Zhongyu Electronic Co. Ltd. (shanghai) Wins the Retrial of the dispute case of the infringement of the patent right for utility model by the Shanghai Nine Eagles Electronic Technology Co. Ltd. (Patent attorneys: Qi Xue)
2013-04-18 14:51:22 Source： Hit：
Case Information:
Application Number: 200720069025.2
Title of Utility model: A kind of steering gear
Petitioner: Zhongyu Electronic Co. Ltd. (shanghai)
Appellee: Shanghai Nine Eagles Electronic Technology Co. Ltd.
Attorneys: Xue Qi and Zhong Hua of our patent office, are as the patent attorneys for Zhongyu Electronic Co. Ltd. (shanghai)
Cause of action:
On August, 2009, Zhongyu Electronic Co. Ltd. (shanghai) filed an administrative litigation to the Shanghai No. 2 Intermediate Court. The Shanghai No. 2 Intermediate Court made (2009) the Hu-Er-Zhong-Ming-Wu-Chu-Zi (沪二中民五初字) No. 167 administrative judgment that the act of the appellee does not constitute infringement, Zhongyu Electronic Co. Ltd. (shanghai) was not satisfied with the decision, and filed an administrative litigation to Shanghai Municipal Higher People's Court, Shanghai Municipal Higher People's Court made the (2010) Hu-Gao-Min-San-Zhong-Zi (沪高民三终字) No. 53 final judgement that maintain the original judgment. After Zhongyu Electronic Co. Ltd. (shanghai) received the judgement, the attorneys of our patent office analyzed the judgement and suggested applying for a retrial to the Supreme People’s Court. On August 1, 2011, the Supreme People’s Court made (2011) the Min-Shen-Zi (民申字) No. 397 the civil order that arraign this case, the Supreme People’s Court formed a collegial panel according to law, and heard this case in public on October 26, 2011. On April 12, 2012, the Supreme People’s Court made (2011) Min-Ti-Zi (民提字) No. 306 final judgement that revoke the Hu-Gao-Min-San-Zhong-Zi (沪高民三终字) No. 53 final judgement made by Shanghai Municipal Higher People's Court and the Hu-Er-Zhong-Ming-Wu-Chu-Zi (沪二中民五初字) No. 167 administrative judgment made by The Shanghai No. 2 Intermediate Court.
For petitioner, the main grounds of appeal are as follows:
For the principle of estoppel, it is applicable to the amendment or the observations which lead to narrow the extent of protection of the patent right. That is to say, the technical solution abandoned according to the principle of estoppel should not be included in the extent of protection of the patent right. The abandonment usually refers to the patentee abandoned the technical solution himself by the amendment or the observations. However if an independent claim has been declared invalid and the patent right has been upheld on the basis of the dependent claims, and the patentee does not make the abandonment above, the said situation that the patentee does not make the abandonment should be cared fully, and the identified conditions of the abandonment should be seized strictly. If the additional technical features of the dependent claim did not been generalized by the independent claim, the additional technical features did not have the original reference, so it should not be confirmed that the technical solution except the additional features has been abandoned completely.
For the defense of prior art, one technical feature of the alleged infringing technical solution was not disclosed in the prior art, and the technical feature cannot be directly and unambiguously derived by a person skilled in the art on the basis of the common knowledge. So there is substantive difference between the alleged infringing technical solution and the technical solution in the prior art, it is an error that the defense of prior art used by the Shanghai Nine Eagles Electronic Technology Co. Ltd. was confirmed in the second trial, which should be corrected.
Conclusion:
the Supreme People’s Court made the final judgement that revoke the Hu-Gao-Min-San-Zhong-Zi (沪高民三终字) No. 53 final judgement made by Shanghai Municipal Higher People's Court and the Hu-Er-Zhong-Ming-Wu-Chu-Zi (沪二中民五初字) No. 167 administrative judgment made by The Shanghai No. 2 Intermediate Court. And request the Shanghai Nine Eagles Electronic Technology Co. Ltd. compensate a certain amount of economic loss of Zhongyu Electronic Co. Ltd. (shanghai) within 15 days from the date on which the final judgement was served, and the Shanghai Nine Eagles Electronic Technology Co. Ltd. should bear the acceptance fee of the first trial, the litigation preservation fee, the forensic fee, and the acceptance fee of the second trial.
The patentee was not satisfied with the decision, and filed an administrative litigation to the Beijing No. 1 Intermediate Court. Beijing No. 1 Intermediate Court made the (2008) Yi-Zhong-Xing-Chu-Zi (一中行初字) No. 1466 administrative judgment that in the prerequisite that the petitioner for the invalidation had not explicitly adduced the embodiment 1 of evidence 1 as the evidences against the novelty and inventiveness of the patent, the patent reexamination board evaluated the novelty and inventiveness of the patent based on the embodiment 1 of evidence 1 on its own initiative. In addition, the patent reexamination board did not inform patentee of the new facts and causes on which the examination decision was based and did not give patentee a chance to make observations as well, which violated the principle of examination upon request and the principle of hearing.
