（2022) Supreme Law Zhimin End 124

Appellant (original plaintiff) : Shenzhen Rendian Intelligent Technology Co., LTD. Address: 9th Floor, Building 7#, Daheatu, Taihua Wutong Industrial Park, Sanwei Community, Hangcheng Street, Baoan District, Shenzhen, Guangdong.

Legal representative: Chen Mingxing, General manager of the company.

Agent: Huang Liangbao, patent agent of Shenzhen Qianna Patent Agency Co., LTD.

Agent AD litem: Tong Haini, patent agent of Shenzhen Qianna Patent Agency Co., LTD.

Appellee (defendant of the original trial) : Shenzhen Senshuqiang Electronic Technology Co., LTD. Address: Building 1, No. 5, Jiayi Industrial Park, Daping Community, Guanlan Street, Longhua District, Shenzhen, Guangdong Province.

Legal representative: Zhu Mangju, Chairman of the company.

Agent AD litem: Zhao Peng, lawyer of Guangdong Junru Law Firm.

Agent AD litem: Zhang Yanfeng, lawyer of Guangdong Junru Law Firm.

Appellee (defendant of original trial) : Shenzhen Youdian iot Technology Co., LTD. Address: Room 101, No.5, Jiayi Industrial Park, Guihua Community, Guanlan Street, Longhua District, Shenzhen, Guangdong Province.

Legal representative: Chen Aijuan, President of the Company.

Agent AD litem: Zhao Peng, lawyer of Guangdong Junru Law Firm.

Agent AD litem: Zhang Yanfeng, lawyer of Guangdong Junru Law Firm.

The appellant Shenzhen Zudian Intelligent Technology Co., LTD. (hereinafter referred to as "Zudian Company"), due to a dispute with appellant Shenzhen Senshuqiang Electronic Technology Co., LTD. (hereinafter referred to as "Senshuqiang Company") and Shenzhen Youdian Internet of Things Technology Co., LTD. (hereinafter referred to as "Youdian Company") over infringement of utility model patent rights, Appeal against the civil judgment (2021) Yue03 No. 372 made by the Intermediate People's Court of Shenzhen, Guangdong Province on August 20, 2021. After the filing of the case on February 7, 2022, the court formed a collegial panel in accordance with the law, and questioned the parties on April 12, June 17, and June 20, 2022, respectively. Huang Liangbao, the entrusted agent AD litre of the leasing company, Zhao Peng and Zhang Yanfeng, the jointly entrusted agent AD litre of the Senshuqiang Company and the Youdian Company, attended the court for questioning.

The appeal request of the leasing company: revoke the original judgment, and modify the judgment to support the original trial of the leasing company. Facts and reasons: (1) The original trial court found that there was no factual and legal basis for the establishment of the invalid defense of Mori Shu Qiang Company. (1) After the patent is authorized, the rights of the patentee can only be revoked because the right holder voluntarily gives up the rights, the State Intellectual Property Office declares the rights invalid, the patent fails to pay the annual fee is invalid, and the rights of the patentee cannot be directly deprived because of the invalid defense. 2. The comparison file used in the invalidation of the utility model patent (hereinafter referred to as the associated patent) No. 201720131124.2 applied by the leasing company on the same day did not disclose the utility new patent No. 201720131230.0 named "a dynamic password USB cable" All the technical characteristics of the type patent (hereinafter referred to as the involved patent), and the technical problems to be solved by the two are different, and the involved patent is creative. (2) If the application of the law by the original trial court is wrong and the alleged infringement continues after June 1, 2021, the Patent Law of the People's Republic of China (amended in 2008, hereinafter referred to as the Patent Law amended in 2008) shall not be applied.

Mori tree Strong company and Youdian company jointly argued that the original trial court found out the facts clearly, the application of the law is correct, request to reject the appeal, maintain the original judgment.

The leasing company filed a lawsuit with the court of original instance, and the court accepted the case on February 3, 2021. 1. Order Mori Shuqiang Company and Youdian Company to stop the infringement of the patent rights involved, destroy the inventory of infringing products and destroy the infringing molds. 2. Ordered Mori Shuqiang Company and Youdian Company to compensate the leasing company for economic losses and reasonable expenses of 1 million yuan. Facts and reasons: The leasing company applied for the patent involved to the State Intellectual Property Office on February 14, 2017, and obtained the patent on August 18, 2017, which is still legal and valid. The patented product involved in the case is a brand new product that can replace the shared charging bank, which is mainly used in hotel rooms. Users scan the QR code on the product through their mobile phones, obtain the password after paying the user fee, and enter the password to unlock the phone to charge. Compared with the shared charging bank, there is no need for charging management, and it is favored by hotel merchants. In the process of accepting the commissioning of the leasing company to manufacture the patented products involved in the case, after learning the patented technical solution involved in the case, without the permission of the leasing company, the company produced the accused infringing products in large quantities without authorization, and sold them on various sales platforms through the superior power company. Chen Aijuan, the legal representative and largest shareholder (holding 90%) of Youdian Company, is also a shareholder of Mori Shuqiang Company and participates in the actual management of Mori Shuqiang Company. Mori Shuqiang Company and Youdian Company jointly infringe on the patent rights of the leasing company through division of labor. The infringement is obviously subjective and intentional, and the infringement is bad in nature.

Mori tree Strong Company and superior Power company jointly argued in the original trial: (A) Mori tree strong company has the production capacity of power adapters, but has never produced, sold and promised to sell the so-called accused infringing products, Mori tree Strong Company in July to September 2019, three months for the rental company produced and delivered 202,190 power adapters, This fact is reflected in (2019) Guangdong 0306 Civil Case No. 39533, Early Republic of China, Mori Shuqiang Company required the leasing company to pay 797,813 yuan in arrear payment. Mori Shuqiang Company has never been entrusted to manufacture or manufacture the patented products involved, and has not delivered any shared charging equipment to the leasing company. (2) The content and technical characteristics of the related patent claims applied by the leasing company on the same day are identical, the technology of the related patent has long been known to the public, and the related patent has been declared invalid by the State Intellectual Property Office because the claims do not have substantive characteristics and progress, and do not have creativity. Therefore, the patent involved also belongs to prior art and does not have creativity, and the patent involved should have been declared invalid long ago.

