Recently, the Patent Reexamination and Invalidation Examination Department of the Patent Office of the China National Intellectual Property Administration issued the “Top Ten Cases of Patent Reexamination & Invalidation in 2019”. One of the top ten cases is directed to a request for invalidation of a utility model patent with a patent number ZL201220686731.2 and a title “Multi-Rotor Wing Unmanned Aerial Vehicle”. This article mainly discusses the corroboration of network evidence and the inventiveness issue involved in the present case.
I. Brief of the Case
The patent concerned, owned by “SZ DJI Technology Co., Ltd.” (hereinafter referred to as DJI), was filed on December 13, 2012 and granted on August 14, 2013. The China National Intellectual Property Administration accepted the request for invalidation of the patent concerned submitted by the petitioner for invalidation “SHENZHEN DAOTONG INTELLIGENT AVIATION TECH CO LTD.” (hereinafter referred to as DAOTONG) on June 30, 2017, and set up a panel to conduct an examination in response to the above-mentioned request. After examination, China National Intellectual Property Administration issued the Examination Decision on Request for Invalidation (No. 35449), declaring the invalidation of the whole patent right.
Furthermore, the writer noticed that DJI was unsatisfied with the Examination Decision on Request for Invalidation (No. 35449) issued by the China National Intellectual Property Administration, and filed an administrative suit. After examination, the Beijing Intellectual Property Court issued the Administrative Judgment ((2018) Jing 73 Xing Chu No. 4102), rejecting DJI’s claim and upholding the Examination Decision on Request for Invalidation (No. 35449). Afterwards, DJI instituted an appeal against the first-instance judgement of the Beijing Intellectual Property Court. After examination, the Supreme People’s Court issued the Administrative Judgment ((2019) Zui Gao Fa Zhi Xing Zhong No. 49), rejecting DJI’s appeal and upholding the original judgment.
The focus of dispute concerning the present case lies in the following two aspects: (i) corroboration of network evidence; and (ii) inventiveness issue.
II. Regarding the corroboration of network evidence
As the network becomes more and more closely linked with people’s daily work and life, network evidence plays a more and more important role during the grant and invalidation stages of patents. Nevertheless, network evidence, owing to its characteristics different from those of traditional evidence, is easily questioned by the parties concerned.
Network evidence is essentially electronic data. Provisions of the Supreme People’s Court on Evidence in Civil Procedures stipulates in Article 14 that,
Electronic data includes the following information and electronic files: (i) information released on web-based platforms such as webpages, blogs and microblogs; (ii) communication information on network applications such as messages on mobile phones, emails, instant messages and communication groups; (iii) user’ sregistration information, identity authentication information, electronic transaction records, communication records, login logs etc.; (iv) electronic files, such as documents, pictures, audio, videos, digital certificates and computer programs; (v) other information stored, processed and transmitted in digital form that can prove the truthfulness of facts.
The prominent problem during the corroboration of network evidence lies in authenticity of the evidence. Provisions of the Supreme People’s Court on Evidence in Civil Procedures stipulates inArticle 93 that,
The people’s court shall comprehensively judge the authenticity of electronic data based on the following factors: (i) whether the hardware and software environments of the computer system in which the electronic data is generated, stored and transmitted are intact and reliable; (ii) whether the hardware and software environments of the computer system in which the electronic data is generated, stored and transmitted are in a normal operating state, or whether they affect the generation, storage, and transmission of electronic data when they are not in a normal operating state; (iii) whether the hardware and software environments of the computer system in which the electronic data is generated, stored and transmitted have effective monitoring and verification means to prevent errors; (iv) whether the electronic data is stored, transmitted and extracted intactly, and whether the methods for storing, transmitting and extracting are reliable; (v) whether electronic data is formed and stored in normal communication activities; (vi) whether the subject that stores, transmits and extracts electronic data is appropriate; (vii) other factors that may affect the integrity and reliability of electronic data.
The corroboration of the authenticity of network evidence is generally carried out by three steps: the first step is to determine whether the network evidence exists objectively, i.e., whether the evidentiary form is authentic; the second step is to determine whether the content of the network evidence reflects its state when formed, i.e., whether its contents are authentic; the third step is to determine whether the network evidence reflects the objective conditions of the facts and whether its contents are reliable.
