Forging Sword for Seven Years: Won the Case of the Dispute over Invalidation of the Invention Patent of Yee Fung Handled By Lawyer Xu Xinming

Abstract

Shenzhen Yee Fung Automation Technology Co., Ltd.  (hereafter as “Yee Fung Company”) owns a patent numbered 200710124309.1, titled "Vertical Movement Kind Storage Type Mechanical Solid Parking Garage" (the "patent in question"). Hu'Nan Disheng Ind. Equip. Co., Ltd. (hereafter as “Hunan Disheng Company”) filed two Requests of Invalidity Declaration against this patent right on December 17, 2014, and May 21, 2015, respectively, arguing that claims 1-5 of this patent lacked inventiveness. After examining the first request for invalidity, the National Intellectual Property Administration (CNIPA) issued Invalidation Decision No. 26414 on June 26, 2015, finding that claims 1-5 lacked inventiveness and declaring the entire patent invalid.

Dissatisfied with this decision, Yee Fung Company appointed Xu Xinming, the Chief Lawyer of the China Intellectual Property Lawyers Network, to initiate an administrative lawsuit at the Beijing Intellectual Property Court. The court, after a public hearing, made Administrative Judgment No. 5079 [2015], First, IP Division, Beijing, of Beijing Intellectual Property Court  (hereafter as Judgment No. 5079) dated August 30, 2017: revoking Invalidation Decision No. 26414 and ordering CNIPA to reconsider the invalidity request. Dissatisfied with this decision, Hunan Disheng Company appealed to the Beijing High People’s Court, which after review, dismissed the appeal and upheld the previous judgment on July 27, 2018, with Administrative Judgment No. 161, Final, Administrative Division, Beijing, of Beijing High People’s Court (hereafter as Judgment No. 161).

CNIPA conducted a consolidated review of the first and second Request of Invalidity Declaration filed by Hunan Disheng Company concerning the patent in question, following a remand for reconsideration. Xu Xinming’s legal team represented Yee Fung Company during the oral hearings. On April 10, 2019, CNIPA issued Invalidation Decision No. 39885 regarding the first invalidity request and Invalidation Decision No. 39884 regarding the second invalidity request. Both decisions upheld the validity of the patent rights.

Hunan Disheng Company, dissatisfied with CNIPA's Invalidation Decision No. 39885 and No. 39884, filed administrative lawsuits at the Beijing Intellectual Property Court, requesting to reevoke the said invalidity decisions. The cases were filed under case numbers Administrative No. 10414 [2019], First, Administrative Division 73, Beijing, of Beijing Intellectual Property Court (hereafter as Administrative No.10414) and Administrative No. 10411 [2019], First, Administrative Division 73, Beijing, of Beijing Intellectual Property Court (hereafter as Administrative No.10411), presided over by Deputy Chief Judge Chen Yong.

Because the invalidity requests regarding the patent in question had already undergone one round of litigation, during which the court reasonably interpreted the claims of the patent and CNIPA subsequently issued its decisions based on the court's judgment, there were no substantial dispute over the facts of this case. Accordingly, Lawyer Xu Xinming assigned two assistant lawyers to attend the hearings held at the Beijing Intellectual Property Court on August 27, 2020.

After the hearings, lawyer Xu’s team submitted a legal brief to the Collegial Bench, requesting dismissal of the lawsuit in Administrative No. 10414 pursuant to Article 26 of the "Provisions (I) of the Supreme People's Court on Several Issues concerning the Application of Law in the Trial of Administrative Cases Involving the Grant and Confirmation of Patents." Additionally, they requested dismissal of Hunan Disheng Company's claims in Administrative No. 10411 based on the previously effective judgments.

However, inexplicably, on March 21, 2021, the Beijing Intellectual Property Court issued Administrative Judgment No. 10414 [2019], First, Administrative Division 73, Beijing, of Beijing Intellectual Property Court (hereafter as Judgment No.10414), reinterpreting claim 1 of the patent in question and expanding its protection scope. On the same day, the court issued Administrative Judgment No. 10411 [2019], First, Administrative Division 73, Beijing, of Beijing Intellectual Property Court (hereafter as Judgment No.10411), ruling that claim 1 lacked inventiveness based on the expanded interpretation, and revoked CNIPA’s Invalidation Decision No. 39884.

Lawyer Xu Xinming, representing Yee Fung Company, filed appeals with the Supreme People's Court against the aforementioned two judgments. For Judgment No.10414 issued by the Beijing Intellectual Property Court, lawyer Xu requested the Supreme People's Court to overturn the first-instance judgment and dismiss Hunan Disheng Company's lawsuit. Regarding Judgment No.10411, he sought to revoke the first-instance judgment, and the dismissal of Hunan Disheng Company's claims.

The Supreme People's Court accepted the cases under case number Administrative No. 608 [2021], Final, IP Division, SPC, of the Supreme People’s Court (hereafter as Administrative No.608) and Administrative No. 651 [2021], Final, IP Division, SPC, of the Supreme People’s Court (hereafter as Administrative No.651), respectively. The court consolidated the two cases for review, and an online hearing was presided over by Judge Deng Zhuo on September 10, 2021.

On March 28, 2022, the Supreme People's Court issued Administrative Judgment No. 608 [2021], Final, IP Division, SPC, of the Supreme People’s Court (hereafter as Judgment No.608), overturning Judgment No.10414 and dismissing Hunan Disheng Company's claims. On the same day, the court issued Administrative Judgment No. 651 [2021], Final, IP Division, SPC, of the Supreme People’s Court (hereafter as Judgment No.651), similarly overturning Judgment No.10411 and dismissing Hunan Disheng Company's claims.

I. About Yee Fung Company and the Patent in Question

(1) About Yee Fung Company

Founded in 2003, Yee Fung Company is recognized as a National High-Tech Enterprise and is a leading domestic provider and designer of comprehensive intelligent multilevel parking solutions. Its technological research and development, product manufacturing, and sales services are all at the forefront of the industry.

With a strong focus on technological innovation, Yee Fung Company has established collaborative research bases with renowned academic institutions, investing heavily in R&D annually. The company holds more than 100 invention and utility model patents.

