Final Judgment: Represented by Xu Xinming's Team，FUHUMAN Wins Invention Patent Invalidation Case Against Japanese Firm

Translated by Liu Peiyu

Abstract

Due to a lawsuit filed by a Japanese corporation against Shandong FUHUMAN New Energy Environmental Protection Co., Ltd. ("FUHUMAN") for allegedly infringing its invention patent titled "Fermenting and Drying Treatment Device for Organic Wastes" ("the Patent"), FUHUMAN retained lawyer Xu Xinming, the Chief Lawyer of China Intellectual Property Lawyers Network, to represent it in filing a request with the China National Intellectual Property Administration (CNIPA) for invalidation of the disputed patent.

CNIPA conducted a remote oral hearing on December 29, 2020, and issued Invalidation Examination Decision No. 47721 on January 14, 2021, declaring all 10 claims of the Japanese corporation’s invention patent invalid. Dissatisfied with the decision, the Japanese corporation filed a lawsuit with the Beijing Intellectual Property Court, seeking the revocation of Invalidation Examination Decision No. 47721 ("the Contested Decision"). Lawyer Xu Xinming’s legal team continued to represent FUHUMAN in the litigation.

The Beijing Intellectual Property Court held a public hearing on August 23, 2022, and issued Administrative Judgment No. 11691 [2021], First, Administrative Division 73, Beijing, of Beijing Intellectual Property Court ("Judgment No. 11691") on December 28, 2022, dismissing the plaintiff’s claims. The Japanese corporation, unwilling to accept the ruling, appealed to the Supreme People’s Court. Lawyer Xu Xinming’s legal team continued to represent FUHUMAN in the appellate proceedings.

The Supreme People’s Court held a hearing on August 26, 2024, and rendered its final Administrative Judgment No. 368 [2023], Final, IP Division, SPC, of the Supreme People’s Court ("Judgment No. 368") on December 24, 2024, dismissing the appeal and affirming the previous ruling.

1. In the Invalidation Proceedings Before the CNIPA, The Patentee Vigorously Argued That the Prior Art Neither Disclosed the Distinguishing Features of Claim 1 of the Patent over Evidence 1 nor Provided Any Corresponding Technical Motivation.

Lawyer Xu Xinming’s legal team conducted a search of the prior art and submitted eight domestic and foreign patent documents to CNIPA as prior art evidence in the invalidation request. Evidence 1 (JP 2004-358444A, published on December 24, 2004) was cited as the closest prior art. The distinguishing features of Claim 1 of the Patent over Evidence 1 are as follows:

(1) Claim 1 defines that each stirring blade exhibits a cross-sectional shape protruding upward, an inclined plate which is inclined upward from one side edge of the bottom plate and engages with the horizontal bottom plate, and a curved plate which is engaged with the other side edge of the bottom plate and the other side edge of the inclined plate and which is bent to protrude towards the other side edge of the bottom plate; the vent hole is disposed at a portion of the curved plate that is offset from the curved portion. Evidence 1 does not define the shape of the stirring rod.

(2) Claim 1 specifies that from the base end of the stirring blade to the front end, the interval between adjacent vent holes gradually narrows. However, Evidence 1 does not explicitly define how the spacing of vent holes on the stirring rods located at the bottom of the fermentation tank is arranged.

The CNIPA determined that the objective technical problem solved by Claim 1 of the Patent over Evidence 1 is how to achieve uniform ventilation while improving processing efficiency.

Regarding Distinguishing Feature (1), the petitioner argued that Evidence 2 (JP 11-128891A, published on May 18, 1999) discloses Distinguishing Feature (1). The patentee contended that the blade structure disclosed in Evidence 2 is pentagonal, with a flat top structure, which differs from the "cross-sectional shape protruding upward" as defined in Claim 1. In response, the petitioner argued that Claim 1 defines the shape of the stirring blade as a "cross-sectional shape protruding upward," comprising an inclined plate which is inclined upward from one side edge of the bottom plate and engages with the horizontal bottom plate, and a curved plate which is engaged with the other side edge of the bottom plate and the other side edge of the inclined plate and which is bent to protrude towards the other side edge of the bottom plate. The petitioner asserted that this shape is also present in Figure 3 of Evidence 2. Although Figure 3 of Evidence 2 depicts a pentagonal shape with a small flat section at the top, the overall effect remains the same as Distinguishing Feature (1).