The court of first instance found the following facts:

(1) The situation of the patents involved in the request for protection by the leasing company

The leasing company applied for the patent involved in the case to the State Intellectual Property Office on February 14, 2017, and was authorized to announce on August 18, 2017, the latest annual fee has been paid, and is currently in a legal and effective state.

The State Intellectual Property Office made a utility model patent evaluation report on the patent rights involved in the case on October 13, 2017, and concluded that claims 1-7 were not found to have defects that did not meet the conditions for granting patent rights.

The abstract of the patent involved records that a dynamic password USB cable relates to the technical field of USB cables used for charging mobile phones or digital products, and solves the technical deficiencies of existing USB cables that are not conducive to rental and shared use management. The patent involved can be connected to the server by the mobile APP to obtain a dynamic password, so as to facilitate rental management, per time or hourly billing, and reduce the purchase cost of users. The technical field of the patent specification records that the utility model relates to the technical field of a USB wire used for charging a mobile phone or a digital product.

(2) The facts of the alleged infringement

The leasing company claimed that Mori tree Strong Company and Youda Company carried out the act of manufacturing, selling and promising to sell the accused infringing products.

The (2020) Shenzhen Certificate No. 57329 issued by the First Notary Office of Shenzhen City, Guangdong Province records that Zhang Jingyu, a notary, notary and the entrusted agent of the leasing company, entered the delivery code at the Fengchao Express cabinet on the first floor of Jindi Center, Futian District, Shenzhen City on December 10, 2020 and received the parcel with the express tracking number "×××33" from the express cabinet. The notary office staff took photos of Zhang Jingyu's behavior of receiving mail and the appearance of the parcel, and brought the parcel back to the notary office. The notary will unpack and take pictures of the above parcels and seal them up again.

According to the Notary certificate (2020) 57330 issued by the First Notary Office of Shenzhen City, Guangdong Province, on December 10, 2020, the leasing company entrusted the agent to open the mobile Alibaba application platform, log in the Alibaba account with the nickname of "kanaixiaoji", and click "goods to be received". Show the rental company in the "Shenzhen City superior power Internet of Things Technology Co., LTD." shop to buy "superior power shared charger hotel scanning code charger Internet cafe KTV commercial one tow three shared charger OEM" product three sets, the unit price of 25 yuan, including freight payment of 75 yuan, the product sales link shows the product picture; Buy "superior power USB shared charging line hotel shared charger Internet cafe KTV a tow three sweep code charging line OEM" three sets of products (that is, the case was sued infringement products), the unit price of 14.5 yuan, including the freight payment of 41.5 yuan, the product sales link shows the product picture, 123 transactions. The logistics information shows that the waybill number is ×××33 and the logistics company is YTO Express.

The trusted time stamp certification shows that on July 9, 2021, the rental company searched for "Shenzhen Youdian Internet of Things Technology Co., LTD." on the Alibaba platform, and the store was still selling "Youdian USB shared charging line hotel shared charger Internet cafe KTV one tow three scan code charging line OEM" accused of infringing products. In the introduction of the product details, the front desk photos and workshop photos of Mori Shuqiang Company are displayed, and the 3C certification shows the producer (manufacturer) : Shenzhen Youdian iot Technology Co., LTD., the manufacturer: Shenzhen Senshuqiang Electronic Technology Co., LTD.

The web page of Mori tree strong company's corporate website ×××.com shows that Mori Tree Strong Company is a professional manufacturer of power adapter and smart charger products, which proves that it has the ability to manufacture the accused infringing products.

On April 30, 2019, the leasing company signed a purchase order with Morishuqiang Company. Morishuqiang Company produced 800,000 chargers for the leasing company, with a total value of 6.35 million yuan, and the delivery time was from May to August 2019. On August 31, 2019, Mori Tree Strong Company issued two invoices for the leasing company, with a total amount of 225,983.8 yuan and 17,794 power adapters. In the original trial trial, the two parties confirmed that the product involved in the above procurement contract is a "power adapter", not the patented product involved. (2019) Guangdong 0306 Civil Judgment No. 39533 and (2019) Guangdong 0306 Civil Judgment No. 39353 show that the two sides have lawsuits because the leasing company has defaulted on the payment of goods to Mori Shu Qiang Company. (2019) Yue0306 Civil Judgment No. 39533 in Early Republic of China found that the Purchase Order signed between LeApower Company and Mori Shuqiang Company on April 30, 2019 has been terminated on May 22, 2020, and Leapower Company should pay Mori Shuqiang Company 797,813 yuan and interest on overdue payment. (2019) Guangdong 0306 Civil Judgment No. 39353 found that the Cooperation Agreement signed between the leasing company and the Mori Shuqiang Company on April 30, 2019 has been terminated on September 24, 2020, and the leasing company should pay the lawyer fee of the Mori Shuqiang Company 113,000 yuan due to malicious litigation.

The original trial of the rental company submitted a notarized sealed object in court, and the parties confirmed that the sealed object was intact. The outer packing box is affixed with the seal of the Notary Public Office of Shenzhen City, Guangdong Province. The seal is affixed with the official seal of the Notary Public Office of Shenzhen City, Guangdong Province. The sealing date is December 10, 2020. On the outer packing box, there is a YTO Express Express list with the following information: The tracking number is YT5102064255××××; Recipient: Zhou Kai, Tel: 131××******, Address: ×× Building ××, 2007 Shennan Avenue, Futian District, Shenzhen City, Guangdong Province, China; Sender: Chen Zepan, Tel: 137××******, mailing address: ×× Industrial Park ××, ×× Street, Longhua District, Shenzhen, China, the package shows "Shenzhen Senshuqiang Electronic Technology Co., LTD., Senshuqiang Industrial Park, Jiayi Industrial Park, Guanlan Street, Longhua New District, Shenzhen" and "SIMSUKIAN Senshuqiang" words. The original trial was unsealed in court, and there were 5 products. The leasing company confirmed that 3 with USB interface were the accused infringing products of the case, and the remaining 2 products were the accused infringing products of the appearance infringement case No. 370 (2021) Yue 03 Minchu. The plug of the products was printed with "Youdian iot" power adapter, and the manufacturer was "Shenzhen Youdian iot Technology Co., LTD.". The three accused infringing products with USB interfaces are printed with the words "scan code charger, non-gift", and the ID numbers are 20191027248, 20191027249, 20191027250, respectively. Randomly select one of them as the comparison product in this case.

