Case Study and Analysis - Apple vs. CNIPA and Qualcomm Invention Patent Invalidation Administrative Dispute
On March 30, 2023, the Intellectual Property Court of the Supreme People's Court (hereinafter referred to as the "Supreme Court") has released a selection of 20 typical cases from the 3,468 technical intellectual property and monopoly cases which were completed in 2022. The 20 typical cases included seven civil patent cases, three patent administrative cases, three new plant variety cases, three technology secret cases and four monopoly cases.
Among the three patent administrative cases, there included the Invalidation of Invention Patent for "Card Metaphor for Activities in a Computing Device" [Administrative Dispute over Invalidation of Invention Patent between Apple Computer Trading (Shanghai) Ltd. and China National Intellectual Property Office and Qualcomm Inc ([Case No.] (2021) Supreme Court Zhixing Final No. 1).
[Overview]
Qualcomm is the owner of patent No. 201310491586.1 entitled "Card Metaphor for Activities in a Computing Device". On December 12, 2017, Apple Computer Trading (Shanghai) Ltd. filed a Request for Invalidation to the China National Intellectual Property Office (CNIPA). CNIPA issued the Decision of Request for Invalidation No. 36696 on July 20, 2018, maintaining the validity of the patent right. Apple Computer Trading (Shanghai) Ltd. filed a lawsuit with the Beijing Intellectual Property Court against the above Decision. The court of the first instance overruled the plaintiff’s claims. Apple Computer Trading (Shanghai) Ltd. appealed. The Supreme People's Court held in the second instance that if several technical features in a technical solution are interdependent and have a cooperative effect, and can rely on the whole to achieve a certain function and produce a corresponding effect, then the aforesaid cooperative effect should be considered in the assessment of inventiveness. The second instance ruled that the appeal was dismissed, and the original judgement was upheld.
[Points at issue]
The focus in this case relates to the determination of whether the distinguishing technical feature 2 was disclosed by the prior art in the assessment of inventiveness on claim 1.
In Decision of Request for Invalidation Request No. 36696, it was determined that the distinguishing technical feature 2 of claim 1 of the patent involved was not disclosed. The reason was that the features in distinguishing technical feature 2 were interrelated and should be considered as a whole, enabling a more intuitive and convenient closing of the application to achieve the beneficial effect of quick management of multiple applications in the operating system. Accordingly, the patent right was maintained valid.
In this regard, the court of first instance determined: the distinguishing technical feature (2) was neither disclosed by References 3, 4 and 6, nor by Common knowledge evidence 2 and 4, thereby overruling the claims of Apple Computer Trading (Shanghai) Ltd.
[Conclusion]
Regarding the focusing issue, the Supreme Court held that if a number of technical features in a technical solution are interdependent and have a cooperative effect, and can rely on the whole to achieve a certain function and produce a corresponding effect, then the cooperative effect should be considered in the assessment of inventiveness.
In this case, firstly, the interactive process of the distinguishing technical feature (2) makes use of laws of nature and uses technical means to achieve the technical effect of closing the application easily and quickly. Secondly, GUI (Graphical User Interface) human-computer interaction is achieved through a computer program, which has the characteristics of an invention patent involving a computer program and should be considered as an overall feature. Several technical features of the human-computer interaction technical solution are cooperative and dependent on each other, implementing a function and producing a corresponding effect as a whole. They should be compared with the prior art as a whole in order to prevent the fragmentation of these technical features before searching for isolated and fragmented corresponding technical features from the prior art and finally making an assessment of inventiveness by piecing them together with each other. When making an assessment of inventiveness, it is important to consider these features as a whole and not to separate them before making comparisons. The appeal was dismissed and the judgment was upheld in the second instance.
[Comments]
Firstly, the subject matter of the case was a patent for an invention involving a computer program. According to Section 6 of Chapter 9 in Part II of the Patent Examination Guidelines (2020), when examining whether an application for a patent for invention that contains both technical features and algorithmic features or business rules and method features is inventive, the algorithmic features or business rules and method features that functionally support each other and have an interactive relationship with the technical features shall be considered as a whole with said technical features. "Functionally mutually supportive and interactive" means that the algorithmic or business rules and methodological features are closely integrated with the technical features, that together they constitute a technical means of solving a technical problem, and that the corresponding technical effect can be obtained.
The case clarified the principle of connected consideration in the inventiveness examination throughout the phases of invalidation, first instance and second instance. The Supreme Court determined that the technical substance of the two formally separate steps in the claims of the patent involved, i.e. step (i) "moving the card in a directional manner to identify the selection" and step (ii) "dismissing the selected card to close the application", was an integrated and coherent operation that fulfilled the function of closing the application in a specific scenario and achieved the effect of closing the application easily and quickly. Therefore, when an assessment of inventiveness was made, they should be considered as a whole, rather than separating the technical features before making comparisons. Further, based on the aforesaid whole consideration, the Supreme Court confirmed that the claims were inventive in relation to the prior art.
In addition, regarding the invalidation petitioner's question that "the specific technical features of the claims were inconsistent with the specification, further without adopting any technical means to produce any technical effects", the Supreme Court confirmed that the technical solution of the claims could be either a reasonable summary of the specification or a fully disclosed implementation of the specification. It was also confirmed that the specific technical features, when considered as a whole, had the characteristics of a patent for an invention involving a computer program, exploited laws of nature and achieved technical effects. The above determination of the Supreme Court provided a positive reference for patent mining and patent drafting in the relevant technical field.
Finally, the "typical significance" given by the Supreme Court in this case is that the case involves an intellectual property dispute between internationally renowned technology companies. The ruling reflects an objective and fair evaluation of the technical contribution of the invention-creation and demonstrates the attitude of the People's Court in strengthening the protection of intellectual property rights and its efforts to create a market-oriented, rule-of-law, international and first-class business environment.