Recently, Foundin legal team represented a New Zealand company in successfully maintaining the validity of an invention patent following a round of invalidation proceeding. The Patent Re-examination and Invalidation Board of the CNIPA held that all the claims are valid in their entirety. 

Case Background

The case relates to a patent infringement lawsuit handled by the Foundin legal team. At the beginning, Foundin was entrusted to handle a patent infringement lawsuit on behalf the patent owner, as there seems to be some infringers in the market selling oyster baskets that are identical/similar to the patent owner’s products. Foundin conducted an investigation and found out that the alleged infringer only manufactured products in China without clear sales activities in the region. The defendant seemed to have exported the products overseas, leading to some difficulties in evidence collection at the pre-litigation stage. Foundin team proceeded with a trans-national evidence collection by collaborating with foreign notaries public and secured sufficient evidence for initiating the lawsuit over two years . 

However, soon after the patent infringement lawsuit was filed, the defendant proceeded to file a request for invalidation against the patent as issued owned by the patentee. The key grounds for invalidation raised by the defendant challenged the inventive step of the claims. Maintaining the patent validity is critical to successful enforcement of the patent in China. The patentee then entrusted the Foundin team to defend its patent right. 

Case Handling Process

To help safeguard the patent right, Foundin’s attorneys at law, Ms. LIU Li and ZHAO Xiaomin (both dual-qualified lawyers) systematically sorted out and studied the technical solution of the patent as issued, the prosecution history, and multiple prior art documents submitted by the defendant; conducted supplementary searches for a large number of evidence to support the counter-argumentation. They reviewed the videos, relevant documents and comparative documents related to the client’s patented products, effectively proving that the patent as issued is substantially different from the closest prior art in technical concept.

During the oral hearing of the invalidation proceeding, Foundin attorneys divided work clearly and successfully predicted the arguments of the petitioner. They responded and rebutted forcefully to each argument of the petitioner one by one, and finally convinced the Patent Re-examination and Invalidation Board of the CNIPA. Ultimately, the CNIPA maintained the validity of the patent in its entirety.

Case Insights

The success of this case is attributed to the full trust and cooperation of the patent owner, and further stems from the Foundin team’s intensive search on the technical details of the patent, precise assessment of prior art documents, as well as strategic prediction and professionalism in handling the invalidation case.

Should you have any questions about patent invalidation or enforcement strategies, please free free to reach out to us at patent@foundin.cn.