summons from Guangzhou IP Court and realized their products fell into the protection scope of the utility model patent, so they entrusted Jiaquan IP Law Firm to respond to the suit.

Result

Our attorney searched for prior arts in this field, and found the protecting technique in the involved utility model patent was public known technique, which did not meet the patent requirements of novelty and inventive step. Therefore, we filed an invalidation request with the Patent Review Board (the PRB) against the plaintiff’s utility model patent. After we got the official filing receipt of invalidation request, our attorney further required Guangzhou IP Court to suspend the legal proceeding. Finally the involved utility model patent was fully invalidated by the PRB after an oral hearing, and the plaintiff finally agreed to withdraw the suit.

Significance

When being accused, the involved enterprise should entrust an experienced patent attorney to handle the matter. The patent attorney would search and study the relevant references and find a solution according to the details of the case. If the involved product really falls into the patent’s protection scope, the first choice is to invalidate the patent. Such request shall be filed within 15 days upon receipt of the summons in order to suspend the court proceeding.