Yee Fung Company boasts robust manufacturing capabilities, with production bases in Shenzhen, Huizhou, Suzhou, and Nanjing. The company has achieved ISO management system certification and the European CE certification. Its high-tech parking solutions are extensive, with over 300,000 multilevel parking slots constructed and operational nationwide. Yee Fung's advanced parking systems consistently rank among the top domestically and are exported to markets in North America, Europe, the Middle East, and Southeast Asia, enhancing the global reputation of "Create in China."

The company’s AGV parking robots have been widely reported by major media outlets, including CCTV, Xinhua News Agency, Reuters, and China Daily. Yee Fung also offers advanced AGV logistics robots, AGV sorting robots, and various automated warehouse solutions. Its high-tech products are renowned worldwide.

(2) About the Patent in Question

Yee Fung Company holds a patent numbered 200710124309.1, titled "Vertical Movement Kind Storage Type Mechanical Solid Parking Garage" (the "patent in question"). The patent has five claims, focusing on an automated car storage system that facilitates a lifting platform with vertical and horizontal two-dimensional synchronous movement. This system represents a core innovation of the Yee Fung Company.

Claim 1 states:

A vertical mobile warehouse-type mechanical three-dimensional parking garage, comprising: a multi-storey garage position (200), a warehouse-out and warehouse-in room (300), and an automatic control system (400), characterized in that: the multi-storey parking garage position (200) is provided with an automobile elevator (100) with a transverse moving carrier (500), the lifting platform (101) with the transverse moving carrier (500) is composed of a top frame (103), a lifting driving device (104), a lifting shaft (105), a lifting chain wheel (106), a lifting chain (107), a lifting rail (108), a lifting guide wheel (109), a lifting platform (101), a transverse moving carrier (500), a transverse moving track (110), a transverse moving stopper (111), a counterweight device (112), a counterweight guide wheel (113), a counterweight guide rail (114), and a lifting synchronizing device; a lifting driving device (104) is mounted at one end of the lifting shaft (105), a lifting chain wheel (106) is mounted in the middle of the lifting shaft (105), a lifting chain (107) is mounted on the lifting chain wheel (106), one end of the lifting chain (107) is connected to the lifting platform (101), the other end of the lifting chain (107) is connected to the counterweight device (112), lifting guide wheels (109) are mounted at four corners of the lifting platform (101), causing the lifting platform (101) to move vertically along the lifting track (108); and the counterweight device (112) is provided with a counterweight guide wheel (113), so that the counterweight device (112) moves vertically along the counterweight guide wheel (113); two transverse moving rails (110) are installed on the lifting platform (101), a transverse moving stopper (111) is installed at the two ends of the transverse moving rail (110), a transverse moving carrier (500) is arranged on the two transverse moving rails (110), the lifting synchronizing device is provided with a pair of synchronous gears (116) installed on the lifter top frame (103), a synchronous chain wheel (115) is installed on each pair of synchronous gears (116), the synchronous chain wheels (115) are driven through the synchronous chain (118), the synchronous chain (118) is provided with a tensioning sprocket (117), and the tensioning sprocket (117) is mounted in the middle of the synchronous chain (118).

Based on the independent claims and specifications of the patent, it is known that the technical solution of this patent enables the automobile elevator to perform vertical and horizontal two-dimensional synchronous movement, greatly improving the efficiency and safety of vehicle storage. Additionally, it increases the number of layers and height of the parking garage, reducing the footprint of the garage and contributing to land resource conservation.

This patent represents a groundbreaking advancement in the parking garage industry, pushing forward its development, and has earned Yee Fung Company and its inventors numerous accolades. The honors include the "China Enterprise New Record" awarded by the China Enterprise Confederation and the Chinese Entrepreneurs Association in December 2008; the "Shenzhen Science and Technology Innovation Commission" by the Shenzhen Municipal People's Government in 2009; the "China Machinery Industry Science and Technology Award" by the China Machinery Industry Federation and the Chinese Mechanical Engineering Society on October 30, 2010. Furthermore, Yee Fung Company has been recognized as the second top national market seller in 2010, the top national market seller in 2011, and received the "Famous Chinese Industry Brand" in September 2017.

These distinctions underscore the patent's high quality, inventiveness, and significant technological advancements.

While this patent has brought numerous accolades and market benefits to Yee Fung Company, it has also triggered a wave of imitation by many competing companies, compelling Yee Fung to initiate litigation to protect its rights. Consequently, the accused infringing companies have repeatedly filed Requests of Invalidity Declaration of this patent.

II. Hunan Disheng Company's Two Requests of Invalidity Declaration Against the Patent in Question

Hunan Disheng Company filed two Requests of Invalidity Declaration against the patent in question with the Patent Reexamination Board of CNIPA on December 17, 2014, and May 21, 2015, respectively. Their main argument was that claims 1-5 of the patent in question lacked inventiveness.

Hunan Disheng Company argued, using a Chinese utility model patent specification (Annex 7) published on October 10, 2001, with the publication number CN2453073Y, as the closest prior art document. They combined this with another utility model patent specification (Annex 8) published on September 7, 2005, with the publication number CN2723609Y, and common general knowledge (Annex 10), claiming that the patent lacked inventiveness.

During the oral proceedings held on May 21, 2015, Yee Fung Company's patent agent attended on behalf of the company. 

The Patent Reexamination Board noted that the distinguishing technical features of claim 1 compared to Annex 7 included:

    1.a transverse moving stopper is installed at the two ends of the transverse moving rail;

    2.a counterweight device, a counterweight guide wheel, a counterweight guide rail;  one end of the lifting chain is connected to the lifting platform, the other end of the lifting chain is connected to the counterweight device;  and the counterweight device is provided with a counterweight guide wheel, so that the counterweight device moves vertically along the counterweight guide wheel;

    3.the lifting synchronization device as well as its specific structure, which is provided with a pair of synchronous gears installed on the lifter top frame, a synchronous chain wheel is installed on each pair of synchronous gears, the synchronous chain wheels are driven through the synchronous chain, the synchronous chain is provided with a tensioning sprocket, and the tensioning sprocket is mounted in the middle of the synchronous chain.

