Lasted for Eight Years: Won the Case Concerning the Administrative Dispute over Invalidation of the Invention Patent of Elecon Handled by Lawyer Xu Xinming

Basic Information

(Switzerland) Elecon Asia SA (hereinafter referred to as “Elecon”) is a powerful intelligent three-dimensional parking garage enterprise in Switzerland that provides intelligent robot parking solutions. Elecon owns an invention patent with the application date of March 13, 2002, the patent number of 02803734.0 and the name of “Bracket for Horizontal Transportation of Motor Vehicles in Automatic Mechanical Parking Lot” (hereinafter referred to as the “Patent”). The Patent entered the national phase of China through the PCT national application on July 15, 2003, and was authorized on February 23, 2005 with the authorization announcement number of CN1190580C.

Patent Invalidation and Litigation Process:

The Patent has a total of 15 claims, of which the protection scope of claim 1 is very large. On February 9, 2009, May 4, 2009 and July 24, 2009 respectively, Liu Xyang and Yifeng Industrial Equipment (Shenzhen) Co., Ltd. (hereinafter referred to as “Yifeng”) requested the Patent Reexamination Board of the China National Intellectual Property Administration (hereinafter referred to as the “Patent Reexamination Board”) to declare the Patent all invalid. The main reasons include: the Patent does not comply with the provisions of Article 21.2 of the Rules for Implementation of the Patent Law of the People’s Republic of China (revised in 1992, hereinafter referred to as the “Implementation Rules”) and Article 26.4 of the Patent Law of the People’s Republic of China (revised in 1992, hereinafter referred to as the “Patent Law”).

On March 9, 2010, the Patent Reexamination Board issued the Decisions on Examination of Request for Invalidation No.14538, No.14542 and No.14543, respectively, declaring that Claims 1-3, 5 and 6 of the Patent directly or indirectly cite the technical solutions of Claim 1-3 and Claims 7-15 are invalid on the grounds that Claims 1-3, 5 and 6 of the Patent directly or indirectly cite the technical solutions of claims 1-3 and Claims 7-15 lack necessary technical features and do not comply with Article 21.2 of the Implementing Rules, and maintaining the patent right as valid on the basis that the technical solution of Claim 4 is directly or indirectly cited in Claims 4, 5 and 6.

Elecon refused to accept the above three Decisions on Examination of Request for Invalidation and filed an administrative lawsuit with Beijing No.1 Intermediate People’s Court. After trying this case, Beijing No.1 Intermediate People’s Court issued the Administrative Judgments with the numbers of (2010) Yi Zhong Zhi Xing Chu Zi No.2635, (2010) Yi Zhong Zhi Xing Chu Zi No.2637 and (2010) Yi Zhong Zhi Xing Chu Zi No.2636 respectively, rejecting Elecon’s claims. Elecon refused to accept the first-instance judgments and filed an appeal to Beijing Higher People’s Court. After trying this case, Beijing Higher People’s Court issued the Administrative Judgments with the numbers of (2011) Gao Xing Zhong Zi No.531, (2011) Gao Xing Zhong Zi No.401 and (2011) Gao Xing Zhong Zi No.522 respectively, rejecting Elecon’s appeal and maintaining the original judgments.

Elecon refused to accept the above three Administrative Judgments issued by Beijing Higher People’s Court and filed a retrial application with the Supreme People’s Court. The Supreme People’s Court decided that it would retry the above cases. After retrial, the Supreme People’s Court issued the Administrative Judgments with the numbers of (2014) Xing Ti Zi No.11, (2014) Xing Ti Zi No.12 and (2014) Xing Ti Zi No.13 respectively on December 18, 2014, revoking the Administrative Judgments issued by Beijing Higher People’s Court and Beijing No.1 Intermediate People’s Court, revoking the above three Decisions on Examination of Request for Invalidation issued by the Patent Reexamination Board, and ordering the Patent Reexamination Board to issued new decisions on examination of request for invalidation with respect to the above requests for invalidation.