(3) Technology comparison between the accused infringing product and the patent involved

The claims of the utility model patent involved in the case have a total of 7 claims, which are recorded as follows:

1. A dynamic password USB cable, including a USB connector; The power output end of the USB connector is connected to the charging interface through a dynamic password controller; The dynamic password controller comprises an MCU master module for generating dynamic password and controlling the charging interface, and a keyboard input module connected to the MCU master module to provide dynamic password input, or a password input device wirelessly connected to the MCU master module to provide dynamic password input. The password entered by the keyboard input module is consistent with the real-time dynamic password of the MCU main control module, and the MCU main control module opens the power output of the charging interface.

2. According to claim 1, a dynamic password USB cable is characterized in that the MCU main control module is also connected with a display module for input password display or status display.

3. According to claim 1, a dynamic password USB cable is characterized in that the dynamic password controller contains an independent shell, and the dynamic password controller is respectively connected to the power adapter module and the charging interface through the wire.

4. According to claim 1, a dynamic password USB cable is characterized in that the shell of the dynamic password controller is provided with a power indicator and a charging status indicator for connecting the MCU main control module.

5. According to claim 1, a dynamic password USB cable is characterized in that the charging interface comprises an IP interface, a MICRO interface and a TPC interface.

6. According to claim 1, a dynamic password USB cable is characterized in that the shell of the dynamic password controller is printed with an ID number or a two-dimensional code corresponding to the ID number.

7. According to claim 1, a dynamic password USB cable is characterized in that the MCU master control module is also connected with a wireless communication module connected to the Internet.

In this case, the leasing company claims protection claim 1, which is broken down into the following technical characteristics: a. The utility model relates to a dynamic password USB cable, which comprises a USB connector; b. The power output end of the USB connector is connected to the charging interface through a dynamic password controller; c. The dynamic password controller comprises an MCU master module for generating dynamic password and controlling the charging interface, and a keyboard input module connected to the MCU master module to provide dynamic password input, or a password input device wirelessly connected to the MCU master module to provide dynamic password input; d. The password entered by the keyboard input module is consistent with the real-time dynamic password of the MCU main control module, and the MCU main control module opens the power output of the charging interface.

After the comparison in court of the original trial, the leasing company made it clear in court that the accused infringing product was a keyboard input module, and believed that the accused infringing product had all the technical characteristics of the patent claims involved in the case, and constituted the same infringement. Morishuqiang Company and Youdian Company confirm that the accused infringing products have the technical characteristics a-d of the patent claim 1 involved.

(4) The patent invalidity defense raised by Mori Tree Qiang Company and Youdian Company

Mori Shuqiang Company and Youdian Company submitted the patent claims, No. 41299 Invalidation Request Review decision (hereinafter referred to as No. 41299 Review decision), and Beijing Intellectual Property Court (2019) Beijing 73 Line Initial 10307 judgment. The related patent application date of the patentee who is also a leasing company is February 14, 2017, and the authorization announcement date is December 01, 2017. The claims at the time of the associated patent authorization announcement are as follows:

"1. A dynamic password wall charger comprises an AC plug and a power adapter module connected to the AC plug; It is characterized that the output end of the power adapter module is connected to the charging interface through a dynamic password controller; The dynamic password controller comprises an MCU master module for generating dynamic password and controlling the charging interface, and a keyboard input module connected to the MCU master module to provide dynamic password input, or a password input device wirelessly connected to the MCU master module to provide dynamic password input. The password entered by the keyboard input module is consistent with the real-time dynamic password of the MCU main control module, and the MCU main control module opens the power output of the charging interface.

2. According to claim 1, a dynamic password wall charger is characterized in that the MCU main control module is also connected with a display module for input password display or status display.

3. According to claim 1, a dynamic password wall charger is characterized in that the dynamic password controller contains an independent shell, and the dynamic password controller is respectively connected to the power adapter module and the charging interface through a wire.

4. The dynamic password wall charger described in claim 1 is characterized in that the shell of the dynamic password controller is provided with a power indicator and a charging status indicator connected to the MCU main control module.

5. A dynamic password wall charger described in claim 1 is characterized in that the charging interface comprises an IP interface, a MICRO interface and a TPC interface.

6. A dynamic password wall charger described in claim 1 is characterized in that the shell of the dynamic password controller is printed with an ID number or a QR code corresponding to the ID number.

7. A dynamic cryptographic wall charger described in claim 1 is characterized in that the MCU master control module is also connected with a wireless communication module connected to the Internet."

Examination Decision No. 41299 records: The patent number is No. 201720131124.2, and the patent name is "a dynamic password wall charger", that is, the associated patent. According to the Review and invalidation Department of the Patent Office of the State Intellectual Property Office, Claim 1 requests the protection of a dynamic password wall charger, while document 1 discloses a WIFI advertising system with mobile phone charging function, which specifically discloses the following contents (see paragraph 21-26 of the specification, Figure 1-6) : The WIFI advertising system includes an intelligent charging system, including a device interface 14, which is used to connect to 220V AC power (device interface 14 is equivalent to the AC plug of the patent), the charger provides a 5V voltage regulator charging device, as for the interior of the housing, the use of DC switching power supply form (equivalent to the power adapter module disclosed in the patent), USB interface 13 is placed on the side of the housing to provide an electrical connection interface for the mobile phone charging line 15, and provide charging current for the user through the mobile phone charging line 15 (USB interface 13 and charging line 15 are equivalent to the charging interface of the patent); The microcontroller is placed inside the shell to control the operation of the entire intelligent charging system, and its built-in timer program is used to change the password regularly, and can control the on-off of the charger by judging whether the password is correct (the microcontroller is equivalent to the MCU master module of the patent for generating dynamic password and controlling the charging interface); Keyboard 12 is placed under the display device, and the user can enjoy free charging service by entering the obtained password into the intelligent charging system (keyboard 12 is equivalent to the keyboard input module connected to the MCU main control module to provide dynamic password input), and the microcontroller and keyboard together are equivalent to the dynamic password controller of this patent; If the password is correct, the user's mobile phone will be charged for a long time (it is equivalent to disclosing that the password entered by the keyboard input module is consistent with the real-time dynamic password of the MCU master module, and the MCU master module will turn on the power output of the charging interface).