In terms of the patent concerned, the petitioner for invalidation, when making the request for invalidation, submitted 47 pieces of evidence, including 9 patent documents, 2 publications, 32 pieces of network evidence, and 4 photocopies of notarial certificate. In response to the request for invalidation, the patentee submitted 10 pieces of counterevidence to prove that several pieces of network evidence possess no authenticity and relevancy. During the oral hearing, the petitioner for invalidation presented 3 original notarial certificates to prove the authenticity of 32 pieces of network evidence. The patentee approbated the evidentiary form authenticity of a few pieces of network evidence, but still did not approbate the authenticity, the credibility and the like of several pieces of network evidence.
During the entire examination process of the patent concerned, the corroboration of network evidence played a very important role.
Since the petitioner for invalidation asserted that claim 1 possessed no inventiveness over a combination of Evidence 19 with one of Evidence 1 and 6-17 or with common knowledge and one of Evidence 1, 8-12, 16-17, the panel first proceeded with the corroboration of Evidence 19.
-Corroboration of evidentiary form authenticity
Evidence 19 is a photocopy of the notary certificate ((2017) Jing Hai Cheng Nei Min ZhengZi No. 05907) issued by the Beijing Haicheng Notary Office. The patentee had no objection to the evidentiary form authenticity of Evidence 19, and the panel also approbated it.
-Corroboration of content authenticity and reliability
Evidence 19-1 is a photocopy of webpage screenshot of a news report from the NetEase News Center. The panel deemed that it can be learned from Evidence 19-1 that the 9th Shanghai International Model Exhibition was held at the Shanghai World EXPO Exhibition & Convention Center on the morning of August 28, 2012.
Evidence 19-3 is a photocopy of webpage screenshot of an article on the “Model China Forum”. Evidence 19-4 is a photocopy of webpage screenshot of an article on the “5iMX Forum”. The panel deemed that “Model China Forum” and “5iMX Forum” belong to websites with certain popularity and credibility in the art, and the publication time of the article on the forum is the time displayed by the server, which is generally not easy to tamper with. The date of the comment displayed at the end of the article is also later than the publication date of the article and has relevancy with the content of the article.Under the circumstances that the patentee failed to provide evidence to prove that the contents of these articles are spurious, the panel approbated the content authenticity and reliability of Evidence 19-3 and 19-4.
Evidence 19-5 is a photocopy of webpage screenshot of the video uploaded by Youku netizens. The panel deemed that the upload time on Youku represents the time when the video enters a server and is automatically generated by the Internet system, and it is possible to choose whether to make it public upon uploading. Although there may exist the situation “the upload time is not necessarily the publication time” asserted by the patentee, the patentee failed to provide corresponding evidence in this respect. In conjunction with Evidence 19-1, under the premise that the patentee failed to provide any relevant evidence, the possibility of making the video public upon uploading is much higher than the above-mentioned possibility as asserted by the patentee. In addition, in conjunction with Evidence 19-3, 19-4 and 19-5, it can be known that the structure of the product disclosed in Evidence 19-5 was in a state where the public can know it if they want prior to the filing date of the patent concerned.
Evidence 19-2 is the news content released on the website of Shenzhen Sikaili Model Aircraft Co., Ltd. The panel deemed that disclosure of the prior art in the patent law includes use disclosure, and “use disclosure” refers to the disclosure of technical solutions, or the technical solutions in a state where they can be known to the public due to use. Although the patentee used Counterevidence7 to prove that the products disclosed in Evidence 19-3, 19-4 and 19-5 were not exhibited by Shenzhen Sikaili Model Aircraft Co., Ltd, whether the above products were exhibited by Shenzhen Sikaili Model Aircraft Co., Ltd. would not change the fact that they have been in the state of being known to the public beforethe filing date.
In view of the foregoing, the panel approbated the authenticity of Evidence 19.
Then, the panel proceeded with the corroboration of Evidence 12.
