Author: Zhou YingpingIntellectual Property Finance.
Following the public trial of a number of cases with different causes of action, such as administrative disputes over the invalidation of invention patents and disputes over infringement of invention patents by the Intellectual Property Tribunal of the Supreme People's Court in April this year, the patent dispute between Gree and Oaks has recently ushered in the latest development. On December 7, the Supreme People's Court made a final judgment on the administrative dispute over the invalidation of the invention patent rights of Zhuhai Gree Electric Appliance Co., Ltd. and the State Intellectual Property Office and Oaks Air Conditioning Co., Ltd., rejecting the appeal of Oaks and the State Intellectual Property Office, and upholding the determination of the first-instance judgment that the independent claims of the patent involved in the case should be invalid. Based on this judgment, the Supreme People's Court made final rulings on the four patent infringement dispute cases between Gree and Oaks one day later, revoking the original judgments of the Ningbo Intermediate People's Court of Zhejiang Province (two cases) and the Hangzhou Intermediate People's Court of Zhejiang Province (two cases), and rejecting the lawsuit filed by Oaks (click to read the original article**1 administrative judgment + 4 civil rulings).
The above-mentioned ruling of the Supreme Court means that the situation of the sky-high price dispute between Gree and Oaks, which has lasted for nearly five years, has been completely reversed, and Oakes will also lose the cumulative excess of 2$200 million in damages. Judging from the latest judgment, the SPC has given a further negative evaluation of the validity of the compressor patent in question, which is the fundamental reason why Oakes' infringement accusation was ultimately frustrated. Looking back at the history of disputes between the two parties, similar "problematic patents" have become the lifeline for Oakes to lose in litigation more than once.
Executive Summary: The ins and outs of the sky-high compressor patent case
In order to understand the technical and legal points of the latest judgment, it is first necessary to clearly sort out the ins and outs of this case. The dispute between Gree and Oaks dates back five years. In December 2018, Oaks Air Conditioning Co., Ltd. purchased a patent for air conditioning compressor (CN00811303.) that was valid for less than two years at that time3) From the query of public information, it can be seen that the applicant of the patent involved in the case is Toshiba Carrier Corporation, a joint venture between the United States and Japan, which applied in Japan in August 1999The Chinese patent family application was filed on August 11, 2000 and expired in August 2020The patent abstract states:
A compressor comprises: a sealed casing connected to it with a suction pipe and a discharge pipe;Compression mechanism unit arranged in sealed housing;and a motor unit arranged in a sealed housing, the motor unit comprises a stator and a rotor for driving the compression mechanism unit, a gas channel is formed in the motor unit for the gas discharged by the self-compression mechanism unit to pass through, and the ratio of the total area of the groove part between the grooves forming the stator core and the coil in the stator of the motor unit to the entire area of the gas channel is set to 03 or greater. ”
At the beginning of 2019, Oaks used the patent as the basis of rights to sue Zhuhai Gree Electric Appliance Co., Ltd. in Ningbo, Nanchang and Hangzhou respectively for infringement. In December 2021 and August 2022, the Ningbo Intermediate People's Court (two cases) and the Hangzhou Intermediate People's Court (two cases) successively determined that Gree constituted infringement, and the damages awarded in the four cases amounted to 96 million yuan, 70.6 million yuan, 33 million yuan, and 25 million yuan respectively, with a cumulative total of more than 2200 million yuan. However, in June 2022, Oakes voluntarily applied to the Nanchang Intermediate People's Court to withdraw the lawsuit, which may be related to the fact that the judicial appraisal agency entrusted by the Nanchang Intermediate People's Court clearly believes that the compressor products involved in the case provided by Gree use common technology in the industry and do not constitute infringement.
At the same time, on the one hand, Gree actively responded to the lawsuit, and on the other hand, filed a request for invalidation of the patent in question. In August 2021, the China National Intellectual Property Office made a decision on the review of the request for invalidation No. 51688, upholding the validity of the independent claims of the patent in question and only partially invalidating it. Gree immediately filed an administrative lawsuit against the decision. At the end of 2022, the Beijing Intellectual Property Court revoked the above-mentioned invalidation decision of the State Intellectual Property Office in the first-instance judgment, holding that the two independent claims of the patent in question were not supported by the description, did not comply with the provisions of Article 26, Paragraph 4 of the Patent Law, and should be invalidated. At the same time, the judgment clarified the type of "compressor" referred to in the patent in question, and determined that the scope of protection of the patent in question should include centralized winding motor units and distributed winding motor units, thus reversing the previous conclusion that the CNIPA held that the patent in question only focused on centralized winding motor units.