The Board believed that the distinguishing technical features 1) and 2) were disclosed in Annex 10.

Regarding distinguishing technical features 3), CNIPA considered that Annex 8 disclosed a dual-row multilevel parking garage's synchronous lifting device, which specifically disclosed the following technical features:

The transmission mechanism comprises the lifting power head 8 mounted on the bracket of the upper frame,  the power control box is connected with a power supply of the lifting power head 8, the lifting power head 8 drives the reel 12 through the chain 13 and the chain wheel 14, four reels 10 are arranged on the two reels 12 to drive the four steel ropes 4 to operate, the parking disk base 21 and the parking disk 1 are driven to ascend or descend, the pulley 27 at the head end of the rotating shaft 23 moves downwards along the sliding groove of the stand column 15, and stable operation of the parking disk base 21 is kept.

It is apparent that Annex 8 discloses a synchronous lifting transmission mechanism driven by a power head via chain wheels and chains. Compared to the synchronous lifting device specified in claim 1, Annex 8 does not explicitly disclose the use of a pair of synchronous gears installed on the lift top frame, nor a tensioning sprocket associated with the synchronous chain, with the tensioning sprocket mounted in the middle of the synchronous chain. However, the setup of synchronous gears within the power head for synchronous transmission, and the placement of a tensioning sprocket on the synchronous chain to maintain tension, are common knowledge within the field. Furthermore, page 182 of Annex 18 discloses the use of a tension wheel to achieve the purpose of chain drive tensioning. Although Annex 7 does not explicitly disclose the synchronous lifting device, it connects via a four-point lifting part 4 to the lifting platform 6 of the lift. To ensure the smooth lifting of the platform, a person skilled in the art would readily think to use the synchronous lifting device disclosed in Annex 8 in Annex 7, achieving the same technical effect without the need for inventive labor.

Overall, the Patent Reexamination Board concluded that claim 1, in combination with Annexes 7, 8, and the common general knowledge, lacked inventiveness. Based on the lack of inventiveness in claim 1, further combining other comparative documents, claims 2-5 were also deemed to lack inventiveness.

On June 26, 2015, the Patent Reexamination Board issued Invalidation Decision No. 26414 declaring the entire patent invalid.

III. Lawyer Xu Xinming Represents Yee Fung Company in Administrative Litigations, Winning in Both the First and Second Instances

Upon receiving the Invalidity Decision delivered by the Patent Reexamination Board, Yee Fung Company decided to engage a professional patent lawyer to file a lawsuit to protect its rights. After careful consideration, the company chose Xu Xinming, the Chief Lawyer of the China Intellectual Property Lawyers Network, to represent it in this case. After an initial review of the case, lawyer Xu believed that the patent's technical solution, which enabled the car lift to perform vertical and horizontal two-dimensional synchronous movement, was not present in the existing technology and should be deemed inventive. Lawyer Xu agreed to represent Yee Fung Company and filed an administrative lawsuit with the Beijing Intellectual Property Court.

Upon further examination of the patent and related comparative documents, lawyer Xu articulated the inventive concept of the patent:

In order to address the technical issues of dynamic center of gravity changes and other factors that cause shaking and tilting of the lifting platform during the vertical and horizontal two-dimensional synchronous movement of the automobile elevator, the inventor has set up a lifting synchronization device between the two lifting systems. The structure of the lifting synchronization device is symmetrically designed on both sides and connected to the lifting shafts located at the left and right ends of the top frame of the lifting systems, thus establishing a close connection between the two lifting systems through the lifting synchronization device. Normally, the lifting synchronization device does not participate in driving. However, when the two lifting systems operate abnormally or out of sync, the lifting synchronization device, based on its symmetrical structure, interacts with the two lifting systems to keep them in sync, achieving a technical effect of stable and synchronous lifting of both ends of the lifting platform.

Following this concept, the technical solution adopted by this patent includes: selecting a pair of synchronous gears (116) installed on the top frame of the elevator, each of the synchronous gears (116) is fitted with a synchronous chain wheel (115), driven by a synchronous chain (118) which in turn connects to the lifting shafts (105) installed at both ends of the top frame. The synchronous chain (118) is equipped with a tensioning sprocket (117), mounted in the middle of the synchronous chain (118). The pair of synchronous gears, through the interaction of the synchronous chain wheel and the lifting shafts (105) and lifting chain wheels (106) installed at both ends of the top frame, ensures that both ends of the lifting platform maintain stable synchronous lifting, thus ultimately achieving the technical effect of vertical lifting and horizontal two-dimensional synchronous movement.

On May 8, 2017, the Beijing Intellectual Property Court held a public hearing for this case, with lawyer Xu Xinming representing Yee Fung Company in court.

During the court hearing, the defendant, the Patent Reexamination Board, argued that the driving method of the patent in question involves a lifting shaft installed at one end of the top frame, driven by a lifting driving device. The lifting shaft drives the lifting chain wheel and synchronous chain wheel, which in turn, via a synchronous chain, drives a pair of synchronous gears located in the middle of the top frame. The synchronous gears drive another synchronous chain wheel at the other end of the top frame, which drives the lifting shaft and lifting chain wheel, thereby enabling vertical movement of the lifting platform.

Lawyer Xu immediately contested these claims in court:

    1.Regarding the lifting system of the patent:

The lifting driving device (104) of the patent is installed on the lifting shafts (105) located at both ends of the top frame (103). One end of each lifting shaft (105) is equipped with a lifting driving device (104), and the middle part of the shaft is fitted with a lifting chain wheel (106). A lifting chain (107) is mounted on the lifting chain wheel (106), connecting one end to the lifting platform (101) and the other end to the counterweight device (112).

The driving method of the patent's lifting system is directly driven by the lifting driving devices installed on the lifting shafts at both ends of the top frame.

    2.Regarding the lifting synchronization device of the patent:

A pair of synchronous gears (116) is installed on the top frame of the lift (103). Each synchronous gear (116) is fitted with a synchronous chain wheel (115), and synchronous chain wheels (115) are also installed on the lifting shafts (105) at both ends of the lift top frame (see Figure 3). The synchronous chain wheels on the synchronous gears (116) are connected to the synchronous chain wheels (115) on the lifting shafts (105) via a synchronous chain (118), which is equipped with a tensioning sprocket (117) mounted in the middle of the synchronous chain (118).