-Corroboration of evidentiary form authenticity
Evidence 12 is a photocopy of the discussion post and the follow-up posts in the discussion board of the dronevibes forum, and the Chinese translation of the relevant parts. The panel deemed that the notarial certificate ((2017) Jing HaiCheng Nei Min Zheng Zi No. 09920) notarized Evidence 12, 22-31 and 33, and the patentee had no objection to the authenticity of the notarial certificate, and the panel also approbated the authenticity of the notarial certificate, i.e. the evidentiary form authenticity of Evidence 12.
-Corroboration of content authenticity and reliability
The panel deemed that as can be known from Evidence 22, the dronevibes team made an acquisition of Multirotorforums. com on May 14, 2016, and all information concerning users, accounts, posts, topics, levels, etc. of Multirotorforums.com were transferred to dronevibes.com. Discussion post and follow-up posts in the discussion board of the dronevibes forum disclosed in Evidence 12 were transferred from Multirotorforums.com to dronevibes.com forum. In addition, as can be known from Evidence 24, 25, 28, 29, and 32, Multirotorforums.com and dronevibes forums are websites and forums with certain popularity and credibility in the drone field, and the public can obtain information from the aforementioned websites and forums. Although the patentee used Counterevidence 4 and 8 to prove that Evidence 12 has no authenticity and relevancy, the notarial certificate (No. 09920) has demonstrated that Evidence 12 can be obtained through domestic public outlets. The “prior art” in the patent law refers to the technology known to the public at home and abroad before the filing date. Thus, the technical contents disclosed in dronevibes.com beforethe filing date of the patent concerned also belong to the category of “prior art” in the patent law. Therefore, the panel did not support the patentee’s view that Evidence 12 has no authenticity and relevancy, being proved by the patentee using Counterevidence 4 and 8.
Insummary, under the circumstances where the patentee failed to provide convincing evidence and reasons to prove that the contents of the article released on the webpage of Evidence 12 are spurious, the panel approbated the content authenticity and reliability of Evidence 12.
As mentioned above, the panel of this case deemed that where a website belongs to a portal one with certain popularity, the network evidence from this website is less likely to be tampered with, and its authenticity is easier to be corroborated. For example, for NetEase involved in Evidence 19-1, the panel directly approbated the authenticity of the evidence; if a website belongs to a corporate website or a forum, multiple pieces of evidence are required to be mutually corroborated, and their authenticity needs to be carefully corroborated. For example, for Evidence19-2, 19-3, 19-4, 19-5 and 12, etc., the panel repeatedly mentioned that “under the circumstances that the patentee failed to provide evidence and/or reasons”, the authenticity of the evidence is judged by mutual corroboration of multiple pieces of evidence. In addition, the writer has noticed that the second-instance administrative judgment of the Supreme People’s Court did not explicitly approbate Evidence 19-4 and 19-5. The writer guesses that perhaps the Supreme People’s Court does not fully approbate the authenticity of Evidence 19-4 and19-5. Therefore, this case brought us an enlightenment that during the invalidation procedure, if the petitioner for invalidation needs to provide network evidence to support his assertion, he should use evidence in the typeof portal website whenever possible, or use multiple pieces of mutually corroborated network evidence, in order to improve the possibility that the authenticity of these network evidence will be corroborated.
In addition, in order to further explore standards of corroboration of network evidence currently adopted by the China National Intellectual Property Administration, the writer has analyzed several other patent invalidation cases involving “network evidence” examined in recent years by the China NationalIntellectual Property Administration.
Case1: Invalidation Decision No. 44120
In this case, the evidence submitted by the petitioner for invalidation when making the request for invalidation included the following 5 pieces of network evidence:
Evidence2: The article titled “MegaPi User Manual (First Draft)” posted on the BaiduWenku website;
Evidence3: A post titled “[RC remote control][Starting Unpacked] Ultimate 2.0 ultimate robot, learning, creating, and powerful-Muguo” posted on the chiphell website;
Evidence4: The article titled “ZeroPi: Development Tools Supporting Arduino and Raspberry Pi” posted on the Sina blog website;
Evidence5: The article titled “[Lecture Hall] Four Ways to Prevent DC Power Reverse Connection” posted on 360doc.com website;
Evidence7: The article titled “MegaPi User Manual (First Draft)” posted on Docin,retrieved by the “360 Search” search engine.
