Recently, our firm won the first instance of an administrative litigation case for invalidation of an invention patent, in which it is ruled that the invention patent should be comp...
Introduction In the chemical field, it is difficult to seek invalidation of a patent claiming to have achieved unexpected technical effect. This case provides a strategy for success...
Linda Liu & Partners Invalidated Two Standard Patents
Introduction
The two patents involved, namely, “Method for Decoding Based on Intra Prediction” and “Apparatus for Decoding Based on Intra Prediction”, are standard patents in the worldly renowned HEVC Advance patent pool in the field of video encoding/decoding and standard patents in AV1 and VP9 patent pools of SISVEL.
Our client intended to challenge the two patents in both China and the US. Upon our client’s entrustment, we took active measures and immediately filed a petition with the CNIPA. The CNIPA made an Examination Decision on the Request for Invalidation to declare invalidation of all claims of the two patents.
Highlights
We cited different prior art documents to challenge the two inventive points of the patents involved.
In the invalidation procedure, the patentee filed statements to question the Chinese translation of the foreign evidence documents we cited. The patentee proposed amendments to a plurality of the translated features. We found that most of the objections to the translation only involved slight adjustment of the Chinese expression. We accepted the amendments proposed by the patentee which did not affect the understanding of the technical solution of the foreign evidence documents. But there was one amended feature we could not surrender, because it may affect the fact findings about whether or not one of the inventive points was disclosed by the evidence. In the first oral hearing, since the two parties could not reach a consensus, the panel entrusted a third-party company to prepare the translation. The translation of the third-party company supported our understanding of the technology.
As for the other one of the inventive points, although the related feature is not fully disclosed by the prior art, we specifically explained the technical problem to be solved by the patent based on the inventive point and proved that the prior art had provided explicit technical teachings through a comparison between the technical means employed according to the specification of the concerned patent and the technical means disclosed by the prior art.
Finally, the CNIPA was convinced by our statements on the inventiveness and declared invalidation of all claims of the two patents involved.
