In an administrative appeal case, the Supreme People’s Court clarified that, in evaluating a patent against the closest prior art, if a corresponding structural element differs merely in name but not in its actual structure, function, intended use, or resulting effect, then it cannot be regarded as a distinguishing technical feature that sets the patent apart from the prior art.
This article presents a case analysis concerning a patent invalidation review. The key facts of the case are briefly summarized as follows:
The patent in question, titled "A Fixed Grate Pre-combustion Furnace Suitable for Processing Alternative Fuels in Cement Kilns," is owned by Company A. In response to an invalidation request filed by Company B, the China National Intellectual Property Administration (CNIPA) issued a decision declaring the patent entirely invalid.
Dissatisfied with the decision, Company A filed a lawsuit with the court of first instance. The court ruled to revoke the CNIPA's decision, holding that the closest prior art (Evidence 4) did not disclose the "pyrolysis section" or "pyrolysis section grate" claimed in the patent. The first-instance court found that CNIPA's conclusion of "the 'combustion platform' in Evidence 4 was equivalent to the 'pyrolysis section grate'" in the patent was incorrect. Consequently, the court determined that the identified distinguishing technical features and the corresponding technical problem solved were erroneous. The court instructed CNIPA to reassess the patent's inventiveness based on a redefined set of distinguishing technical features and the actual technical problem to be solved.
Both CNIPA and Company B appealed the first-instance judgment.
In the second instance, the Supreme People’s Court identified the core issue as whether the CNIPA had correctly identified the distinguishing technical features between Claim 1 of the patent and Evidence 4, as well as the actual technical problem to be solved, and whether, based on that determination, Claim 1 possessed inventiveness.
The Court first reasoned that the patent specification itself indicated that the material and reaction temperature were identical in both the pyrolysis and combustion sections of the furnace. Consequently, if the same material could undergo combustion in the combustion section, it would inevitably also combust, or at least partially combust, in the pyrolysis section. Therefore, despite the structure being labeled a "pyrolysis section grate" in the patent and a "combustion platform" in Evidence 4, their fundamental working principles were the same, and the two solutions presented no substantive structural distinction.
The Court further noted that Claim 1 of the patent only defined the pyrolysis section as a horizontal platform with a width of 500–1200 mm. Beyond its horizontal orientation and specific width range, this feature showed no substantive structural difference from the combustion platform in Evidence 4. The Court emphasized that the patent specification contained no description supporting Company A’s assertion that the pyrolysis section had less contact with oxygen. Additionally, Company A’s argument that the pyrolysis section was wider than the combustion section was deemed by the Court to relate primarily to the scale of material processing, which is a routine design adjustment within the ordinary skill of a person in the art, and therefore did not constitute a substantive difference in purpose.
Finally, the Court concluded that, with respect to the working principles and structural configurations related to the material, reaction temperature, and air/oxygen supply, the pyrolysis section grate in the patent was functionally identical or substantially equivalent to the combustion platform in Evidence 4. The patent did not record any unexpected technical effect arising from the changing a "combustion platform" to a "pyrolysis section grate" while all other technical means remained unchanged. Moreover, Company A did not submit evidence demonstrating that the pyrolysis section grate can achieve such an effect. Consequently, the Court found no substantive distinction in either the function or the technical effect of the two structures.
In summary, the Supreme People's Court affirmed the CNIPA's decision, concluding that the combustion platform in the closest prior art effectively disclosed the pyrolysis section grate claimed in the patent. It held that the distinguishing technical features and the technical problem to be solved identified by the CNIPA were correct. Accordingly, the Court ultimately ruled that all claims of the patent lacked inventiveness.
Through this judgment, the Supreme People's Court clarified that in patent validity assessment, terminology serves merely as a linguistic label. The true boundaries of a technology are defined by its structure, function, and effect. Both patent examination and judicial review must look beyond the veil of terminology and focus on the technical essence. This ruling serves as a clear reminder to patent owners that durable protection is built not on clever wording, but on making indispensable technical contributions.
(2024) Zui Gao Fa Zhi Xing Zhong No. 870
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