It can be seen that the distinguishing features of claim 1 and comparison document 1 are: (1) wall charger; (2) Wireless connection MCU master module provides dynamic password input password input device. Claims based on the above differences to solve the technical problems are: (1) clear charger use environment; (2) Improve the convenience of entering passwords. In the field of power, the charger is set in the wall, cabinet or other fixed environment to facilitate the use of users, is a common technical means, and in order to facilitate the input password verification, the use of wired or wireless input devices, are also common technical means in this field. Therefore, claim 1 does not have substantive characteristics and progress compared with the comparison document 1 combined with the public knowledge in the field, does not have the creativity stipulated in Article 22 (3) of the Patent Law amended in 2008, and considers that the additional characteristics of subordinate rights 2 and 3 combined with the public knowledge on the basis of the disclosure of the comparison document 1 is obvious; The additional features of claim 4 and 5 are disclosed by comparison document 3 and public knowledge, the additional features of claim 6 are disclosed by comparison document 4 and public knowledge, and the additional features of claim 7 belong to public knowledge. Therefore, the Review and invalidation Department of the Patent Office of the State Intellectual Property Office holds that the patent claims 1-7 are not creative. On August 7, 2019, the utility model patent No. 201720131124.2, named "a Dynamic password wall Charger", was declared invalid.

The owner of the related patent, that is, the leasing company in this case, refused to accept the review decision No. 41299 and filed an administrative lawsuit with the Beijing Intellectual Property Court. On October 26, 2020, the Beijing Intellectual Property Court rejected the lawsuit request of the leasing company.

The leasing company confirmed that the associated patent and the utility model patent in this case were filed on the same day, and all the other technical characteristics are the same except that the former is an AC plug and the latter is a USB plug.

(5) Other circumstances of the case

The company was established on March 27, 2008, with a registered capital of 5 million yuan. Its business scope includes technical development and sales of chargers, power products, electronic products, plastic products and wires. Import and export of goods and technology. The shareholders are Chen Aijuan and Zhu Mangju.

The company was established on January 25, 2013, with a registered capital of 5 million yuan. Its business scope includes technology development of Internet, Internet of Things, social network and network data. Design, development and sales of mobile phone communication products and mobile phone communication accessories; Sales of mobile power supplies, chargers, power adapters, electronic components, electrical appliances, mobile phone accessories; Computer software and hardware technology development, technical consulting, etc. The shareholders are Chen Aijuan and Chen Haipeng.

The leasing company provided a lawyer's fee invoice of 40,000 yuan, and claimed 20,000 yuan in this case. It also claims notary fees and the cost of purchasing infringing products, and also confirms that the above fees are not only for this case. The leasing company requested the court to determine the amount of compensation according to law.

The original trial court held that: this case is a dispute over infringement of utility model patent rights. After the patent was authorized, it paid the annual fee on time and should be protected according to law. In this case, the alleged infringement of Mori Tree Qiang Company and Youdian Company occurred in May 2020, and there is no evidence to prove that the alleged infringement continued after June 1, 2021, so the patent Law amended in 2008 applies to this case. Combined with the defense opinions of both parties in this case and the facts ascertained by the original trial court, the focus of the dispute in this case is: (1) whether Mori Tree Strong Company and Youdian Company carried out the act of manufacturing, selling and promising to sell the accused infringing products. (2) Whether the patent invalidity defense of Mori Shuqiang Company and Youdian Company can be established.

Regarding the first focus of the dispute, the leasing company accused Mori tree Strong Company and Superior Power Company of jointly implementing the act of manufacturing, selling and promising to sell the accused infringing products. According to the notarial certificate, credible time stamp certification, and physical evidence of the accused infringing products submitted by the leasing company, the accused infringing products are marked with "Youdian iot" and "Manufacturer: "Shenzhen Youdian iot Technology Co., LTD.", the leasing company purchased the accused infringing products in the Alibaba store "Shenzhen Youdian iot Technology Co., LTD.", which is sufficient to determine that Youdian Company implemented the act of manufacturing, selling and promising to sell the accused infringing products. The outer packing box of the accused infringing products is printed with the company name and company address of Mori Shuqiang Company, and the delivery address of the accused infringing products is displayed as "×× Industrial Park ××, ×× Street, Longhua District, Shenzhen City". Mori Shuqiang Company confirmed that it shares the same factory building with Youdian Company, and Chen Aijuan, legal representative of Youdian Company, is also a shareholder of Mori Shuqiang Company. The general manager of Mori tree strong company and Youdian company is Zhu Manju. In the introduction of Youdian Company's web page, the front desk photos and workshop photos of Mori Tree Strong Company are also used. The above evidence is sufficient to prove that Mori Tree Strong company and Youdian company have mixed operation and jointly implemented the act of manufacturing, selling and promising to sell the accused infringing products. Mori tree strong company said that the packaging box may be taken by others, it did not implement manufacturing, sales behavior, did not provide any contrary evidence, the original trial court did not accept.