The patent's lifting synchronization device exists alongside two sets of lifting systems and does not directly transmit driving force.

The lifting synchronization device of the patent is closely linked with the lifting systems, and there is interaction and counteraction between them, achieving synchronized vertical lifting and horizontal movement. During the vertical movement of the lift, the horizontal movement of the automobile transverse moving carrier causes dynamic changes in the center of gravity of the lifting platform. Without the lifting synchronization device, the horizontal movement of the automobile transverse moving carrier would cause the lifting platform to shake and tilt, potentially leading to accidents. The interaction and mutual restraint between a pair of synchronous gears and the synchronous chain wheels installed on the lifting shafts at both ends of the top frame ensure synchronized lifting at both ends of the lifting platform during the rapid horizontal movement of the automobile transfer carrier, thereby achieving the technical effect of synchronized vertical lifting and horizontal movement of the lift. Therefore, the pair of synchronous gears and the two lifting shafts and lifting chain wheels installed at both ends of the lift top frame, through their cooperative and linked operation, interaction and counteraction, achieve synchronized vertical lifting and horizontal movement.

After the hearing, Lawyer Xu Xinming submitted a legal opinion to the Collegial Bench.

On August 30, 2017, the Beijing Intellectual Property Court made Judgment No. 5079, which: 1) Revoked the Invalidation Decision No. 26414 by the defendant, the Patent Reexamination Board of CNIPA, regarding the Requests of Invalidity Declaration; and 2) Ordered the defendant, the Patent Reexamination Board, to re-examine the Requests of Invalidity Declaration filed by the third party, Hunan Disheng Industrial Equipment Co., Ltd., concerning the invention patent numbered 200710124309.1, titled "Vertical Movement Kind Storage Type Mechanical Solid Parking Garage."

After the delivery of the first-instance judgment, the Patent Reexamination Board complied with the decision and did not appeal. Hunan Disheng Company, dissatisfied with the judgment, appealed to the Beijing High People’s Court. Upon review, Judgment No. 161 dismissed the appeal and upheld the previous judgment.

IV. After CNIPA Reconsidered the First and Second Request of Invalidity Declaration from Hunan Disheng Company, As Remanded by the Court's Judgment, It Issued Invalidation Decision No. 39885 and No. 39884, Respectively, Thereby Upholding the Validity of the Patent.

Due to the revocation of Invalidation Decision No. 26414 by the Beijing Intellectual Property Court in Judgment No. 5079 and the Beijing High People’s Court in Judgment No. 161, CNIPA reconstituted a Collegial Bench to re-examine the first and second Request of Invalidity Declaration filed by Hunan Disheng Company, as ordered by the court for retrial. Oral hearings were conducted on March 4, 2019, and on April 10, 2019, Invalidation Decision No. 39885 and No. 39884 were issued (hereinafter referred to as Invalidation Decision No. 39885 and Invalidation Decision No. 39884, respectively). Based on previous effective judgments, these decisions recognized the inventiveness of the patent in question and maintained its validity.

In the aforementioned decisions, CNIPA determined: "It can be concluded that Claim 1 of the patent includes two sets of lifting systems, which work in conjunction with the lifting synchronizing device. These two lifting systems drive the lifting platform in vertical movement, while the lifting synchronizing device ensures that both systems are always synchronized in driving both ends of the lifting platform, thereby ensuring smooth lifting. Both systems are closely related and interact with each other. Additionally, Judgment No. 5079 records that 'the lifting driving devices of this patent are installed on the lifting shafts located at both ends of the top frame, with the lifting driving devices driving the lifting shafts, which in turn drive the lifting chain wheels and synchronous chain wheels.' This indicates that the judgment also acknowledges that the patent features two lifting shafts, each equipped with a drive device, i.e., the patent comprises two sets of lifting systems. Therefore, the Collegial Bench believes that, regarding the scope of protection for Claim 1 of the patent, it should be recognized that Claim 1 involves two sets of lifting systems in conjunction with a lifting synchronization device."

V. Disagreed With CNIPA’s Invalidation Decisions No. 39885 and No. 39884, Hunan Disheng Company Filed a Lawsuit Against Them in the Beijing Intellectual Property Court. Astonishingly, The First-Instance Collegial Bench LED by Judge Chen Yong Issued a Judgment That Contradicted the Previously Effective Decisions, Inexplicably Ruling That the Patent Claims Lacked Inventiveness.

Hunan Disheng Company, dissatisfied with Invalidation Decisions No. 39885 and No. 39884 issued by CNIPA, filed an administrative lawsuit with the Beijing Intellectual Property Court. The court accepted the case, with case numbers Administrative No.10414 and Administrative No.10411. Both cases had the same Collegial Bench members, presided over by Judge Chen Yong as the Deputy Chief Judge, with the other two members being People's Assessors.

On August 27, 2020, the Beijing Intellectual Property Court consolidated and held hearings for the aforementioned cases. Since the earlier effective judgment had legally recognized that the patent incorporated two sets of lifting systems, and the comparative documents cited in Hunan Disheng Company's second Request of Invalidity Declaration did not disclose the lifting synchronizing device described in the patent nor provided corresponding technical teachings, there were no significant disputes remaining in these cases. In light of this, lawyer Xu assigned two assistant lawyers to represent Yee Fung Company in court. Hunan Disheng Company retained lawyers from a certain law firm in Beijing and a patent agent from an intellectual property agency in Changsha to participate in the questioning.

After the court hearing, on September 12, 2020, the Supreme People's Court published Judicial Interpretation No. [2020] 8, titled "[2020] 8 Provisions (I) of the Supreme People's Court on Several Issues concerning the Application of Law in the Trial of Administrative Cases Involving the Grant and Confirmation of Patents" (hereafter referred to as Judicial Interpretation [2020] 8), which came into effect on the same day.

Article 32 of Judicial Interpretation [2020] 8 stipulates: "This interpretation shall take effect from September 12, 2020. Cases that are being heard at first instance or second instance in the people's courts shall apply this interpretation; cases that have been concluded with an effective judgment prior to the implementation are not subject to retrial under this provision."

