On 2^nd September, 2019, the IP Tribunal of China Supreme People’s Court (“the SPC IP Tribunal”) rendered a judgment (2019) Zui Gao Fa Zhi Xing Zhong No. 1, confirming that the physical cellphone is an eligible prior art in assessing the novelty and inventiveness of the litigious patent ZL200810116190.8, titled “a method and a device for deleting information during an input process”. The IP Tribunal clarifies that a party that asserts a physical object as prior art is obligated to: specify the asserted prior technical solution, specify the corresponding relation between such prior technical solution and the physical object, and prove or demonstrate that the public can intuitively obtain the technical solution from the physical object.

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.

Facts:

The patentee Beijing Sogou Technology Development Ltd (“Sogou”) filed before the Beijing IP Court a civil lawsuit, accusing the infringement of his patent ZL200810116190.8 by an input method software released by Baidu Network Technology Ltd (“Baidu”).

In response to the patent infringement assertion made by Sogou, the alleged infringer Baidu filed before the Patent Reexamination Board (which was later incorporated into the China National IP Administration) an invalidation petition against the patent at issue, arguing inter alia that the patented claims are devoid of novelty or inventiveness over the physical cellphones launched before the application date 4^th July, 2008. In the hearing, Baidu demonstrated the operation and function of a few physical cellphones acquired through notarized purchase.

Claim 1 of the patent at issue includes some internal steps to be performed in background program. The internal steps are underlined below.

“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.”

The Patent Reexamination Board (PRB) issued a decision on 2^nd February, 2018 maintaining the validity of the patent at issue. The decision held that the physical cellphones cited by Baidu are not eligible prior art, thus refused to further evaluate the novelty and inventiveness over the cellphones. The decision reasoned that notwithstanding the demonstration of input function through user interface, the cellphones failed to prove: how the background program cooperates with the cellphone hardware and what definite solution is adopted to achieve the input function.

On 29^th May, 2018, Baidu initiated an administrative lawsuit before the Beijing Intellectual Property Court.

Court Holds:

The first instance court (Beijing IP Court) revoked on 28^th January, 2019 the PRB decision, holding that there is no strict requirement on how definitely a prior art should be disclosed, thus the PRB should not cite indefinite disclosure to deny the eligibility of the physical cellphones as prior art.

The second instance court (the SPC IP Tribunal) upheld the conclusion of the first instance judgment, finding that the physical cellphones are eligible prior art in assessing the novelty and inventiveness of the patent at issue. The IP Tribunal added that, during the course of operation, the user interface of the physical cellphones indicates that their background program of the cellphones inevitably includes the step of receiving the instruction of the delete key so as to delete the input code in response to the instruction of the delete key, and under this scenario, the user interface could uniquely correspond to the background program. The IP Tribunal underlines that any party citing physical object as prior art is obligated to specify, among those solutions reflected in physical object, which technical solution is cited as prior art, and to prove or to demonstrate that the asserting technical solution could be intuitively obtained from the physical object.

Comments:

The “direct and beyond all doubt” criteria the PRB utilizes in its fact finding proceeding for prior documentary evidence is analogous to the “beyond reasonable doubt” standard applied in criminal procedure.  The Patent Examination Guideline provides 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 “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 spotlight in patent invalidation procedure 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 arduous burden of proof, if the proof standard for documentary evidence is applied for physical object. In order to meet the “direct and beyond all doubt” criteria, the accused infringer Baidu has to determine the internal step of the physical cellphone, which could be technically impracticable or pricy if possible at all. According to the “high probability proof standard” of civil lawsuit, the burden of proof will be shifted to the accused infringer Baidu, once the patentee Sogou preliminarily proves 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 of the Baidu input method software, based on the reasoning that the patentee proved the Baidu software shares the same function of the patent and possibly includes the internal step recited in patent claim, yet 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 IP Tribunal clarifies the “clear and convincing evidence standard” for prior arts taking the form of physical objects. Still this standard is stricter than the “high probability proof standard” adopted in civil proceeding, probably weighing up the impact of patent invalidation procedure over public interests.

Contributed by: Hewen Zhao