Docket number of the case in the first instance: 1656, first instance (初), civil case (民), (2019) Guangzhou Intellectual Property Court (粤73)
Docket number of the case in the second instance: 1730, second instance (终), civil case (民), (2020) Guangdong High People's Court (粤)
[Prefatory Syllabus]
The scope of the comparison for infringement upon design patent right shall be the entire range of six-sided views of the design patent. If only a portion of the foregoing scope of the alleged design is disclosed and the undisclosed portion can’t be presumed to be as a common design or have no affect on the overall visual effect, it can’t be determined that the disclosed part of the design involved falls within the scope of protection of patent rights only based on the comparison of such part.
[Basic Facts]
Appellant (Defendant in the case in the first instance): Foshan Houheng Plastic & Hardware Products Co., Ltd. (Hereinafter: Houheng)
Appellee (Plaintiff in the case in the first instance): Huang XX
Huang is the patentee of the design patent named "Caster Anti-shock Insert Rod", which is legally valid so far. On March 29, 2019, Huang applied to a notary office for notarization of perpetuation of evidence. The notary from this office took photos of the objective condition of the booth and products on display at the booth marked with the words "Hengtong & Houheng Cast Jindong Hardware Booth No.: 7.1C20” in Haizhu District, Guangzhou City, and obtained a brochure and two business cards printed with "Foshan Houheng Caster Shenzhen Yuanhengtong Caster”. On inner pages of the brochure, there are photos of the alleged infringing products. The notary conducted supervision in the whole preservation process, and issued the relevant notarial certificate.
Huang filed a lawsuit with the Guangzhou Intellectual Property Court, requesting to order Houheng to stop infringement acts and compensate for loss. Huang required using the drawing attached to the notarial certificate for comparison of the alleged infringing products. Houheng recognized that it has promised to sell the alleged infringing products, and issued a comparison opinion that the distance between coils of the patent involved is small and that of the alleged products is large, indicating the difference between the two; moreover, the lower half structure of the alleged product is not shown on the drawing attached to the notarial certificate, so they are not the same or similar.
The Guangzhou Intellectual Property Court held in the first instance, the drawing attached to the notarial certificate lacked a complete view of the alleged part inserted into the caster. Given that during normal use of the product, the parts that can be easily observed directly have more impact on the overall visual effect than other parts, the design essentials in this case mainly focus on the observable parts, and even the absence of partial views will not affect the comparison of infringement. The first-instance court made a comparison of infringement based on the existing view, holding that the design of the alleged infringing product falls within the scope of protection of the patent involved, and ordering Houheng to stop infringement and compensate for loss.
Houheng refused to accept the verdict of first instance, and appealed to the Higher People's Court of Guangdong Province. In the second instance, the Higher People's Court of Guangdong Province held that: Relevant laws and regulations provide that, during normal use of the product, the parts that can be easily observed directly have more impact on the overall visual effect than other parts. Other parts of the product that can’t be easily observed directly during normal use may be excluded from the comparison; in other words, they are only a matter concerning the extent of relative impacts, which doesn’t mean no comparison of the product parts that are not easily observed directly during normal use. In case there are significant differences between the alleged infringing product and the authorized design in terms of the parts that are not easily observed directly, which has a significant impact on the overall visual effect of the design, the two don’t constitute similarity. In this case, the photo of the alleged infringing product attached to the notarial certificate submitted by Huang only shows a partial design of the alleged infringing product, without the photo of the design of the product parts such as wheel fixed column. Although in normal use, the wheel fixed column mentioned above can’t be directly observed, this part of the design can be clearly and directly observed by the public concerned during its circulation link. With a large proportion in the overall design, the undisclosed part has a significant impact on the overall visual effect of the product. Huang didn’t provide evidence proving that the fact that the alleged infringing product is the same or similar to the corresponding part of the patent involved has a high probability, or this part of design falls within the circumstances that can be excluded from the scope of comparison such as customary design. According to the No. US2010/0287730A1 U.S. Patent Document submitted by Houheng in the first instance, there are obviously other designs for the wheel fixed column of this product. Therefore, Huang failed to fulfill his burden of proof. It needs to be specially highlighted that, the sales exhibition of the alleged infringing product of Houheng proves that the alleged infringing product has entered the circulation field, so Huang was fully capable of obtaining the complete appearance design of the alleged infringing product. There is no circumstance in which the evidence can’t be collected objectively. Based on the above grounds, the second-instance court ruled to: annul the first-instance judgment and reject all claims of Huang XX.
[Typical Significance]
This case clarifies whether the part of design can be exempted from comparison where the obligee fails to provide evidence to prove the complete design of the alleged infringing product and such part of design belongs to the product parts that can’t be directly observed during normal use, and whether the obligee or the alleged infringing party shall bear the burden of proof for such design part, providing reference for similar cases to be heard in the future.
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