Strategies for patentee lawsuits against design invalidations
Chinese consumers are paying more and more attention to the unique design of products. Under such circumstances, design patent rights become increasingly important in market competition, and thus a target that infringers tend to attack. A strategy the infringers usually use during infringement lawsuits is to file a request for invalidation against the patent right.
Once the design patent is invalidated, the commercial loss for the patentee is inestimable. So the patentee has to maintain its patent right via an administrative lawsuit, and it can be difficult for the patentee to win. The following is such a case the authors dealt with recently.
In 2012, Kohler Co. found that Xima Co. exhibited, produced and sold a toilet that infringed Kohler’s design patent on a large scale. Without any positive response, after communication and repeated warnings, Kohler filed an infringement lawsuit. Xima filed requests for invalidation against Kohler’s design patents three times, even after the first instance and second instance courts decided that Xima must stop infringing and compensate for damages. Unfortunately, Kohler’s design was invalidated in the third invalidation procedure. The patent product, NUMI toilet, which is a star product of Kohler, had won international design awards, and so this unfavorable decision produced a serious negative influence on Kohler’s rights protection and marketing. In order to protect the patentee’s legitimate rights and interests, the authors, on behalf of Kohler, filed an administrative lawsuit against the decision.
In the above case, the prior design that the Patent Re-examination Board (PRB) used to invalidate the implicated design came from a small picture taken from obscure magazine years ago, and the outline and design details could not be determined from the copy that Xima provided.
For an accurate comparison, we obtained this magazine so that the outline and design details could be presented clearly. During the comparison, both parties were focusing on the following three aspects: First, whether the whole design styles of the prior design and the implicated design were similar or not; second, whether the prior design included the back tank shown in the implicated design or not; and third, whether the difference between the toilet cover and seat in the prior design and the implicated design was notable or not.
During the hearing and in the statement after hearing, the authors listed common types of toilets and demonstrated that the prior design actually did not include a back tank, and also analyzed the “exactly matching” visual effect of the implicated design and the layered visual effect of the prior design, as well as the influence brought by the differences between them to the whole visual effect.
Recently, Beijing IP Court made the first instance decision upholding the patentee’s claims, deciding to revoke the above decision issued by the PRB, and requiring the PRB to make a new decision on the invalidation request against the implicated design patent.
In view of the invalidation decision issued by the PRB, all aspects of evidence, besides re-comparing the implicated design to the prior design to prove the obvious fact-finding error in the decision, play roles in whether the patent can be sustained.
In addition to the determination of the differences in the design details, it is especially significant to summarize the whole design style of the product that forms the whole visual effect on which consumers focus their concerns.
Moreover, as for the unique design features of the design patent in comparison to the prior design, the context of prior designs does matter. Hence, it is advantageous, for determining the unique design features of the design patent and analyzing the difference between the design patent and the prior design, to submit evidence showing the context of prior designs. Besides the above work, the authors also brought the real object to the court for the judges’ reference, clearly showing the patent product and so facilitating the comparison. On the other hand, other evidence the authors submitted, such as those proving Xima’s willful infringement and the awards of the implicated design patent, further moved the case in the patentee’s favour.
At present, as we expected, Xima still insists on appealing, and this case is under the second instance. However, the authors believe that the patent right of the patentee will be sustained and protected eventually.