Judgment Gist
In the event that the design of an allegedly infringing product is not identical to a prior design, in order to reach a correct determination on design patent infringement, a comprehensive judgment should be based on comparison between each two of the design of the allegedly infringing product, the prior design, and the design of a subject design patent. The judgment should take into consideration the similarities and differences between the design of the allegedly infringing product and the prior design and the influence thereof on the overall visual effect, the features distinguishing the subject design patent from the prior design and the influence thereof on the overall visual effect, and whether or not the design of the allegedly infringing product utilizes the features distinguishing the subject design patent from the prior design, thereby determining whether or not the design of the allegedly infringing product is substantively different from the prior design.
Case Information
Case Summary
Bridgestone Corporation (hereinafter referred to as “Bridgestone”) filed on December 27, 2000 an application for the subject design patent entitled “Vehicle Tire” and was granted a patent right. Bridgestone found that Zhejiang Huntington Bull Rubber Co., Ltd (hereinafter referred to as “Bull”) had been producing and selling a model BT98 tire similar to the design of the above patent without being licensed by Bridgestone, and that Beijing Banglixin Tires Co. Ltd (hereinafter referred to as “Banglixin”) had been selling the model BT98 tire produced by Bull without being licensed by Bridgestone. Therefore, the actions of the two defendants have infringed the patent right of Bridgestone. Bridgestone filed a lawsuit with the Beijing Second Intermediate People’s Court (hereinafter referred to as “first instance court”) against the two defendants. During the litigation, Bull made the prior art defense.
The first instance court rendered that: According to the principle of prior art defense in patent infringement litigations, where the allegedly infringing product is equivalent to the technical solution claimed by a patent, if the defendant provides evidence proving that the allegedly infringing product is equivalent to a known prior art, the defendant’s actions will not be considered infringement. Specific application of this defense principle only requires determining whether or not the allegedly infringing product and the known prior art set forth by the defendant are identical or equivalent. The determination of similarities between the designs should be based on an all-round observation and comprehensive analysis, with the observing capability of a normal consumer as the standard. The comparison should include the main design part as well as the overall visual effect. As to the present case, the comparison of the main tread surfaces of the product of the subject patent and the allegedly infringing product is the key. The main design part of the subject patent is featured by the annular groove of the product of the subject patent which is divided into four annular contact faces, the rhombus-patterned block and its unique shape, small slots in long and short rectangular shapes arranged at even intervals in the circumferential direction of the outermost circumference, and the annular pattern lines on the outer side of the two annular contact faces on the respective sides. The corresponding part of the allegedly infringing product is similar to the main design part of the subject patent. Therefore, model BT98 tire and the product of the subject patent have similar designs. The model BT98 tire is also similar to the main design part of prior art design Delta Z38(P), with the difference that the small rhombus-patterned block of Delta Z38(P) has a more elongated shape. Based on an all-round comparison, the two are similar designs. Therefore, the prior art defense of Bull is accepted, and Bull’s actions do not constitute infringement on the subject design patent entitled “Vehicle Tire” of Bridgestone.
Accordingly, the first instance court rejected the claims of Bridgestone.
Bridgestone was unsatisfied with the first instance judgment and appealed to the Beijing High People’s Court. The Beijing High People’s Court reviewed the case and upheld the first instance judgment.
Bridgestone was unsatisfied with the second instance judgment and petitioned for retrial before the Supreme People’s Court. After the hearing, the Supreme People’s Court decided that the original judgment contained incorrect application of law and conducted a retrial in accordance with the law.