Judgment Analysis: The SPC further denied the validity of the patent in question
Looking at the overall situation of the case, it is not difficult to see that the legal effect of the compressor patent involved in the case is the core of the dispute between the parties, and it is also the most important factor in determining the outcome of the case. Therefore, the administrative dispute over the invalidation of the invention patent of the patent involved in the case is the most critical case in this series of cases between Gree and Oaks. In this regard, the SPC passed a 78-page judgment that systematically sorted out and responded to the complex technical and legal issues in the case.
In the judgment, the SPC summarized the four major issues of dispute in the second-instance stage of this case: (1) how to interpret the claims of this patent;(2) whether claims 1-2 of the patent are supported by the description;(3) whether the patent is novel and inventive;(4) Whether the patent specification is fully disclosed.
In response to the above-mentioned question (1), the SPC pointed out that it is difficult for a person skilled in the art to directly and undoubtedly determine that the motor unit in the claims of this patent is limited to a centralized winding type in terms of the terms of the description, the understanding of the comparative content of the drawings, and the judgment of background art, so it is not improper for the first-instance judgment to include the distributed winding type in the scope of the claim according to the usual type of the motor unit in the claim.
In response to the above question (2), the SPC pointed out that for claim 1 of this patent, the patent specification clearly states that if "the ratio of the total area of the groove part to the entire area of the gas channel" (hereinafter referred to as the "k value") exceeds 06. It will lead to a decrease in the efficiency of the motor and a deterioration in the performance of the compressor, and the ideal k value should be 03-0.between 6. It can be seen from this that there must be an upper limit on the value of k in claim 1 of the present patent, but claim 1 of the present patent without any limitation on the upper limit of the value of k cannot be summarized from the contents disclosed in the description, and it is difficult for a person skilled in the art to obtain the upper limit of the value of claim 1 through a limited number of experiments;In addition, there are many ways to realize the k-value of claim 1, which goes beyond the way in which the specification alone realizes the k-value by increasing the total area of the groove;Claim 1 limits the content and scope of protection beyond the technical contribution of the invention. With regard to claim 2 of this patent, the court found that it could not be supported by the description based on the aforesaid analysis that claim 1 was basically the same, and thus did not comply with the provisions of Article 26, Paragraph 4 of the Patent Law.
In response to the above question (3), the SPC held that it is difficult for a person skilled in the art to judge that the product protected by claim 1-2 of this patent has a structure or composition that is different from that of evidence 1, and whether the product protected by claim 1 has the corresponding ratio limited by claims 1-2 of this patent, and further determines that claims 1-2 of this patent do not have novelty and inventive step. Accordingly, the SPC recognized Gree's corresponding claim and corrected the court of first instance's determination that claims 1-2 of this patent possess novelty and inventive step.
In response to question (4) above, the SPC held that both the respondent decision and the first-instance judgment found that the patent did not violate the provisions of Article 26, Paragraph 3 of the Patent Law, and was not obviously improper.
In summary, the SPC held that the appeal requests of Oaks and the State Intellectual Property Office could not be established and should be dismissedGree's grounds of appeal are partially upheld;The first-instance judgment found that there were flaws in the facts and application of law, and that they have been corrected, do not affect the judgment result, and may be upheld. Accordingly, the SPC rendered a final judgment: rejecting the appeal and upholding the original judgment.
After the administrative judgment invalidated the two independent claims 1-2 of the patent involved in the case, the results of the relevant patent infringement disputes have been self-evident. On December 8, the Supreme People's Court ruled to revoke the first-instance judgments made by the Ningbo Intermediate People's Court (two cases) and the Hangzhou Intermediate People's Court (two cases) that found that Gree had committed infringement, and rejected all of Oakes' lawsuits.