During the oral hearing, the petitioner for invalidation demonstrated the process of obtaining Evidence 2-7 on the Internet.
In this case, the panel deemed that regarding Evidence 2 and 7, the patentee had no objection to the authenticity and the publicity thereof. The petitioner demonstrated the process of obtaining Evidence 2 and 7. The panel, after verification, deemed that the demonstration results are consistent with the content shown in Evidence 2 and 7, and are essentially the same as the contents disclosed in Evidence 2 and 7. That is, the panel approbated the evidentiary form authenticity of Evidence 2 and 7. Evidence 2 and 7 are documents of the same title “MegaPi User Manual(First Draft)” downloaded from Baidu Library and Docin respectively, and their contents are essentially the same. The contents disclosed in Evidence 2 and 7can be mutually corroborated. In the absence of counterevidence, it can be determined that the documents disclosed in Evidence 2 and 7 actually exist.That is, the panel approbated the content authenticity and the reliability of Evidence 2 and 7.
In this case, the petitioner for invalidation demonstrated the process of obtaining Evidence 2 and 7, and the patentee had no objection to their authenticity and publicity. Moreover, Evidence 2 and 7 can be mutually corroborated. In the absence of counterevidence, the panel approbated the authenticity of Evidence 2 and 7. In addition, the writer noticed that although the petitioner for invalidation also provided network Evidence 3 to 5, namely articles posted on the chiphell website, Sina blog website, and 360doc.comwebsite, contents of the three network evidence, judging from their titles,have no relevancy and cannot be mutually corroborated. The panel did not explicitly approbate network Evidence 3 to 5.
Case2: Invalidation Decision No. 41712
In this case, the petitioner for invalidation submitted Evidence 1 and 2 when making the request for invalidation, wherein Evidence 1 notarizes the process of the petitioner entering the corresponding page to take screenshots after searching http://www.foodjx.com/st752/product_3329679.html through Baidu, and relates to a product release webpage of Food Machinery Equipment Network (www.foodjx.com), and Evidence 2 relates to a video uploaded on Tudou.com. During the oral hearing, the petitioner for invalidation presented Evidence 3. Evidence 3 notarizes the petitioner taking webpage screenshots after searching “food machinery equipment network” through Baidu, and relevant screenshots after clicking on the links of “About Us”, “Business License”, and “Network Industry and Commerce” on the page.
In this case, the panel deemed that although Evidence 1 relates to a product release webpage of Food Machinery Equipment Network (www.foodjx.com), which the petitioner submitted Evidence 3 to prove is a food machinery online trading platform operated by Zhejiang Xingwang Baomingtong Network Co. , Ltd., the petitioner failed to provide sufficient evidence or reasons in terms of the authority ofthe website, the information release and review management mechanism of thewebsite, the data operation and maintenance rules of the website and the like. Therefore, it is difficult to determine whether this website is a large-scale well-known website, whether the time displayed on the webpage is the actual publication time of the webpage, whether the text or picture content of the webpage can be changed after it is uploaded, whether the change will cause variation of the display time, whether the release or update time can be modified at will, etc.That is, the panel did not approbate the authenticity of Evidence 1.
Evidence 2 relates to a video uploaded on Tudou.com. Since the video can be set to be public to everyone or set to be accessed by password, and such a setting and the modification thereof will not be recorded on the website, in the absence of other sufficient evidence as to the publication time of the video, the panel cannot confirm that the upload time on the webpage in Evidence 2 is the publication time of the video. That is, the panel did not approbate the content authenticity and reliability of Evidence 2.
Incase 2, the panel did not approbate the authenticity of Evidence 1 in view of the fact that the website Food Machinery Equipment Network (www.foodjx.com) involved in Evidence 1 is not a large-scale well-known website on one hand, and that the petitioner for invalidation did not provide sufficient evidence or reasons as to the authority of the website, the information release and review management mechanism of the website, the data operation and maintenance rules of the website, and the like on the other hand. In addition, although Evidence 2 relates to the large-scale well-known website “Tudou”, the petitioner for invalidation did not provide sufficient evidence as to the publication time of Evidence 2. Thus, the panel did not approbate the content authenticity and reliability of Evidence 2.
