Influence of the Determination of Technical Problem Actually Solved on the Determination of Technical Teaching | Case on Invalidation of “Side Release Buckle” Patent | Linda Liu & Partners
Judgment Gist
The technical problem actually solved by an invention should be determined based on distinguishing technical feature of the claims as compared with the most-related prior art and the technical effect can be known by a person skilled in the art. Incorrect determination of the technical problem actually solved by the invention may lead to wrong determination of the technical teaching provided by the prior art.The specification of the patent involved in this case specifies that rigidity is guaranteed by means of the concave-convex shape formed on the main body, thereby preventing deformation due to compression in the front-rear direction. Correspondingly, the technical effects of reducing the thickness of the socket, reducing the amount of synthetic resin material used, and guiding the leg portion, etc. can be achieved. The technical effects achieved by providing the concave-convex shapes on both sides are a description of the technical effects of a specific embodiment. The statement of the appellant Jialian Company that the corresponding technical effects can only be achieved when the concave-convex shapes are provided on the both sides does not hold.
The sued decision incorrectly determines the technical problem to be actually solved by claim 1 of the subject patent, and thus sets a relatively low standard for the technical teaching of the prior art in evaluation of the inventiveness. In view of the technical problem to be actually solved by the subject patent, it should be considered whether or not the prior art teaches solving the problem of deformation due to compression in the front-rear direction by means of the concave-convex shape. As a design patent, D5 does not disclose the function of the corresponding structure. Therefore, even though D5 discloses the same shape, it cannot provide the technical teaching for solving the corresponding technical problem with the disclosed structure.
Therefore, the technical solution of the subject patent has prominent substantive features and represents notable progress as compared with the prior art, and thus possesses the inventiveness prescribed by Article 22.3 of the Chinese Patent Law. On this basis, the court decided that the sued decision is revoked and that the China National Intellectual Property Administration (hereinafter referred to as CNIPA) should re-make an Examination Decision on the Request for Invalidation Declaration made by Jialian Company against the subject patent.
Case Information
Case Summary
The Plaintiff at first instance, YKK Co., Ltd. (hereinafter referred to as “the plaintiff at first instance”), is the patentee of the invention patent No. ZL200980158243.5 entitled “Side Release Buckle” (hereinafter referred to as “the subject patent”). The third party at first instance, Jialian Precision Hardware Parts Co., Ltd. (hereinafter referred to as “the third party at first instance”) is a manufacturer of side release buckles. The third party at first instance filed a request for invalidation declaration with the defendant at first instance, the CNIPA (hereinafter referred to as “the defendant at first instance”), on September 27, 2016, and stated that claims 1, 2, 4, and 7 of the subject patent did not comply with Article 26.4 of the Chinese Patent Law and claims 1 to 9 did not comply with Article 22.3 of the Chinese Patent Law or Rule 20.2 of the Implementation Regulations of the Chinese Patent Law.
Major disputes in the invalidation procedure include: (1) whether or not the arc design disclosed in the drawings of the cited D5 that is a design patent can unambiguously be determined as being corresponding to the concave-convex shape of the subject patent; (2) whether or not it can be considered that there is teaching for combining D1 that is an invention patent with D5 that is a design patent merely based on an aesthetic feeling; and (3) whether or not the concave-convex shape of the subject patent can achieve the effect of improving the rigidity.