Regarding Distinguishing Feature (2), the petitioner argued that Evidence 3 (CN2509182Y) provides the corresponding technical motivation. Evidence 3 relates to an aeration device for wastewater treatment using an aeration method. It comprises a pipeline blow-off valve, a wastewater valve, a drain valve, a wastewater pipeline, an aeration switch, an aeration cleaning valve, an aeration pipe, and an air hole. An aeration pipe 9 penetrates through the interior of the wastewater pipeline 4, and air holes 10 are distributed in the aeration pipe 9. To ensure sufficient aeration airflow, a large number of small air holes must be made on the aeration pipe. The air holes on the aeration pipe should have a larger diameter as they are located farther from the air inlet, or their diameter should remain the same while the spacing between them gradually decreases. That is, the density of air holes gradually increases to compensate for pressure loss along the aeration pipe, ensuring a uniform airflow along its length. Accordingly, Evidence 3 discloses the technical motivation that increasing the density of air holes farther from the air inlet compensates for pressure loss along the pipeline, thereby ensuring uniform gas discharge along the pipeline.

The patentee argued that Evidence 3 belongs to a different technical field from the Patent, serves a different function, and even provides a contrary teaching by suggesting that smaller air hole diameters are preferable.

In response, the petitioner argued that for an invention patent, the relevant prior art should not be limited to the technical field of the invention itself but should also include neighboring technical fields, as well as other fields where the technical problem addressed by the invention would motivate a person skilled in the art to seek technical solutions. In this case, to solve the objective technical problem of ensuring uniform ventilation through the vent holes on the stirring blades into the fermentation container, a person skilled in the art would have the motivation to look for technical teaching in neighboring fields concerning fluid discharge. Since Evidence 3 also relates to fluid gas discharge, it belongs to a neighboring technical field of the Patent.

Thus, based on Evidence 1, a person skilled in the art would consider applying the technical means disclosed in Evidence 3, gradually decreasing the spacing of vent holes, to the arrangement of vent holes on the stirring blades disclosed in Evidence 2 to arrive at the technical solution of Claim 1. Accordingly, Claim 1 of the Patent lacks prominent substantive features and notable progress, and does not meet the inventiveness requirement under Article 22, Subsection 3 of the Patent Law.

Since Claim 1 lacks inventiveness, the introduction of additional prior art evidence further establishes that Claims 2-10 also lack inventiveness.

The CNIPA accepted the petitioner's invalidation arguments and, on January 14, 2021, issued Invalidation Examination Decision No. 47721, declaring the entire patent invalid.

2. During the First-Instance Administrative Litigation Before the Beijing Intellectual Property Court, The Japanese Corporation Changed Its Strategy, Emphasizing That the Objective Technical Problem Addressed by Claim 1 of the Patent Differs from the Objective Technical Problem and Specific Working Principle of Evidence 3. 

During the first-instance hearing, the plaintiff voluntarily withdrew its objection to Distinguishing Feature (1) and acknowledged the Contested Decision's assessment of Distinguishing Feature (1), thereby conceding that Evidence 2 had already disclosed Distinguishing Feature (1). Additionally, the plaintiff also admitted that if Claim 1 lacks inventiveness, then Claims 2-10 also lack inventiveness.

Regarding Distinguishing Feature (2), the plaintiff argued that the objective technical problem to be solved by the invention claimed in Claim 1 is "to accurately and efficiently perform fermentation and drying by ensuring uniform ventilation throughout the interior of the container." When viewed in a plan view, the container according to Claim 1 of the Patent features stirring blades extending radially from the central rotating axis. As the stirring blades move outward radially, the swept length increases, meaning that the volume of organic waste to be stirred increases toward the outer regions. To achieve uniform ventilation within the container, the discharge volume on the outer (front-end) side of the stirring blades must be increased. To address this issue, the invention in Claim 1 is characterized by "the interval between adjacent vent holes gradually narrows from the base end of the stirring blade to the front end." As a result, the outer (front-end) side of the stirring blades achieves a higher discharge volume. Based on this reasoning, the plaintiff contended that the objective technical problem solved by Claim 1 differs from that of Evidence 3, as well as its specific working principle. Therefore, Evidence 3 does not provide the corresponding technical motivation.

