In China’s first standard-essential patent protection case in the field of information and communication technology (ICT), Xidian Jietong received a compensation of 9.1 million yuan in the second instance, and was called by the industry as a domestic growth company that "overwhelmed" the international giant with its standard-essential patents Benchmarking case.  Since then, another patent dispute caused by the patent involved in the case (patent number: 02139508.X) has also attracted attention.

In April 2016, Xidian Jietong Company sued the three defendants including Apple to the Higher People's Court of Shaanxi Province on the grounds of patent infringement, requesting the court to order the three defendants to immediately stop the patent infringement.

In response, in May 2016, Apple filed an invalidation request with the original Patent Reexamination Board for the patent involved.  After the original Patent Reexamination Board made an examination decision to maintain the validity of the patent rights involved, Apple filed an administrative lawsuit with the Beijing Intellectual Property Court.  On June 8, the Beijing Intellectual Property Court made a first-instance judgment, dismissing Apple's litigation request, and upholding the original Patent Reexamination Board's No. 31501 invalidation request review decision.

In addition to the invalidation procedures, Apple also sued Xidian Jietong to the Beijing Intellectual Property Court for abusing its monopoly market position and requesting the court to confirm the license rate for standard essential patents. Currently, the above-mentioned cases are under further trial.

The first instance remains valid

The patent in question was a Chinese invention patent application filed by Xidian Jietong Company in November 2002 and was authorized in March 2005.  Since then, Xidian Jietong has filed patent applications for the technology in more than a dozen countries and regions including the United States, Japan, South Korea and Europe, and has been authorized successively.

In the case of Apple v. CNIPA and a third party, Xidian Jietong, in the administrative dispute over the invalidation of the patent for invention, Apple claimed that the sued review decision erroneously excluded its submission before the end of the oral debate for improvement, a notarized document supporting the authenticity of the document and the date of publication.

In this regard, the Beijing Intellectual Property Court held that in accordance with Article 66 of the Implementing Regulations of the Patent Law of the 2002 Edition and Section 4.3.1 of Chapter 3 of Part Four of the Patent Examination Guidelines, the petitioner made the request for invalidation.  If the evidence is supplemented one month later, the Patent Reexamination Board will generally not consider it, except in the following circumstances: …… (ii) Submit technical dictionaries, technical manuals, textbooks, and other common-sense evidence in the technical field before the end of the oral debate Or it is used to improve the legal form of evidence, such as notarial certificates, originals, and other evidence, and combine the evidence to specify the relevant invalidation reasons within the time limit.  According to the facts ascertained, Apple submitted multiple notarized documents (Annex 49-52, 55, 57-74) after one month from the date of the invalidation request and before the end of the oral debate to prove that it was submitted within one month of the authenticity and publication date of the webpage evidence, but some of these notarized documents have not been submitted within one month from the request date, such as the content that proves the publication date of the citations, the content that proves the authority of the website published in the citation, etc.  The content of these overdue submissions does not belong to the common-sense evidence or the evidence used to improve the legal form of the evidence referred to in the above-mentioned "Patent Examination Guidelines".  Therefore, the defendant decided not to accept the content of the overdue submission in the above appendix.

It is determined in the first-instance judgment about the admissibility standard for the overdue evidence submitted by the requester in the invalidation procedure, that is, if the requester submitted a notarial certificate submitted after one month from the date of the invalidation request to prove that the content of the internal evidence having the publication date of the citations submitted within one month exceed the time limit, the internal evidence does not belong to supplementary evidence in the legal form of perfect evidence and should not be accepted.

In addition, the first-instance judgment supported the evidence standard of the original Patent Reexamination Board, that is, if the network information is used to prove the facts to be proved, if the "notarial" evidence that has exceeded the period of proof proves that the network information source is different from the network source of the evidence content within the period, then the notarization is not an exception to the legal form of perfect evidence.

Based on this, the Beijing Intellectual Property Court held that the defendant’s decision was conclusive, the application of the law was correct, and it complied with legal procedures.  The plaintiff Apple’s lawsuit lacked factual and legal basis, and the court refused to support it and rejected Apple’s lawsuit.  As of press time, the case is still in the appeal period.

The above-mentioned determination of the court of first instance further affirmed the standard of CNIPA for the determination of evidence.  It is worth mentioning that the invalidation examination decision No. 31501 involved in this case was rated as one of the top ten cases of invalidation of patent reexamination in 2017.  Its typical meaning is to clarify the notarization and identification standards for web evidence, and it has the guiding significance to the same type of cases.

Apple intensively "strikes back"

The above-mentioned administrative dispute over the invalidation of the invention patent is only one of Apple's "counter-attack" cases.  Apple also filed more than 10 lawsuits against Xidian Jietong, including abuse of its monopoly market position and disputes over the license rate of standard essential patents.

In October 2016, Apple sued Xidian Jietong Company to the Beijing Intellectual Property Court, requesting the court to confirm the standard essential patent licensing rate.  In December 2016, Apple sued the Beijing Intellectual Property Court that Xidian Jietong Company was suspected of abusing the dominant position of the seller’s monopoly market.  Currently, the two cases mentioned above are in the process of further trial.

In March 2018, Apple filed an arbitration with the Hong Kong International Arbitration Center with Xidian Jietong Company as the respondent, requesting the arbitration tribunal to make a ruling on the licensing fee of the Wireless LAN Security Protocol (WAPI) standard essential patent.  In December 2019, the arbitration tribunal of the Hong Kong International Arbitration Center made a decision that the arbitration tribunal has jurisdiction over the case.  Regarding this result, Xidian Jietong Company believes that in the process of making this ruling, the arbitration tribunal has illegal circumstances such as illegally excluding the appointment of arbitrators by Xidian Jietong Company.

In addition to the above disputes, Xidian Jietong and Apple are also involved in a trade secret infringement dispute.  In January 2018, Xidian Jietong filed a lawsuit with the Beijing Intellectual Property Court, claiming that in the previous case, Apple used US court procedures to voluntarily provide Sony with the confidentiality obligations of Xidian Jietong and Apple.  The act is suspected of constituting a trade secret infringement. Currently, the case is under further trial.

A patent litigation dispute has triggered several intellectual property lawsuits.  We are still watching when the series of intellectual property disputes between the parties will end.

                                              From PEOPLE.CN

June 29th, 2020