The SPC recently concluded an appeal in an administrative dispute concerning the invalidation against an invention patent. The Court overturned both the first instance decision and the CNIPA's ruling. The case makes clear that when assessing inventiveness, courts and the CNIPA should avoid directly or simply assuming that a patented technical solution is obvious merely because it operates on the same principle. Inventiveness should not be easily dismissed with phrases such as "would have been easily thought of" or "would have been readily available." Furthermore, when the same patent faces repeated invalidation challenges, the CNIPA must carefully evaluate the relevant findings of prior decisions, and the Court provided a clear standard for doing so.
Company A was the patentee of the invention patent in suit. Two other companies, Company B and Company C, separately filed requests to invalidate the patent. The CNIPA consolidated the requests for examination and issued a decision declaring the patent entirely invalid on the ground that all the claims of the patent lacked of inventiveness. Company A filed a lawsuit challenging the decision, but the first instance court dismissed its claims. Company A then appealed to the SPC.
During the second instance, it was found that the CNIPA had previously issued nine other invalidation decisions in response to ten separate invalidation requests, all of which had maintained the validity of the patent.
The SPC held that when assessing inventiveness, courts and the CNIPA should avoid simply assuming that a patented solution is obvious merely because it is based on the same principle (as prior art). Instead, the focus must be on examining and comparing the differences and connections between the patent in suit and the closest prior art in terms of the technical problem to be solved, the technical means adopted, and the technical effects achieved. Even where the underlying principle is the same, if the patent addresses a different technical problem, adopts different specific technical means, and achieves different technical effects, then without evidence or a clear explanation showing that the distinguishing features were common general knowledge or conventional means in the art, and where such features are not disclosed in the prior art for solving the relevant technical problem, the inventiveness of the patent should not be dismissed with phrases such as "would have been easily thought of" or "would have been readily available."
Claim 1 of the patent in suit adopted a structure consisting of a ring shaped permanent magnet at the base and a single permanent magnet as the levitating body above. By setting the upper surface of the ring magnet with a magnetic pole opposite to that of the lower end of the levitating magnet, the design used the magnetic force generated in a specific area outside the center of the ring magnet to keep the levitating magnet suspended at a predetermined position above the base. This achieved both vertical gravity balance and tilt resistance. A horizontal control device was then added to allow the levitating magnet to remain stable at its reference position while also being able to rotate freely. In contrast, the prior art reference relied on by the CNIPA adopted a structure consisting of a ring magnet above and a levitating body below, along with an additional electromagnet. That reference disclosed that a ring magnet can produce both attractive and repulsive magnetic forces. However, its overall technical solution used the magnetic attraction of the ring magnet combined with an electromagnet to achieve a controlled and adjustable dynamic magnetic attraction based levitation. The repulsive force generated in the specific area outside the center of the ring magnet served mainly as a cushion to prevent the levitating body from colliding, rather than to balance gravity. Moreover, that technical solution did not require control of horizontal movement. The differences between the patent in suit and the prior art reference were not merely simple adjustments of relative positions. The two solutions differed in the way levitation was achieved, the specific technical means employed, and the technical effects obtained.
Based on these distinguishing technical features, the actual technical problem that claim 1 of the patent in suit solved was to provide an alternative technical solution that would allow a levitating body to achieve static vertical balance and tilt resistance while also being able to rotate freely in the horizontal plane. Another prior art reference only disclosed the distribution of magnetic field lines of a ring magnet but did not disclose any specific application. A third reference disclosed a horizontal servo system used in a different type of magnetic repulsion levitation system to correct horizontal drift. None of these prior art references provided a teaching that would lead a person skilled in the art to eliminate vertical electromagnetic control, use the repulsive magnetic force in a specific area outside the center of a ring magnet to balance gravity, and add a horizontal control device to manage horizontal movement, all while achieving both vertical balance and tilt resistance with free horizontal rotation.
In its second instance decision, the SPC specifically noted that when the same patent faces repeated invalidation challenges, the CNIPA must carefully evaluate the relevant findings of prior decisions. Each invalidation proceeding is an independent legal process. The evidence and grounds presented in a later proceeding must be different from those presented in prior proceedings and not merely substantially the same. Each case must be decided on its own evidence and grounds, and prior decisions have no binding effect in later proceedings. This follows from the principles of procedural fairness and case by case review. However, prior decisions, as legally effective administrative documents, do carry some legal significance in later proceedings.
First, Article 6 of the SPC's Judicial Interpretation (II) of Several Issues Concerning the Application of Law in the Adjudication of Patent Infringement Disputes expressly provides that patent examination files may be used as a basis for interpreting claims. The claim interpretations and patentee statements recorded in prior decisions are part of the examination file. Second, for matters where the CNIPA has discretion in invalidation proceedings, such as determining the knowledge level of a person skilled in the art or whether a technical teaching exists, the findings in prior decisions, while not absolutely binding, do reflect the applicable examination standards and give rise to reasonable expectations on the part of patentees and the public. When a later proceeding faces the same or similar technical issues and legal disputes, if the CNIPA reaches a finding that differs substantially from a prior decision, it must do so with greater care and fully assess the legitimacy and necessity of departing from the established standard. This ensures that the resulting decision is lawful, reasonable, and predictable.
With respect to the patent in suit, the SPC noted that several prior decisions had already considered prior art references disclosing the basic principles of the special magnetic field distribution of ring magnets and the use of magnetic repulsion or attraction to balance gravity for levitation. However, in each of those prior cases, the CNIPA ultimately found the patent to be inventive because of differences in the inventive concept or the specific technical solutions. Given this history, and in the absence of any evidence of common general knowledge or a sufficient explanation, the CNIPA's conclusion in the challenged decision that the distinguishing features central to the patent's inventive concept were "easily thought of" or "readily available" was not persuasive, especially when that conclusion was inconsistent with prior examination standards. Accordingly, the SPC held that the challenged decision and the first instance court's judgment erred in finding the patent lacking inventiveness. The Court revoked the first instance judgment and the CNIPA decision, and ordered the CNIPA to issue a new decision.
This second instance decision provides important guidance on the legal significance of prior invalidation decisions when the same patent faces repeated challenges. While affirming the principles of procedural fairness and case by case review, the decision also emphasizes the importance of maintaining public confidence in the patent system by promoting consistent and predictable examination standards. The decision provides a useful framework for resolving related disputes.
(2025) Zui Gao Fa Zhi Xing Zhong No. 959
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