Case3: Invalidation Decision No. 43303
In this case, the petitioner for invalidation submitted multiple pieces of evidence when making the request for invalidation, one of which was network evidence:
Annex3: Notarization, notarizing that the video titled “Introduction to Basic Characteristics of DJI Ronin” released by “DJI Innovations” can be watched on Youku.
In this case, in view of the fact that Annex 3 comes from the well-known website Youku, i.e. a large-scale well-known website in China on one hand, and there was no counterevidence questioning its website qualification, credit status, website management, and data operation standardization on the other hand, the panel approbated the reliability of the source of the webpage evidence disclosed by Annex 3. That is, the panel approbated the evidentiary form authenticity of Annex 3. In addition, it is true that the patentee submitted counterevidence to prove that one of the management mechanisms of Youku is “uploaded video can be set confidential, and only the specific person who obtains the password canplay it”. Nevertheless, as to this case, the video uploader is the original patentee of the patent concerned, and the video itself is intended to promote the product. The original patentee of the present patent, as a corporate user and uploading the product video on Youku for the purpose of promotion and sales,is more probably to set the video to be public to all people. In addition, the current patentee did not submit relevant counterevidence, although it is affiliated with the original patentee who uploaded the video, and could easily obtain relevant evidence from the original patentee as to whether the video has been set to be private. Accordingly, after a comprehensive consideration of the specific content of the video, the relationship between the uploader and the current patentee, and the purpose and motivation of the video uploader, the panel did not accept the assertion of the patentee that the video involved in Annex 3 is not public to all people prior to the filing date of the patent concerned. In view of the foregoing, the panel confirmed that the publication date of the corresponding video in Annex 3 was earlier than the filing date of the patent concerned. That is, the panel approbated the content authenticity and reliability of Annex 3.
In this case, in view of the fact that Annex 3 comes from the large-scalewell-known website “Youku”, the panel approbated the reliability of the source of Annex 3 in the absence of counterevidence. Although the petitioner for invalidation did not provide sufficient evidence as to the publication time of Annex 3, the panel approbated the publication date of Annex 3 by comprehensive consideration of the factors such as the uploader of the video involved in Annex 3 being the original patentee of the patent concerned, the specific content of the video, and the interest relationship between the website and the parties concerned as well as the purpose and motivation of the video publisher.
Case4: Invalidation Decision No. 34715
In this case, the petitioner for invalidation, when making the request for invalidation, submitted network Evidence 6: a copy of the articleAdvances in Parametric Coding forHigh-Quality Audio and Chinese translation of part of the article (totaling9 pages), the header indicating characters “IEEE Benelux Workshop on Model Based Processing and Coding of Audio (MPCA-2002), Leuven, Belgium, November 15, 2002”.The petitioner alleged that publication date of the article was November 15,2002.
In this case, the panel deemed that the petitioner for invalidation failed to provide valid evidence to prove true source of the network Evidence 6, and information on the front page of the article is not sufficient to prove that the publication date of the article on the Internet was earlier than the filing date of the present patent. Thus, neither the authenticity nor the publication date of network Evidence 6 can be verified. Therefore, the panel did not accept network Evidence 6 employed by the petitioner.
In this case, although network Evidence 6 is an IEEE conference paper article, the petitioner for invalidation did not carry out notarization or in-court verification, and failed to provide valid evidence as to its true source.Therefore, the panel did not approbate the authenticity of network Evidence 6.
Case5: Invalidation Decision No. 34333
In this case, the petitioner for invalidation, when making the request for invalidation, submitted network Evidence 1: relevant evidence in terms of Moji Air Fruit 1st generation product disclosed on network, involving 9 public documents on the website, including “Air Fruit Disassembly Picture and Video”on Aifaner, “Air Fruit Disassembly Picture and Video”, “Air Fruit New Product Release Meeting”, and “Air Fruit Introduction Video” on Youku, “Air Fruit Introduction Video” on CCID, “Introduction to Internal Components of Air Fruit” on Zhihu, the air fruit disassembly video released on Youku by Aifaner and transferred by acfun and Portal, and the video and disassembly pictures posed by Aifaner and transferred by NetEase. During the oral hearing, the petitioner for invalidation presented the original notarial certificate, notarizing the preserved evidence of browsing and taking screenshots of the webpage of Evidence 1.
