China’s Supreme People’s Court (SPC) rendered on 16^th June 2021 decisions: (2021) Zui Gao Fa Zhi Xing Zhong No. 78 & (2021) Zui Gao Fa Zhi Xing Zhong No. 79 in case Epoint v. Henan AMR & Glodon, in which the SPC reaffirmed the rule that "the design features distinguishing a patented design from a prior design usually have a greater impact on the overall visual effect of the design than the rest design features of the same". This is probably the SPC’s first administrative decision concerning infringement assessment of GUI design patent, as corroborated by a search on the China Judgments Online dated 6^th September 2021.

Case brief

The Patentee Glodon filed an administrative complaint to Administration for Market Regulation Henan Province (Henan AMR) against Epoint, alleging that the engineering cost software V10.X sold by the latter infringed its design patent ZL201530283890.7 and ZL201530284014.6 (’890 patent & ’014 patent), both titled “Computer with Graphic User Interface (GUI)”.

Henan AMR accepted the complaint on 16^th May 2019 and issued administrative decisions on 12^th September 2019, finding patent infringement and sanctioned Epoint. Epoint brought two parallel administrative proceedings before the Zhengzhou Intermediate Court (1^st instance court), challenging the AMR decisions, but to no avail. Both cases were thrown out by the court on 26^th October 2020.

Both the 1^st instance judgment and the sued AMR decision sided with the Patentee, finding that the overall layout of the accused infringing interface is almost identical with that of the patented interface. Both interfaces include three segments from top to bottom, namely the top Title Bar, the upper Menu Bar and the lower Interface Operation Area, in approximately same proportion. The differences are nuanced, which has no substantial impact on the overall visual effect. It is therefore concluded that in absence of substantial difference, the accused infringing interface, which is similar to the patented GUI, falls within the latter’s protection scope.

As a countermeasure, Epoint (the petitioner) initiated, on 12^th July 2019, an invalidity action against ’890 patent before the China National Intellectual Property Administration (CNIPA), which maintained the validity of the patent on 2^nd March 2020.

Our Strategy

The firm’s service was retained by Epoint after the client lost the first instance administrative proceeding before the Zhengzhou Intermediate Court. At that time, the CNIPA had ruled to maintain the validity of the ’890 patent. As the petitioner, Epoint submitted during the invalidation proceeding its existing GUI design (V10.0 version) as prior design evidence. The accused infringing design V10.X was merely a minor update to V10.0 without substantial changes.

In the infringement proceeding, the Patentee needs to prove that the accused infringing design falls within the protection scope of its patented design. To serve that purpose, the Patentee asserted that the protection scope of its patented design shall be extended to the "three-segment" overall layout, which actually belongs to prior design. In the meantime, in order to maintain the validity of its GUI patent in the invalidation proceeding, the Patentee underlined the design features distinguishing its patented GUI from the prior design in terms of the layout and design of each segment, namely, the Title Bar, Menu Bar and Interface Operation Area, which constitutes de facto limitation of the protection scope of its patent right.

The CNIPA confirmed in the decision re ’890 patent the differences underscored by the Patentee and concluded that "the number of icons and the specific arrangement thereof" would lead to different visual impressions, which has a significant bearing on the overall visual effect of the design. Based on this reasoning, the CNIPA maintained the validity of ’890 patent.

We believe that the findings of the distinguishing design features in the CNIPA decision could be leveraged to contradict the Patentee’s arguments in the infringement proceeding as it breaches the estoppel principle. “Estoppel” in patent law is a legal term meaning that a second argument is barred if it is inconsistent with a first argument. In a patent context, it bars a patentee from admitting something to the CNIPA and later contradicting that admission before a court. We advised the client to 1) refrain from appealing the CNIPA decision before the court and 2) file an invalidation action against ’014 patent, not seeking to invalidate the patent, but to force Glodon to acknowledge the distinguishing design features of ’014 patent before the CNIPA.

On 13^th July 2020, an invalidation request was filed before the CNIPA against ’014 patent, which was overruled on 7^th January 2021.

On 10^th November 2020, Epoint appealed the AMR decisions before the SPC.

SPC reasoning

We made the following arguments on behalf of the client in the 2^nd instance proceedings:

·          The "three-segment" overall layout is the design feature of the prior design. The design features distinguishing the patents at issue from the prior design are the respective layout and design of the top Title Bar, the upper Menu Bar and the lower Interface Operation Area, rather than the "three-segment" overall layout.

·          In the invalidation proceedings against the patents at issue, the Patentee underlines the said distinguishing design features of the patents at issue, which was affirmed by the CNIPA.

·          Compared with the patents at issue, the layout and design of the top Title Bar, the upper Menu Bar and the lower Interface Operation Area of the accused infringing interface are obviously different. Such distinguishing features embodies the contribution designer made to the prior design, which is conspicuous to ordinary consumers and have a significant impact on the overall visual effect.

Therefore, on the premise that the accused infringing interface is devoid of multiple design features that distinguish the patents at issue from the prior design, the accused infringing interface is obviously not similar to the patents at issue.

The SPC found our arguments tenable. It opined that the CNIPA’s invalidation decisions re ’890 and ’014 patents affirm the overall layout shared by the patents at issue and the prior design is not distinguishing design features and has been disclosed by the prior design. In terms of the distinguishing design features, differences mainly lies in the design of Logo, Menu Bar and Interface Operation Area between the accused infringing interface and the interface shown in the main view of the patents at issue, which are easily perceived by ordinary consumers and embody the specific appearance of the design effect, thus is inevitably conspicuous to ordinary consumers during purchase and use of the product. The number of icons and their specific arrangement will lead to different visual impressions, which will have a greater impact on the overall visual effect of the design, thus are not nuanced. Therefore, the accused infringing design is neither identical with nor similar to the patents at issue.

Comments

In assessing whether the difference between the accused infringing interface and the patented interface has a material impact on the overall visual effect, the SPC explicitly provides in Article 11 of the Interpretation on Several Issues Concerning the Application of law in the Trial of Disputes over Infringement of Patent Rights (2009) that:

“The overall visual effect of a design is generally more susceptible to influence in cases of the following circumstances:

…

(2) The design features of the patented design, which distinguish such design from prior design, relative to other design features of such patented design.”

The SPC reiterated the aforesaid principle in No. 85 guidance case [(2015) Min Ti Zi No. 23 judgment, August 11, 2015]: "the distinguishing design features of the patented design reflect its innovation over prior design and the designer's creative contribution to the prior design. The distinguishing design features enable ordinary consumers to distinguish the patent design from a prior design. Therefore, they have a significant impact on the overall visual effect of the design product. If the accused infringing design does not contain all the design features that distinguish the patented design from prior design, in principle, the accused infringing design could be presumed to be not similar to the patented design."

It is one common tactic for the defendant of a patent civil proceeding to challenge the validity of the plaintiff’s (patentee’s) patent in a separate CNIPA invalidation proceeding. In this case, the significance of the invalidation action also lies in ascertaining the distinguishing design features, because even if the defendant’s prior-design defense fails in the infringement proceeding, in the context that the validity of the patent at issue is maintained in the invalidation proceeding, the ascertained distinguishing design features could still be utilized in the non-infringement defense, as infringement could be established only under the premise that the accused infringing design contains all the design features that distinguish the patented design from the prior design.

The SPC reaffirms in this case that the general principle employed in design patent infringement assessment as introduced in relevant judicial interpretations is also applicable to GUI designs.

Authored by Weifeng Sun & Hongfeng Li