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19 October 2020
On 2 September 2019 the IP Tribunal of the Supreme People's Court (the SPC IP Tribunal) rendered a judgment ((2019) Zui Gao Fa Zhi Xing Zhong No 1), confirming that a physical mobile phone was eligible prior art in assessing the novelty and inventiveness of the litigious patent ZL200810116190.8, entitled "a method and a device for deleting information during an input process". The SPC IP Tribunal clarified that a party that asserts a physical object as prior art must:
This is the first patent administrative case appealed before the SPC IP Tribunal and is selected as one of the 36 exemplary cases concluded by the tribunal in 2019.
The patentee Beijing Sogou Technology Development Ltd (Sogou) filed a civil lawsuit before the Beijing IP Court accusing Baidu Network Technology Ltd (Baidu) of infringing its patent ZL200810116190.8 through an input method software.
In response to Sogou's patent infringement assertion, Baidu filed before the Patent Re-examination Board (PRB) (which was later incorporated into the China National IP Administration) an invalidation petition against the patent at issue, arguing, among other things, that the patented claims were devoid of novelty or inventiveness over the physical mobile phones launched before the application date of 4 July 2008. During the hearing, Baidu demonstrated the operation and function of a few physical mobile phones acquired through notarised purchase.
Claim 1 of the patent at issue includes the following internal steps to be performed in the background program:
1. A method for deleting information during an input process, characterized in that the input area includes a code input area and a character screen area, and the method includes:
When the input focus is in the code input area, receiving the instruction of the delete key to delete the code that has been entered;
When all the codes have been deleted, suspending the receiving of the instruction of the delete key; and
When the key state of the delete key meets a preset condition, continuing the receiving of the instruction of the delete key to delete the character in the character screen area. (Emphasis added.)
On 2 February 2018 the PRB issued a decision maintaining the validity of the patent at issue. The decision held that the physical mobile phones cited by Baidu were not eligible prior art and thus refused to further evaluate their novelty and inventiveness. The decision reasoned that notwithstanding the demonstration of an input function through a user interface, the mobile phones did not prove how the background program cooperated with the phone hardware and what definite solution is adopted to achieve the input function.
On 29 May 2018 Baidu initiated an administrative lawsuit before the Beijing IP Court.
On 28 January 2019 the first-instance court (the Beijing IP Court) revoked the PRB decision, holding that there was no strict requirement on how definitely prior art should be disclosed; thus, the PRB should not deny the eligibility of the physical mobile phones as prior art on the ground of their indefinite disclosure.
The second-instance court (the SPC IP Tribunal) upheld the conclusion of the first-instance judgment, finding that the physical mobile phones were eligible prior art in assessing the novelty and inventiveness of the patent at issue. The SPC IP Tribunal added that during the course of operation, the user interface of the physical mobile phones indicates that their background program includes the step of receiving an instruction to delete the input code and under this scenario, the user interface could uniquely correspond to the background program. The SPC IP Tribunal underlined that any party citing a physical object as prior art must specify, among those solutions reflected in the physical object, which technical solution is cited as prior art and prove or demonstrate that the technical solution could be intuitively obtained from the physical object.
The 'direct and beyond all doubt' criteria that the PRB uses in its fact finding proceeding for prior documentary evidence is analogous to the 'beyond reasonable doubt' standard applied in criminal procedures. The patent examination guidelines provide that the technical content disclosed by a reference document "includes not only those technical contents expressly described in the reference document but also those implied technical contents that can be derived directly and unambiguously from the disclosure by a person skilled in the art", and that "the contents inferred from the drawings, and the dimensions with their relations measured from the drawings without any written description cannot be taken as the contents of disclosure".
Prior use evidence has come under the spotlight in patent invalidation procedures involving invention patents, especially in the software industry. The petitioner of the invalidation proceeding (usually the accused infringer in the associated civil suit) would be overburdened with an arduous burden of proof if the proof standard for documentary evidence was applied for a physical object. In order to meet the 'direct and beyond all doubt' criteria, the accused infringer Baidu had to determine the internal step of the physical mobile phone, which could be technically impracticable or pricy if at all possible. According to the 'high probability proof standard' of civil lawsuits, the burden of proof would be shifted to the accused infringer Baidu once the patentee Sogou preliminarily proved the infringement of patent through deducing the internal step of the background program based on the user interface of the accused software. In the associated civil lawsuit, the final judgment found patent infringement in Baidu's input method software based on the reasoning that the patentee had proved that Baidu's software shared the same function of the patent and possibly included the internal step recited in the patent claim. However, Baidu failed to prove the difference between the internal step of the accused software and the patent.
Addressing the arduous burden of proof allocated to the accused infringer in the patent invalidation procedure, the SPC IP Tribunal clarified the "clear and convincing evidence standard" for prior art taking the form of physical objects. This standard is stricter than the 'high probability proof standard' adopted in civil proceedings, probably weighing up the impact of patent invalidation procedures over public interests.
For further information on this topic please contact Hewen Zhao at Wanhuida Intellectual Property by telephone (+86 10 6892 1000) or email (email@example.com). The Wanhuida Intellectual Property website can be accessed at www.wanhuida.com.
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