In this case, the panel deemed that network Evidence 1 was evidence involving the Moji air fruit products disclosed on network, and involving websites such as Aifaner, Youku, CCID, acfun and Portal. The patentee had no objection to the authenticity of notarial certificate of network Evidence 1 as well as the time displayed on the page of the notarial certificate. The panel also approbated the authenticity after verification. That is, the panel approbated the evidentiary form authenticity of network Evidence 1. In addition, the panel deemed that websites such as Aifaner, Youku, CCID, acfun, and Portal are all relatively well-known websites, and the authenticity of the content disclosed on webpages thereof can be determined on the basis of notarial certificate and in absence of obvious counterevidence. In addition, the panel deemed that websites such as Aifaner, Youku, CCID, acfun, and Portal are all relatively well-known websites, and there is no evidence indicating that there exists an interest relationship between the above-mentioned website owners and the petitioner; if the party concerned questioned the release time of the network evidence and the possibility of edition and modification of the network evidence, he shall sufficiently explain the reasons or provide evidence for confirmation; and the mere reason that there is the possibility of edition and modification is not convincing. Therefore, the panel did not support the opinion of the patentee.
In this case, the petitioner for invalidation provided multiple pieces of network evidence and the multiple pieces of network evidence are all from large-scale well-known websites. Although the patentee questioned the publication time of the network evidence and the possibility of edition and modification of the network evidence, but he failed to sufficiently explain the reasons or provide evidence for confirmation. Therefore, the panel approbated the authenticity of networkevidence 1.
In view of the above cases, the China National Intellectual Property Administration is very cautious in the corroboration of network evidence during patent invalidation procedures. As to evidence from large-scalewell-known websites, in the case of notarization or in-court verification, the formal authenticity is generally directly corroborated; nevertheless, the content authenticity and reliability thereof will be comprehensively determined based on a variety of factors. The enlightenment provided by these cases to us is that if the petitioner for invalidation needs to provide network evidence to support his assertion, he should pay attention to the following points: firstly, he should provide valid evidence to prove the true source of the network evidence whenever possible, such as by means of notarization or in-court verification; secondly, he should try to provide multiple pieces of mutually corroborated network evidence, in order to improve the possibility of approbating the authenticity of these network evidence, and should try to avoid providing a single network evidence; thirdly, he should provide evidence from large-scalewell-known websites, and provide evidence to prove the content authenticity and reliability of such evidence whenever possible.
III. Inventiveness issue
In the patent concerned, the panel, on the basis of the corroboration of the authenticity of Evidence 19, determined that claim 1 has the following distinguishing technical features over Evidence 19:
The housing comprises a main body part and a housing inner cavity which is enclosed by the main body part; the circuit module is received in the housing inner cavity; the sensor is placed on the housing and far from the housing inner cavity; the tripod is connected to the main body part, and the sensor is located on the tripod.
With respect to the distinguishing technical features “the housing comprises a main body part and a housing inner cavity which is enclosed by the main body part; the circuit module is received in the housing inner cavity” and “the tripod is connected to the main body part”, the panel deemed that they are conventional design in the art or easily conceivable for those skilled in the art.
With respect to the distinguishing technical features “the sensor is placed on the housing and far from the housing inner cavity” and “the sensor is located on the tripod”, the panel deemed that on the basis of Evidence 19 and in light of Evidence 7, 12 or common knowledge, they are easily conceivable for those skilled in the art.
