Accusing Jiedong Shuangjun Rubber Machinery (renamed to Jieyang Shuangjun Rubber Machinery later) of infringing its ZL01806616.X patent, titled "tyre building drum provided with a turn-up device", VMI HOLLAND B.V. lodged a request to Guangdong Intellectual Property Office (GIPO), claiming that the accused party's products constitute all the technical features of Claim 1 and at least the supplementary technical features of the claims from 2 to 14.
After taking the case on June 23, 2014, GIPO performed on-scene investigation, two oral hearings and produced an on-scene comparison video prior to rendering its decision on April 8, 2015, holding that the technical solution of the accused products match all the technical features of Claim 1 of VMI's patent either literally or equivalently and ordering Shuangjun to cease the infringing act immediately. As Claim 1 owned the maximum protection scope, the GIPO decision did not treat and respond to VMI's arguments on Claims 2-14.
During this administrative adjudication, Shuangjun set up another war front by applying for invalidation of the patent in question on July 8, 2014. On December 4, 2014, Patent Reexamination Board under the then- State Intellectual Property Office (SIPO) sustained the validity of the patent in its No.24507 decision. In view of the strength of the patent, GIPO determined its overall protection scope by considering Claim 1, the claim that has the maximum protection scope.
The disgruntled Shuangjun then brought GIPO's decision to court, but would suffer another loss at the decisive second instance which upheld the GIPO decision. In a final decision of a separate lawsuit about damages, Guangdong High People's Court, on December 23, 2016, imposed injunction and damages upon Shuangjun.
Impact of the Case:
The case waded through intellectual property office adjudication and ensuing litigation of the first and second instance, invalidation and its ensuing litigation, litigation on damages of first and second instance, well characterizing the complexity of technical and legal issues of patent infringement disputes and to some extent the strength of proactive actions of patent administrative enforcement. Some basic principles of civil law and administrative law were employed during the trial of the administrative litigation, which would cast a long shadow on future patent law enforcement and administrative lawsuit.
(Editor Shao Jingjing)
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