Jiankai LI v. Zengfeng HUANG - The First Application of an Earlier Designin Non-infringementDefense(Civil Judgment (2012) Yue Gao Fa Min San Zhong Zi No. 298 by the Guangdong High People's Court on November 26,2012]
Prior design defense is a very important non-infringement defense system in design patent infringement lawsuits, which allows the People's Court to determine whether an infringement is established simply by determine whether the accused design constitutes similar to the prior design without evaluation of validity of the design patent.1 This case shows that although a design patent application was submitted before the filing date of the involved patent and published thereafter the filling date (hereinafter referred to as the "earlier design") does not constitute as prior design. It can be used, however, as the basis for a non-infringement defense by referring to the prior design defense rules, thereby substantially expanding the applicable scope of prior design defense.
Jiankai LIhas a design patent No. ZL200930081693.1, titled "Stand" (as shown in Figure 1), with the filing date of July 3, 2009 and the issued date of May 12, 2010. On September 19, 2011, Jiankai LI filed a lawsuit to the Jiangmen Intermediate People's Court and alleged that Zefeng HUANG manufactured and sold stand product (as shown in Figure 2) infringing his design patent. Zefeng HUANG argued that the accused product belongs to the prior design and provided an earlier design (as shown in Figure 3) as evidence. The evidence is the design patent No. ZL200830187853.6, titled "Folded Round Table" with the filing date of December 5, 2008 and the publication date of January 27, 2010.
The first instance court, after hearing, ruled that the infringement is established and that the prior design defense does not stand.
Zefeng HUANG unsatisfied with the first instance's judgment and appealed to the Guangdong High People's Court, arguing that the accused product belongs to the prior design and does not constitute infringement of the patent concerned.
The second instance court, after hearing, held that the accused product is a stand and the earlier design relates to a folded roundtable. By comparing the accused product with the parts in the earlier design corresponding to the accused product, it can be seen that both are stand consisting of round steel tubes, and are formed by connecting two groups of H-shape brackets, one of which is long and the other is short. In the opening state, it appears as X shape. The shorter H-shape bracket is rotatably connected to a U-shape bracket. The design of the accused stand and the earlier design do not have substantial difference and can be considered as the same design. Hence, the accused product uses the design of the earlier design and does not infringe the patent right of Kaijian LI. Hence, the non-infringement defense should be supported. Therefore, the first instance's judgment is reversed and Kaijina LI's claims Kaijian LI are rejected.
The Chinese Patent Law (2009) stipulates in Article 62 that, in patent infringement dispute, where the accused infringer has evidence to prove the art or design which he implemented belongs to the prior art or prior design, there is no patent infringement. For design patent infringement, this system is called "prior design defense."2 The theory of the prior design defense is that, protection for a patent right should not cover any design falling into the scope of public field, otherwise it will harm the public interest. Since China's patent invalidation proceeding and patent infringement lawsuit are separately managed by the Patent Reexamination Board of the SIPO and the People's Courts, respectively. Therefore, when the patentee initiates infringement lawsuit in the People's Court, the accused infringer usually submits to the Patent Reexamination Board an invalidation request for the involved patent. In this case, if the People's Court suspends the case and waits for the final conclusion of the validity of the patent right, it will greatly prolong the litigation procedure, resulting in delayed and pending lawsuits. Prior design defense system is designed to allow the People's Court to determine whether the accused design belongs to the prior design so as to determine whether non-infringement defense stands. Since this system does not involve the validity of the patent right, it can reduce the length and delays of litigation to a large extent. In recent judicial practice, the prior design defense system duly plays its role.
