On March 30, 2023, the Supreme People’s Court on its official website issued the “Typical Cases Heard by the Intellectual Property Court of the Supreme People’s Court (or SPC-IPC) (in 2022)”, which include 20 cases selected from 3,468 technology-related IP lawsuits and monopoly disputes closed in 2022. The focus of this article is on 3 patent administrative disputes:
1. Two cases involving invalidation of invention patents on “Levo-ornidazole” [Changsha Huamei Medical Technology Co., Ltd. vs. China National Intellectual Property Administration (CNIPA) and Nanjing Sanhome Pharmaceutical Co., Ltd., two cases of administrative disputes on invalidation of invention patents
Basic information of the case:
Nanjing Sanhome Pharmaceutical Co., Ltd. (hereinafter referred to as “Sanhome”) is the patentee of two invention patents, i.e., a patent No. 200510068478.9 entitled “Use of levo-ornidazole in the preparation of anti-anaerobic bacteria infection drugs”, and a patent No. 200510083517.2 entitled “Use of levo-ornidazole for preparing anti-parasitic infection drug”. Changsha Huamei Medical Technology Co., Ltd. (hereinafter referred to as “Huamei”) filed requests for invalidating the two patents with CNIPA on the grounds that they lack inventiveness. CNIPA made decisions of maintaining the validity of the two patents. Huamei was not satisfied and filed complaints with the Beijing Intellectual Property Court. The court of first instance made rulings of revoking the involved Decisions and ordered CNIPA to redraft the decisions. CNIPA and Sanhome appealed as being not satisfied with the first-instance court’s rulings. The SPC-IPC (court of second instance) held that: in evaluating inventiveness of a patent relating to medical use of a compound, it is required to fully or comprehensively consider whether the prior art has provided specific or clear inspiration. In these cases, the prior art neither provides any technical motivation of reducing toxicity of ornidazole, nor gives any technical hint on the finding that L-ornidazole could exhibit a beneficial technical effect of lower toxicity or on the formulation of L-ornidazole individually into a pharmaceutical preparation. Thus, the two patents have inventiveness. Accordingly, the SPC-IPC decided to overturn the first-instance court’s rulings on the two patents, and made judgments of dismissing Huamei’s claims.
Typical points of significance:
In the judgments, the SPC-IPC has specified the standard for evaluating inventiveness of a patent relating to medical use of a compound, manifesting its judicial direction of enhancing protection for drug-related intellectual property rights (IPR) to invigorate innovation in the pharmaceutical sector.
2. A case involving invalidation of an invention patent entitled “Card metaphor for activities in a computing device” [Apple Computer Trading (Shanghai) Co. Ltd. vs. China National Intellectual Property Administration (CNIPA) and Qualcomm Inc., a case of administrative dispute on invalidation of an invention patent
Basic information of the case:
Qualcomm Inc. (hereinafter referred to as “Qualcomm”) is the patentee of the invention patent No. 201310491586.1 entitled “Card metaphor for activities in a computing device”. Apple Computer Trading (Shanghai) Co. Ltd. (hereinafter referred to as “Apple”) filed a request for invalidating the patent with CNIPA. After examination, CNIPA made a decision of maintaining the validity of the patent. Apple was not satisfied and filed a complaint with the Beijing Intellectual Property Court. The court of first instance made a ruling of dismissing the plaintiff’s claims. Apple appealed as being not satisfied with the first-instance court’s ruling. The SPC-IPC (court of second instance) held that: if the claimed technical solution includes several inter-dependent technical features which work synergistically and could, relying on their wholeness, serve certain function and produce the desired effect, it follows that the synergistic effect should be considered in evaluating its inventiveness. Therefore, the SPC-IPC decided to make a judgment of dismissing the appeal and upholding the original ruling.
Typical points of significance:
This case involves an IP dispute between two top worldwide tech companies. The judgment indicates that the top court has objectively and fairly evaluated the technical contribution made by the invention-creation, revealing its attitude of enhancing intellectual property rights (IPR) protection and its dedicated efforts to foster a market-oriented, law-based, and internationalized first-class business environment.
3. Two cases concerning administrative decisions on infringement of an invention patent on “Rivaroxaban tablets” Nanjing Hencer Pharmaceutical Co., Ltd. and Nanjing Lifenergy R&D Co., Ltd. vs. the Intellectual Property Office of Nanjing City of Jiangsu Province, People’s Republic of China, and Bayer Intellectual Property GMBH, two cases of disputes on administrative decisions on patent infringement
Basic information of the case:
Bayer Intellectual Property GMBH (hereinafter referred to as “Bayer”) is the patentee of the invention patent No. 00818966.8 entitled “Substituted oxazolidinones and their use in the field of blood coagulation”. Nanjing Hencer Pharmaceutical Co., Ltd. (hereinafter referred to as “Hencer”) and Nanjing Lifenergy R&D Co., Ltd. (hereinafter referred to as “Lifenergy”) have displayed “Rivaroxaban” tablets and their active pharmaceutical ingredient (API) that are labeled with Hencer’s registered trademark on their official websites and at an exhibition. Bayer filed a request for hearing the patent infringement dispute with the Intellectual Property Office of Nanjing City of Jiangsu Province (hereinafter referred to as “Nanjing IP Office”). After examination, Nanjing IP Office adjudicated that the two companies Hencer and Lifenergy should stop their infringing acts. Hencer and Lifenergy were not satisfied and filed lawsuits with the Intermediate People’s Court of Nanjing City of Jiangsu Province. The court of first instance made rulings of dismissing the litigation claims. Hencer and Lifenergy were also dissatisfied and appealed. The SPC-IPC (the court of second instance) held that: Hencer and Lifenergy had, without authorization, made an expression of intent to sell the accused products to unspecified persons via their websites and at the exhibition, which constitutes the infringing act of offering to sell; and the exception provision for the administrative examination and approval of drugs or medical apparatus is only applicable to the acts of “manufacturing, using or importing” patented drugs or patented medical apparatus that are performed by any entity who has submitted its application for the administrative examination and approval of its own drug or medical apparatus, or to the acts of “manufacturing or importing” patented drugs or patented medical apparatus that are performed especially for that entity. In this regard, Hencer and Lifenergy do not meet the conditions for the entities involved in the exception provision, and their act of offering to sell does not belong to those as specified under this provision, either. Thus, the exception provision is not applicable to the accused act. Accordingly, the SPC-IPC decided to make judgments of dismissing the appeals and upholding the original rulings.
Typical points of significance:
In the judgments, the SPC-IPC has clarified that the Patent Law adopts the principle of protecting the lawful rights while permitting exceptions to statutory acts of non-infringement and upholding the judicial ideal that any exception must be strictly interpreted. In the particular scenarios to which the exception provision for the administrative examination and approval of drugs or medical apparatus as provided in the Patent Law (Bolar exception) shall apply, the SPC-IPC endeavors to ensure availability of the drugs and medical apparatus to the public immediately following patent expiration without weakening the protection for the lawful rights and interests of the patentee, and also to deliberately balance the interests among the patentee, the generic manufacturers and the public according to law. The judgments have also demonstrated the court’s judicial ideal of treating and protecting all parties (either domestic or foreign) equally.
