iPhone 6 cleared of design patent infringement
On March 24, 2017, the Beijing Intellectual Property Court ruled on a case in which Apple Computer Trading (Shanghai), a subsidiary of Apple, and Beijing Zoomflight Telecommunications Equipment had sued the Beijing Intellectual Property Office and Shenzhen Baili Marketing Services as a third party. The court’s decision revoked an administrative ruling by the office and affirmed that Apple Shanghai and Zoomflight did not infringe Baili’s design patent at issue.
Baili owns Chinese design patent ZL201430009113.9, titled “Mobile Phone (100C)”. Baili filed a complaint with the Beijing Intellectual Property Office and alleged that Apple Shanghai and Zoomflight infringed the design patent by selling and offering to sell the iPhone 6 and iPhone 6 Plus. On May 10, 2016, the office made an administrative decision that supported Baili’s position and ordered Apple Shanghai to stop selling the phones, and Zoomflight to stop selling and offering to sell them.
Apple Shanghai and Zoomflight both instituted administrative actions against the office’s decision, claiming both the procedure used to come to that decision and its findings were wrong. The companies requested that the Beijing Intellectual Property Court revoke this decision and at the same time affirm that Apple Shanghai and Zoomflight did not infringe Baili’s design patent.
One of the points of dispute was whether there was a legal basis in an administrative lawsuit for Apple Shanghai’s and Zoomflight’s request for affirmation of non-infringement. In the ruling, the court stated that the decision of the Beijing Intellectual Property Office on the design patent dispute is an administrative adjudication on a civil dispute.
It added that, according to article 61.1 of the Administrative Procedure Law, the court may handle Apple Shanghai’s and Zoomflight’s request for confirmation of non-infringement, ie, a civil dispute, in this administrative lawsuit.
The court further stated that the administrative adjudication should be an administrative act by application, not an administrative act ex officio. It said the office violated the principle of administration by law by adding Apple Shanghai as a co-respondent ex officio, as Baili did not file such a request and Apple Shanghai only requested to participate as a third party in the proceeding.
Moreover, Apple Shanghai had filed a request for invalidating Baili’s design patent covering its mobile phone (100C) on March 30, 2015 with the Patent Re-examination Board (PRB). The PRB, in its decision No. 27878, decided to maintain the design patent as valid. The findings in this decision may have had an impact on the office’s ruling, but the Beijing Intellectual Property Office did not hear comments from relevant parties regarding the PRB’s decision and therefore violated the principle of hearing.