It is noteworthy that, although according to Article 62 of the Chinese Patent Law (2009), the prior design refers only to designs known to the domestic public or abroad before the filing date of the involved patent, the Supreme People's Court has issued a judicial policy document clearly stating that, where the accused infringer alleges to implement a design recited in a conflicting application (referred to as the "earlier design" hereinafter) and thus does not constitute patent infringement.3 Such allegation can be judged with reference to the examination standard of the prior design defense. However, the conflicting application in the judicial policy document is not the same as the conflicting application defined in Guidelines for Patent Examination.4 The judicial policy document only requires the conflicting application to be associated with the involved patent in terms of time, that is, the conflicting application filed before the filing date of the involved patent and published after the filing date; while the Guidelines for Patent Examination requires that the conflicting application is not only associated with the involved patent in terms of time, but also associated with the involved patent in terms of the content, i.e., the design in the conflicting application and the design in the involved patent should be the same design.5 In addition, the conflicting application defense mentioned in the judicial policy requires comparing the accused design with the design in the conflicting application, while the Guidelines for Patent Examination requires comparing the design in the conflicting application with the involved patent. Hence, it is more appropriate and accurate to refer to the conflicting application in the judicial policy as "earlier application." The judicial policy essentially expands the prior design defense rules to cases where the accused infringer implements the design in an earlier application. The present case is the very first case in which an earlier application is used as non-infringement defense in a manner similar to the existing design defense and has milestone meaning.
The following points should be noted in applying prior design defense with an earlier application:
- First, the accused design should belong to identical or similar design to the earlier application, which is the basis for determination of identicalness or similarity.
- Second, the accused design should be compared with the design in the earlier application alone, and cannot be compared with the combination of a plurality of designs or the combination of a prior design and a common design.
- Third, if the accused design is a part of the design of the earlier application, it only needs to compare the part in the earlier application corresponding to the accused design.
- Fourth, under the Chinese Patent Law, the criteria of determining whether a conflict application can be found is to determine whether two designs are the same or substantially the same. But in the trial practice, the criteria of determining whether the earlier application defense stands is to determine whether the accused design and the design in the earlier application are the same design or have no substantial difference,6 that is, to be identical or similar.
However, whether an earlier application can be used as basis for non-infringement defense remains controversial. From the point of the law, the Chinese Patent Law clearly stipulates the prior design defense rules, the scope of the prior design, and the use of an earlier application as defense lacks a legal basis. From the purpose of the introduction of this defense system, the defense system mainly aims at solving the problem of prolonged infringement dispute resulted from separate jurisdictions over patent rights and patent infringement disputes, while not empowering the People's Court to adjudicate the validity of patents. Thus, the grounds for defenses should be strictly limited. For example, grounds such as lack of support from the description, insufficient disclosure, and lack of inventiveness cannot be used as arguments for non-infringing defense. From the point of judgment standards, the earlier application defense and prior design defense are identical, and no new standards will be introduced. Thus, the introduction of the earlier application defense has been accepted by the Courts, more and more cases are expected to adopt earlier application defense in the future.
 In China, patent is divided into invention, utility model and design. Accordingly, prior art defense is applicable in invention patent and utility model patent infringement lawsuits, prior design defense is applicable in design patent infringement lawsuits.
 For ease of discussion, the following discussions only refers to "prior design defense", but are equally applicable to "prior art defense".
 "Opinions of the Supreme People's Court on Issues concerning Maximizing the Role of Intellectual Property Right Trials in Boosting the Great Development and Great Prosperity of Socialist Culture and Promoting the Independent and Coordinated Development of Economy", issued on December 16, 2011.
 Determining whether the comparative design constitutes a conflicting application for the patent concerned shall be made in accordance with all the contents of the published comparative design. When comparing the comparative design with the design of the product claimed by the patent concerned, whether the comparative design includes a design identical or substantially identical with the patent concerned shall be decided.
 A design for which the patent right is granted is not an prior design, and no application is filed by any unit or individual for any identical design with the patent administration department under the State Council before the date of application for patent right and no identical design is recorded in the patent documentations announced after the date of application.
 "Interpretations of the Supreme People's Court on Certain Issues Concerning the Application of Law in the Trial of Patent" stipulates in Rule 14 that if the accused design and the prior design are the same design or of no substantial difference, the People's Court shall determine that the design implemented by the accused infringer belongs to an prior design patent stipulated by Article 62 of the Chinese Patent Law.
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