Success Case
PATENT AGENCY:
Lusheng is one of the few patent agencies approved by the China National Intellectual Property Administration (CNIPA). Our patent attorneys and patent agents provide clients with services covering the whole patent chain and have implemented data management in patent services worldwide.
Our services include:
- Innovation Mapping
- Innovation Capture
- Innovation Management
- Innovation Preservation
- Innovation Deployment
Patent Agency Case 1:
This case was listed at No.1 of the “50 Typical Cases of Judicial Protection of Intellectual Property by Courts across China in 2016”.
TKAS is a world leading Passenger Boarding Bridge (PBBs) manufacturing company which has installed more than 3500 units in airports around the world. TKAS has three production facilities located in Mieres, Spain, Fort Worth, Texas and Zhongshan, China. TianDa issued proceedings in relation to PBBs installed by TKAS at BaiYun Airport on the basis that these infringed TianDa’s patent rights in China. TKAS claimed prior art defence with supportive evidence that the same product had been installed at San Francisco International Airport in 2001, before TianDa filed their patent in 2004. Proceedings were issued in the Guangzhou Intermediate People’s Court against both TKAS and Guangzhou’s BaiYun Airport. We worked to reverse the initial findings when appealed to the Guangdong High People's Court, but the case was upheld. Finally, the appeal to the Supreme People's Court won the case at the re-trial stage. The previous judgments were revoked and all TianDa's claims were dismissed.
This case is significant for a number of “firsts”:
This is to our knowledge the first case where the “international standard” for “prior use” was recognised and acknowledged by a Chinese court – the amendment to the Patent Law allowing for prior use outside of China for an infringement defence only came into force in October 2009. Through retrial of this case, SPC applied its second judicial interpretation regarding patent infringement litigation. It decided the Court should define the scope of the prior art used as non-infringement defence by the defendant in accordance with the patent law as applied at the date of the patent application.
It is also the first case in which the Guangzhou Intermediate People’s Court heard direct evidence (witness testimony given in the court in China). TKAS put forward two American citizens (one the then Project Manager of San Francisco Airport where the prior use claimed by ThyssenKrupp was to be proven; another a senior Engineer at ThyssenKrupp’s US operations), and one German citizen (ThyssenKrupp’s senior project engineer in charge of the development of the relevant PBB damper technology).
Patent Agency Case 2:
Defence against multiple invalidations of a stroller patent
The client is a world-famous manufacturer of baby strollers. They designed a stroller which could be folded into a compact space and brought onto planes. It owns a patent to protect the main idea of the stroller. In recent years the strollers have been extremely popular worldwide.
In China a dozen infringers emerged and we took a broad range of legal action against them. The copycats struck back and initiated over 10 invalidations against the validity of client’s patent. The invalidation process lasted 2 years but the client’s patent was successfully defended.
The patented idea behind the stroller is creative but mechanically speaking its principles are comparatively simple. In the invalidation action more than 30 prior arts are cited. Facing so many invalidation requests and prior arts, the Patent Re-examination Board can easily, step by step, produce a so called “hindsight” decision that this idea is “obvious”. If so, the patent is invalidated, legal action against the infringers will be in vain and tens of million RMB’s damages cannot be claimed. The market will be overtaken by copycats. It was a major victory to have the patent declared valid before the PRB. The PRB's invalidation decisions have significantly strengthened the patent and it brings stronger enforcement to current and potential infringers, including judicial, administrative, and online action.
Patent Agency Case 3:
Defence against risky patent with invalidation attack
In 2016 an internationally renowned shoe company was sued for patent infringement by a Chinese patent owner. We represented the shoe company in the lawsuit. Based on a considerable patent search and a thorough analysis of the targeted patent, we obtained five pieces of evidence to invalidate all the claims of the patent owner. In the end, with a comprehensive invalidation strategy, all claims of the patent were announced invalid in full by the Patent Re-examination Board.
The success of the patent infringement lawsuit ensures our client’s products come into the Chinese market at the best time and avoided huge potential losses through market delay and product infringement.
Remark: For important products, the risks of potential patent infringement need to be carefully assessed. Once any potential risks are identified, it is vital to prepare thoroughly to invalidate risky patents and clear up the obstacles for marketing.