In response, FUHUMAN argued that the technical solution disclosed in Evidence 3 and the technical solution of Claim 1 of the Patent both address the same technical problem, ensuring uniform ventilation per unit area. Moreover, the technical means employed in Evidence 3 and the Patent are identical. Therefore, Evidence 3 provides the corresponding technical motivation.

On December 28, 2022, the Beijing Intellectual Property Court issued Judgment No. 11691, dismissing the plaintiff’s claims.

Dissatisfied with the first-instance judgment, the Japanese corporation appealed to the Supreme People’s Court.

3. During the Second-Instance Administrative Litigation Before the Supreme People’s Court, The Japanese Corporation Focused on Emphasizing That the Technical Problem Addressed by Claim 1 of the Patent Is Not Obvious.

The Japanese corporation argued in its appeal:

• The Contested Decision’s summary of the technical problem is overly broad. The objective technical problem solved by the Patent should be: the difference in ventilation volume per unit area (ventilation density) between the base end and the front end, where the farther the stirring blade extends outward, the greater the volume of organic waste that needs to be stirred. This difference results in varying swept areas of the stirring blades, leading to different air requirements and causing non-uniform ventilation.
• The identification of the objective technical problem solved by the Patent required inventive effort. To avoid hindsight analysis, it is necessary to consider whether the formulation of the problem would have been obvious to a person skilled in the art. Even if it is a logically deducible technical fact that, as the stirring blade extends toward the front end, the increasing rotation diameter results in lower ventilation volume per unit area at the front end compared to the base end, it does not necessarily follow that a person skilled in the art, when multiple blades and multiple vent holes are already provided, would recognize the specific technical problem addressed by the invention and the necessity of solving it. Therefore, this aspect is not obvious.
• Evidence 3 does not provide technical motivation. Evidence 3 belongs to a different technical field and serves a different function from the Patent. In Evidence 3, increasing the density of aeration pipe toward the front end of the aeration pipe ensures a uniform air discharge from the pipe, meaning that Evidence 3 addresses the technical problem of the gradual reduction in internal pressure within the aeration pipe. Evidence 3 does not provide any technical motivation for its combination with Evidence 1. On the contrary, it even suggests a contrary teaching.

In response, FUHUMAN argued:

• Whether the objective technical problem solved by Claim 1 of the Patent is the ventilation unevenness caused by varying air requirements due to differences in the swept area of the stirring blades, or the technical problem solved by Evidence 3 is ventilation unevenness caused by the gradual decrease in internal pressure due to pressure loss along the aeration pipe, both address the same fundamental issue of ventilation unevenness. Even if the causes of ventilation unevenness differ, they still fall under the same technical problem.
• A person skilled in the art knows that more uniform ventilation leads to better fermentation. Therefore, maintaining uniform ventilation within the fermentation container is common general knowledge in the field. It is also commonly understood that as the distance from the base end of the stirring blade increases, the corresponding area or container volume per unit length of the blade also increases. Furthermore, if vent holes are evenly spaced from the base end to the front end of the blade, then even without considering pressure loss along the flow path, the ventilation volume per unit length of the holes remains constant. As a result, the farther from the base end, the larger the area or container volume corresponding to the same ventilation volume. Under the requirement of uniform ventilation, the farther from the base end, closer to the front end, the greater the ventilation insufficiency. Thus, a person skilled in the art would readily recognize the technical problem that when vent holes are evenly spaced on the blade, the farther from the base end, closer to the front end, the greater the ventilation insufficiency. In other words, it is a logically deducible technical fact that as the stirring blade extends toward the front end, the increasing rotation diameter results in a lower ventilation volume per unit area at the front end compared to the base end.
• Evidence 3, which relates to an aeration device for wastewater treatment using an aeration method, belongs to a related technical field of the patent. A person skilled in the art, when confronted with the above technical problem, would be motivated to seek relevant technical guidance from Evidence 3.

4. The Supreme People’s Court, After Trial, Dismissed the Appeal of the Japanese Corporation and Upheld the Contested Decision

The Supreme People’s Court held a hearing on August 26, 2024, and on December 24, 2024, issued Judgment No. 368, dismissing the appeal of the Japanese corporation and upholding the Contested Decision.

