Henan AMR decision
Zhengzhou Intermediate Court decision
On 16 June 2021, China's Supreme People's Court (SPC) rendered two decisions in the case Epoint v Henan AMR & Glodon.(1) In these decisions, the SPC reaffirmed the rule that "the design features distinguishing a patented design from a prior design usually have a greater impact on the overall visual effect of the design than the rest [of the] design features of the same". This is thought to be the SPC's first administrative decision concerning the infringement assessment of a graphical user interface (GUI) design patent.(2)
The patentee, Glodon, filed an administrative complaint with the Administration for Market Regulation (AMR) of Henan Province against Epoint. Glodon alleged that the engineering cost software sold by the latter (V10.X) infringed its design patents ZL201530283890.7 and ZL201530284014.6 (the 890 patent and the 014 patent), both titled "Computer with Graphic User Interface (GUI)".
On 16 May 2019, the Henan AMR accepted the complaint, and, on 12 September 2019, issued administrative decisions finding patent infringement and penalising Epoint. Epoint brought two parallel administrative proceedings before the Zhengzhou Intermediate Court challenging the Henan AMR's decisions.
Zhengzhou Intermediate Court decision
On 26 October 2020, the Zhengzhou Intermediate Court dismissed both cases.
Both the Zhengzhou Intermediate Court judgment and the Henan AMR's decision sided with the patentee, finding that the overall layout of the accused infringing interface was almost identical to that of the patented interface. Both interfaces included three segments – namely, the top title bar, the upper menu bar and the lower interface operation area – in approximately the same proportion. The differences were subtle, and had no substantial impact on the overall visual effect. It was therefore concluded that, in the absence of a substantial difference, the accused infringing interface, which was similar to the patented GUI, fell within the latter's protection scope.
Meanwhile, on 12 July 2019, as a countermeasure, Epoint initiated an invalidity action against the 890 patent before the China National Intellectual Property Administration (CNIPA). During the invalidation proceedings, Epoint submitted its existing GUI design (version V10.0) as prior design evidence. The accused infringing design, V10.X, was merely a minor update to V10.0 without any substantial changes.
In the infringement proceeding, the patentee had to prove that the accused infringing design fell within the protection scope of its patented design. The patentee asserted that the protection scope of its patented design extended to the "three-segment" overall layout; however, this was also present in Epoint's prior design (V10.0).
In the invalidation proceeding, the patentee underlined the design features that distinguished its patented GUI from Epoint's prior design in terms of the layout and design of each segment – namely, the title bar, the menu bar and the interface operation area, which constituted de facto limitation of the protection scope of its patent right.
On 2 March 2020, the CNIPA maintained the validity of the 890 patent. The CNIPA confirmed in the decision concerning the 890 patent the differences underscored by the patentee and concluded that "the number of icons and the specific arrangement thereof" would lead to different visual impressions, which had a significant bearing on the overall visual effect of the design. The CNIPA thus maintained the validity of the 890 patent.
On 13 July 2020, Epoint filed an invalidation request before the CNIPA against the 014 patent. On 7 January 2021, the CNIPA overruled the request.
Epoint's defence believed that the findings of the distinguishing design features in the CNIPA decision could be leveraged to contradict the patentee's arguments in the infringement proceeding as it breached the estoppel principle.
"Estoppel" is a legal term meaning that a second argument is barred if it is inconsistent with a first argument. In the context of patents, it bars a patentee from admitting something to the CNIPA and later contradicting that admission before a court.
Epoint thus refrained from appealing the CNIPA decision regarding the 890 patent before the court and instead further filed an invalidation action against the 014 patent, not seeking to invalidate the patent, but instead aiming to force Glodon to acknowledge the distinguishing design features of the 014 patent before the CNIPA.
On 10 November 2020, Epoint appealed the AMR decisions before the SPC, arguing the following:
- The "three-segment" overall layout was a design feature of Epoint's prior design. The design features distinguishing the patents at issue from the prior design were the respective layout and design of the top title bar, the upper menu bar and the lower interface operation area, rather than the "three-segment" overall layout.
- In the invalidation proceedings against the patents at issue, the patentee had underlined such distinguishing design features. The CNIPA had affirmed this distinction.
- Compared with the patents at issue, the layout and design of the top title bar, the upper menu bar and the lower interface operation area of the accused infringing interface were obviously different. Such distinguishing features embodied the contribution that the designer had made to the prior design, which would be conspicuous to ordinary consumers and would have a significant impact on the overall visual effect.
Therefore, on the premise that the accused infringing interface was devoid of multiple design features that distinguished the patents at issue from the prior design, the accused infringing interface was obviously not similar to the patents at issue.
The SPC found Epoint's arguments tenable. It opined that the CNIPA's invalidation decisions concerning the 890 and 014 patents affirmed that the overall layout shared by the patents at issue and the prior design was not a distinguishing design feature and had been disclosed by Epoint's prior design.
In terms of the distinguishing design features, the SPC held that the differences between the accused infringing interface and the interface shown in the main view of the patents at issue mainly lay in the designs of the logo, the menu bar and the interface operation area. Such differences embodied the specific appearance of the design; thus, they would inevitably be conspicuous to ordinary consumers during their purchase and use of the product. The number of icons and their specific arrangement would lead to different visual impressions, which would have a greater impact on the overall visual effect of the design. Therefore, the differences would be obvious, and the accused infringing design would be neither identical nor similar to the patents at issue.
In assessing whether the difference between the accused infringing interface and the patented interface had a material impact on the overall visual effect, the SPC considered article 11 of the Interpretation on Several Issues Concerning the Application of law in the Trial of Disputes over Infringement of Patent Rights (2009), which explicitly provides that:
The overall visual effect of a design is generally more susceptible to influence in cases of the following circumstances . . .
(2) The design features of the patented design, which distinguish such design from prior design, relative to other design features of such patented design.
The SPC reiterated this principle in another case:(3)
[T]he distinguishing design features of the patented design reflect its innovation over prior design and the designer's creative contribution to the prior design. The distinguishing design features enable ordinary consumers to distinguish the patent design from a prior design. Therefore, they have a significant impact on the overall visual effect of the design product. If the accused infringing design does not contain all the design features that distinguish the patented design from prior design, in principle, the accused infringing design could be presumed to be not similar to the patented design.
It is a common tactic for the defendant of a patent civil proceeding to challenge the validity of the plaintiff's (ie, the patentee's) patent in a separate CNIPA invalidation proceeding. Where this occurs, the significance of the invalidation action lies in ascertaining the distinguishing design features. This is because, even if the defendant's prior design defence fails in the infringement proceeding, in the context that the validity of the patent at issue is maintained in the invalidation proceeding, the ascertained distinguishing design features could still be utilised in the non-infringement defence. Infringement can be established only under the premise that the accused infringing design contains all the design features that distinguish the patented design from the prior design.
The SPC reaffirmed in this case that the general principle employed in design patent infringement assessments, as introduced in relevant judicial interpretations, is also applicable to GUI designs.
For further information on this topic please contact Weifeng Sun or Hongfeng Li at Wanhuida Intellectual Property by telephone (+86 10 6892 1000) or email ([email protected] or [email protected]). The Wanhuida Intellectual Property website can be accessed at www.wanhuida.com.
(1) (2021) Zui Gao Fa Zhi Xing Zhong No. 78 and (2021) Zui Gao Fa Zhi Xing Zhong No. 79.
(2) As corroborated by a search on China Judgments Online on 6 September 2021.
(3) No. 85 guidance case [(2015) Min Ti Zi No. 23 judgment, 11 August 2015].