The writer noticed that with respect to the distinguishing technical features “the sensor is placed on the housing and far from the housing inner cavity” and “the sensor is located on the tripod”, the second-instance administrative judgment of the Supreme People’s Court set forth comments different from those by the China National Intellectual Property Administration.The second-instance administrative judgment deemed that “Since the technical teaching of the two distinguishing technical features are merely shown in patent documents and relatively professional technical forums, the accused Examination Decision on Request for Invalidation and the first-instance administrative judgment have no basis for confirming these two distinguishing technical features as common knowledge. Nevertheless,when evaluating the inventiveness of claim 1, the accused decision also adopted the combination of Evidence 19 + common knowledge + Evidence 7 and Evidence 19+ common knowledge + Evidence 12; based on the above two types of evidence combination, the evaluation of inventiveness was accurate in both the accused decision and the original judgment. Thus, although the accused decision and thefirst-instance administrative judgment have certain flaws when determining whether the relevant distinguishing technical features are common knowledge, these flaws do not change the inventiveness judgment result of thepatent concerned.”
As for the corroboration of common knowledge, Guidelinesfor Patent Examination modifiedin 2019 stipulates as follows (Section 4.10.2.2, Chapter 8, Part II):
The common knowledge of the artcited in the Office Action by the examiner shall be accurate. Where the applicant has objections to the common knowledge cited by the examiner, the examiner shall state the reasons or provide corresponding evidence for proof. In the Office Action, when the examiner confirming the technical features contributing to the solution of technical problem in the claims as commonknowledge, he/she usually should provide evidence for proof.
On the other hand, as for evidence issue in the invalidation procedures, Guidelines for Patent Examination stipulates as follows(Section 4.3.3, Chapter 8, Part IV):
The party concerned may prove that certain technical means is common knowledge in the art with reference to the technical contents recorded in a textbook or a reference book such as a technical dictionary, or a technicalmanual.
In the present case, the second-instance administrative judgment of the Supreme People’s Court did not confirm the features “the sensor is placed on the housing and far from the housing inner cavity, and the sensor is located on the tripod” recorded in Evidence 7 or Evidence 12 as common knowledge in the art, which also complies with the provision of the Guidelinesfor Patent Examination.
The writer believes that common knowledge evidence, i.e. a textbook or a reference book such as a technical dictionary or a technica lmanual, in the above provision of the Guidelinesfor Patent Examination does not represent an exhaustive list. In some cases, other evidence may also be used to support the assertion of common knowledge, such as certain technical means corroborated by multiple reference documents. Especially for relatively fast-developing technical fields, such as for the technical fields of communications and electronics, and biotechnology, on one hand, the speed of recording content that has already been common knowledge in such fields into textbooks or reference books may be much slower than the development of technology itself, and on the other hand, the content recorded in textbooks or reference books maybe also inconclusive in the art, and may be not common knowledge in the art. Nevertheless, the enlightenment of this case to the practical work is: regarding common knowledge evidence in the invalidation procedures, we shall try to choose the textbooks or reference books specified in theGuidelinesfor Patent Examination whenever possible, which may greatly improve the opportunity of the evidence being confirmed as commonknowledge. For example, in the present case, although Evidence 7 and 12 disclosed the technical features “the sensor is placed on the housing and far from the housing inner cavity, and the sensor is located on the tripod”, it cannot be determined how well-known are these technical features to those skilled in the art, that is, it cannot be determined whether these technical features are well-known common knowledge, because Evidence 7 and 12 are not common knowledge evidence, i.e. text books, technical dictionaries, and technical manuals, listed in the Guidelines for Patent Examination. In another case, the Invalidation Decision No. 45086 indicates that Evidence 3 and 4, as patent documents, can be used as prior art for evaluating the present patent, but they cannot be used as common knowledge evidence.
IV. Conclusion
Network evidence is increasingly cited during the grant and invalidation stages of patent applications. During the patent invalidation procedures, if the petitioner for invalidation needs to provide network evidence to support his assertion, he should provide valid evidence to prove truce source of the network evidence, and provide multiple pieces of mutually corroborated network evidence whenever possible, in order to improve the possibility of the authenticity of these network evidence being approbated. In addition, the petitioner should try to provide evidence from large-scale well-known websites, as well as evidence to prove the authenticity and the reliability there of whenever possible. Furthermore, if the petitioner for invalidation asserts that a certain distinguishing feature is common knowledge, he should provide common knowledge evidence, i.e. textbooks or reference books such as technical dictionaries or technical manuals, to support his assertion whenever possible, so as to avoid bearing adverse consequences as a result of these distinguishing technical characteristics not being confirmed as common knowledge.