The defendant at first instance made the decision No. 31947 on the request for invalidation declaration on April 17, 2017 and opined that: (1) the two arcs on the upper and lower sides shown in Fig. 6 of D5 disclose the concave-convex shape of the subject patent; (2) the technical solution of claim 1 can be easily obtained by combining Reference 1 with the aesthetic design of D5 without taking inventive efforts; and (3) when the socket body is subjected to a force, the portions bearing the pressure are the vertical portions on both sides; the concave-convex shape cannot solve the technical problem of the subject patent. Thus, the defendant at first instance denied the inventiveness of claim 1 and determined that claims 2 to 9 did not possess inventiveness over the reference documents, either. On this basis, the defendant declared invalidation of all claims of the subject patent.The plaintiff at first instance was unsatisfied with the invalidation decision No. 31947 and filed an administrative lawsuit with Beijing Intellectual Property Court on June 27, 2017. The plaintiff at first instance alleged that: (1) Fig. 0001.6 of D5 merely discloses a concave line formed on the outer surface of the body and does not disclose a convex line formed on the inner surface side of the body or the length of extension of the concave-convex shape; (2) the design patent D5 does not discloses the concave-convex shape, not to mention the technical problem solved by the concave-convex shape; combining D1 with D5 merely based on the aesthetic feeling does not follow the Three-step Approach for inventiveness evaluation; and (3) in determining the technical problem solved by the concave-convex shape, the defendant at first instance fails to consider the overall strength of the body including the central portion in the comparison and only compares the rigidity of the two side portions of the socket body, which is in fact a distortion of the technical problem to be solved by the invention, leading to the wrong conclusion.
After hearing the case, Beijing Intellectual Property Court gave the following opinions: regarding the dispute (1), “Fig. 6 of D5 is a front view of the buckle inlet portion. A person skilled in the art knows that the spatial form cannot be uniquely determined merely based on the front view. Aside from the concave line on the upper surface of the buckle, the positional relationship between the convex line on the inner side of the upper surface at the buckle inlet portion and the straight line below the convex line can be directly and uniquely determined. As shown above, Fig. 6 of D5 does not directly and uniquely disclose that the two upper and lower arc lines jointly form the concave-convex shape of the subject patent. Nor can it be concluded from Fig. 6 of D5 that the concave-convex shape is formed continuously in the insertion direction of the insert.”
Regarding the disputes (2) and (3), “the concave-convex shape of the subject patent mainly solves the technical problem that the main body is susceptible to being squished and cracking when a substantially central portion is subjected to a compression force. Moreover, the concave-convex shape can guide the leg portion. The focus of the subject patent is not to solve the problem of how to obtain an aesthetic appearance as determined by the sued decision. … D5 is a design patent and is directed to the protection of the shape of the buckle design, which has an aesthetic feeling. It neither specially emphasizes the internal structure of the buckle body nor directly and uniquely discloses that the two arc lines on the upper surface of the body jointly form the concave-convex shape of the subject patent. In addition, a person skilled in the art cannot conclude that the two arc lines increase the rigidity of the main body and serve to guide the leg portion. As a result, D5 does not teach a combination with D1.” Based on the above opinions, Beijing Intellectual Property Court revoked the invalidation decision No. 31947 made by the defendant at first instance.
The third party at first instance appealed against the first-instance judgment, stating that the following points in the first-instance judgment are misstatements about the facts: “D5 does not disclose the distinguishing technical feature”, “the concave-convex shape in claim 1 mainly solves the technical problem that the main body is susceptible to being squished and cracking when a substantially central portion is subjected to a compression force”, and “there is no teaching for combining D1 with D5”, that the concave-convex shape cannot effectively overcome the problem caused by compression in the front-rear direction, and that it is obvious to a person skilled in the art to arrive at the technical solution of claim 1 by combining D1 with D5 and the common general knowledge.