Thus, Judicial Interpretation [2020] 8 applies to the two cases currently under review.

Article 26 of Judicial Interpretation [2020] 8 specifies: "If the decision under review was made directly based on an effective judgment and does not introduce new facts or reasons, and a party files a lawsuit against this decision, the people's court shall, according to the law, rule to dismiss the lawsuit if it has already been accepted."

Based on this, regarding Administrative No.10414, the Beijing Intellectual Property Court should rule to dismiss the lawsuit filed by Hunan Disheng Company.

The lawyer representing Yee Fung Company, based on Judicial Interpretation [2020] 8, submitted a legal opinion to the Collegial Bench, requesting that the Collegial Bench rule to dismiss Hunan Disheng Company's claims in Administrative No.10414 and Administrative No.10411, in accordance with the relevant provisions of the judicial interpretation.

Regrettably, the Collegial Bench did not accept the opinions provided by the lawyer representing Yee Fung Company.

On March 31, 2021, the Beijing Intellectual Property Court issued Judgment No.10414 and Judgment No.10411.

In these decisions, the Collegial Bench, led by Deputy Chief Judge Chen Yong, disregarded the previously effective judgment, stating: "It is reasonable to interpret the phrase 'a lifting driving device (104) installed at one end of each lifting shaft (105)' as meaning that a lifting driving device could be installed at one end of each lifting shaft or just at one end of a single lifting shaft; both interpretations fall within its scope of protection." This interpretation directly overturned the prior effective judgment which recognized that the patent claim included two sets of lifting systems. Building on this, the Collegial Bench led by Deputy Chief Judge Chen Yong in Judgment No.10411 found that the patent claims lacked inventiveness, ultimately leading to the revocation of Invalidation Decision No. 39884 issued by the CNIPA.

If this can be tolerated, what cannot? Enough is enough.

VI. Lawyer Xu Xinming, Representing Yee Fung Company, Appealed to the Intellectual Property Court of the Supreme People's Court of China. After Reviewing the Case, The Court Ruled to Overturn Judgment No.10414 and Judgment No.10411, Dismissing Hunan Disheng Company's Claims.

After the first-instance judgment was delivered, lawyer Xu Xinming, representing Yee Fung Company, appealed to the Supreme People's Court. He requested the court to overturn Judgment No.10414, to dismiss Hunan Disheng Company's lawsuit; and to overturn Judgment No.10411, to reject Hunan Disheng Company's legal claims. The CNIPA also appealed against Judgment No.10411.

The Intellectual Property Court of the Supreme People's Court of China accepted the cases for appeal on June 30, 2021: the appeal against Judgment No.10414 was registered under case number Administrative No.608; the appeal against Judgment No.10411 was registered under case number Administrative No.651. The Collegial Bench for both cases initially included Luo Xia (Deputy Chief Judge), Pan Caimin, and Deng Zhuo (case handler), later changed to Deng Zhuo (Deputy Chief Judge), Zhang Xinfeng, and Xu Fei. On September 10, 2021, under the chairmanship of Judge Deng Zhuo, the Intellectual Property Court of the Supreme People's Court of China consolidated the two cases for a hearing and conducted an online inquiry. Lawyer Xu Xinming represented Yee Fung Company, two examiners from CNIPA participated, and Hunan Disheng Company continued to retain lawyers from a certain law firm in Beijing and a patent agent from a Changsha intellectual property agency for the inquiry.

After the inquiry, lawyer Xu Xinming submitted a detailed legal opinion to the Collegial Bench.

On March 28, 2022, the Supreme People's Court issued Judgment No.608: overturning Judgment No.10414, and dismissing Hunan Disheng Company's lawsuit. On the same day, it issued Judgment No.651: overturning the Beijing Intellectual Property Court's decision in Judgment No.10411, and rejecting Hunan Disheng Company's legal claims.

Yee Fung Company won a complete victory.

VII. The Core Dispute in This Case Centers on the Scope of Protection of the Patent Claims, Specifically Whether the Patent Encompasses Only One Lifting System, Two Lifting Systems, Or if Both the Technical Solutions with One Lifting System and Two Lifting Systems Fall Within the Scope of the Patent Claims.

The innovative aspect of this patent lies in the lifting synchronizing device and how the two sets of lifting systems are closely interconnected and mutually constraining through this device, achieving a stable and synchronized lifting of the platform. If the patent were to cover only a single lifting system or if the technical solution with just one lifting system were considered within the scope of this patent's protection, then the role of the lifting synchronizing device would merely be to transmit driving force, thus losing its significance as a safety mechanism.

(I) Basic Views of All Parties on the Number of Lifting Systems in the Patent

    1.Yee Fung Company Has Asserted Since First Filing the Lawsuit with the Beijing Intellectual Property Court that the Patent Includes Two Sets of Lifting System

From the moment lawyer Xu Xinming represented Yee Fung Company in filing a lawsuit at the Beijing Intellectual Property Court, it has been claimed that the patent incorporates two sets of lifting systems. This means that the driving devices in the patent are installed on the lifting shafts at both ends of the top frame, with each lifting driving device driving the lifting shafts, which in turn drive both the lifting chain wheels and the synchronous chain wheels. This fact was affirmed by the Beijing Intellectual Property Court in Judgment No. 5079 and by the Beijing High People's Court in Judgment No. 161.

    2.The CNIPA Recognized in Invalidation Decisions No. 39885 and No. 39884 that the Patent Includes Two Sets of Lifting System

In Invalidation Decisions No. 39885 and No. 39884, the CNIPA conducted a detailed analysis and verification of the technical solution protected by the patent claims and determined, according to the effective prior judgments, that the patent includes two sets of lifting systems.

    3.Hunan Disheng Company Contends that the Patent Includes Only One Set of Lifting System

During the litigation of Administrative No.10414 and Administrative No.10411, Hunan Disheng Company argued that the patent includes only one set of lifting systems, that is, only one lifting shaft is equipped with a lifting driving device, which drives the lifting shaft and, in turn, the lifting chain wheel and synchronous chain wheel. The synchronous chain wheel transmits movement through the synchronous gears and synchronous chain to another synchronous chain wheel on the other end of the lifting shaft, which then drives the lifting shaft and the lifting chain wheel.

