INSIGHTS In Part I, we summarized some key lessons learned from Tafel's unsuccessful attempt to invalidate Contemporary Amperex Technology Co. Limited (CATL) 's utility model patent, resulting in CATL receiving compensation exceeding 22 million RMB from Tafel. In this article, we will explore the invalidation phase of this case in greater detail and discuss two critical insights gained from CATL's experience with utility model patents. These insights can offer valuable guidance for corporate patent strategies.
Unlocking the Power of Claim 1: The Interconnected Structure That Defines CATL's Utility Model Patent
During the invalidation stage of this case, the defendant, acting as the petitioner for patent invalidation, specifically presented a variety of combinations of prior art references to challenge the inventiveness of Patent Claim 1. From a careful examination of Patent Claim 1, the specification drawings, and their descriptions, it becomes evident that the technical solution in this utility model patent is relatively straightforward, with the components described in Claim 1 being intuitive and not overly numerous.
The primary reason this patent is considered inventive lies in the meticulous descriptions provided during patent drafting, highlighting the positions, connections, and interconnections among the various components. This approach prevents the assessment of the entire technical concept from being fragmented.
In the context of Claim 1, within the multiple combinations of prior art references submitted by the petitioner, each combination individually discloses components such as protective layers, top covers, longitudinal through-holes, pole columns, injection holes, reinforcing rings, protective layers, explosion-proof sheets, sealed chambers and groove. However, these combinations fail to fully illustrate the elements' relative positions, connections, or interconnections in different prior art references. Consequently, their arrangement and interconnections are not immediately obvious when these components come together in a single technical solution.
Specifically, in Claim 1, the emphasized technical features are the interrelationships between different components, creating a tightly interconnected structure. During the invalidation proceedings, the patent holder, CATL, also argued that each component's interconnected structure should be considered a unified whole rather than being dissected and compared to individual components in different prior art references. The examining panel endorsed this argument.
The panel reasoned, "This patent, through a unique, inventive concept, forms a comprehensive technical solution comprising explosion-proof sheets, reinforcing rings, protective layers, sealed chambers, and connecting mechanisms. These distinguishing features fully demonstrate the inventiveness of this patent. Therefore, they should be collectively evaluated, considering the technical problems they effectively address, to determine the overall inventiveness of the entire technical solution. Fragmenting these distinguishing features for comparison with multiple prior art references while disregarding the crucial role of technical issues solved in the inventiveness evaluation could lead to subjective and biased conclusions."
Furthermore, the panel noted, "As previously stated, this patent is based on the technical challenge of conducting sensitive and rapid quality inspections of explosion-proof sheets while enhancing the strength of the battery top cover in the presence of a sealed chamber. However, none of the prior art references 1, 2, 6, or common knowledge presented solutions to this challenge or demonstrated an awareness of this issue. If we were to focus solely on the technical aspects of reinforcing the top cover or performing air-tightness testing and combine these aspects with prior art references 2 and 6 or common knowledge, not only would some distinguishing features remain undisclosed, but there would also be suspicions of hindsight."
The Crucial Role of Dependent Claims in Patent Drafting: A Focus on Numerical Limitations
In this case, another notable aspect of patent drafting pertains to the dependent claims, which primarily impose numerical limitations. While these supplementary technical features may not significantly contribute to the invention and are not necessarily essential variations, their significance comes to the fore if the dimensions of the allegedly infringing products align with the numerical ranges specified in the dependent claims. This alignment can be deemed an exact replication of the patent, thereby profoundly influencing the determination of willful infringement against the defendant.
Key Takeaways
The key takeaways from the invalidation phase of this case are as follows:
Firstly, when dealing with relatively simple technical solutions in a patent, it's advisable to employ concrete descriptions in Claim 1 that effectively highlight the interrelationships among various components. This approach enhances the patent's overall inventiveness. In this case, the patent holder presented a relatively straightforward technical solution as an indivisible whole in Claim 1, demonstrating the complete inventive concept and emphasizing the interconnections and cooperative relationships among the components. This strategy makes it challenging for the petitioner to invalidate Claim 1 by combining different prior art references. In essence, for inventions with inherently limited inventive aspects, it's better to comprehensively articulate the entire technical concept within Claim 1 rather than attempting to distribute various technical features across different dependent claims. Once the patent holder intentionally segregates these features into distinct claims, it becomes difficult to argue that these features are closely interconnected during the invalidation phase.
Secondly, the dependent claims in this case primarily establish numerical limitations and may not significantly contribute to the inventive concept. However, they play a crucial role in establishing willful infringement. For instance, in this case, the patent holder distilled the core concept of the invention into the concrete description of Claim 1, allowing Claim 1, with its relatively straightforward technical solution, to achieve an enhanced level of inventiveness. The subsequent dependent claims, comprising conventional technical choices, may not substantially contribute to the invention. Nevertheless, when the dimensions of the allegedly infringing products align with the numerical ranges defined in these dependent claims, it becomes easier to establish intentional infringement against the defendant, potentially resulting in higher compensation for the plaintiff. Under the Chinese patent law and examination guidelines, a patent application can include up to 10 claims without incurring additional examination fees. Therefore, patentees should utilize all 10 claims. Even if some dependent claims do not create significant inventiveness, it is beneficial to narrow them further based on the most likely parameter ranges, usage conditions, and structural configurations of actual products. This strategic approach prepares and lays the groundwork for potential infringement litigation.
In conclusion, this case underscores the importance of Claim 1's structure and the strategic use of dependent claims, providing valuable guidance for patent strategy and protection.
Author: Zidong Wang