Regarding the major disputes in the invalidation decision No. 31947 and the judgment (2017) Beijing 73 Administrative First No. 4678, the Supreme People’s Court came to the following conclusion after reviewing the case: “As shown in the drawings of D5, a straight line is located below the convex line, which could indicate the inner side surface of the upper surface. In that case, the convex line is not on the inner surface, and cannot form the concave-convex structure together with the concave line. Therefore, based on the drawings of D5, it is unclear whether or not the convex line asserted by Jialian Company is on the inner surface or forms a concave-convex structure. Also, it cannot be concluded from D5 that the concave-convex shape is formed continuously in the insertion direction of the insert,” “the sued decision incorrectly determines the technical problem to be actually solved by claim 1 of the subject patent, and thus sets a relatively low standard for the technical teaching of the prior art in evaluation of the inventiveness. In view of the technical problem to be actually solved by the subject patent, it should be considered whether or not the prior art teaches solving the problem of deformation due to compression in the front-rear direction by means of the concave-convex shape. As a design patent, D5 does not disclose the function of the corresponding structure. Therefore, even though D5 discloses the same shape, it cannot provide the technical teaching for solving the corresponding technical problem with the disclosed structure;” “the technical problem actually solved by an invention should be determined based on the distinguishing technical feature of the claims as compared with the most-related prior art and the technical effect can be known by a person skilled in the art. In the present case, the specification of the subject patent specifies that it is possible to guarantee the rigidity by means of the concave-convex shape formed on the main body, thereby preventing deformation due to compression in the front-rear direction. Correspondingly, the technical effects of reducing the thickness of the socket, reducing the amount of synthetic resin material used, and guiding the leg portion, etc. can be achieved. The technical effects achieved by providing the concave-convex shapes on both sides are a description of the technical effect of a specific embodiment. The statement of the appellant Jialian Company that the corresponding technical effects can only be achieved when the concave-convex shapes are provided on both sides does not hold.” On this basis, the Supreme People’s Court dismissed the appeal and upheld the original judgment.
Attorney’s Interpretation
The present case relates to a dispute between a renowned foreign zipper producer and a domestic company over invention patent invalidation. During the invalidation procedure, a combination of an invention patent and a design patent is adopted to assess the inventiveness of the subject patent. The invalidation procedure, the first instance, and the second instance concerned three typical issues, including interpretation of the disclosure in the drawings of the design patent per se, the technical teaching for combining the invention patent with the design patent as reference documents, and how to determine the technical problem to be solved by the subject patent.
Regarding the above three typical issues, the courts of the two instances provided the respective approaches for tackling them, which is an important reference for the determination criteria in future similar cases. Based on the judgments of the two instances, we have the following analysis: First, for a design patent, usually the three-dimensional contour of the design can be determined based on the six orthographical views; but the design patent does not often include clear disclosure of the lines inside the contour. The spatial structure of the design can hardly be directly and unambiguously determined merely based on the views from a single or both lateral sides. The inferred structure is no more than one of various possibilities, and cannot satisfy the determination standard of “directly and unambiguously determined” prescribed by the patent law.
Therefore, the inferred structure of the design has the risk of not being accepted as evidence. Second, when a combination of an invention patent and a design patent is adopted to assess the inventiveness, the combination should meet the requirements of the Three-step Approach; that is, the design patent should provide a teaching for solving the technical problem (including the self-evident teaching for a person skilled in the art based on the structure of the design). The reference documents should not be combined merely based on the aesthetic feeling. Moreover, the technical problem to be solved by a technical feature of the subject patent should be determined based on the disclosure in the specification and the purpose of providing the technical feature; that is, the comparison should be conducted between the technical problems to be solved before and after the technical feature is added, not between the technical feature and other irrelevant technical features.
Under the unfavorable condition that the invalidation decision decided that all claims of the subject patent are declared invalid, our team of attorneys studied the decision and the evidence materials, and prepared the appellant’s statements targeted to the misstatements about the facts and the deficient logic of the invalidation decision. In order to make it easier for the judge to understand the disclosure of the design, we simulated the 3D spatial shape of the design and demonstrated several possible spatial shapes based on the view of the bucket inlet, thereby asserting that the drawings of D5 do not unambiguously disclose the concave-convex shape. Further, regarding the determination of the disclosure of the drawings when a design patent is used as evidence, we found multiple judicial cases as references for the first and second instance courts to assert that since the lines in the drawings can be interpreted in multiple ways, it cannot be determined that the convex line is disclosed by D5. In addition, we analyzed the forces acting on the concave-convex shape to clarify that the technical problem to be solved by the subject patent should be determined through comparison between the concave-convex shape and a planar shape, not between the concave-convex shape and a sidewall, thereby preventing the judge being misled by the technical problem determined in the invalidation decision. Eventually our opinions were supported by both the first instance court and the second instance court, and we successfully overturned the adverse result of the invalidation procedure.
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