The Supreme People's Court has concluded an administrative dispute involving a utility model patent. In its ruling, the Court clarified: If the closest prior art lacks an inherent connection to the technical problem that the invention seeks to address, or if it provides a teaching away from that direction, then those skilled in the art would generally have no motivation to use that closest prior art as a starting point and to improve upon it so as to arrive at the invention.
Company A is the owner of a utility model patent. Claim 3 of the patent seeks protection for a telescopic elevator car. The core innovation lies in a plate connecting structure that allows the car to expand or contract in size. This gives the elevator the ability to serve different shaft sizes, achieving the technical effect of one elevator car fitting multiple uses.
Company B filed a request with the CNIPA to invalidate claims 1 through 4 of the patent, submitting several pieces of prior art evidence in support. The administration issued a decision partially invalidating the patent, but maintaining it in force based on claims 4 through 15. The decision concluded that claim 3 lacked inventiveness because those skilled in the art could have easily arrived at the claimed solution by combining two pieces of prior art evidence, referred to as Evidence 3 and Evidence 4.
Company A was dissatisfied and filed a lawsuit with the first instance court, seeking to overturn the decision and order the administration to issue a new ruling. The first instance court rejected Company A's claims. Company A appealed. The Supreme People's Court ultimately overturned both the lower court's judgment and the administrative decision, and ordered the CNIPA to re-conduct the invalidation review.
In its final ruling, the Supreme Court stated that the core issue in dispute was whether claim 3 has inventiveness. More specifically, the question was whether those skilled in the art would have had a reason to combine the two pieces of prior art evidence to arrive at the claimed solution.
The Supreme Court emphasized that when assessing whether those skilled in the art would have been motivated to improve upon the prior art, the analysis must be based on the state of the art as it existed before the patent application was filed. The question is whether, at that time, a skilled person would have had a genuine reason to combine the available references. What courts must not do is to look at the inventor's solution first and then work backwards to find hints in the prior art that might support a combination. That would be falling into the trap of hindsight, which must be avoided.
In this case, claim 3 of the patent achieved expandable and contractible elevator car dimensions by placing the plate connecting structure on the top, bottom, and side assemblies. This allowed one elevator car to fit multiple shaft sizes.
However, Evidence 4 disclosed an elevator car whose stated purpose was precisely to avoid the need for complete disassembly of the elevator car. It is common knowledge in the field that elevator dimensions must strictly match the dimensions of the shaft. Since Evidence 4 aimed to eliminate the need for disassembly, there would have been no reason to adjust the car's dimensions. The car only needed to match its original shaft, so a skilled person would have had no motivation to modify its size.
Furthermore, Evidence 3 disclosed an adjustable and telescopic structure for elevator beams. That reference addressed the problem of standardizing beams so they could fit different elevator frames. It did not teach or suggest adjusting the overall size of an elevator car.
For these reasons, the Court concluded that those skilled in the art would have had no motivation to modify the size of the elevator car in Evidence 4 to serve multiple shaft sizes. The prior art also provided no technical guidance pointing toward such an adjustment. Therefore, claim 3 has inventiveness, and both the administrative decision and the first instance judgment were incorrect and had to be overturned.
(2023) Zui Gao Fa Zhi Xing Zhong No. 182
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