DEGSON Electronics Co.,Ltd. is a high-tech enterprise and one of the largest professional manufacturers of terminal blocks and precision moulds in Asia. The Company sells its products all over China and to other more than 70 countries in the world. With constantly increasing brand influence, the Company’s brand has been gradually evolved from a domestic famous brand to a world-renowned brand. The Company has passed the ISO9001 and ISO14001 management system certification, as well as related product certification, and has the professional laboratory recognized by UL of the United States and VDE of Germany. It provides excellent products, services and solutions for the global lighting, communication, power supply, industrial, instrumentation, security, energy, machinery, elevator and other industries. The DLS series terminal blocks developed by the Company are high-power terminal blocks for on-site wiring, which can significantly improve the installation efficiency.
Background of the Case:
The patent in question is ZL201811220969.4, and titled "connecting fixture", of which, the patentee is the German WAGO.
WAGO, a multinational company headquartered in Minden, Germany and founded in 1951, specializes in electrical connectors, industrial electronic modules and field-bus input/output systems featuring original spring clamping technology, and has more than 50 subsidiaries and offices worldwide.
In July 2021, WAGO filed an infringement lawsuit against three defendants, including Ningbo Degson Electronics Co., Ltd., in Guangzhou Intellectual Property Court, and requested an order that Ningbo Degson Electronics Co. Ltd. and another defendant to stop the infringement and to jointly compensate for the damages and reasonable expenses for defending rights of RMB 1.2 million.
After being sued, Ningbo Degson Electronics Co., Ltd. entrusted Beijing YiJu Law Firm to initiate the invalidation of WAGO's patent. After the invalidation trial, China National Intellectual Property Administration issued No. 56038 Patent Invalidation Decision, declaring that WAGO's No. ZL201811220969.4 patent of "connecting fixture" was totally invalid. With the invalidation of the patent, Degson Electronics successfully resolved the infringement lawsuit.
According to the No. 56038 Invalidation Decision, the gist of the decision made by China National Intellectual Property Administration is that " If a person skilled in the art cannot directly and unquestionably determine the technical solutions of the claims of the divisional application on the basis of the original application documents and in conjunction with all the general technical knowledge in the technical field prior to the date of filing of the patent application, the technical solutions of the claims of the divisional application are beyond the scope of the original application, and do not comply with the provisions of paragraph 1 of Article 43 of the Rules for the Implementation of the Patent Law". The claim 1 and claims 2-11 of this patent, which indirectly refer to claim 1, meet the above circumstances, so the patent was eventually declared invalid in its entirety.
The administrative proceedings in this case upheld the validity of the No. 56038 Invalidation Decision in the first instance, and WAGO appealed against the first instance judgment, and the second instance has not yet begun. (Court of First Instance’s Case No. (2022) Jing 73 Xing Chu No. 19367, Court of Second Instance’s Case No. (2023) Zui Gao Fa Zhi Xing Zhong No. 556)
Difficulties and Solutions:
There are two difficulties in this case:
Firstly, the patent in question is one of the two divisional applications of the same invention name "connecting fixture" filed by German WAGO in China. Both the basic application and the two divisional applications were granted after substantive examination, and the rights are relatively stable.
Secondly, the technical feature defined in independent claim 1 of this case, "wherein, the pivoting motion of the said operating lever (10) consists of superimposed rotational and translational motions", is not defined by structural features, but from the perspective of the trajectory of the operating lever, which makes it extremely difficult to collect and identify evidence.
In response to the above-mentioned difficulties in this case:
Lawyer Meihua ZHOU's team fully examined the process of granting the patent in question and its patent family members, and formulated a multi-level invalidation strategy for the characteristics of this case, from the novelty under the circumstances that claims are not supported by specification, divisional application is out of range, and priority is not established, to the final inventiveness, it revealed the deficiencies in the licensing text of the patent in question, which was helpful for the panel to have a comprehensive grasp and consideration of the patent in question.
Highlights and Significance:
Both parties to the invalidation case are well-known companies in the industry, of which, the patentee German WAGO is an internationally renowned enterprise group in the field of electrical connections; and the invalidation applicant Ningbo Degson Electronics Co.,Ltd. is a world-renowned provider of total solutions for industrial connectors, the largest professional manufacturer of terminal blocks and industrial electrical connections in Asia, and the first Asian company having a professional laboratory accredited by UL (the United States) and VDE (Germany).
WAGO used the patent in question to sue three defendants, including Ningbo Degson Electronics Co., Ltd., for infringement of the patent, which is one of the many patent infringement lawsuits initiated by this Company in China. As a direct result of the invalidation of this case, WAGO withdrew its infringement lawsuit against the three defendants, which laid the foundation for the successful resolution of the patent infringement, won a good battle for the domestic enterprises to face the challenges of the patent lawsuits from well-known enterprises in the international industry, and cracked the patent encirclement strategy of WAGO.
This case was finally approved by the decision of invalidation review with the over-scope divisional application, which was attributed to the lawyers' comprehensive sorting and detailed comparison of this case and its cognate patents, and their in-depth grasp of Article 43 of the Rules for the Implementation of the Patent Law, and opened another way of thinking for the invalidation of similar cases, in addition to the conventional ground of the invalidation of novelty, inventiveness and practical applicability.