    4.The First-Instance Collegial Bench, LEDby Judge Chen Yong, Believes that Both the Technical Solutions with Two Sets of Lifting Systems and One Set of Lifting Systems Fall Within the Scope of the Patent Claims

In Judgment No.10414 and Judgment No.10411, it was determined: "Overall, claim 1 does not explicitly restrict the number of lifting shafts nor whether a lifting driving device is installed at each end of every shaft. Combining the understanding from the description, it can be determined that the technical solution of claim 1 should include two lifting shafts, but it cannot uniquely determine the number of lifting driving devices. Thus, interpreting 'a lifting driving device (104) installed at one end of the lifting shaft (105)' as having a lifting driving device installed at one end of each shaft, or only at one end of a single shaft, both interpretations are reasonable and fall within its scope of protection."

Accordingly, the first-instance Collegial Bench, led by Judge Chen Yong, in the aforementioned judgments, recognized that both the technical solutions with two sets of lifting systems and those with only one set of lifting systems fall within the scope of the patent claims.

(II) Main Reasons Presented by Parties

1. Main Reasons Articulated by lawyerXu Xinming Representing Yee Fung Company in This Case:

(1) "A lifting driving device (104) is installed at one end of the lifting shaft (105)", specifies the relationship between the lifting shaft (105) and the lifting driving device (104), meaning that if there is a lifting shaft, it must have a lifting driving device.

From the first Request of Invalidity Declaration raised by Hunan Disheng Company against this patent to date, all parties involved including Hunan Disheng Company, Yee Fung Company, and the Patent Reexamination Board of CNIPA have consistently acknowledged that there are two lifting shafts (105) at both ends of the top frame. Both the patent specification and Claim 1 state "a lifting driving device (104) is installed at one end of the lifting shaft (105)", defining the existence of a relationship where if there is a lifting shaft, a lifting driving device must be installed at one end. Since there is a lifting shaft at each end of the top frame according to the specification and claims, it is indisputable that each lifting shaft is equipped with a lifting driving device.

(2) Figure 3 illustrates the structure at any end of the top frame, not a specific end.

Figure 3 is a sectional view of the vertical mobile warehouse-type mechanical three-dimensional parking garage shown in Figure 1 (A-A section). It clearly shows that one end of the top frame is equipped with a lifting shaft (105), which is fitted with a lifting driving device (104), a lifting chain wheel (106), and a synchronous chain wheel (115), with a lifting chain (107) installed on the lifting chain wheel.

It is important to note that Figure 3 is a sectional view that shows the structure at any end of the top frame, not a specific end.

(3) According to the description of the patent specification, when describing components or devices such as the lifting shaft, lifting chain wheel, synchronous chain wheel, and lifting chain, it refers to components or devices at both ends of the top frame unless specifically noted otherwise.

The patent specification states: "As can be clearly seen from Figures 2, 3, and 4, the automobile elevator (100) is composed of a top frame (103), a lifting driving device (104), lifting shafts (105), lifting chain wheels (106), lifting chains (107), lifting rails (108), lifting guide wheels (109), a lifting platform (101), a transverse moving carrier (500), transverse moving rails (110), transverse moving stoppers (111), a counterweight device (112), counterweight guide wheels (113), counterweight guide rails (114), and a lifting synchronization device. The lifting shaft (105) is installed on the top frame (103), a lifting driving device (104) is mounted at one end of the lifting shaft (105), a lifting chain wheel (106) is mounted in the middle of the shaft, and a lifting chain (107) is mounted on the lifting chain wheel (106), with one end connected to the lifting platform (101) and the other to the counterweight device (112)."

From this description, it is clear that when describing the lifting shaft (105), lifting chain wheel (106), and lifting chain (107), the patent specification does not specify whether these are at both ends of the top frame. However, as previously mentioned, it is known to those skilled in the art that there are two lifting shafts (105) at both ends of the top frame, each equipped with a lifting chain wheel (106) with a lifting chain (107) installed.

Thus, given that the patent overall exhibits a symmetrical structure, when a particular component or device is described in the claims and specification, it refers to components or devices at both ends of the top frame unless specified otherwise. Therefore, "a lifting driving device (104) installed at one end of the lifting shaft (105)" naturally includes lifting shafts at both ends of the top frame, meaning lifting driving devices are installed at both ends.

(4) According to the patent specification, the function of the lifting driving device (104) is to enable vertical movement of the lifting platform (101); the function of a pair of synchronous gears (116) is to ensure that the lifting platform (101) moves vertically smoothly. Based on this, it can be uniquely determined that the patent includes two sets of lifting systems.

The patent specification states: "One end of the lifting chain (107) is connected to the lifting platform (101) and the other to the counterweight device (112), the lifting driving device (104), by driving the lifting chain wheel (106), moves the lifting chain (107), causing the lifting platform (101) and the counterweight device (112) connected at both ends of the lifting chain to move vertically."

From this, it is evident that the function of the lifting driving device is to enable vertical movement of the lifting platform, that is, under the direct drive of the lifting driving device, both ends of the lifting platform move vertically.

The patent specification further states: "The function of a pair of synchronous gears (116) is to change the direction of the lifting chain wheel (106), allowing the lifting platform (101) to move vertically smoothly."

From this, it is evident that the function of a pair of synchronous gears is to ensure synchronous vertical movement at both ends of the lifting platform, thus achieving smooth vertical movement.

Overall, based on the patent specification and claims, it can be uniquely determined that the patent includes two sets of lifting systems.

    1.Main Arguments of the First-InstanceCollegial Bench LED by Judge Chen Yong and the Counterarguments From Yee Fung Company.