The Supreme People’s Court concluded that the disputes of the involved parties in the retrial mainly focused on the following legal issues:
1. Method for reviewing prior art defense in determining infringement on the subject design patent
In order to determine whether or not the prior art defense of the alleged infringer can succeed, first the design of the allegedly infringing product should be compared with a prior design to determine whether or not they are identical or do not have substantive differences. If the design of the allegedly infringing product is identical to a prior design, it can be directly determined that the design implemented by the alleged infringer belongs to the prior design and does not fall in the scope of protection of the subject design patent. Otherwise, it should be further determined whether or not there is a substantive difference between the design of the allegedly infringing product and the prior design, i.e., whether they are similar. This determination of substantive difference or similarity is made in context. If we only compare the design of the allegedly infringing product and the prior design, we may overlook the difference therebetween and the influence of such difference on the overall visual effect, which may lead to an incorrect conclusion that the design of the allegedly infringing product, the prior design, and the subject design patent are similar to each other. Therefore, in the event that the design of the allegedly infringing product is not identical to the prior art, in order to reach a correct conclusion, comparisons should be made between each two of the design of the allegedly infringing product, the prior design, and the subject design patent, with the prior design as the basis, before making a comprehensive judgement. The judgment should take into consideration the similarities and differences between the design of the allegedly infringing product and the prior design and the influence thereof on the overall visual effect, the features distinguishing the subject design patent from the prior design and the influence thereof on the overall visual effect, and whether or not the design of the allegedly infringing product utilizes the features distinguishing the subject design patent from the prior design, thereby determining whether or not the design of the allegedly infringing product is substantively different from the prior design. The original judgment decided to accept the prior art defense merely based on a comparison between the design of the allegedly infringing product and the prior design while the design of the allegedly infringing product and the prior design are not identical, which was inappropriate and should be corrected. The petitioner’s stated grounds for retrial -- that the original judgment was incorrect in the application of law with regard to the prior art defense -- were legitimate. Thus, the petition for retrial is supported.
2. Whether or not the design of the allegedly infringing product falls in the scope of protection of the subject design patent
In order to determine whether or not the design of the allegedly infringing product falls in the scope of protection of the subject design patent, the overall visual effects of the two should be comprehensively analyzed based on the knowledge level and the cognitive ability of a normal consumer. The normal consumer should have a commonsense understanding of the state of art of designs for the same or similar class of the products of the subject design patent, should have a certain ability in distinguishing the differences in shape, pattern and color of design products, and should not pay special attention to slight changes in shape, pattern and color. As shown above, the normal consumer in the determination of identical or similar designs should have common sense understanding of the customary design and the common design techniques of prior designs. Based on the knowledge level and the cognitive ability of the normal consumer, the identical features or similarities of designs which are the customary design or the common design techniques do not have significant influence on the overall visual effect of the designs. Therefore, in the determination of infringement on the subject design patent, even if the alleged infringer did not make the prior art defense, the customary design and the common design techniques of prior design should be considered. That is, in view of customary design and the common design techniques of the prior design, the features distinguishing the subject design patent from the customary design and the common design techniques should be identified, and the influence of these distinguishing features on the overall visual effect should be considered. On this basis, a comparison between the overall effects of the design of the allegedly infringing product and the design of the subject patent should be carried out by an all-round observation and comprehensive analysis. When the alleged infringer made the prior art defense, as mentioned above, unless the design of the allegedly infringing product is identical to the prior design, the prior design should be taken as a reference for comparing each two of the prior design, the subject design patent, and the design of the allegedly infringing product, so as to conduct a comprehensive analysis. In particular, it should be noted whether or not the design of the allegedly infringing product incorporates the distinguishing feature of the subject design patent as compared with the prior design, and thereby produces an overall visual effect of no substantive difference from the subject design patent. Specific to the vehicle tire products in the present case, the design of the tread surface has significant influence on the overall visual effect of the products and is the key of comparison.
Apparently, the design of the allegedly infringing product in the present case is not identical to the prior design. Based on the facts ascertained by the court, the differences between the design of the allegedly infringing product, the prior design, and the subject patent include the follows: The subject patent is different from the prior design deltaz38(p) in terms of shape of pattern blocks on the tread surface, depth of traverse grooves in the outer edge of the outer annular contact face, curvature of the annular grooves, and design of protruding particles on the bottom of the central annular groove, whereby the subject patent produces significantly different visual effect from the prior design; the allegedly infringing product model bt98 tire incorporates the distinguishing features including the shape of pattern blocks on the tread surface, the depth of traverse grooves in the outer edge of the outer annular contact face, the curvature of the annular grooves, and the design of protruding particles on the bottom of the central annular groove, and is distinguished from the prior design by these distinguishing features. As compared with the influence of the similarities between the design of the allegedly infringing product and the prior design, the above distinguishing features have a larger influence on the visual effect. From the view of a normal consumer, the design of the allegedly infringing product has a visual effect that is neither identical nor substantively similar to the prior design; in the comparison between the allegedly infringing product bt98 and the subject patent, it is found that they are identical in terms of the design of the rhombus-patterned block on the tread surface, the depth of the traverse grooves in the outer edge of the outer annular contact face, the curvature of the annular grooves, and the design of continuous protruding particles on the bottom of the central annular groove, and so on; the only main difference between the two is in the location of two adjacent pattern blocks formed by the annular groove and the traverse thin groove. The difference is certainly a relatively slight difference that can hardly be noted by a normal consumer, and thus cannot lead to different overall visual effects of the two. Therefore, the allegedly infringing product bt98 falls in the scope of protection of the subject patent. The original judgment failed to identify the difference between the design of the allegedly infringing product and prior design and the influence thereof on the overall visual effect, and thus made incorrect determination of infringement. The original judgment should be corrected.
