Patent invalidation
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Lead: when a design patent is cited as evidence prejudicing the inventiveness of a patent for creation-invention, the disclosure of the drawings of the design patent should be deter...
I. Case Summary 1. Basic facts The applicant China Railway Engineering Group Co., Ltd. (hereinafter referred to as China Railway) is a mega corporate group owned by central governme...
Linda Liu & Partners succeeded in maintaining patent rights of “Side Release Buckle” valid

Guide: when a design patent is cited as evidence prejudicing the inventiveness of a patent for creation-invention, the disclosure of the drawings of the design patent should be determined within the scope directly and unambiguously determined from the drawings; the technical teaching of the design patent should be determined based on the technical effect rather than the aesthetic design.

Case Introduction
The petitioner filed a request for invalidation declaration of the patent for creation-invention No. ZL200980158243.5, of which the title is “Side Release Buckle”. Upon the entrustment of the patentee, Linda Liu & Partners handled the invalidation procedure and the subsequent administrative proceedings on behalf of the patentee.

In the invalidation procedure, the Patent Reexamination Committee of the CNIPA stated that: (1) the inventive point of the patent at issue can be easily obtained by a person skilled in the art based on Reference 1 in combination with the aesthetic design of Reference 5 (a design patent) without making creative efforts; (2) based on force analysis for the product of the patent at issue, the concave-convex shape, which is the inventive point of the patent at issue, cannot effectively overcome the technical problem, and cannot achieve an advantageous technical effect. On this basis, the Patent Reexamination Committee declared invalidation of claims 1-9 of the patent at issue.

The patentee filed an administrative lawsuit against the Decision on Request for Invalidation. The court of the first instance and the court of the second instance both held the following opinions: the drawings of the design patent cited as Reference 5 only disclosed the concave line on the surface of the concave-convex shape and failed to disclose the convex line on the inner side; that is, Reference 5 did not disclose the concave-convex shape of the patent at issue; nor could it be concluded that the concave-convex shape is formed to be continuous; the sued decision had incorrectly determined the technical problem to be actually solved by the patent at issue and was inappropriate to determine the technical teachings based on the aesthetic design of Reference 5 brought about by mere change of shape; the technical teaching should be determined according to the technical effect; there was no motivation to combine Reference 1 with Reference 5; the technical solution of the patent at issue could not have been obtained even by combining the reference documents. Hence, the courts revoked the Decision on Request for Invalidation made by the Patent Reexamination Committee of the CNIPA.

Highlights
The petitioner and the sued Decision stated that: the view showing the opening of the design of Reference 5 disclosed two arch lines arranged in the up-and-down direction and thereby forming a concave-convex shape; referring to the concave line on the upper surface of the socket body, it was deemed that the entire concave-convex shape extends in the insertion direction. In addition, without force analysis, it was determined that when the concave-convex shape was subjected to a force in the up-and-down direction, the lateral wall portions would break first; thus, the patent at issue did not have the claimed technical problem; a person skilled in the art would have considered combining Reference 1 with Reference 1 based on a sense of beauty of the design.

In view of the propositions of the petitioner and the defendant in the first instance, in order to help the judge to easily understand the disclosure of the design patent, our attorneys simulated the 3D spatial shape of the design patent and presented multiple possible spatial shapes based on the view of the opening. Based on the simulated shapes, we stated that the drawings of Reference 5 failed to unambiguously disclose the concave-convex shape. Further, with regard to the disclosure of the drawings of the patent design cited as evidence, we provided referential precedents for the courts of the first and second instances, and stated that, as the lines in the drawings were not uniquely defined, it would be inappropriate to determine that the convex line was disclosed. We also conducted detailed force analysis of the concave-convex shape to specify the object for comparison involved in the technical matter of the patent at issue, i.e., the concave-convex shape vs. a planar shape, instead of the concave-convex shape vs. the side walls. Through these efforts, we prevented the determination of the technical problem in the sued Decision from misleading the judge.

Eventually, the courts of the first and second instances both agreed with us. The key to winning this case include in-depth understanding of the technology and the laws, grasping of the core problem, and making use of technical tools and precedent cases, which helped the judge easily understand the technology and the application of law.

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