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...
1. On direct infringement, the high court perused three stages of design and R&D, manufacture, and factory inspection of Sony China, affirmed infringement in the first stage and reversed the first-instance decision on the latter two stages.
2. On indirect infringement, the high court stated four elements to be met where an indirect infringer would bear liability, even if the direct implementer with academic purposes and the like doesn’t infringe: “exclusive product + intentional + importance of the exclusive product in the patented technical solution + existence of the direct implementer”. The court specified its intent to promote protection to a large number of process patents in communication and software field.
3. On SEP licensing negotiations and lawsuits, the court affirms that it is reasonable for a patentee to require signing NDA before providing claim chart. The courts suggested the following actions showing goodwill. Potential licensee provides further explanations and suggestions to promote negotiation; and potential licensee submits to the court an amount of licensee fee it believes reasonable, or provides a guarantee with equivalent value during lawsuit.
4. On “patent exhaustion” defense, the high court affirmed on the ground that current law only recognizes its application to claims of product and manufacturing process. This point is controversial and awaits further guidance from Supreme Court of China.
5. On the amount of damages, the high court affirmed the amount and didn’t re-elaborate the calculation, after it decided the infringement scope was narrowed down and admitted new evidences as reference to the license fee.