Accordingly, Supreme People’s Court rendered the final judgment to reverse the judgments of the first and second instances, and decided that Bull shall desist from the production and the sales of the allegedly infringing tire products, dispose of the moulds and the stock of the tires, and recall and dispose of the tires from the dealers, and shall compensate for the losses of Bridgestone.
Attorney’s Opinion
This case was selected as one of the 50 Typical Cases of IP Judicial Protection by Chinese Courts in 2011 and provides a typical example for the standard and method for judging prior art defense in design patent infringement litigation.
China first specified determination of prior art defense in written articles in the third amendments to the Patent Law which was enacted in 2008. However, there had been early practical examples in the judicial practice. As the judicial practice does not formulate specific regulations for the principle of application and method for determining prior art defense, the local courts implemented different and even contradictory processes on this matter.
For example, before the present case, when the prior art defense was set forth, some courts may conduct comparison between the three designs, i.e., comparing the allegedly infringing product with the subject patent and with the prior design respectively, so as to determine whether the allegedly infringing product is closer to the subject patent or to the prior design. Specifically in this case, the first instance court and the second instance court held the opinion that, where the defendant makes the prior art defense, first the allegedly infringing product is compared with the prior design; if they are identical or similar, the prior art defense will be accepted; and the comparison between the allegedly infringing product and the subject designed is carried out merely when the allegedly infringing product is neither identical and nor similar to the prior design.
Although the principle and method employed by the first instance court and the second instance court seem consistent with the legislative intent of prior art defense, in practice, merely carrying out the comparison between the allegedly infringing product and the prior design can easily lead to incorrect conclusion on whether the allegedly infringing product and the prior design are similar, just as in the present case.
On this basis, we moved to the Supreme People’s Court for retrial and provided past judicial cases on prior art defense and foreign practices on this matter to the court as reference.
The Supreme People’s Court also intended to, by the present judicial case, elaborate for local courts the principle of application of law with regard to prior art defense and the method for reviewing prior art defense, and thus approved the retrial. In the judgment, the Supreme People’s Court specified the method for reviewing the prior art defense.
Based on the judgment of the Supreme People’s Court, the following steps should be followed in a case where the alleged infringer made prior art defense in litigation involving infringement to design patents:
Step 1: Compare the prior design with the allegedly infringing product; if they are identical, the prior art defense succeeds, and there is no infringement;
Step 2: If the prior design and the allegedly infringing product are not identical, carry out comparison between the prior design, the allegedly infringing product, and the concerned design patent with the prior design as a reference; it should be determined whether or not the allegedly infringing product is identical to the prior design or to the concerned design patent based on whether or not the allegedly infringing product utilizes the distinguishing features of the concerned design patent as compared with the prior design and the influence of these distinguishing features on the overall visual effect.
As shown above, the Supreme People’s Court fully considered the contribution of the distinguishing features of the concerned design patent as compared with the prior design, so as to balance between the interest of the owner of the subject design patent and public interest. The method specified by the Supreme People’s Court is consistent with the legislative intent of prior art defense, and is also consistent with the principle for determining similarities strengthened by the subsequently published judicial interpretation and highlighted in a great number of typical judicial cases, which is, the features distinguishing from the prior design have more influence than the prior design on the overall visual effect.
This case clarifies the method for reviewing prior art defense, and is significant for guiding further trial of cases on disputes of infringement on design patents involving prior art defense.
Links to the case judgments:
Second instance:
https://wenshu.court.gov.cn/website/wenshu/181107ANFZ0BXSK4/index.html?docId=Xa7eLfpmr66qtbnrPYPlv9c+UNsB5B5vhsPhhKAv6Eg9IVimVOQLYp/dgBYosE2ggAZpx0VY6hnu1z63edeG+vTXTyWfi7q21XjDwDE+XharVzu0x2bD0bGfcwHfgCNn
Retrial:
https://www.iphouse.cn/cases/detail/my52x3wm9r781jgyz9zje40pnvozkdgq.html?keyword=%EF%BC%882010%EF%BC%89%E6%B0%91%E6%8F%90%E5%AD%97%E7%AC%AC189%E5%8F%B7