The first-instance Collegial Bench’s main rationale, led by Judge Chen Yong, in Judgment No.10414 and Judgment No.10411 was: "The patent description states that 'a pair of synchronous gears (116) changes the direction of the lifting chain wheel (106), enabling the lifting platform (101) to move vertically smoothly.' The description of the synchronous gears' function in changing the direction of the lifting chain wheel can clearly lead to different interpretations. On one hand, with a lifting driving device installed on both lifting shafts... hence, a person skilled in the art can reasonably interpret Claim 1's 'a lifting driving device (104) installed at one end of the lifting shaft (105)' as having lifting driving devices installed on both lifting shafts. On the other hand,... in fact, installing a lifting driving device on just one lifting shaft and having it drive the rotation of the lifting shaft, which in turn drives the lifting chain wheel mounted on it, the lifting chain attached to the lifting chain wheel, and the lifting platform connected to the ends of the lifting chain, especially through a pair of synchronous gears (116) changing the direction of the lifting chain wheel (106), can also achieve a smooth vertical movement of the lifting platform (101). Moreover, there is no evidence to show that having two sets of lifting systems has a better technical effect than having just one set, to the extent that a person skilled in the art would exclude the option of having just one lifting system. ...Therefore, interpreting Claim 1's 'a lifting driving device (104) installed at one end of the lifting shaft (105)' as being installed only on one of the lifting shafts is also reasonable. In summary,... it can be determined that Claim 1's technical solution includes two lifting shafts, but it cannot uniquely determine the number of lifting driving devices, i.e., interpreting Claim 1's 'a lifting driving device (104) installed at one end of the lifting shaft (105)' as having a lifting driving device installed at each end of every lifting shaft, or just at one end, all have their reasonableness and fall within its protection scope."

In response, lawyer Xu Xinming representing Yee Fung Company provided a forceful rebuttal during the second-instance litigation:

(1) The first-instance Collegial Bench was prejudiced. It overlooked a basic fact: the term "changing the direction of the lifting chain wheel" in "a pair of synchronous gears (116) changes the direction of the lifting chain wheel (106)" refers to the lifting chain wheels at both ends of the top frame. Therefore, the function of "a pair of synchronous gears (116) in changing the direction of the lifting chain wheel (106)" means that the pair of synchronous gears (116) changes and mutually restricts the direction of the lifting chain wheels (106) at both ends of the top frame. In other words, the lifting systems at both ends of the top frame are interlinked and mutually restricted by the action of a pair of synchronous gears. The first-instance Collegial Bench’s interpretation of this segment as the drive device at one end of the top frame changing the direction of the lifting chain wheel at the other end through synchronous gears was a clear case of prejudgment.

(2) "The function of a pair of synchronous gears (116) in changing the direction of the lifting chain wheel (106)" implies that the lifting chain wheels have autonomous direction changes, and are interlinked and mutually restricted by the synchronous gears, maintaining synchronized rotation.

Again, "The function of a pair of synchronous gears (116) in changing the direction of the lifting chain wheel (106)" is a description of the working principle of the lifting synchronization device, not a description of the lifting driving method. The patent specification on page 4, paragraph three, describes the lifting driving method, showing that under the drive of the lifting driving device (104), the lifting platform (101) can perform vertical movement. Note that the vertical movement of the lifting platform must be synchronized at both ends; otherwise, if one end of the lifting platform goes up while the other goes down, it would not achieve the technical effect of vertical movement. In contrast, the description of the working principle of the lifting synchronization device in the last line of page 4 to line 5 of page 5 of the patent specification shows that the function of a pair of synchronous gears within the lifting synchronization device is to ensure that the lifting platform (101) moves vertically smoothly, that is, to further achieve a smooth vertical movement at both ends of the lifting platform on top of the basic vertical movement driven by the lifting driving device.

(3) The technical solution protected by the patent can achieve a technical effect of smooth vertical movement of the lifting platform, but not all technical solutions that can achieve smooth vertical movement of the lifting platform fall within the protection scope of the patent. The first-instance Collegial Bench’s reverse reasoning violates logical norms.

(4) Whether a person skilled in the art would exclude the option of having just one lifting system is irrelevant to the protection scope of the patent. In other words, it cannot be presumed that a technical solution with only one lifting system falls within the protection scope of the patent simply because a person skilled in the art would not exclude the option of having just one lifting system. The first-instance Collegial Bench’s presumption violates logical norms.

(5) A technical solution with two sets of lifting systems undoubtedly has a better technical effect compared to one with just one set.

(i) A technical solution with only one lifting system, due to the limited driving force produced by a single drive device, restricts the load capacity of the car elevator. Additionally, the driving force must pass through more transmission stages, leading to energy loss and waste.

A technical solution with two sets of lifting systems, with drive devices installed on the lifting shafts at both ends of the top frame, can provide more powerful driving force for the car elevator. Moreover, since the lifting driving devices directly drive the lifting shafts at both ends of the top frame, the distance for driving force transmission is significantly reduced, there is no energy loss, which is beneficial for energy saving.

(ii) In a technical solution with only one lifting system, the lifting synchronization device is no longer a safety device but becomes purely a power transmission device. The synchronous chain remains continuously tensioned, quickly stretching and becoming increasingly slack, resulting in

a height difference between the ends of the lifting platform during the lifting process, failing to achieve the technical effect of synchronized vertical lifting at both ends of the lifting platform, let alone the technical effect of synchronized vertical and horizontal two-dimensional movement.

A technical solution with two sets of lifting systems, since the lifting synchronization device as a safety device does not participate in power transmission and closely links the lifting systems at both ends. When the two sets of lifting systems move synchronously, the lifting synchronization device merely idles along with the lifting systems; only when the two sets of lifting systems are out of sync, the pair of synchronous gears act to constrain the lifting systems at both ends, achieving absolute synchronous movement. Thus, there is no problem of the synchronous chain being continuously tensioned and becoming slack in a short period of time. Under the action of the lifting driving device, the lifting platform's ends can absolutely synchronize in vertical lifting, ultimately achieving the technical effect of synchronized vertical lifting and horizontal two-dimensional movement.

(iii) In a technical solution with only one lifting system, should the sole lifting driving device malfunction and stop working, it could lead to accidents.

A technical solution with two sets of lifting systems, with lifting driving devices installed on the lifting shafts at both ends of the top frame, even if one of the lifting driving devices malfunctions, the other can safely lower the lifting platform and then repair the malfunctioned drive device. Thus, two sets of lifting systems are safer than just one.