Dispute review: The same patent has caused Oaks to sue many times and was blocked
Looking back at the litigation history of Gree and Oaks in recent years, this is not the first time that Oaks has been in a dilemma due to patent validity issues. According to statistics, of the eight patent infringement lawsuits initiated by Oaks against Gree in Ningbo, 7 cases had to be withdrawn because the patents involved were invalid, and the other 1 case was also ruled to dismiss the lawsuit because the patents involved were invalid. Taking the typical 2017 "Painting Times Air Conditioner" case as an example, in this case, Oaks also sued Gree to the court on the grounds that Gree infringed its patent rights, and the court of first instance found that Gree's infringement was established and ordered Gree to compensate Oaks more than 10 million yuan. However, the patent in question was subsequently invalidated for lack of novelty, and the court of second instance subsequently reversed its judgment and dismissed Oakes' lawsuit.
In the "Painting Era Air Conditioner" case, Gree claimed that the technical solution of the patent in question had been developed by Gree and had already been mass-produced and put on the marketOaks learned about the technology through digging and the former Gree employees preemptively applied for the patent in question. The final result of the case confirms Gree's above-mentioned proposition from the side. It is worth mentioning that the "Painting Era Air Conditioner" case is not an isolated case of Oaks*** Gree Technology. In 2015, Ningbo Jitong Information Technology, a wholly-owned subsidiary of Oaks, also applied for a utility model patent named "a wind guide device for air conditioning", and in 2017, it filed a lawsuit with the Ningbo Intermediate People's Court on the grounds that Gree Company infringed the above-mentioned utility model patent rights. Gree asserted that the technical features of the utility model patent had already been disclosed by the A3 air conditioner sold by GreeGree also claimed that Ningbo Jitong still applied for patents for ten technologies that had been disclosed by A3 air conditioners, including the patents in question, even though it knew that Gree had already sold A3 air conditioners first. In the subsequent patent invalidation procedure, the Patent Reexamination Board determined that the patent in question was the same as Gree's prior art solution, and decided to declare all the patent rights involved in the case invalid. In the end, Ningbo Jitong had to choose to withdraw the lawsuit.
In addition to the above-mentioned cases, over the years, Gree has also repeatedly accused Ningbo Jitong of applying for a large number of utility model patents that are similar to Gree's prior products, and suing Gree on the basis of some of these patents, with a claim amount of up to tens of millions of yuan. So far, a considerable number of these patents have been declared invalid by the Patent Reexamination Board on the grounds that they are not novel (see figure below).
In contrast, Gree has sued Oaks for patent infringement 27 times since 2017, and has won all of them. Taking the patent infringement case of eight air conditioners including Gree v. Oaks "KFR-35GW BPTYC1+1" as an example, the case was tried by the Guangzhou Intellectual Property Court in the first instance and the Guangdong Provincial High People's Court in the second instance, and the courts of both instances finally supported Gree's claim for a total of 46 million yuan, which refreshed the compensation record for patent infringement cases in the home appliance industry at that time. The case was selected as one of the "Top 10 Intellectual Property Trial Cases in Guangdong Province in 2019" and became a typical case of repeated judicial regulation and malicious infringement of intellectual property rights. Supporting the above-mentioned series of litigation results is Gree's patent reserves and R&D strength, which are generally recognized by the industry. According to the public data, Gree has applied for 116751 patents and won a number of technical awards, including 2 National Technological Invention Awards, 3 China Patent Gold Medals, 3 China Design Gold Medals, 14 Geneva Invention Exhibition Gold Medals, and 10 Nuremberg Invention Exhibition Gold Medals.
Perhaps considering the unsuccessful experience of suing Gree with the so-called "self-developed" patent in the past, Oaks, which does not produce compressor products, chose to launch a new round of infringement accusations against Gree by purchasing compressor patents. However, after many years and twists and turns, this case still went in a direction that Oakes did not want to see. Civil litigation is an important way to demonstrate and protect rights, and it is understandable for the patentee to exercise the right of action under the legal framework, but this should first be based on legal and effective rights, otherwise it will inevitably lead to the alienation of the intellectual property legal system. At all times, market players should keep in mind that the purpose of the patent system is to encourage invention and creation, promote scientific and technological progress and economic and social development, and only when patents are actually implemented can they burst out with real vitality.