Edited by Tim JIA and Ming LIU
On April 19, 2022, Chongqing High People's Court and Sichuan High People's Court jointly held a joint press conference on the judicial protection of IP rights by the people's courts in Sichuan and Chongqing, and announced the top ten typical cases of judicial protection of IP rights by Chongqing courts in 2021. Patent Ownership Dispute of Glory Company Represented by Beijing Chaocheng Law Firm (the patent litigation subsidiary of Chofn IP group, hereinafter referred to as "Chaocheng Law Firm") was Selected.
In this case, Chaocheng Law Firm represented the defendant in the lawsuit. The court ruled that the plaintiff's claim was rejected and Chaocheng's client won the case, and the judgment is now in effect.
Patent Ownership Dispute among Yibai Technology (Shenzhen) Limited, Yibai Applied Technology (Shenzhen) Limited and Glory Electronic Materials (Chongqing) Co.
First Instance: (2021) Chongqing 05 No.434
Members of the panel: Chen Cong, Xu Hua, Huang Key
Basic facts of the case
Liu worked as a quality control manager in Yibai Applied Technology (Shenzhen) Company Limited and Yibai Technology (Shenzhen) Company Limited (hereinafter referred to as Yibai Technology Company) from 1999 to 2019, and one of the departments under his supervision included the document control center which managed various technical documents, and Yibai Technology Company owned the utility model patent right related to wafer packaging. Liu left Yibai Technology Company in April 2019 to join Glory Electronic Materials (Chongqing) Company Limited (hereinafter referred to as Glory Company).
Glory Company applied for a utility model patent titled "multi-piece horizontally placed wafer box and isolation ring" on December 30, 2019, with a grant announcement date of July 24, 2020, with Liu and Li as the inventors. The patent solves the technical problem of providing a multi-piece horizontally placed wafer cassette and isolation ring to solve the problem of fragility of non-flat wafers, and its overall technical solution includes two parts: wafer cassette and isolation ring. Compared with the prior art solution, the technical solution of the patent in question adds a "concave" type isolation ring between the buffer pad and the wafer pile, and the specific position of the buffer pad, isolation ring and the specific structure of the isolation ring are the substantial features of the patent in question .
Yibai Technology Company claims that the design drawing gives a technical inspiration of the structure of the isolation ring of the patent in question, based on the design drawing of the isolation ring attached to an internal email from the company, with Liu as a recipient, and claims that it is an on-duty invention of its employees from the combination of technical inspiration and prior art. The drawings attached to the emails proposed a solution to the problem of fragility of non-flat wafers by using a hollow-avoidance technique, adding an isolation ring at the top and bottom, with a description of the specific location and structure of the isolation ring. Judgment Result
The Chongqing Fifth Intermediate People's Court held that in determining the ownership of the patent application right or patent right of an invention creation, on the one hand, it depends on who made the inventive contribution to the substantive features of the invention creation, in order to determine the inventor or designer of the invention creation; on the other hand, it is necessary to determine whether the invention creation is a on-duty invention or whether there is a contractual agreement between the parties regarding the patent application right or patent right of the invention creation.
Yibai Technology Company claimed that giving the technical inspiration of the technical solution of the patent in question in combination with the previous relevant patents and drawings could not be equivalent to having made the inventive contribution to the substantive features of the patent Although the specific structure of the drawings of the accused infringer and the technical features of the isolation ring of the patent in question were not completely in one-to-one correspondence, they basically reflected the substantive features of the patent in question. In addition, in the actual process of applying for a patent, it is a common practice in the industry for the applicant to further modify and optimize the technical solution in order to obtain patent rights. Comprehensively comparing the evidence of both parties, the combination of the drawings in the email and the prior art claimed by the company was not enough to prove that the employees of the company had made creative contributions to the substantive features of the patent in question, and the claim of Yibai Technology Company that the ownership of the patent in question should be attributed to it could not be established, and its claim was rejected.
The frequent occurrence of patent ownership disputes reflects the profound impact of the change of research and development mode on the patent ownership system in modern society. The determination of inventor is the core dispute in patent ownership disputes, and this case is a typical case on the determination of inventor. The decision in this case discussed the specific rules for determining the "substantial features" and "inventive contribution" of a patent in the determination of inventorship, and distinguished the boundary between mere technical inspiration and a specific technical solution. It is clearly stated that technical inspiration is not a creative contribution. In terms of the rules of admissibility of evidence in disputes over ownership, the case fully respects the law of research and development of inventions, and points out that it is sufficient for the evidence provided by the inventor on the technical solution to reach a level of superiority that corresponds to the substantive features of the patent in question, and that it is not necessary to reach a level of complete one-to-one correspondence with the technical features set forth in the granted text of the patent. The judgment of this case fully reflects the encouragement of innovation and creativity of researchers and the balance of interests between the protection of material and technical investment of enterprises and the protection of the proper flow of talents.
The case represented by Chaocheng Law Firm was selected as one of the "Top Ten Typical Cases of Chongqing Courts for Judicial Protection of Intellectual Property Rights in 2021", which fully reflects Chaocheng Law Firm's professional and efficient IPR legal services. As a one-stop professional provider of IPR dispute solutions, Chaocheng Law Firm will continue to strengthen its IPR specialization, dedicate itself to providing high-quality IPR legal services to clients, and make new contributions to the judicial practice of IPR in China.