The Countermeasures of Foreign Enterprises in the Chinese Patent Invalidation Procedure
The Internet has no borders. If the prior art evidence is published on a foreign website, how to determine its authenticity and time of publication in a patent invalidation case? How to identify whether the claims can be supported by the description? How to identify the integrity of technical solutions in the process of creative judgment? These are practical difficulties in patent invalidation cases.
In a typical case that a prestigious Chinese wireless network technology company represented by Beijing Wis & Weals Law Firm against a dominant mobile phone manufacturing company in Japan regarding WAPI Standard Essential Patent invalidity, the professional judgment provided by Wis & Weals on the above issues was adopted by the Patent Reexamination Board, which successfully maintained the stability of the patent. Based on this typical case, in view of the above issues, we hold that:
I. Key points of identification of abroad Internet evidence in patent invalidation procedure
In the typical case, the two pieces of abroad Internet evidence submitted by the claimant for the purpose of the typical case, Evidence 11 was accepted by the panel and identified as constituting the prior art, while Evidence 12 was not accepted due to its lack of authenticity. In the practice of patent invalidation, authenticity and disclosure time are the focus of examination of abroad Internet evidence as abroad Internet evidence is abroad, instable and easy to tamper with.
We held that the following points shall be paid attention to when submitting abroad Internet evidence in the invalidation procedure:
1. The form of authenticity.
This means the process of obtaining abroad Internet evidence shall meet the relevant requirements of the Guidelines for Examination. Section 2.2.2 of Chapter VIII of Part IV of the Guidelines for Examination stipulates that: "Abroad evidence refers to the evidence formed beyond the territory of the People’s Republic of China, which shall be subject to certification by the notary organ of the country concerned and shall be authenticated by the embassy and consulate of the People’s Republic of China to the said country, or shall be subject to the certification procedure as stipulated in the relevant treaties concluded between the People’s Republic of China and the said country."
We are of the opinion that except for patent documents and other abroad evidence, as stipulated in the above-mentioned Guidelines, that should be notarized by the country concerned, certified by the Chinese embassy and go through other procedures as the essential elements of the authenticity of form, it is unnecessary to carry out such complicated proof procedure for the above-mentioned abroad evidence formed overseas and obtainable in China. For websites that cannot be logged in normally in mainland China, we may choose to go through the certification procedure in regions where the website can be logged in normally, such as Hong Kong.
2. The authenticity of content.
Whether the content of abroad Internet evidence is easy to be tampered with lies in whether the subject that forms, obtains and retains the abroad Internet evidence has strong credibility or has an interest in the claimant, the patentee and other stakeholders. For well-known abroad websites, the possibility that the above-mentioned subject has an interest in the claimant and the patentee and helps them tamper with the content of the evidence can generally be ruled out, and the authenticity of the content can be easily confirmed.
3. Determination of the time of disclosure.
With regard to the determination of the time of disclosure of the Internet evidence, Section 5.1 of Chapter VIII of Part IV of the Guidelines for Examination stipulates that "The earliest time when the public can find the information on the Internet is the publication time of the information, usually the issuance time of the information on the Internet is deemed as the publication time of the information." According to this section, for Internet evidence with a publication date displayed on the website, such as videos, articles and pictures bearing the publication date, such publication date may be used as the time of disclosure of the Internet evidence. Other forms of information that can determine when the Internet information can be browsed by the public can also be used as evidence of the time of disclosure. In addition, the time recorded on the server, on the webpage or in the log file, including the time of uploading, publishing or modifying the webpage, can also be used as the time of disclosure. The time of writing or uploading the webpage, or of embedding Word and PDF files cannot be used as the time of disclosure.
II. Judgment of whether the claims can be supported by the description
Whether the claims can be supported by the description lies in whether the person skilled in the art can obtain or summarize the technical solution from the information disclosed by the description, rather than in whether the literal description is consistent with and that of the claims.
The Guidelines for Examination divides "supported by the description" into two circumstances: "obtained" and "summarized". We are of the opinion that the summarization of the technical solution from the description refers to the summarization of claims containing functionally described technical characteristics or superordinate concept or parallel means. The Guidelines for Examination give more details on the rules of summarization, which is also highlighted by other existing studies.
We hold that whether the technical solution can be "obtained" lies in whether there is "technical consistency" between the contents of the claims and the description. We also hold that to judge whether there is such "technical consistency" or not, we can figure out whether they share the same necessary technical characteristics to solve the same technical problems.
III. Creativity judgment
1. Overall consideration of creativity judgment
The typical case decision gist of the typical case points out the key point of creativity judgment: "In judging the creativity, the understanding of the disputed patent and the prior art shall take into account the technical solution as a whole. That is to say, in the concrete steps of creativity judgment, we should not split the whole technical solution and analyze each isolated technical feature while ignoring the integrity of the technical solution, thus affecting the judgment of the role the technical features play in the whole technical solution."
As far as the typical case is concerned, SONY Mobile's creativity judgment typically reflects the split comparison method. Take Evidence 1 as an example. Evidence 1 involves the technology of wireless communication network construction, operation and management, which aims to relieve the cost burden of operators for the construction of a large number of wireless access points and to meet the personalized needs of users. The open technical solution refers to "the communication system containing public and personal access points and the construction method of the communication system". The technical effect is to reduce the investment cost of operators and to enable users to use the communication system in a broad service area. Evidence 1 can be classified in the category of general prior art (i.e., class A document) as it is not related to the security of MT's access to WLAN, it also differs from the disputed patent in the typical case in technical field, technical problems to be solved and technical solution and effect. However, SONY Mobile intermittently cited some technical features from different paragraphs of Evidence 1. This comparison method not only easily distorts the technical content disclosed by Evidence 1, but also constitutes the “Ex Post Facto” Analysis.
2. The influence of different time nodes on creativity judgment
The patent of typical case involves a method for secure access to and data privacy communication via wireless WLAN mobile devices. At the time of trial of the typical case, WLAN had been a commonly used technology. However, back to the time of application for the disputed patent in 2002, the global Internet was still in the stage of development, Internet communication was realized mainly through wired means, and WLAN was not widely used and the security of WLAN had attracted little attention and study. The gap between time nodes objectively brings people different perceptions and evaluations on the same technology. This perception difference is more apparent in the field of Internet communications where rapid upgrading of technology is witnessed. The later the judgment is, the less the contribution of patents to innovation will be.
The existing rules of creativity judgment contain no special provisions on the time nodes of judgment. Although there are rules on the “Ex Post Facto” Analysis, they cannot counteract the decline of the patents' contribution to invention and creation caused by the time nodes. Creativity judgment should be made according to the time node of application date.