CPA Wins for a US Client Revocation of Invalidation Decision in First-Instance Trial
China Patent Agent (H.K.) Ltd. (CPA) recently won a patent administrative case on behalf of a US client in first-instance trial before Beijing First Intermediate People's Court. The court in trial reversed the invalidation decision issued by the Patent Reexamination Board (PRB), and remanded the case to PRB for reconsideration. CPA is glad that its efforts have helped the client who transferred the case to our firm upon one of its significant patents being invalidated.
The central issue of the case pertained to sufficiency of disclosure in the description as provided in Article 26.3 of the Chinese Patent Law. Specifically, it was about whether four equations in the description created by the inventor were contradictory and whether the definitions for the physical parameters therein were clear.
To the client the invalidation decision was detrimental not only to its patent infringement lawsuits in China but also to related litigation involving its European and US patent family. As inadequate understanding of the technical solution of the patent in suit, which contained a multitude of complex equations in its 30 page long description, was thought to be contributive to the invalidation of the patent in whole, the responsible CPA attorneys studied thoroughly the description of the patent, the invalidation decision, as well as information relating to the European and US patent family before drafting the litigation strategies for the case.
The strategies were fully supported by the client. To explore well in advance different implications which were likely to arise at court, the client further invited CPA attorneys to fly from Beijing and discuss the case with its English counsel in Hong Kong.
During the court trial, CPA attorneys explained the technical details of the patent in suit. In particular, they pointed out that the invalidation decision had erroneously offset two physical quantities which, though pertaining to the same subject, came from different calibrations and loadings. They further argued that the lack of definition for a value in an equation in the description had no impact on the technical solution of the patent because the value would eventually be eliminated in the calculation process.
The court found the arguments presented by CPA attorneys persuasive, and accordingly reversed the invalidation decision. The client was thereby relieved of potential damage to its patent rights in China and abroad.
