In a second instance judgment upholding a patent invalidation administrative dispute, the Supreme People's Court (SPC) held that when determining the actual technical problem solved by an invention based on the technical effects achieved by the distinguishing features of the patent, if the patent specification contains relevant experimental data, the court must review the authenticity and reasonableness of that data and its logical correspondence to the technical effects. Only then can the court properly identify the actual technical problem solved by the patent and assess its inventiveness.
Company A was the patentee of the invention patent in suit. Claim 1 of the patent read as follows:
A method for producing granular compound fertilizer by high tower granulation, characterized in that it comprises the following steps:
A. for producing urea based compound fertilizer, mixing urea, other nitrogen fertilizer, phosphate fertilizer, potash fertilizer and filler in a weight ratio of 1.5 to 0 to 1.0 to 0 to 1.0 to 0 to 1.0 to 0 to 1.0, provided that the amounts of phosphate and potash are not both zero, and heating the mixture to 100 to 145 degrees Celsius in a melting mixer to form a molten slurry; or for producing nitro based compound fertilizer, mixing ammonium nitrate, other nitrogen fertilizer, phosphate fertilizer, potash fertilizer and filler in a weight ratio of 2.0 to 0 to 1.0 to 0 to 1.0 to 0 to 1.0 to 0 to 1.0, provided that the amounts of phosphate and potash are not both zero, and heating the mixture to 145 to 175 degrees Celsius in a melting mixer to form a molten slurry;
B. spraying the molten slurry through a rotary differential granulation spray head at the top of a high tower into the granulation tower, where the tower height is 80 to 125 meters, the tower body is a hollow cylinder with a bottom diameter of 10 to 25 meters, and the rotation speed of the spray head is 150 to 450 rpm; and
C. the slurry falls slowly to the bottom of the tower under the resistance of rising air and completes granulation.
Company B filed a request to invalidate the patent and submitted evidence including prior art reference 1, a Chinese patent disclosing a method for producing multi component compound fertilizers in low towers, and prior art reference 12, a published document. The CNIPA issued a decision maintaining the validity of the patent. Company B filed a lawsuit challenging the decision, asking the court to annul it and order the CNIPA to issue a new decision.
The first instance court held that the actual technical problem solved by an invention is determined based on the role the distinguishing features play in the technical solution and the technical effects they achieve. The CNIPA had identified the actual technical problem solved by claim 1 as "how to produce granular compound fertilizer using high tower granulation," which included the "high tower" feature itself, which would improperly make it more difficult to determine whether that feature was obvious. The first instance court found this to be clearly erroneous. When re-determining the technical problem, it is necessary to examine what technical effects the distinguishing features give the patent over the closest prior art. Accordingly, the first instance court found that the actual technical problem solved by claim 1 was simply to provide another technical solution for producing granular compound fertilizer. The first instance court revoked the CNIPA's decision and ordered it to issue a new decision. Company A appealed. The SPC affirmed the first instance court's decision.
The SPC held in its effective judgement that claim 1 of the patent contained two parallel technical solutions (A and B). Based on the disclosure of prior art reference 1, that reference disclosed a method for producing urea based granular compound fertilizer using low tower granulation. The raw material composition of that method was the same as that of solution A of claim 1, and the resulting product was the same. The patent specification stated that a "high tower" means a tower with a height of 45 to 125 meters, while prior art reference 1 referred to towers with heights of 15 to 45 meters as "low towers." The two ranges overlapped at 45 meters. Therefore, the distinguishing feature between solution A and prior art reference 1 was the tower height: 80 to 125 meters in the patent, versus 15 to 45 meters in the prior art.
The technical problem actually solved by an invention is the task of improving the closest prior art to achieve better technical effects. This technical problem can be identified as long as a person skilled in the art can learn from the specification that such effects are achieved. Any technical effect of the invention can serve as the basis for determining the actual technical problem, provided that the effect is brought about by the technical features of the invention or is necessarily produced by those features, and provided that a person skilled in the art can logically and clearly derive that effect from the patent specification or the prior art. Moreover, the identified technical problem must match the technical effects that the distinguishing features achieve in the invention. It should not be formulated as the distinguishing feature itself, nor should it contain guidance or hints pointing to that feature.
The technical effects described in the patent specification were essentially the same as those described in prior art reference 1. The performance parameters of the products obtained in Examples 1 and 3 of the patent were identical to those obtained in Examples 1 and 3 of the prior art reference. Thus, the technical effects of solution A of claim 1 were equivalent to those of the prior art. Accordingly, the first instance court correctly found that based on the distinguishing feature, the technical problem actually solved by solution A of claim 1 was to provide another technical solution for producing urea based granular compound fertilizer, and the finding was upheld. Furthermore, when determining the technical problem actually being solved based on the technical effects achieved by the distinguishing features, it is necessary to assess the correspondence between the experimental data in the patent specification and the claimed technical effects. In this regard, the authenticity and reasonableness of the experimental data and their logical relationship to the technical effects are essential prerequisites for a proper inventiveness analysis. The first instance court's judgement on these issues did not exceed the scope of the legal grounds and evidentiary combinations that Company B had raised during the administrative proceedings.
Regarding whether the prior art provided a technical teaching, the SPC held that when determining whether the claimed invention would have been obvious to a person skilled in the art, starting from the closest prior art and the technical problem actually solved by the invention, the question is whether the prior art as a whole provides some teaching. That is, does the prior art disclose applying the distinguishing feature to the closest prior art to solve the actual technical problem? If such a teaching exists, a person skilled in the art would be motivated to modify the closest prior art to arrive at the claimed invention. If the distinguishing feature is a conventional means in the field for solving that technical problem, or is disclosed as a solution to that technical problem in textbooks or reference books, then such a technical teaching is generally considered to exist.
This final decision provides important guidance on how to assess the technical effects of distinguishing features when determining the technical problem actually solved by an invention. It makes clear that where the patent specification contains relevant experimental data, the court must review the authenticity and reasonableness of that data and its logical relationship to the claimed technical effects. Only then can the technical problem actually be solved be properly identified, leading to a correct determination of inventiveness.
(2024) Zui Gao Fa Zhi Xing Zhong No. 1244
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