The above case retried by the Supreme People’s Court was rated as “Top Ten Innovative Intellectual Property Cases by China Courts in 2014”, and the retrial judgment was selected in the Guidance on Intellectual Property Trial Cases by the Supreme People’s Court, Series 7.

In 2015, after the above cases were remanded to the Patent Reexamination Board for retrial, the invalidation claimants Liu Xyang and Yifeng entrusted Xu Xinming, the chief lawyer of the China Intellectual Property Lawyers Network, as their agent. After in-depth study of the above retrial judgments issued by the Supreme People’s Court, lawyer Xu Xinming represented the invalidation claimants to present his opinions to the Patent Reexamination Board. The Patent Reexamination Board re-established a collegiate panel to try the above three cases, and issued a Decision on Examination of Request for Invalidation No. 28765 (hereinafter referred to as the “Sued Decision”) on April 14, 2016, declaring that Claims 1, 5 and 6 of the Patent directly or indirectly cite the technical solution of claim 1 and Claims 7-15 are invalid, and maintaining the patent right as valid on the basis that Claims 2-4, 5 and 6 directly or indirectly cite the technical solutions of Claims 2, 3 and 4.

Elecon refused to accept the Sued Decision and filed a lawsuit with Beijing Intellectual Property Court. Beijing Intellectual Property Court accepted this case on October 31, 2016 and tried this case in an open court on May 23, 2019. Lawyer Xu Xinming represented the third parties, Liu Xyang and Yifeng, to appear before the court, and gave an lawyer’s opinion to the collegiate bench after the trial. On October 21, 2019, Beijing Intellectual Property Court issued the Administrative Judgment with the number of (2016) Jing 73 Xing Chu No.5634, rejecting the claims of Elecon.

Elecon refused to accept the first-instance judgment and filed an appeal with the Supreme People’s Court. The Supreme People’s Court accepted the case on June 30, 2021. Before the trial, lawyer Xu Xinming issued the first lawyer’s opinion to the collegiate bench. The Supreme People’s Court tried this case in an open court on November 24, 2021, and lawyer Xu Xinming represented the third parties, Liu Xyang and Yifeng, to appear before the court. After the trial, lawyer Xu Xinming issued the second lawyer’s opinion to the collegiate bench. Because the Supreme People's Court did not issue a judgment on this case for a long time, lawyer Xu Xinming issued the third lawyer’s opinion to the collegiate bench in August 2023. On December 12, 2023, the Supreme People’s Court issued the Administrative Judgment with the number of (2021) Zui Gao Fa Zhi Xing Zhong No.600, rejecting the appeal and maintaining the original judgment.

Conclusion

This case has been subject to two rounds of invalidation proceedings. The first round of invalidation proceeding includes four stages, i.e. the procedure for examining the request for invalidation of Patent in the Patent Reexamination Board, the first instance of Beijing No.1 Intermediate People’s Court, the second instance of Beijing Higher People’s Court and the retrial of the Supreme People’s Court, lasting nearly six years from February 2009 to December 2014. The second round of invalidation proceeding handled by me, Xu Xinming, include three stages, i.e. the procedure for examining the request for invalidation of Patent in the Patent Reexamination Board, the first instance of Beijing Intellectual Property Court and the second instance of the Supreme People’s Court, lasting for more than eight years from October 2015 to December 2023. Finally, the Supreme People’s Court issued a final judgment, declaring some claims including Claim 1 of the Patent invalid.

The two rounds of invalidation proceedings lasted nearly fifteen years from the start time of the first round of invalidation proceeding in February 2009 to the end time of the second round of invalidation proceeding in December 2023, showing that the trial period of a patent invalidation case is very long.

As far as the results are concerned, there is no substantive difference between the second round of invalidation proceeding and the Decision on Examination of Request for Invalidation issued by the Patent Reexamination Board in the first round of invalidation proceeding; however, the second round of invalidation proceeding and the Decision on Examination of Request for Invalidation issued by the Patent Reexamination Board in the first round of invalidation proceeding are quite different in the process, determination of related facts and application of laws. Many issues arising from whether the claims can be supported by the specification are presented in this case, and are quite complicated and worthy of careful understanding.