Keywords: Infringement of utility model patent rights; prior art

Counseling Attorneys: Wu Yanjiao, Ma Yunhe

Basic Facts of the Case:

1. Plaintiff’s Claims: The plaintiff in this case, Mr. Qin, is the patentee of a utility model patent. Shenzhen Cultural Development Company is the brand owner of the product in question, Brand Development (Shanghai) Co., Ltd. is the operator of the product, and Zhejiang Industrial and Trade Co., Ltd. is the manufacturer of the product. The three defendants have jointly retained our firm (hereinafter referred to as “we”). The patented invention at issue is an elastic flexible-shaft table tennis toy, and the product in question is also a table tennis toy. The plaintiff alleges that the products manufactured and sold by us fall within the scope of protection of its patent. The plaintiff requests that the three defendants immediately cease all acts infringing upon the patent rights, including ceasing manufacturing, sales, and offers for sale, and destroying any inventory of infringing products; that the three defendants jointly compensate the plaintiff for economic losses in the amount of 500,000 yuan; and that the three defendants bear the litigation costs of this case.

2. Point of contention:

Whether the product involved in the case falls within the scope of protection of the patent in question and whether the patent in question constitutes publicly known technology.

3. Attorney’s Opinion:

(1) The product in question does not fall within the scope of protection of the patent in question. We submit that the distinguishing technical feature of the patent in question lies in the elastic sleeve fitted over the elastic support rod, which allows the elastic sleeve to move up and down relative to the elastic support rod via elastic adjustment, thereby shifting the elastic center of gravity and adjusting the elasticity of the elastic support rod. In contrast, the white fixed clip in the product in question does not serve the same function as the elastic adjustment sleeve. Rather, the white fixed clip in the product in question is a component that stably connects the two elastic support rods that are fitted one above the other; this component cannot be detached from its connection position between the two rods and cannot alter the elastic center of gravity by moving up and down. Thus, the functions of the two components are entirely different. Since the product in question does not fall within the scope of protection of claim 1—the independent claim of the patent in question—nor does it include the technical feature of the elastic adjustment sleeve as compared with dependent claims 2 through 10, it likewise does not fall within the scope of protection of dependent claims 2 through 10 of the patent in question.

(2) The patent in question constitutes prior art. Through a search, we have identified two patent documents with earlier filing dates that constitute prior art. The product at issue incorporates the following technical features: table tennis ball, carbon fiber rod, silicone fixing buckle, threadless straight-insert plastic sleeve, and base. Among these, the threadless straight-insert plastic sleeve is equivalent to the base rod or fixing rod, while the silicone fixing buckle is equivalent to the fastening device. These technical features have already been disclosed in patents CN201022950Y and CN204910701U, and thus constitute prior art. The technical solution of the product in question is entirely disclosed by the prior art, falling within the circumstances specified in Article 14 of the “Interpretation of the Supreme People’s Court on Several Issues Concerning the Application of Law in the Trial of Patent Infringement Disputes.”

4. Judgment outcome:

The accused infringing product does not include all the technical features set forth in claims 1, 3, 4, 6, and 8 of the patent-in-suit; therefore, it does not fall within the scope of protection of the patent-in-suit and does not constitute infringement. The plaintiff’s claim lacks factual basis and is thus not supported.

Case Highlights:

In selecting the litigation strategy for this case, after evaluating the patent in question, we concluded that the utility model patent at issue was relatively stable and therefore decided not to seek a declaration of invalidity of the patent right. Instead, by comparing the technical features of the patent in question with those of the product involved, we discovered that two features that appeared identical actually served entirely different functions within their respective technical solutions and addressed completely distinct technical problems. Consequently, these two features were neither identical nor similar. This view was fully adopted by the court.

The opposing party filed another lawsuit against us in the Shanghai Intellectual Property Court, alleging infringement of a utility model patent that they hold. After analyzing the utility model patent involved in the other case, we determined that the patent right was unstable and therefore asserted its invalidity. Rather than directly confronting the lawsuit, we opted not to respond. Ultimately, the National Intellectual Property Administration declared the other utility model patent invalid, thereby enabling us to save on litigation costs.

Typical significance: By comparing the technical features of the patent in question with those of the product at issue, we found that two features that appear identical actually serve entirely different functions within their respective technical solutions and address completely distinct technical problems. Consequently, these two features are neither identical nor similar. Therefore, the accused infringing technical solution does not fall within the scope of protection of the claims of the patent in question.