Case 4 Dispute over infringement of invention patent “a method for the secure access of mobile terminal to the Wireless Local Area Network and for secure data communication via wireless link”
[Basic Information]
Case No.: (2015) Beijing Intellectual Property Civil First Instance No. 1194
(2017) Beijing Civil Final Instance No. 454
Plaintiff: Xi’an Xidianjietong Radio Network Co., Ltd.
Defendant: Sony Mobile Communication (China) Co., Ltd.
[Case Brief]
The invention patent “a method for the secure access of mobile terminal to the Wireless Local Area Network and for secure data communication via wireless link” (Patent No. ZL02139508.X) (hereinafter referred to as “the patent at issue”) is owned by the patentee Xi’an Xidianjietong Radio Network Co., Ltd. (hereinafter referred to as “Iwncomm”). On May 12, 2003, the General Administration of Quality Supervision, Inspection and Quarantine of China issued the standard GB15629.11-2003 Information technology--Telecommunications and information exchange between systems--Local and metropolitan area networks--Specific requirements--Part 11: Wireless Local Area Network Medium Access Control (MAC) and Physical Layer (PHY) Specifications. On January 7, 2006, the General Administration of Quality Supervision, Inspection and Quarantine of China and the Standardization Administration of the China jointly issued the standard GB15629.11-2003/XG1-2006 (the above two standards are collectively referred to as “the standards at issue”), making amendments to the part concerning security of Wireless Local Area Network in the aforementioned national standard. On January 7, 2003, Iwncomm submitted the Declaration on Patent Rights that may be Involved in Two National Standards to the National Information Technology Standardization Committee, promising that it was willing to, within its cope of patent rights, negotiate on patent license with any applicants adopting such standard patent rights under fair, reasonable and non-discriminatory terms and conditions. From March 2009 to March 2015, Iwncomm and Sony Mobile Communication (China) Co., Ltd. (hereinafter referred to as “Sony China”) negotiated and communicated on the license of the patent at issue, yet no license agreement was reached. Iwncomm sued to the court, claiming that the mobile phones manufactured and sold by Sony China constituted patent infringement, and requested the court to order Sony China to cease the use of the patent at issue, cease to manufacture and sell mobile phones using the patent at issue, and compensate over RMB 33 million yuan for economic loss and reasonable expenditures. The court of first instance ruled Sony China to cease infringement and compensate over RMB 9.1 million yuan to Iwncomm for economic loss and reasonable expenditures. Dissatisfied with the judgment, Sony China appealed. The court of second instance held that No. 1 claim of the patent at issue was the same as the technical solution of the standards at issue. Sony China, at least in the stage of design research and development or sample testing, completely implemented the technical solution of the patent at issue without permission, and implemented the patent at issue without permission in the process of manufacturing the accused infringing products, infringing the patent right at issue of Iwncomm. For Sony China’s act of manufacturing and selling the accused infringing products, as Sony China only provided mobile terminals with built-in WAPI function modules without providing the two equipments of AP and AS, the act of Sony China did not constitute contributory infringement without the existence of direct implementers. In the licensing negotiations for standard essential patents, the parties shall negotiate in good faith. The parties involved in this case failed to enter the formal patent license negotiation process for a long time, and the fault was at Sony China. Sony China shall bear the civil liability of ceasing infringement and compensating for damages. Accordingly, the court of second instance rejected the appeal and affirmed the original judgment.
[Comments]
In the field of communications, due to the need of interconnection and enhancement of economic efficiency, the industry has internal needs and high dependence on standardized technology. A large number of standards developed by various technical standards development organizations at home and abroad emerge in response, which often contain a mass of patented technologies. Such technical standards have become indispensable parts of communication equipment such as mobile phones, making standard essential patents in the field of communications ones with the most commercial value in the world today, and a large number of disputes have arisen therefrom. In the development of standards, to ensure the smooth development and implementation, patentees of standard essential patents voluntarily make corresponding license commitments to organizations of standardization and promise to negotiate on license with standard implementers in the fair, reasonable and non-discriminatory principle, so that standard implementers may have reasonable anticipation and expectation for licensing negotiations in the future and the exercise of standard essential patent rights would be constrained to a certain extent. This is also the main reason for cases of infringement of standard essential patents to be different from ordinary patent infringement cases in terms of the determination of infringement and the bearing of liabilities. This is China’s first case of infringement of standard essential patents where the implementer of a standard essential patent was determined as constituting infringement by final judgment and was imposed a permanent injunction by the court, as well as one of the few cases where the patentee of a standard essential patent was a Chinese enterprise and ultimately won the lawsuit. It actively explored the trial rules and the bearing of liabilities in cases of infringement of standard essential patents; in particular, it made useful attempts and explorations on legal issues such as infringement comparison, issue of injunction, determination of faults and indirect infringement, accumulating experience for the trial of such cases in the future.
photo from: zol.com.cn.
