Recently, our firm won the second instance of an administrative lawsuit on invalidation declaration of a patent for invention, successfully having the patent fully invalidated by th...
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...
Final Judgment: Patent Claiming for Damages of 15 Million RMB Fully Invalidated
Recently, our firm won the second instance of an administrative lawsuit on invalidation declaration of a patent for invention, successfully having the patent fully invalidated by the Supreme People’s Court due to insufficient disclosure of the specification.
Cause of Dispute and Basic Facts of the Case
In October 2020, as Mingyang Technology (Suzhou) Co., Ltd. (hereinafter referred to as “Mingyang Technology”) was gearing up for going public, Saint-Gobain Performance Plastics Pamplona Co., Ltd. (hereinafter referred to as “Saint-Gobain”) sued Mingyang Technology for manufacturing and selling certain self-lubricating bearing products that allegedly infringed upon its patent for “maintenance-free slide bearing” (hereinafter referred to as the subject patent), claiming for a compensation of approximately 15 million RMB.
In December 2020, our firm represented Mingyang Technology in submitting a “Request for Declaration of Invalidation” against the subject patent to the China National Intellectual Property Administration (hereinafter referred to as “CNIPA”).
On July 1, 2021, the CNIPA determined that the technical solution of the patent was not sufficiently disclosed and issued “Decision on Request for Declaration of Invalidation” (No. 50661), declaring all claims of the patent to be invalid.
On August 6, 2021, the Shanghai Intellectual Property Court made the Civil Ruling (2020) Hu 73 IP Civil First Instance (No. 1165) to allow the plaintiff, Saint-Gobain, to withdraw the infringement lawsuit.
The Supreme People’s Court held two trial instances and made the final judgment on May 20, 2024 to reject Saint-Gobain’s appeal and uphold the decision to fully invalidate the patent.
This case involves the products that are the core business of Mingyang Technology, with the amount involved accounting for 27.45% of its total revenue. Throughout the multiple rounds of IPO inquiries by the Beijing Stock Exchange, this case has always been one of the core concerns.
As the subject patent was fully invalidated, Saint-Gobain was forced to withdraw the civil lawsuit for patent infringement. Thus, Mingyang Technology cleared the final hurdle to its listing and successfully went public on the Beijing Stock Exchange on March 15, 2023.
Highlights of the Case:
Strategy Formulation Stage:
Upon the entrustment of Mingyang Technology, we immediately conducted an in-depth study of the patent involved in the case and carried out a comprehensive search of the prior art. Based on the documents found in the search, we formulated an invalidation strategy primarily focusing on lack of inventiveness/novelty, supplemented by insufficient disclosure and lack of support from the description. We also formulated the strategy for the infringement case in case the patent could not be fully invalidated, that is, to force the patentee to amend or construe the patent in a restrictive manner in the invalidation procedure on the grounds of insufficient disclosure, lack of novelty, etc., so as to make non-infringement defense.
Invalidation Stage:
The development of the invalidation process was basically in line with our expectations. In the written statement of opinions, the patentee further limited the claims to overcome the invalidation grounds of lack of novelty and deleted a large number of parallel technical solutions such as alternative modifiers.
However, in the statement of opinions, the patentee interpreted that the polymer of the intermediate layer was obtained by graft copolymerization and was different from a polymer obtained by monomer copolymerization as disclosed in the closest prior art, which exceeds our expectation because the specification actually does not include the specific disclosure that the intermediate polymer is obtained by graft copolymerization and this statement of the patentee would be unreasonable from the technical perspective.
In view of the amendments and statements of the patentee, we immediately adjusted the invalidation strategy to rely on insufficient disclosure as the main reason for invalidation and strived to fully invalidate the patent. In the meantime, we adjusted the litigation strategy to argue that the polymer of the intermediate layer of Mingyang Technology’s product of its independent development was not obtained by graft copolymerization and began to collect relevant evidence.
In the oral hearing, we further emphasized that the technical effect of the subject patent relied on the polymer of the intermediate layer and reasoned out the insufficient disclosure of the specification, elaborating to what extent the polymer of the invention point should be disclosed at least so that those skilled in the art can implement and reproduce it. Furthermore, based on our patent attorney’s technical background in the field of polymers, we elaborated the unreasonable nature of the patentee’s statement in regard to modification graft copolymerization from a technical perspective and submitted relevant academic papers as evidence.
On July 1, 2021, the CNIPA made the “Decision on Request for Invalidation Declaration,” declaring all claims of the patent to be invalid on the grounds of insufficient disclosure of the specification.
Administrative Litigation Stage:
In the first and second instances of the administrative litigation, the patentee tried to argue that the subject patent was the first and only one using the method for modifying ETFE by maleic anhydride grafting in claim 1 before the filing date and submitted counter-evidence.
In this regard, our patent attorneys elaborated, based on multiple pieces of evidence in conjunction with their own scientific research experience, that there are multiple processing routes for maleic anhydride modified ETFE, including monomer copolymerization, chain transfer, graft copolymerization, and the like; moreover, graft copolymerization per se can be implemented by various known methods. We also found evidence to prove that the counter-evidence submitted by the patentee is not the only technical literature that has disclosed the specific method of modifying ETFE by maleic anhydride grafting, and thus the counter-evidence of the patentee cannot prove that those skilled in the art know the preparation method of the polymer of the subject patent.
In the end, the courts of both the first and second instances supported our claim. In the second instance, the Supreme People’s Court opined that: the polymer of the subject patent could not be clearly identified; the subject patent did not clearly disclose the specific method for obtaining the polymer of the intermediate layer, making it impossible for those skilled in the art to implement the technical solution; grafting is a common approach in the art, and can be implemented in various specific manners; and there are also various modification methods; thus, even if the new evidence discloses a method of modifying ETFE with maleic anhydride, it does not indicate that those skilled in the art will necessarily use the disclosed method; since the reaction of the polymer exhibits certain complexity and uncertainty, the conventional parameters of the polymerization reaction cannot be determined when the specific conditions of the preparation method are uncertain, in turn causing uncertainty in the molecular weight distribution, structure, composition, and the like of the polymer of the intermediate layer; accordingly, the sued decision subject was correct in finding that the specification of subject patent was insufficiently disclosed for all claims.
Conclusion:
With the rapid growth of Chinese enterprises, product performance and quality are constantly improved and the market scale gradually expanding. More and more enterprises are facing the risk of intellectual property litigation and need lawyers more specialized in intellectual property for better development of enterprises.
Initiating a patent invalidation procedure is an effective countermeasure to patent infringement litigation. In order to achieve the most favorable result, it would be necessary to formulate an invalidation strategy and adjust the strategy according to the progression of the invalidation procedure.
It is not common for patents to be invalidated due to insufficient disclosure. Empty claims of insufficient disclosure would rarely be recognized by the collegial panel. Invalidation of a patent on the grounds of insufficient disclosure could be made possible only based on adequate reasoning and supporting evidence. This imposes higher requirements for patent attorneys in the understanding of technology and the relevant laws.
