Date: 8 August 2024

【Volume 142】

The Supreme People’s Court of China recently issued a final judgment in the administrative dispute over the patent invalidation between Gree Electric Appliances, Inc. of Zhuhai (hereinafter referred to as “Gree”), the China National Intellectual Property Administration(CNIPA) and Aux Air Conditioning Co., Ltd. (hereinafter referred to as “Aux”).The Supreme People’s Court ruling in this case is noteworthy, as it overturned the CNIPA’s decision regarding whether the parameters in the disputed claims had adequate written support and whether the patent met the written description requirement.

Case facts

In December 2018, Aux Air Conditioning Co., Ltd. acquired a patent (CN00811303.3) for an air conditioning compressor from Toshiba Carrier Corporation, a joint venture between the United States and Japan. Aux and Gree engaged in an infringement dispute, and Gree filed an administrative lawsuit against the involved patent after failing to have the involved patent invalidated. In the first instance, the Beijing Intellectual Property Court revoked the CNIPA’s invalidation decision ((2021) Jing 73 Xing chu No. 18560 Administrative Judgment), holding that the two main independent claims 1 and 2 of the involved patent were not supported by the specification and should be invalidated. The Supreme People's Court of China recently issued a judgment ((2023) Zui Gao Fa Zhi Xing Zhong No. 37 Administrative Judgment), upholding the first-instance judgement.

Case analysis

Claim 1 of the patent specifies that the ratio of the total area of the slot portion to the entire area of said gas passage (hereinafter referred to as the “k-value”) in the motor unit of “a compressor” is set to 0.3 or greater. CNIPA accepted Aux’s assertion that the scope defined by the content of claims 1 to 2 include technical solutions that cannot solve the technical problems the patent aimed to improve and cannot achieve the invention's objectives However, CNIPA deemed that a person skilled in the art could reasonably exclude such “technical solutions”.

However, the Supreme People’s Court of China disagreed with the CNIPA's opinion and held that:

1.Claim 1 of the patent must have an upper limit for the k value. From the content disclosed in the specification, the claim 1 without any upper limit for the k value cannot be derived;

2.a person skilled in the art would require an excessive effort to determine the upper limit of the k value in claim 1 of the patent;

3.There are multiple ways to achieve the k value defined in claim 1, which goes beyond the single method of increasing the total slot area disclosed in the specification;

4.The content and scope of protection defined in Claim 1 exceed the technical contribution of the invention.

If the claims include technical solutions that cannot solve the technical problems to be solved stated in the patent, and a person skilled in the art cannot unambiguously exclude such technical solutions through conventional experimentation or analysis methods, then the claims should be considered unsupported by the specification and violates the written description requirement.