Article 22 of the Patent Law amended in 2008 stipulates that inventions and utility models for which patent rights are granted shall possess novelty, inventiveness and practicality. Novelty means that the invention or utility model does not belong to the prior art; Nor has any entity or individual filed an application with the patent administration department under The State Council before the date of filing for the same invention or utility model, which is recorded in the patent application documents published or published after the date of filing. Creativity means that compared with the prior art, the invention has outstanding substantive features and significant progress, and the utility model has substantive features and progress. According to the above provisions, legally protected patent rights should be legal and valid, and the rights of the patentee should be relatively stable, and the patentee has the right to implement its patent and prohibit others from implementing its patented technology without permission, so as to provide the necessary incentives for the inventor. However, for the technical scheme that does not meet the conditions of patent authorization and should not be legally protected, and the accused infringer also explicitly argues that the accused act does not constitute infringement or that it should not be liable for infringement, if it still supports the relevant patentee to prohibit others from implementing it, it will be obviously unfair and contrary to the legislative purpose of the patent law. In this case, the leasing company applied for the patent involved and the associated patent on the same day, the purpose of the invention of both are to charge mobile phones or digital products, except for the external power supply, the former is a USB connector, the latter is an AC plug, and the other technical characteristics recorded in the claim 1-7 are completely consistent, and the associated patent is not creative because of the claim 1-7. It has been declared invalid on August 7, 2019, and the invalid decision considers that the "device interface used to connect to 220V AC power" in file 1 is equivalent to disclosing the AC plug of the associated patent, which can also evaluate the USB plug of the patent involved. Utility model patent applications can be granted patents without substantive review, and in the field of charging, the use of USB plug or AC plug to connect the external power supply is public knowledge, so the utility model patent and the associated patent are essentially the same technical solution. The conclusion of the invalidation examination of the associated patent can be used as the basis for judging whether the patent involved meets the authorization conditions, and may also have a substantial impact on whether the utility model patent right should be granted civil protection. In this case, the associated patent right has been found to be uncreative in claims 1-7 through the patent invalidation request procedure and administrative litigation procedure, and has been declared invalid. The comparison documents used in the invalid procedure and the specific analysis of the creativity related to the comparison with the associated patents also show that the patents involved do not have substantive characteristics and progress compared with the prior art. Under such circumstances, if the patent invalidation procedure and subsequent administrative proceedings are still required, the dispute resolution costs of the parties are obviously increased, judicial and administrative resources are consumed, and the needs of the people for dispute resolution cannot be met. Taking the above circumstances into consideration, the patent involved in the alleged infringement by the leasing company obviously or is highly likely to belong to the technical solution that should not be granted patent authorization, and it does not belong to the legitimate rights and interests protected by the patent law, and the patent invalidity defense of Mori Shu Qiang Company and You Power Company is established. However, this case only adopts the patent invalidation defense of Mori Junqiang Company and Youdian Company. When examining whether the patent invalidation defense is established, it inevitably involves the examination of whether the patent involved conforms to the authorized standards of the patent law, and the determination of this case is only effective in the sense of individual cases. If the company wants to obtain the worldwide effect of the invalidation of the patent right, it still needs to file an invalidation request with the State Intellectual Property Office in accordance with the relevant provisions of the Patent law. To sum up, the patent claim 1 involved in the case cannot be used as the right basis for the leasing company to request protection, and all the litigation claims made by the leasing company according to the patent claim 1 involved in the case should be rejected.

In accordance with the provisions of Article 22 and paragraph 1 of Article 59 of the Patent Law amended in 2008 and Article 64 of the Civil Procedure Law of the People's Republic of China (amended in 2017), the court of original instance ruled that all claims of Shenzhen Rendian Intelligent Technology Co., Ltd. were rejected.

In the second trial, none of the parties presented new evidence

The original trial court found that the facts were true, and the court confirmed them.

After trial, the court also found that: The trusted time stamp certification provided by the leasing company in the original trial shows that on July 9, 2021, the leasing company searched for "Shenzhen Youdian Internet of Things Technology Co., LTD." on the Alibaba platform, the store was still selling "Youdian USB shared charging line hotel shared charger Internet cafe KTV one tow three scan code charging line OEM" accused of infringing products. "10000 per day" is displayed in the product page.

It is recorded in paragraph [0013] of the patent specification that the utility model combines the dynamic password technology on the basis of the traditional USB cable to realize the charging state controlled by the dynamic password, and the mobile phone APP can connect to the server to obtain the dynamic password, so as to facilitate rental management, charge per time or charge per time, and reduce the purchase cost of the user. It is recorded in paragraph [0017] that, with reference to Figure 1 and Figure 2, the dynamic password USB cable of the utility model comprises a USB connector 1, a dynamic password controller 3 and a charging interface 4, which are successively connected. It is recorded in paragraph [0018] that USB connector 1 is used to plug into the USB interface with 5V DC output to obtain 5V DC output, dynamic password controller 3 controls the charging interface 4 power output state, and charging interface 4 is used to plug into mobile phones or other digital products that need to be charged.

It is recorded in paragraph [0013] of the associated patent specification that the utility model combines the dynamic password technology on the basis of the traditional charger to realize the charging state controlled by the dynamic password, and the mobile phone APP can connect to the server to obtain the dynamic password, so as to facilitate rental management, charge per time or charge per time, and reduce the purchase cost of the user. It is recorded in paragraph [0017] that, with reference to Figures 1 and 2, the dynamic password wall charger of the utility model comprises an AC plug 1, a power adapter module 2, a dynamic password controller 3 and a charging interface 4, which are successively connected. Power adapter module 2 depresses the AC power supply to the low-voltage DC output. Dynamic password controller 3 controls the power output status of the charging port 4. The charging port 4 is used to plug the mobile phone or other digital products that need to be charged.

For related patents, after the Beijing Intellectual Property Court rejected the lawsuit request made by the leasing company for refusing to accept the review decision No. 41299 of the State Intellectual Property Office, the parties did not file an appeal, and the decision has taken legal effect.

During the trial of the second instance, Mori Shuqiang Company submitted a request for invalidation of the patent right to the State Intellectual Property Office (hereinafter referred to as the patent right confirmation procedure), which was accepted by the State Intellectual Property Office on May 13, 2022, and the evidence of Mori Shuqiang Company's request for invalidation of the patent involved was the same as the examination decision No. 41299, and the reasons for invalidation were basically the same.

After the court clarified the possible ways to deal with the stability of the patent rights involved in the case according to law, the leasing company voluntarily made the following commitments: If the patent right or patent claim involved in the patent right confirmation procedure is confirmed invalid by the people's court's effective judgment document or the invalidation request review decision that has not been filed within the legal period, the leasing company waives the basis of the Patent Law of the People's Republic of China (amended in 2020) in this case. The rights and benefits of Article 47, paragraph 2, shall be immediately returned to all benefits, such as patent infringement damages and reasonable litigation expenses, obtained from Moriki Keihiro Company and Upower Company as a result of the litigation in this case. And pay interest calculated from the date of benefit to the date of return based on the loan market quotation rate (LPR) published by the National Interbank Lending Center authorized by the People's Bank of China for the same period. Mori tree Strong Company, Youdian Company also voluntarily made the following commitments: If the people's court in this case, at the request of Mori Shuqiang Company and Youdian Company, rules to suspend the lawsuit or reject the lawsuit of the leasing company on the grounds of insufficient stability of the patent right involved, However, the patent right or patent claim involved in the patent right confirmation procedure is confirmed to be valid by the effective judgment document of the people's court or the examination decision of the request for invalidation of administrative proceedings not filed within the statutory time limit, In addition, when the alleged infringement in this case is subsequently resumed for trial or the effective judgment of the patent infringement proceedings separately filed by the leasing company determines that the infringement constitutes an infringement of the patent in question, Moriki and UPower agree to pay all the infringement damages and reasonable litigation expenses payable before the effective judgment is made. The interest calculated from the date of the decision to suspend the lawsuit or dismiss the lawsuit until the date of the effective decision that the patent infringement is found to constitute the loan market quotation rate (LPR) published by the National Interbank Lending Center authorized by the People's Bank of China shall be paid, and the above-mentioned interest shall be included in the calculation of the principal when the effective decision is executed.

