Recently, China National Intellectual Property Administration issued the examination decision No. 5W130190 on request for invalidation, declaring that the disputed patent is entirely invalid. The invalidation request, concluded on May 10, 2023, resulted in a critical victory for our client as the invalidation requester. This outcome marks a temporary resolution to a series of disputes between Jiangxi Furniture Manufacturing Company A and Fuzhou Home Furnishings Company B.

01: Case Introduction

Company A, a subsidiary of a furniture manufacturing group with significant production scale and market influence, specializes in the production and sales of furniture products. With a strong focus on overseas markets, the company has achieved notable success on major e-commerce platforms in Europe and America.

In late October 2022, Company A unexpectedly received a notice of respondence to an action and a complaint from the Nanchang Intermediate People’s Court, involving allegations of patent infringement. The patent holder, Company B, sought damages amounting to hundreds of thousands of yuan.

Beijing Zhifan IP Attorneys (our firm) accepted the client’s commission to fully handle the response to Company B’s patent infringement litigation and any potentially related invalidation proceedings.

Upon acceptance, our firm promptly organized senior patent attorneys to discuss the case. After thorough analysis, we determined a dual-track strategy: 1, actively defending the lawsuit and seeking a stay of proceedings to achieve the best possible outcome in the civil infringement litigation proceedings; 2, immediately filing an invalidation request against the disputed patent to nullify the lawsuit from the root.

In late December 2022, the Nanchang Intermediate People’s Court issued a first-instance judgment. Under our well-reasoned defense, the court rejected the plaintiff’s claims regarding the number of infringing products, achieving our expected objective. However, the overall situation of the case became more tense, making the invalidation proceedings crucial.

Prior to the litigation, the disputed patent had been evaluated by the search center of the China National Intellectual Property Administration, with the evaluation report concluding that all claims lacked inventiveness. However, given the current circumstances of the case, our firm determined that the cited comparative documents in the evaluation report left substantial room for argument by the opposing party, which could likely lead to failure in the invalidation proceedings. Therefore, our firm decided to conduct further searches regarding the inventiveness of the disputed patent.

Our firm assigned senior litigation attorneys from the intellectual property legal team to handle this invalidation work on this case. The disputed patent includes a total of 6 claims that disclose a fabric-wood storage box combination cabinet including a frame, a shelf, and a storage box. The shelf and the storage box are interchangeable.

Through comprehensive searching, we ultimately identified multiple pieces of powerful evidence against the disputed patent. To ensure successful invalidation, up to five patents were used as the closest prior art and 16 types of evidence combinations were proposed to challenge the inventiveness of Claim 1 of the disputed patent. In addition to submitting detailed written arguments, we also prepared PowerPoint presentations to facilitate the panel’s understanding of the comparative documents.

During the oral hearing, our attorneys thoroughly explained the technical solution of the disputed patent and provided a comprehensive and clear analysis of the three most potent evidence combinations. They meticulously addressed each of the opposing party’s arguments point-by-point, achieving excellent hearing results. Ultimately, the panel adopted one of the three most potent evidence combinations we emphasized and declared complete invalidation of the disputed patent.

02: Key Points of the Judgment

Regarding a critical technical feature emphasized by the opposing party, the panel concluded as follows, unequivocally stating that this technical feature lacked inventiveness under all three evaluation approaches: “as demonstrated, Evidence 5 and 6 both disclose that on the basis that the drawer already has a front panel, a panel is fixed at an outer side the front panel. Under the motivation of Evidence 5 and 6, it is conceivable for those person skilled in the art to fix a wooden panel in front of the front side plate 211 of the drawer body of Evidence 1, to achieve aesthetic and structural reinforcement effects, without inventive work.

Consequently, Claim 1 lacks inventiveness over Evidence 1, Evidence 3, and Evidence 5 or Evidence 6, or the combination of conventional technical means in the field under Article 22.3 of the PRC Patent Law.”

03: Typical Significance

Once sued for patent infringement, one should attach great importance to promptly choosing a professional patent agency and experienced patent agents, fighting on two fronts at the People’s Court and China National Intellectual Property Administration. Based on the general rules of the subsequent development of cases, the patent invalidation proceedings are of crucial importance, and sufficient time and energy should be devoted to it. Once the patent is declared invalid, the threat can be fundamentally eliminated.

If the patent is declared invalid during the first-instance trial, the court can rule to dismiss the plaintiff’s lawsuit. If the patent is declared invalid during the second-instance trial, even if the first-instance judgment rules infringement, the court of second instance can also rule to revoke the first-instance judgment and dismiss the plaintiff’s lawsuit. Since the invalidation proceedings do not interrupt the trial, the defendant will be relatively passive in court proceedings and bear greater psychological pressure.

04: Appendix

First page of the invalidation decision of the disputed patent