Background Facts Court hearing Comment

A complaint relating to graphical user interfaces (GUIs) was recently filed with the Beijing IP Court. This is the first Chinese case relating to GUIs since they were acknowledged as patentable designs in 2014.

Background

A 'GUI' is an interface presented as a graph or image in a display which links to an operating system. A user can perform an operation by clicking the graph or image in the interface. GUIs are protected under copyright and unfair competition law and were classified as patentable designs in 2014 by Notice 68 of the State Intellectual Property Office .

Facts

Following the issuance of Notice 68, Qihoo 360 obtained the first design patent for a GUI on August 14 2014. It subsequently filed numerous design patent applications for GUIs, leading a trend of protecting GUIs under the Patent Law.

On April 22 2016 Qihoo filed a complaint with the Beijing IP Court against Beijing Jiangmin New Science & Technology – a company providing anti-virus services to computer users – asserting that Jiangmin had infringed three of its GUI patents. According to the complaint, the patents covered GUIs relating to computer security optimisation which Qihoo had developed. The alleged infringing product was called the Jiangmin Optimising Expert. According to Qihoo, it used a GUI that was similar to the one covered by its patents.

Under the terms of the patent documents, the patent protection included a computer which displayed the GUIs; the GUIs were only part of the protected computer. Under Article 11 of the Patent Law, design patent proprietors have the right to prevent any entity or individual from manufacturing, offering for sale, selling or importing a product incorporating a patented design without their consent.

However, according to the complaint, Jiangmin only used a GUI similar to that covered by the patents in the software that it provided to end users and did not provide a computer incorporating the patented design to end users. The GUI was displayed only on the end user's computer. In other words, while Jiangmin used the patented GUI, it did not manufacture, offer to sell, sell or import computers incorporating the patented design (ie, it did not undertake an action that Qihoo could prevent it from undertaking). As such, Jiangmin's infringement of the design patents is questionable.

Qihoo sought compensation of Rmb15 million ($2.17 million) for the alleged infringement of the three design patents and requested that the alleged infringing action cease. Under Article 65 of the Patent Law, compensation for damages caused by patent infringement is assessed on the basis of:

  • the actual losses suffered by the proprietor as a result of the infringement;
  • the resulting profits earned by the infringer; or
  • the appropriate royalties under a contractual licence.

However, as Qihoo and Jiangmin both provide free software using GUIs to end users, no actual losses or profits could be determined. Further, there is no record of royalties under a contractual licence for a GUI in China. As such, even if Jiangmin is found to have infringed Qihoo's design patents, it would be difficult to determine compensation for the damage caused by the infringement.

As a routine counteraction, Jiangmin filed invalidation requests against the patents with the Patent Re-examination Board and asked the court to suspend adjudication of the case based on these requests. In accordance with local practice, the court has the power to grant or reject a defendant's request on a case-by-case basis. The court noted that Qihoo had provided design patent evaluation reports for the patents, which concluded that the rights to the design patents were valid. The court therefore rejected Jiangmin's request.

Court hearing

A court hearing was held on September 21 2016. Before the hearing, Qihoo withdrew one patent from the case and the compensation was thus reduced to Rmb10 million ($1.45 million). On October 28 2016 the Patent Re-examination Board held an oral hearing regarding the three patents originally involved in the case. At present, no court judgment or invalidation decision has been issued.

Comment

As this is the first case relating to GUIs, it has garnered significant attention from the Chinese IP community. The court's judgment should clarify issues such as the determination of a GUI infringement and the calculation of compensation.

For further information on this topic please contact Guangyu Zhang at WAN HUI DA - PEKSUNG IP Group by telephone (+86 10 8231 1199) or email (zguangyu@peksung.com). The WAN HUI DA - PEKSUNG IP Group website can be accessed at www.wanhuida.com and www.peksung.com.

This article was first published by the International Law Office, a premium online legal update service for major companies and law firms worldwide. Register for a free subscription.