The Court holds that according to the parties' defense opinions, the focus of dispute in the second instance of this case is: (1) whether the original trial court applied the patent Law amended in 2008 correctly; (2) Whether the so-called patent invalidity defense advocated by Mori Tree Qiang Company and Youdian Company should be supported and the follow-up treatment of the case.

(1) Whether it is correct for the original trial court to apply the Patent Law amended in 2008

The company argued that the infringement in this case lasted beyond June 2021, and the patent law amended in 2008 should not be applied.

In this regard, the Court considers that the Patent Law amended in 2020 has come into force on June 1, 2021. The credible time-stamp certification provided by the leasing company in the original trial showed that Youdian was still selling the accused infringing products in its Alibaba store until July 9, 2021, and the original trial court accepted the evidence and found out the relevant facts, that is, the alleged infringement facts claimed by the leasing company in the case actually lasted until June 1, 2021. Therefore, the Patent Law as amended in 2020 shall apply in this case. The original trial court made a mistake in applying the patent Law amended in 2008, but it did not affect the substantive decision of the first instance of this case.

(2) Whether the so-called patent invalidity defense advocated by Mori Tree Qiang Company and Youdian Company should be supported and the follow-up treatment of this case

In the original trial, Mori tree Strong Company and Youdian Company clearly advocated the so-called patent invalidation defense, believing that because the related patents were declared invalid, the patent involved did not have the requirements for patent authorization, according to which all the litigation claims of the leasing company should be rejected. The original trial court upheld the so-called patent invalidity defense of Mori Tree Strong Company and Youdian Company. In the second instance, the leasing company insisted that the related patent rights were declared invalid and the patent rights involved were filed this patent confirmation procedure did not affect the trial of the case, and the court of second instance should continue to try the case, revise the judgment and determine the patent infringement and order compensation; Mori tree Strong company and superior power company believe that the patent rights involved should be invalid, and the court of second instance should maintain the judgment of first instance or rule to suspend the lawsuit or reject the lawsuit of the leasing company. In this regard, the court comments as follows:

First, the so-called patent invalidation defense in this case is only a self-named defense claim of the parties, which should generally point to the stability of patent rights in patent infringement cases. Different from the prior art defense and the legal source defense, the so-called patent invalidation defense is not a patent infringement defense explicitly stipulated in China's patent law and other laws, administrative regulations or judicial interpretations, nor is it a patent infringement defense that has been generally recognized or widely applied in China's judicial theory and practice. The Court hereby refers to the "so-called patent invalidation defense" to refer to the relevant defense claims of the parties in this case. In this case, the so-called patent invalidation defense proposed by Mori Tree Strong Company and Youelectric Company is intended to argue that the stability of the patent involved is insufficient. If you want to name it in theory or practice, you can consider the name of the patent stability defense. Of course, the court does not deny that the patent right is declared invalid according to law during the trial of patent infringement cases, there may also be a real defense of patent invalidation, and the accused infringer can claim to reject the right holder's lawsuit request or rule to reject the right holder's lawsuit.

Second, in the trial of patent infringement cases, when there is doubt or dispute about the stability of the patent involved, the people's court can conduct a certain limited review. The right not to abuse is the embodiment of the principle of honesty and credit, is the basic requirement of exercising civil rights. In patent infringement cases, the stable and effective existence of patent rights is the premise and basis of hearing patent infringement cases. Under specific circumstances, such as the claim for protection is obviously unclear so that the scope of protection cannot be determined, infringement of others' legal prior rights to obtain patent rights, etc., may constitute abuse of rights. At this time, if the people's court turns a blind eye to the defense of abuse of rights or patent stability raised by the accused infringer, and avoids trial, it still finds that the accused infringer bears infringement liability, which obviously violates the principle of fairness and is not conducive to encouraging real valuable inventions and creations. Therefore, in this sense, the defense of the accused infringer on the stability of the patent right is not impossible for the people's court to examine in any sense in patent civil infringement cases. However, it should be emphasized that under the current legal framework of our country, the patent administration department of The State Council is responsible for the examination of the request for invalidation of the patent right. Therefore, in the trial of patent infringement cases, the people's court may conduct a certain limited examination on the basis of examining whether the patentee has a legitimate and reasonable exercise of the right of action, but it cannot determine and judge the validity of the patent right itself. If the public, including the accused infringer, questions the validity of the patent right itself, it shall still request the patent administration department under The State Council to declare the patent right invalid through the patent right confirmation procedure.

Third, in the case of doubt or dispute over the stability of the patent rights involved, the people's court can make appropriate treatment of the subsequent trial procedures at its discretion. According to the provisions of relevant laws and judicial interpretations, when there is doubt or dispute about the stability of the patent right involved in the trial of a patent infringement case, the people's court can at least continue the trial and make a judgment, ruling to suspend the lawsuit, ruling to reject the lawsuit. Which method should be adopted mainly depends on the preliminary judgment of the people's court on the stability of the patent right involved. Generally speaking, the stability of patent rights that have been examined and judged by the patent administration department under The State Council is relatively strong, and the people's court can usually continue to hear infringement cases and make judgments. For patent rights that have not been examined and judged by the patent administration department under The State Council in substance and other patent rights that have a high probability of being declared invalid, the stability of which is relatively insufficient, the people's court may, in accordance with the relevant provisions of judicial interpretation, order the suspension of litigation in the infringement case; Where the stability of a patent right that has been declared invalid by the patent administration Department under The State Council but has not yet been determined to have legal effect is obviously insufficient, the people's court may, in accordance with the provisions of Article 2, paragraph 1, of the Interpretation of the Supreme People's Court on Several Issues concerning the Application of Law in the Trial of Patent Infringement Disputes (II), rule to reject the infringement case; Where there is evidence that a patent right is highly likely to be declared invalid and its stability is obviously insufficient, although it has not been declared invalid by the patent administration department under The State Council, the people's court may rule to suspend the litigation in respect of the infringement case when the patent right confirmation procedure has been initiated. It may also, when necessary, make an order to reject the lawsuit with reference to Article 2 of the Interpretation of the Supreme People's Court on Several Issues Concerning the Application of Law in the Trial of Patent Infringement Disputes (II).

