When the invalid requester uses physical objects as evidence of the prior art, the court of the second instance in this case has established the rules of proof, that is, for the technical solutions disclosed in the form of physical objects, the invalid requester is obliged to state which technical solution carried by the physical object is the existing technology, and bear the proof or fully explain that the public can obtain the technical solution intuitively through the physical object.

First trial case number: (2018) Beijing 73 Administrative Preliminary Judgement No. 5086  

Second trial case number: (2019) Supreme People’s Court Intellectual Property Administrative Final Judgement No. 1

【The main takeaway of the trial】  

If the party claims the prior art in a physical form, it shall clarify the existing technical solution it claims and the corresponding relationship between the existing technology solution and the physical object, and provide proof or fully explain that the public can intuitively obtain the technical solution from the physical object.

【Case Introduction】  

Appellant (plaintiff in the original trial): Beijing Baidu Wangxun Technology Co., Ltd. (referred to as Baidu)  

Appellant (third person in original trial): Beijing Sogou Technology Development Co., Ltd. (referred to as Sogou)  

Appellee (Defendant in the original trial): China National Intellectual Property Administration (referred to as CNIPA)

The patent in question is the invention patent with the patent number 200810116190.8 titled "a method and device for deleting information during the input process". The application date is July 4, 2008, and the authorization announcement date is September 28, 2011. The owner of the patent right is Sogou. On July 3, 2017, Baidu requested the Patent Reexamination Board of CNIPA to declare this patent invalid and submitted a copy of the Amoi M** color screen camera phone manual with a total of 127 pages. After passing the formal examination, the Patent Reexamination Board of CNIPA accepted the above invalidation request on July 13, 2017, and transferred the invalidation request and the copy of the evidence to Sogou. At the same time, a collegial group was established to review the case. On February 2, 2018, the Patent Reexamination Board of CNIPA made an appeal decision after examination and determined that: claims 1-11 of Baidu’s patent involved in the case did not meet all the invalid grounds of the Patent Law and decided to maintain this patent right. Baidu was dissatisfied with the respondent decision made by the Patent Reexamination Board and filed a lawsuit in the original trial court, requesting the revocation of the respondent's decision and ordering a reexamination decision.  

The original judgment of the Beijing Intellectual Property Court ruled: 1. Revoke the accused decision; 2. The Patent Reexamination Board of CNIPA made a new examination decision. Both Sogou and Baidu refused to accept the original judgment and appealed to the Supreme People's Court.  

The second instance of the Supreme People's Court held that the appeals of Sogou and Baidu lacked facts and legal basis, and their appeals were not supported. The original judgment decided that the facts were clear and the verdict was correct and should be maintained according to law. The judgment was as follows: the appeal was dismissed and the original sentence was upheld. The second-instance case acceptance fee of 100 yuan will be borne by Baidu and Sogou, each 50 yuan.

【Typical meaning】  

Article 22, paragraph 3 of the Patent Law of China stipulates that inventiveness means that, as compared with the technology existing before the date of filing, the invention has prominent substantive features and represents a notable progress and that the utility model has substantive features and represents progress. The so-called substantive features mean that the invention or utility model is not obvious to the person skilled in the art relative to the prior art; the so-called progress means that the invention or utility model can produce beneficial technical effects compared with the prior art. It can be seen that the existing technology is very important for judging the creativity of the patent application technical solution. It is not only a criterion for judging whether the patent application technical solution has substantial characteristics, but also a criterion for judging whether the patent application technical solution has progress.  

According to the provisions of the Patent Law of China, the prior art refers to technology known to the public at home and abroad before the filing date, from which it can be concluded that: (1) The subject standard for judging whether the prior art is known to the public should be the public, not those skilled in the art. In the case where the related technology can be known to the public, it must also be known to those skilled in the art. (2) The disclosure of the prior art usually emphasizes the status or result of the disclosure, rather than the way of disclosure. As for the disclosure method, it can be publication disclosure, usage disclosure, and other disclosure methods. Therefore, the so-called prior art “known to the public” means that the prior art is in a state where the public wants to know and they can, but does not mean that the public has actually known the technical solution.  

For physical objects, multiple technical solutions are often used objectively, just as a technical document may also record multiple technical solutions. But the difference is that the public usually knows the technical solutions it records by reading the technical literature, but if the public wants to know the technical solutions carried in physical objects, it may not be as easy as reading the technical literature. When the invalid requester uses physical objects as evidence of the prior art, the court of the second instance in this case has established the rules of proof, that is, for the technical solutions disclosed in the form of physical objects, the invalid requester is obliged to state which technical solution carried by the physical object is the existing technology, and bear the proof or fully explain that the public can obtain the technical solution intuitively through the physical object.