In summary, the first-instance Collegial Bench led by Judge Chen Yong was prejudiced, violating both logical and technical norms, and their views and reasons are erroneous.

    2.Hunan Disheng Company's Main Arguments and Yee Fung Company's Counterarguments

During the second-instance court questioning, Hunan Disheng Company's lawyer sketched a diagram to present their understanding of the role of "a pair of synchronous gears (116) that changes the direction of the lifting chain wheel (106)" as described in the patent specification. Specifically, the lawyer proposed a technical solution with only one set of lifting systems (hereinafter referred to as Technical Solution A) where the pair of synchronous gears and a pair of synchronous chains are removed, replaced by a single chain connecting the synchronous chain wheels at both ends of the top frame, thus forming another technical solution (hereinafter referred to as Technical Solution B). Hunan Disheng's lawyer argued that when the lifting driving device at one end of the top frame in Technical Solution B is operated, it would drive the synchronous chain wheel, the lifting shaft, and the lifting chain wheel at the other end to rotate in the same direction through the intermediate chain, resulting in one end of the lifting platform rising while the other end descends, thus failing to achieve synchronous lifting at both ends of the lifting platform. By replacing the middle chain in Technical Solution B that connects the synchronous chain wheels at both ends with a pair of synchronous gears and a pair of synchronous chains, Technical Solution A is formed. When the lifting driving device at one end of the top frame in Technical Solution A is operated, through the action of the middle pair of synchronous gears and a pair of synchronous chains, it drives the synchronous chain wheel, the lifting shaft, and the lifting chain wheel at the other end to rotate in the opposite direction, thus achieving the technical effect of simultaneous lifting at both ends of the lifting platform.

In response, lawyer Xu Xinming, representing Yee Fung Company, believes that the above view of Hunan Disheng's lawyer essentially argues that the role of a pair of synchronous gears in Technical Solution A changes the direction of the lifting chain wheel from Technical Solution B. The logical error in this view is quite obvious. "The role of a pair of synchronous gears (116) in changing the direction of the lifting chain wheel (106) to enable the lifting platform (101) to move vertically smoothly" clearly refers to changing the direction of the lifting chain wheel within the same technical solution. Technical Solution B does not belong to the technical solutions in dispute in this case, has no relevance to this case, and certainly has no relevance to the synchronous gears in the disputed Technical Solution A of this case.

(III) Whether Judgment No. 5079 Had Determined That the Patent Has Two Sets of Lifting Systems

The first-instance Collegial Bench led by Judge Chen Yong believed, "The prior effective judgment did not directly address how many sets of lifting systems are actually in the technical solution of patent claim 1."

In response, lawyer Xu Xinming believes:

(1) The term "lifting system" itself is not a technical term used by the patent, nor is it a technical feature recorded in the patent claims. The so-called "lifting system" is a general term used by all parties and the courts for convenience, to describe the combination of devices and components such as "lifting driving device," "lifting shaft," "lifting chain wheel," and "lifting chain" used to drive the lifting platform to perform lifting movements.

Judgment No. 5079 also used the term "lifting system" in the aforementioned sense: "The lifting power head mentioned in the aforementioned Attachment 8 is its lifting driving device, and the connected chains, chain wheels, and other devices all belong to the lifting system of Attachment 8" (see Judgment No. 5079 decision, page 17, lines 5-6 from the bottom).

It is evident, based on the prior effective judgment, that the so-called "lifting system" refers to the combination of devices and components such as "lifting driving device," "lifting shaft," "lifting chain wheel," and "lifting chain" used to drive the lifting platform to perform lifting movements.

Specifically, in this case, since Hunan Disheng Company only disputes the fact that "lifting driving devices are installed on the lifting shafts at both ends of the top frame," whether the patent has only one set of lifting systems or two sets essentially boils down to whether the lifting driving devices are installed on the lifting shaft at one end of the top frame or on the lifting shafts at both ends. If the lifting driving device is only installed on the lifting shaft at one end of the top frame, then the patent has only one set of lifting systems; if the lifting driving devices are installed on the lifting shafts at both ends of the top frame, then the patent has two sets of lifting systems.

(2) Judgment No. 5079 explicitly confirmed, "In the patent, the lifting driving devices are installed on the lifting shafts at both ends of the top frame, the lifting driving devices drive the lifting shafts, which in turn drive the lifting chain wheels and the synchronous chain wheels" (judgment text page 18, lines 2-4).

According to the content of the effective judgment, the lifting driving devices in the patent are "installed on the lifting shafts at both ends of the top frame," not "installed on the lifting shaft at one end of the top frame," it is "the lifting driving devices drive the lifting shafts, which in turn drive the lifting chain wheels and the synchronous chain wheels," not "the synchronous chain wheels drive the lifting shaft, which in turn drives the lifting chain wheels."

It is evident that the prior effective judgment has clearly confirmed that the patent has two sets of lifting systems and excluded the technical solution with only one set of lifting systems from the protection scope of the patent claims. The determination by the first-instance collegiate bench led by Judge Chen Yong of "a lifting driving device installed at one end of a lifting shaft" indicating only one set of lifting systems clearly conflicts with the determined method of driving the lifting systems in the prior effective judgment.

In summary, the protection scope of the patent claims determined by the first-instance Collegial Bench led by  Judge Chen Yong clearly conflicts with the relevant determinations of the prior effective judgment, constituting a serious legal violation.

VIII. Conclusion

Ultimately, the second-instance Collegial Bench led by Deputy Chief Judge Deng Zhuo accepted the appeal reasons of Yee Fung Company and the CNIPA, rendering a fair judgment.

From the reasons outlined in the second-instance ruling and judgment, it is evident that the second-instance Collegial Bench not only diligently reviewed the second-instance representation by lawyer Xu of Yee Fung Company but also meticulously considered the representation he made during the first round of litigation at Judgment No. 5079. The rigor, professionalism, and impartiality of the second-instance Collegial Bench are deeply moving. In contrast, the first-instance collegiate panel led by Judge Chen Yong clearly had preconceptions, selectively ignoring facts already established by the prior effective judgment, which is a contemptible action.

This case illustrates how crucial it is to educate and rectify the judiciary!