On October 8th, 2019, LPG SYSTEMS received from the Beijing Intellectual Property Office (“Beijing IPO”) an administrative decision, ordering an infringer to stop design patent infringement. On February 14th, 2020, LPG SYSTEMS prevailed in an invalidation proceeding initiated by such infringer against its design patent CN201530003419.8, in which the China National Intellectual Property Administration (CNIPA) maintained the validity of this design. This is another exemplary case showcasing WANHUIDA’s best practice in assisting the client to stop patent infringement efficiently and effectively via administrative enforcement action.

Case Brief

LPG SYSTEMS is a world leader in cellular stimulation, offering treatment for therapeutic, beauty and medical applications. In 2014, LPG developed a human body balance device named “HUBER 360” and filed design patent No. CN 201530003419.8 with the CNIPA (“the subject design”). Said design was granted on July 15th, 2015 and has remained valid.

In late 2018, one of LPG SYSTEMS’s distributors observed that a Guangzhou company (“the infringer”) released with great fanfare a new product bearing strong resemblance to that of LPG’s subject design at a local exhibition. Upon receipt of LPG SYSTEMS’s instruction, WANHUIDA paid a visit to the infringer’s booth the following day and organized mobile notarization. Since the exhibition was scheduled to closing shortly, it was infeasible to take any action on-site. Considering that the patentee demanded to enjoin the competitor’s  infringement asap, a lengthy civil lawsuit with low likelihood of obtaining an interlocutory injunction was off the table. We therefore tried to file an administrative complaint with the Guangzhou IPO based on the notarized evidence, but the office was undergoing institutional restructuring and had almost halted the operation at that time.

On June 3rd, 2019, we learned that the infringer planned to attend a trade fair in Beijing on the following day. An opportune complaint was filed with the Beijing IPO, which led to the successful preservation of photographic and videographic evidence and the service of our complaint to the infringer.

In response to our complaint, the infringer filed on June 18^th, 2019 an invalidation request against the subject design patent and applied to stay the enforcement procedure at the Beijing IPO. We submitted the novelty search report to prove the novelty of the subject design and successfully convinced the Beijing IPO to proceed with the procedure.

On September 23rd, 2019, we attended the oral hearing organized by Beijing IPO, and on October 8th, 2019, we received the favorable decision, ordering the immediate cessation of infringement, destruction of the stock of the infringing product as well as the equipment and tools specifically for manufacturing the infringing product, and the prohibition of selling or using the unsold infringing product or marketing of the unsold infringing product of any kind.

After oral hearing, the CNIPA issued in February 2020 the decision to maintain the validity of the patent.

WHD Comments:

The “Measures for Administrative Enforcement of Patents”, released by the CNIPA, stipulates that:

Article 21: The patent infringement dispute handled by the patent administrative authority. is to be concluded within three months upon acceptance of the complaint. Where the complexity of the case warrants an extension to the initial three-month period, approval of the head of the said patent administrative authority shall be sought for and the extension shall be no longer than one month at the most.

Article 44.1: Where the patent administrative authority has made a decision, in which patent infringement is established and the immediate cessation of the infringement is ordered, yet the infringer files an administrative lawsuit against the decision before the people’s court, the enforcement of the said decision shall not be stayed during the administrative proceeding.

Against the backdrop that civil proceeding remains a mainstream approach in enforcing patent rights, administrative enforcement, in some circumstances, could be a viable option if the patentee opts for a time and cost-efficient remedy. In the subject case, the primary aim of the patentee is to force the infringer to immediately stop manufacturing and marketing the infringing product - a large and high value rehabilitation equipment. After weighing the cons and pros of civil lawsuit and administrative enforcement, we filed complaint with the Beijing IPO during the trade fair, followed up with the IPO enforcement action and obtained the IPO decision within four months. Though the infringer filed an administrative lawsuit against the IPO decision to prolong the procedure, it has already stopped the infringement as a precaution. The patentee could still file a follow up civil lawsuit to claim damages.

Contributed by: Shuhua Zhang & Yanli He