Fourth, based on the existing facts and evidence in this case, it can be concluded that the stability of the patent involved is obviously insufficient. The case has been ascertained that the patent owner of the leasing company applied for the associated patent on the same day as the application for the patent involved, and the associated patent has been declared invalid by the legally effective examination decision No. 41299. Compared with the patent involved in the case, the technical characteristics of the associated patent are only that the patent involved is "a dynamic password USB cable, including a USB connector; It is characterized that the power output end of the USB connector is connected to the charging interface through a dynamic password controller. The associated patent is "a dynamic password wall charger, including an AC plug, a power adapter module connected to the AC plug; It is characterized that the output end of the power adapter module is connected to the charging interface through a dynamic password controller. Other technical characteristics of the two are the same. For the above distinctive technical characteristics, according to the patent specification and the associated patent specification, whether it is USB cable or the charger with AC plug is the prior art, and the USB connector is used to obtain 5V direct current for charging digital products; The AC plug is used to obtain 220V or 110V AC power from the mains socket. The power adapter module depressurates the AC power supply to the low-voltage DC output. After the AC plug is connected to the power adapter, the AC plug is used to provide low-voltage DC output power for charging digital products. Mori tree Strong Company and Youdian company contend that the above distinctive technical characteristics have the same role and effect in the patents involved and related patents for technical personnel in the field, which is a direct replacement of customary means. In the course of the second trial of this case, Mori Shuqiang Company has also made a request for invalidation of the patent rights involved to the State Intellectual Property Office, and the evidence submitted is the same as the evidence in the review decision No. 41299, and the reasons for invalidation are basically the same, and the State Intellectual Property Office has accepted it. The Court believes that based on the above patents and related patents are utility model patents authorized without substantive examination, the technical characteristics of the two are only different from the USB plug and AC plug and the power adapter used in the industry and the market common, and the two are applied on the same day. In the case that the associated patent has been declared invalid by the State Intellectual Property Office and Morishuqiang Company and Youda Company have also made a request for the invalidation of the patent in question to the State Intellectual Property Office, the possibility of the patent in question being declared invalid is very high, and its patent stability is obviously insufficient.

Fifth, the promise or statement of interest compensation voluntarily made by both parties in this case concerning the stability of the patent involved is conducive to the substantive balance of each other's interests, and the people's Court may also take this as a consideration when dealing with the subsequent trial procedure. The current legislation and judicial interpretation have made certain arrangements for the connection between the patent infringement procedure and the patent right confirmation procedure when they are separated, crossed or carried out successively. Article 47 (2) of the Patent Law amended in 2020 provides that: "The decision to declare a patent right invalid shall not have retroactive effect on the patent infringement judgments and conciliation statements made and executed by the people's court before the declaration of the patent right invalid, the patent infringement dispute settlement decisions that have been performed or enforced, and the patent licensing contracts and patent right assignment contracts that have been performed." However, compensation shall be paid for any loss caused to others by the patentee's malice." Articles 4 to 8 of the Provisions of the Supreme People's Court on the Application of Law in the Trial of Patent Dispute Cases stipulate whether to suspend litigation in the case of overlapping patent infringement procedures and patent right confirmation procedures. Article 2 of the Interpretation of the Supreme People's Court on Several Issues concerning the Application of Law in the Trial of Patent Infringement Disputes (II) provides that the people's Court may, in the course of patent infringement proceedings, simply make a ruling to reject an action brought by the right holder, and may bring another action when the decision of invalidation is revoked. It should be said that the above provisions of laws and judicial interpretations comprehensively consider procedural justice, dispute resolution efficiency and substantive justice. However, due to the interposition of the two procedures, the unpredictability of patent validity and the subjectivity of relevant judgment factors, in practice, it is still possible for the patent right to be declared invalid after the infringement award has been executed. As a result, the right holder actually obtains the benefits that should not be obtained, and the infringement dispute may be protracted due to waiting for the result of the right confirmation, the right holder can not get timely and effective legal relief, and the accused infringer is also hesitant and confused about whether to continue production and expand investment, which will not only directly affect the interests of the parties. It will also indirectly affect the vitality of technological innovation and market investment of enterprises and society. Therefore, how to better realize the efficient and orderly connection between patent infringement procedures and patent right confirmation procedures is still a problem that needs to be explored and perfected in theory, rules and practice.

In this case, in the case that the stability of the patent right involved is doubtful and the patent right confirmation procedure has been started, after the court clarified the possible direction and consequences of the relevant procedures, the parties in this case respectively made corresponding interest compensation commitments for the possible results of the patent right confirmation procedure and the adverse impact that may be caused to the interests of the other party. The core of the commitment of the patentee is that it will return all the actual proceeds of the infringement case and pay interest when the patent right is declared invalid, which can effectively ensure that the actual loss of interests of the accused infringer can be recovered after the patent right is declared invalid in the case of patent infringement proceedings. The core of the commitment of the accused infringer is that when the patent right is confirmed to be valid, it will pay all the compensation and interest payable in the infringement case, which can effectively ensure that the loss of interests caused by the continuous infringement of patent rights can be compensated in the case of the patent right confirmation procedure.

As for the above commitments, the court held after examination that the parties' commitments to compensate for their respective interests were voluntary disposition of their respective civil rights and expected interests, the content of which did not violate the provisions of the law, and the commitments were reasonable expectations and disposition of each other's interests on the basis of full consideration of the possible direction and consequences of the relevant procedures. It can better protect and reasonably balance the procedural interests and entity justice of the parties under the cross-proceeding of the patent infringement procedure and the patent right confirmation procedure, in line with the principle of fairness and good faith, and has practical operability. At the same time, in the case that the parties voluntarily make the promise of compensation for the interests of the stability of the patent right, no matter which of the three handling methods of continuing the trial and making a judgment, ruling to suspend the lawsuit, ruling to reject the lawsuit, the people's court can protect the interests of both parties in a better and effective balance in essence. It is also conducive to the people's courts making appropriate choices on follow-up handling methods in light of specific cases. Therefore, the Court not only recognizes the relevant commitments of the parties in this case, but also wants to make it clear through this case that the Court encourages the parties in patent infringement cases to actively make relevant benefit compensation commitments or statements based on the consideration of fairness and good faith when the stability of the patent involved is doubtful or disputed. Such commitments or statements can be two-way or unilateral. As long as it is voluntary, does not violate the law and is conducive to balancing each other's interests, it should be affirmed and encouraged. The Court also hopes that the Court of first instance hearing patent infringement cases will also take the initiative to make relevant explanations to the parties and actively try similar practices.

