iPhone 6 cleared of design patent infringement

12-05-2017

Stephen Yang

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.

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.

"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."

The court found that the office, in its administrative decision, did not touch on important and relevant evidence such as the judicial appraisal report, marketing research report or PRB’s decision no. 27878, and did not explain why these were not accepted, which violated the principle of administrative openness.

Regarding the fact-finding and application of law in the office’s administrative decision, the court stated that the office missed some distinguishing features between the design patent of Baili and the allegedly infringing designs of the iPhone 6 and iPhone 6 Plus.

The court decided that the office was wrong in finding five distinguishing features between the design patent and the allegedly infringing designs to be functional design features. In the design patent the sides of the mobile phone have an asymmetrical design, and its radian and curvature are the main features that distinguish the design patent from prior designs. However, the allegedly infringing designs have a symmetrical design on the sides, and such a difference has a significant impact on the overall visual effect.

The court further stated that Baili’s design patent and the allegedly infringing designs have other obvious differences which can be observed by an ordinary consumer. The court concluded that the allegedly infringing designs are not identical or similar to the design patent and so do not fall within the scope of the design patent.

On the same day, the Beijing Intellectual Property Court ruled in a related administrative lawsuit in which Apple Shanghai sued PRB for maintaining Baili’s design patent for its mobile phone (100C). It said that the design patent is valid and rejected Apple Shanghai’s request.  

Stephen Yang is a managing partner at Chofn Intellectual Property. He can be contacted at: stephen@chofn.cn

Stephen Yang, iPhone, cleared, design, patent, infringement, Shanghai, Beijing, Apple

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