Our Success in Patent Invalidation: Challenging “Actually Solved” Technical Problem of Distinguishing Features
Our firm, in collaboration with Beijing Wei Chixue Law Firm, has recently closed a lengthy patent invalidation case. After a seven-year journey through the invalidation declaration procedure before the CNIPA, the first-instance trial at the Beijing Intellectual Property Court, and the second and final instance trial before the Supreme People’s Court, we successfully secured a final ruling declaring all claims of the subject patent invalid on behalf of our client, the petitioner. One major dispute concerned “the technical problem actually to be solved by the distinguishing technical features.” The Supreme People’s Court affirmed that “if a person skilled in the art cannot determine that the distinguishing technical features can produce the technical effect described in the description, the technical problem actually to be solved should be re-determined according to the objective technical effect produced by the distinguishing technical features.”
Background Information
The subject patent relates to a core technology in the field of micro reactor. The validity of this patent would effect on the competitive landscape and future developmental direction of the entire industry. We organized a professional team immediately upon the entrustment of the client and conducted all-round and in-depth analysis of the subject patent. Specific efforts were made in the following aspects:
Grasping the technology - Supported by the client’s technical team, our senior patent attorneys analyzed the subject patent to evaluate its inventiveness against the state of the art at the time of filing.
Collecting evidence - In collaboration with the client, our team conducted thorough prior-art search, scouring patent databases, academic publications, and digital resources. This effort yielded key evidence that was instrumental in building a compelling case for the patent’s invalidation.
Formulating the legal strategy - We reviewed the prosecution history of the patent family and the opinions stated by the patentee and then formed a robust argumentation strategy grounded in the Patent Law and the Implementing Regulations thereof, and the relevant provisions of the Guidelines for Patent Examination.
Major dispute
A major dispute of this case lies in the technical problem actually to be solved by the distinguishing technical features.
Through the invalidation procedure, the first-instance trial and the second instance trial, the patentee argued that the distinguishing technical features of claim 1 of the subject patent as compared to Evidence 1 had a synergistic effect to solve the technical problem of reducing pressure drop while improving mixing performance. Relevant counter-evidence was submitted to prove said technical effect.
Based on penetrating analysis of the patentee’s arguments and counterevidence, we made a powerful rebuttal from the following perspectives.
(1) Timeliness of evidence: evidence submitted after specified deadline shall not be considered.
The counter-evidence was submitted past the prescribed deadline for evidence submission in the invalidation declaration procedure. As such, it shall be excluded from consideration under the Guidelines for Patent Examination and relevant judicial interpretations.
(2) Authenticity of evidence: biased experiment can hardly demonstrate the objective truth.
The counter-evidence was a self-produced test report. It was neither verified by an independent party nor notarized, and its creation was not subject to oversight. Consequently, the data source and test conditions are unverifiable and unreliable. Failing to meet the fundamental requirement of authenticity, the patentee’s counter-evidence cannot form the basis for factual findings.
(3) Relevance of evidence: the premise of the technique involved in the counter-evidence deviates from the patent scope.
Even disregarding the procedural defect and the questionable authenticity, the counter-evidence fails to prove the technical effect of claim 1 of the subject patent. The experiment of the counter-evidence relied on a cordate chamber depicted only in the drawings of the subject patent. However, the scope of protection, defined by the patent claims, does not recite such a cordate chamber. Therefore, the counter-evidence submitted by the patentee was considered to be irrelevant.
(4) Comparison of technical effects: no substantive difference was found.
We commissioned an independent third party to perform simulation analysis on the mixer of Evidence 1. The results confirmed that Evidence 1 and the subject patent produce essentially the same technical effect, even at the level of detailed embodiments.
The court of second instance ultimately supported our arguments on the relevance of evidence. Specifically, the court opined that:
“If a person skilled in the art cannot determine that the distinguishing technical features can produce the technical effect described in the description, the technical problem actually to be solved should be re-determined according to the objective technical effect produced by the distinguishing technical features. As described in the description of the subject patent, the excellent technical effect of reducing pressure drop while improving mixing performance is achieved by the overall design of the reacting substance passage. It is rather unlikely to produce this excellent technical effect by virtue of the distinguishing technical features alone… Verified by the counter-evidence and the evidence submitted in the second instance is the technical effect of using a particular chamber of a cordate shape, while the scope of protection according to claim 1 of the subject patent is not restricted to a cordate chamber. Hence, … either the counter-evidence or the evidence submitted in the second instance cannot prove that the excellent technical effect described in the description are produced by the distinguishing technical features.”
Ultimately, the original ruling was affirmed, and subsequent appeal dismissed.