Based on the above analysis, the stability of the patent right involved in the case is obviously insufficient, and the interest compensation promise made by the accused infringer on the stability of the patent right involved in the case can also guarantee the corresponding interests of the patentee when the patent right is confirmed to be valid after the lawsuit is rejected. This case may refer to the provisions of Article 2, paragraphs 1 and 2 of the Interpretation of the Supreme People's Court on Several Issues Concerning the Application of Law in the Trial of Patent Infringement Disputes (II), and be handled according to the ruling rejecting the lawsuit. The patentee may, after the State Intellectual Property Office has made a decision to maintain the validity of the patent right in question and determined that the legal effect has taken place, bring a separate lawsuit, and may claim rights according to the interest compensation promise made by the accused infringer in the case. The analysis and judgment of the original judgment on the stability of the patent right involved in the case is not obviously wrong, but the direct determination that the patent invalidation defense of the accused infringer is established and the judgment accordingly rejects the lawsuit request of the leasing company lacks legal basis.

In summary, the leasing company's grounds of appeal were partially established, but its appeal request was not supported. The fact determination of the original trial judgment is basically clear, but the application of law is wrong and should be corrected. With reference to the Interpretation of the Supreme People's Court on Several Issues Concerning the Application of Law in the Trial of Patent Infringement Disputes (II), Article 2, paragraphs 1 and 2, and in accordance with the provisions of Article 122 and Article 157, Paragraph 1, paragraph 3, of the Civil Procedure Law of the People's Republic of China, the Court decides as follows:

1. Revoke the civil judgment No. 372 of the Intermediate People's Court of Shenzhen, Guangdong Province (2021) Yue03 Minchu;

2. Reject the lawsuit of Shenzhen Rendai Intelligent Technology Co., LTD.

The first instance case acceptance fee of 13,800 yuan, returned to Shenzhen rental intelligent Technology Co., LTD. The appellant Shenzhen Rendian Intelligent Technology Co., Ltd. paid 13,800 yuan in advance for the second-instance case acceptance fee to be returned.

This ruling is final.Chief Judge Yuan Xiaoshuang

Judge Zhang Benyong

Judge Zhan Jingkang

June 22, 2002

Judge assistant Hao Xiaojuan

Clerk Wang Ni

Points of judgment

Case number

(2022) Zhimin End 124, Supreme Law

rationale

Disputes over infringement of patent rights for utility models

Common chamber

Presiding Judge: Yuan Xiaoshuang Presiding Judge: Zhang Benyong, Zhan Jingkang

Judge Assistant: Hao Xiaojuan

Clerk: Wang Ni

Date of adjudication

June 22, 2022

Patent in question

Utility model patent for "a dynamic password USB cable" (201720131230.0)

Key word

Disputes over patent rights for utility models; Patent invalidation defense; Stability of patent rights; A promise.

Serve as a person

Appellant (original plaintiff) : Shenzhen Rendian Intelligent Technology Co., LTD.; Appellee (original defendant) : Shenzhen Senshuqiang Electronic Technology Co., LTD.; Appellee (defendant of original trial) : Shenzhen Youdian iot Technology Co., LTD.

verdict

1. Revoke the civil judgment No. 372 of the Intermediate People's Court of Shenzhen, Guangdong Province (2021) Yue03 Minchu; 2. Reject the lawsuit of Shenzhen Rendai Intelligent Technology Co., LTD. Original judgment main article: Reject the lawsuit request of Shenzhen Rendian Intelligent Technology Co., LTD.

Law of the case

Interpretation of the Supreme People's Court on Several Issues Concerning the Application of Law in the Trial of Patent Infringement Disputes (II) Article 2, Paragraphs 1 and 2; Civil Procedure Law of the People's Republic of China, Article 122, Article 157, paragraph 1, subparagraph 3.

Legal question

In a patent infringement case, how to deal with the defense of patent invalidity raised by the accused infringer

Referee's opinion

1. The so-called patent invalidation defense is only a self-named defense claim of the parties, which should generally point to the stability of the patent right in patent infringement cases. Different from the prior art defense and the legal source defense, the so-called patent invalidation defense is not a patent infringement defense explicitly stipulated in China's patent law and other laws, administrative regulations or judicial interpretations, nor is it a patent infringement defense that has been generally recognized or widely applied in China's judicial theory and practice. The so-called patent invalidation defense put forward by the accused infringer is intended to claim that the stability of the patent involved is insufficient. If you want to name it in theory or practice, you can consider the name of the patent stability defense. 2. When there is doubt or dispute about the stability of the patent right involved in the trial of a patent infringement case, the people's court may conduct a certain limited review, but it cannot determine and judge the validity of the patent right itself. (3) Encourage the parties to a patent infringement case to actively make relevant promises or declarations of benefit compensation based on the consideration of fairness and good faith when the stability of the patent involved is in doubt or in dispute, such promises or declarations can be two-way or unilateral, as long as the parties are voluntary, not contrary to the law and conducive to balancing each other's interests, It should be affirmed and encouraged. 4. In a patent infringement case, if the stability of the patent involved is obviously insufficient, the interest compensation promise made by the accused infringer regarding the stability of the patent involved can guarantee the corresponding interests of the patentee when the patent right is confirmed to be valid after the lawsuit is rejected. May consider referring to the interpretation of the Supreme People's Court on Several Issues concerning the Application of Law in the Trial of Patent Infringement Disputes (II) Article 2, paragraphs 1 and 2, in accordance with the ruling to reject the lawsuit. The patentee may, after the State Intellectual Property Office has made a decision to maintain the validity of the patent right in question and determined that the legal effect has taken place, bring a separate lawsuit, and may claim rights according to the interest compensation promise made by the accused infringer in the case.

Note: This summary is not an integral part of the ruling and has no legal effect.