Summary
Brief of the case
The plaintiff, a Taiwanese manufacturer company engaged in outdoor supplies, has an honorable reputation worldwide in backpack field. In October 2013, the plaintiff filed two charges before Suzhou Intermediate People's Court against our client for infringement of its Design patent and its utility model patent. The plaintiff asked the court to rule that our client shall stop selling and offering for sale the related products, with compensation of economic losses for over one million RMB.
Because the products sold by our client and those manufactured by the plaintiff have extremely high similarity, the use of tactics of non-infringement defense, defense of existing technology and the like during the civil proceedings are very likely to lose the case. Hence, the patent attorney put much emphasis on the patent invalidation in order to win the case.
Result
1. two patents were both invalidated by the Patent Reexamination Board;
2. the plaintiff voluntarily withdrew the Infringement cases, and our client won without fighting and achieved the best results.
The focus of the cases
1. the authenticity identification of network evidence, that is, to which extent the evidence is disclosed in the internet could Patent Reexamination Board identify its authenticity;
2. the understanding of “Domestic public use" stipulated in Patent Examination Guide, published in 2001.
The comments by the Patent Attorney
The victory of the two lawsuits shall be attributed to the winning of two respective patent invalidation cases. The key evidence in this case is the use of an American web history tracing tool, which can trace the uploading date of the content of a website. In order to prove the authority of the site tool, we in the invalidation process searched a lot of evidence to prove the reliability of this tool. Such evidence and the use of the tool provides a very od idea for future similar cases, especially in the circumstances where sufficient documentary evidence is absent. The web history tracing tool provides an alternative way of employing "public use" to invalidate a patent. In the course of the oral proceeding, we clearly felt the Patent Reexamination Board was highly interested in the evidence we offered, which brought significant effect for the collection of "public use" evidence.
In addition, the design patent invalidity proceedings involves the condition that the old patent law shall apply, which is adverse to the invalidation outcome. However, because of pre-made ??full preparations, we finally obtained a favorable outcome for our client that the design patent is revoked by the Board.
Further, during the invalidation proceeding of the utility model patent, we used a picture of the product uploaded by the patentee before the filing date of the application to invalid all ten claims, which showed the probability that the "a picture alone can take away the novelty and inventive step of a patent”.
Our client in these two infringement cases ranks top three in the domestic industry and possess rather high market share. The invalidation results of the two cases not only avoid the loss of litigation for compensation, but also avoid the huge loss that otherwise nearly 30 percent of our client’s products shall be “off the shelf”.
