Inventiveness of the Subject Matter of a Design Patent Year 109 (2020) Min-Zhuan-Su-Zi No. 75

Case:

This case relates to Year 109 (2020) Min Zhuan Su Zi No. 75 Civil Judgment of the Intellectual Property and Commercial Court. The Judgement involves disputes in connection with the Copyright Act, the Patent Act, and the Fair Trade Act, and was made against the Plaintiff. This article aims to discuss the dispute over design patent infringement in the Judgment. As the Court ruled that the patent at issue should be revoked on the grounds of a lack of inventiveness, the Judgement did not further determine whether the product at issue fell within the scope of the patent at issue.

1. Brief introduction to the case 

The Plaintiff’s claims: The Defendant’s product at issue fell within the scope of the patent at issue. The Plaintiff, therefore, claimed damages from the Defendant and demanded removal of infringement.

The Defendant’s defense: There were grounds for revoking the patent at issue. The Defendant claimed that a lack of inventiveness of the subject matter of the patent at issue could be proved by a combination of the Defendant’s evidences 6 and 7, and that a lack of inventiveness of the subject matter of the patent at issue could be proved by a combination of the Defendant’s evidences 6 and 8.

Court judgement: The subject matter of Design Patent No. D179735, entitled “Outsole” and granted to the Plaintiff (patentee), (i.e., the patent at issue) lacked inventiveness. It was therefore determined that the patent right granted should be revoked. The claims related to the claimed design patent infringement were consequently denied.

The subject matter of the patent at issue is shown in the following figures:

(Source: figures of D179735, the patent at issue, cited from Year 109 (2020) Min Zhuan Su Zi No. 75)

2. Judge’s Opinions

(1). Combination of the Defendant’s evidences 6 and 7: While the Defendant’s evidence 6 does not disclose such features of the patent at issue as “the top portion being provided with a plurality of transverse ridges and wavy ridges, and the middle-to-rear section of the top portion being provided with a longitudinal ridge in the middle”, the Defendant’s evidence 7 already discloses the following features: the front end of the top portion of the outsole being provided with a plurality of transverse wavy lines, and the middle-to-rear section of the top portion being provided with a plurality of transverse ribs and a central longitudinal rib that extends through the transverse ribs. Although the Defendant’s evidence 7 is slightly different from the patent at issue in that the plural transverse ridges and wavy ridges of the latter intersect to a certain extent, this different design feature of the patent at issue is merely a simple modification of the Defendant’s evidence 7 and can be easily accomplished by a person of ordinary skill in the art by adding transverse stripes to the front end of the top portion of the outsole and wavy ribs to the middle-to-rear section of the top portion. Moreover, the modification does not produce any specific visual effect on the overall appearance of the subject matter of the patent at issue.

(2) Combination of the Defendant’s evidences 6 and 8: The Defendant’s evidence 6 already discloses the upwardly tilted front end of the outsole of the patent at issue and the features of the appearance of the bottom portion of the outsole. In addition, it can be seen in the top view of the Defendant’s evidence 8 that the Defendant’s evidence 8 already discloses that the front end of the top portion of the outsole is provided with a plurality of transverse wavy lines, that the middle section of the top portion is provided with two transverse ribs and two longitudinal ribs lying between the two transverse ribs, and that the middle-to-rear section of the top portion is provided with a plurality of transverse ribs and a central longitudinal rib that extends through these transverse ribs. While the Defendant’s evidence 8 is slightly different from the patent at issue in that the plural transverse ridges and wavy ridges of the latter intersect to a certain extent, this different design feature of the patent at issue is merely a simple modification of the Defendant’s evidence 8 and can be easily accomplished by a person of ordinary skill in the art by adding transverse stripes to the front end of the top portion of the outsole and wavy ribs to the middle-to-rear section of the top portion. Moreover, the modification does not produce any specific visual effect on the overall appearance of the subject matter of the patent at issue.

3. Analysis

Whether the subject matter of a design patent satisfies the inventiveness requirement does not hinge on the existence or non-existence of a difference in a certain detail. Even though the patent at issue is slightly different from the Defendant’s evidences 7 and 8 in that the patent at issue has “the feature that the plural transverse ridges and wavy ridges intersect to a certain extent”, the difference has been identified as a simple variation of the appearance of a conventional design (meaning the positions and numbers of certain features of the conventional design have been changed without producing a specific visual effect on the overall appearance of the design). It follows that the design of the patent at issue is viewed as easily conceivable in practice.

Besides, it has been pointed out in the Judgment that, with regard to whether a combination of the Defendant’s evidences 6 and 7 or of the Defendant’s evidences 6 and 8 was sufficient to prove a lack of inventiveness of the subject matter of the patent at issue, the Plaintiff disputed only the form of the subject matter of the Defendant’s evidence 6; that despite the Court’s repeated explanation, the Plaintiff did not challenge the sufficiency of the aforesaid combinations in proving a lack of inventiveness of the patent at issue; and that it was therefore determined that the Plaintiff did not dispute the sufficiency of the aforesaid combinations in proving a lack of inventiveness of the patent at issue. The foregoing may have contributed to the judge’s evaluation of evidence such that the Judgment was made against the Plaintiff.

Moreover, during the patent lawsuit, the Defendant filed an application for invalidation of the patent at issue. In fact, there have been several invalidation applications involving the patent at issue, in which No. 105301814N03 (with “N03” indicating the third invalidation application) also cited a combination of the Defendant’s evidence 6 (citation 2) and the Defendant’s evidence 7 (citation 3) or a combination of the Defendant’s evidence 6 (citation 2) and the Defendant’s evidence 8 (citation 4) as evidence and was approved by the competent authority. Dissatisfied with the approval, the Plaintiff applied for administrative remedy and filed an administrative litigation, whose Year 109 (2020) Xing Zhuan Su Zi No. 18 Judgment is to the following effect: the patent at issue is found to lack inventiveness on the grounds that “the feature that the plural transverse ridges and wavy ridges intersect to a certain extent” is a simple modification of the prior art, and that the modification does not produce a specific visual effect on the overall appearance of the patent at issue. According to the judgment of the administrative litigation, the Plaintiff still emphasized the incompetency of the Defendant’s evidence 6 (citation 2) as evidence and based his defense on the difference between the patent at issue and the Defendant’s evidence 6 (citation 2). Also, the same judgment seems to show that the Plaintiff made no claim of, or defense for, the specific change in visual effect of the overall appearance of the outsole that is attributable to the difference between the patent at issue and the Defendant’s evidence 7 or 8, i.e., “the feature that the plural transverse ridges and wavy ridges on the top side of the outsole intersect to a certain extent”.

While the judge may not accept the claim that “the feature that the plural transverse ridges and wavy ridges intersect to a certain extent” produces a specific visual effect, making such a claim will at least prevent the very feature from being directly determined as undisputed. For example, it may be feasible to state that “the top side in either of the Defendant’s evidences 7 and 8 is of a purely functional design, which nevertheless produces an abrupt change in visual effect between the front and rear sections”, and that the patent at issue, by contrast, eliminates the perceivable regional difference between the front and rear sections by adopting “the feature that the plural transverse ridges and wavy ridges intersect to a certain extent”, with the same feature producing a specific visually blending effect. A statement such as this may be able to provide reasonable grounds for viewing the patent at issue as satisfying the inventiveness requirement. (The cases associated with Year 109 (2020) Min Zhuan Su Zi No. 75 and with Year 109 (2020) Xing Zhuan Su Zi No. 18 were both appealed to the Supreme Court and are in the course of trial.) (November 8, 2021)