• Regarding the Objective Technical Problem Solved by the Invention

The Supreme People’s Court held that paragraph [0013] of the patent specification explicitly states that when multiple vent holes are arranged, uniform ventilation can be achieved throughout the container. However, if the vent holes are evenly spaced, the ventilation volume per unit area (ventilation density) differs between the base end and the front end, resulting in a lower ventilation volume at the front end compared to the base end. Therefore, it is preferable to solve this issue by gradually decreasing the spacing between adjacent vent holes from the base end to the front end of the stirring blade. Accordingly, the Supreme People’s Court determined that the objective technical problem solved by Claim 1 of the patent, based on Distinguishing Feature (2), is how to achieve uniform ventilation volume per unit area between the base end and the front end of the stirring blade.

• Regarding Whether the Technical Problem is Obvious

The Supreme People’s Court held that there is no sufficient evidence to support the Japanese corporation’s claim that relevant factors would prevent a person skilled in the art from recognizing the objective technical problem solved by Claim 1 of the patent based on Distinguishing Feature (2). The fact that the stirring blade’s increasing rotation diameter toward the front end results in a lower ventilation volume per unit area at the front end compared to the base end is a logically deducible technical fact. Therefore, identifying and proposing the objective technical problem solved by Claim 1 of the patent based on Distinguishing Feature (2) would have been obvious to a person skilled in the art.

• Regarding Whether Evidence 3 Provides Technical Motivation for Distinguishing Feature (2)

The Supreme People’s Court held that

First, Evidence 1 relates to a waste fermentation device, and the objective technical problem it solves concerns fluid discharge. Since Evidence 3 pertains to an aeration device for wastewater treatment using an aeration method, both belong to related technical fields. A person skilled in the art, when addressing the technical problem of ensuring uniform ventilation in a waste fermentation device, would be motivated to seek technical guidance from Evidence 3.

Second, although Evidence 3 specifically addresses the issue of compensating for longitudinal pressure loss, it achieves uniform ventilation by compensating for reduced airflow at the distal end. When a person skilled in the art encounters the problem in a waste fermentation device where the increasing rotation diameter of the stirring blade toward the front end results in a lower ventilation volume per unit area compared to the base end, they can obtain technical motivation from Evidence 3 to achieve uniform ventilation by compensating for reduced airflow at the distal end.  

Third, as previously stated, the problem of reduced ventilation volume per unit area at the front end due to the increasing rotation diameter of the stirring blade is a logically deducible technical fact. To achieve uniform ventilation, placing denser vent holes in areas with lower ventilation volume is the most straightforward technical means. A person skilled in the art, guided by the teachings of Evidence 3, could arrive at the technical solution of Claim 1 without the need for inventive effort. The Contested Decision’s conclusion that Evidence 3 provides technical motivation for Distinguishing Feature (2) is not improper.  

Overall, the Supreme People’s Court determined that Claim 1 of the patent lacks prominent substantive features and does not meet the inventiveness requirement under Article 22, Paragraph 3 of the Patent Law.

5. Conclusion

In this case, the Supreme People’s Court found that the Contested Decision’s determination of the objective technical problem solved by Claim 1 of the patent, based on Distinguishing Feature (2), was relatively broad and therefore refined it. However, FUHUMAN’s legal representatives consistently argued that Distinguishing Feature (2) is overly simple, to the extent that it is close to common general knowledge. Perhaps aware of this, the patentee took an unconventional approach during the administrative litigation, especially in the second-instance trial, repeatedly emphasizing that the objective technical problem solved by Claim 1 based on Distinguishing Feature (2) was itself not obvious and difficult for a person skilled in the art to recognize.

Whether a technical problem is easily identifiable determines whether a person skilled in the art would have a motivation to develop a solution. If a technical problem is easy to recognize, a person skilled in the art has a clear research motivation. Conversely, if a technical problem is difficult to recognize, then a person skilled in the art would lack the motivation to develop a solution, which could serve as a basis for establishing inventiveness. Generally, only a very small number of pioneering inventions involve technical problems that are difficult to recognize, whereas for the vast majority of improvement inventions, the technical problems they address are not inherently non-obvious.

In this case, the patent in question is an improvement invention rather than a pioneering invention. The problem that "as the rotation diameter of the stirring blade increases toward the front end, the ventilation volume per unit area at the front end becomes lower than at the base end" is overly simple. A person with basic knowledge of high school physics would readily recognize it, as it is a logically deducible technical fact. Therefore, arguing that the technical problem is difficult to recognize may seem like a shortcut, but in reality, it is a challenging and unconvincing approach.