*AI-generated translation, for reference only.

Keywords: Administrative; Patent-related Administrative Cases; Invalidation of Invention Patent Rights; Clarity of Claims; Claims Supported by the Description; Custom Product Model

Case Facts

Shenyang Industrial [REDACTED] Company. is the patent holder of the invention patent with patent number 20161029****.6, titled "A Method for Manufacturing a Draw Die for Resin-Based Composite Aircraft Parts" (hereinafter referred to as "the Patent"). The claims of the Patent are as follows: "1. A method for manufacturing a draw die for resin-based composite aircraft parts, the specific implementation steps of which are as follows:

a. A foam matrix model is fabricated using the matrix shape as a core. Epoxy resin material is mixed with aluminum hydroxide powder in a mass ratio of 2100:400 to form a paste-like mixture. This paste-like mixture is then applied to the inner wall of the foam matrix model cavity. When the thickness reaches 50 mm, a layer of glass fiber cloth is applied. The above steps are repeated until the matrix model cavity is filled.After curing at room temperature for 24 hours, the resin matrix solidifies and takes shape;

b. Fabricate a foam surface model using the surface shape as a core;

c . Place the foam surface model over the cured resin matrix, drill gates and multiple vent holes on the top of the foam surface model, and pour resin material into the foam surface model through the gates until the cavity is completely filled;

d. Cure at room temperature for 24 hours to form the surface;

e. Use a CNC machine to machine the mold for forming aircraft parts.

The epoxy resin material in step a is SAM910 resin. The resin material in step c is SAM900 resin.

2. A method for manufacturing a resin-based composite aircraft part drawing die as claimed in Claim 1, characterized in that the aircraft part drawing die produced in step e comprises a base, a surface located above the base, and a lifting ring located on one side of the base.

On December 1, 2020, [REDACTED] aviation technology company in Xi'an filed a request for declaration of invalidity against this patent, asserting that the scope of protection of the patent claims is unclear and does not comply with the provisions of Article 26, Paragraph 4 of the Patent Law of the People's Republic of China   . [REDACTED] industrial company in Shenyang asserted that the SAM910 and SAM900 resin materials mentioned in the claims are products it has publicly sold.On June 29, 2021, the China National Intellectual Property Administration (CNIPA)   issued Review Decision No. 50769 on the Request for Declaration of Invalidity (hereinafter referred to as the "Contested Decision"), upholding the validity of the patent. Xi'an Aviation Technology [REDACTED] Company. objected to this decision and filed a lawsuit with the Beijing Intellectual Property Court.

On December 26, 2022, the Beijing Intellectual Property Court issued Administrative Judgment No. (2021) Jing 73 Xing Chu 12765, dismissing the claims of Xi'an A Aviation Technology [REDACTED] Company. Xi'an A Aviation Technology [REDACTED] Company.   was dissatisfied with the judgment and filed an appeal. On June 27, 2024, the Supreme People's Court issued A dministrative Judgment No. (2023) Supreme Court IP Admin Final 269: The first-instance judgment and the challenged decision were revoked, and the National Intellectual Property Administration was ordered to issue a new examination decision regarding the request for declaration of invalidity filed by Xi'an Aviation Technology [REDACTED] Company. against this patent.

Judge's Opinion

The focal point of this case is whether the claims of this patent are clear.

Article 26, Paragraph 4 of the Patent Law of the People's Republic of China (amended in 2008) provides: "The claims shall be based on the description and shall clearly and concisely define the scope of protection sought." The claims embody the scope of patent protection, have the legal effect of defining the boundaries of patent rights, and serve as the statutory basis for determining whether a patent is invalid. Therefore, all technical features of a patent must be clearly and concisely described in the claims, where "clear" requires a clear subject matter and precise wording.

In this case, the SAM910 and SAM900 resin materials in the claims of this patent are product models customized by [REDACTED] engineering, and are not general terms with established meanings in the art. The specification of this patent discloses neither the sources of the SAM910 and SAM900 resin materials nor information regarding their structure, composition, properties, or manufacturing methods; thus, the substances referred to cannot be determined.Under these circumstances, a person skilled in the art, after reading the claims, specification, and drawings of this patent, cannot reasonably determine the meaning of the SAM910 and SAM900 resin materials, resulting in an unclear scope of protection for this patent.

 [REDACTED] industrial limited company in Shenyang claims that the SAM910 and SAM900 resin materials are products it sells, and further claims that the patent claims are clear. In response, the court held that determining whether patent claims are clear should be based on the perspective of a person skilled in the art, by evaluating the relationship between the claims and the specification. As for whether the patent holder's self-defined SAM910 and SAM900 resin materials fall within the scope of products currently on the market, or whether the petitioner for invalidation had previously purchased products under these custom model numbers, are irrelevant to the determination of whether the patent claims are clear. This is because the aforementioned facts are not recorded in the patent specification and do not affect the general understanding of a person skilled in the art.

Judgment Digest

Holding Where a claim is limited by a custom product model number, if the specification and drawings neither disclose the source of the product with that model number nor describe technical information such as its structure, components, performance, or manufacturing method, and a person skilled in the art cannot clearly determine its specific meaning or identify the substance to which it refers, the scope of protection of that claim shall be deemed unclear.

Related Index

Article 26, Paragraph 4 of the Patent Law of the People's Republic of China (The version applicable to this case is Article 26, Paragraph 4 of the Patent Law of the People's Republic of China, as amended in 2008)

First Instance: Beijing Intellectual Property Court Administrative Judgment No. (2021) Jing 73 Xing Chu 12765 (December 26, 2022)

Appeal: Supreme People's Court Administrative Judgment No. (2023) Supreme Court IP Appeal 269 (June 27, 2024)