One Case a Day | China: Determination of Violation of the Hearing Principle in Invalidation Proceedings - (2021) Supreme People's Court IP Administrative Final No. 888

Case Introduction

First case of the new year, a bit earlier today.

The most typical aspect of this case is that during the invalidation request process, the requester only pointed out that Claim 1 lacked novelty compared to a certain prior art, and therefore did not possess inventiveness compared to that prior art, but did not elaborate on the facts and reasons related to inventiveness. The question is whether the collegial panel's evaluation of inventiveness using that prior art combined with common general knowledge violates the hearing principle.

Additionally, during the evaluation of inventiveness, there is a difference between the patentee and the Reexamination and Invalidation Department/second-instance judge regarding the identification of distinguishing technical features. The reason lies in how to understand the protected subject matter of the claims. The former defines the subject matter as an "orientation layer," thus corresponding the photopolymerizable polyamic acid ammonium salt generated in Evidence 2 to the first substance in Claim 1. The latter believes that the claim protects a "material" rather than an "orientation layer." The product photopolymerizable polyamic acid ammonium salt in Evidence 2 is not a material for preparing the orientation layer, while the polyamic acid solution corresponds to at least one other substance in Claim 1. This also leads to vastly different identifications of distinguishing technical features and subsequent reasoning; the patentee's reasons cannot persuade the Reexamination and Invalidation Department/second-instance judge. Although the second instance reversed the decision, it did not proceed according to the patentee's line of thinking. This case is also a good example for understanding the importance of distinguishing technical feature division.

The second-instance court focused on analyzing the inventive purpose of this patent, pointing out the lack of motivation to change. This perspective differs slightly from the common approach of starting from the closest prior art and seeking the direction of solving technical problems to determine whether there is teaching or motivation. The author also attempts another approach to evaluate the inventiveness of the claims at the end of the article.

Case Information

• Application Number: 99804256.0
• Invention Title: Liquid Crystal Orientation Layer
• Priority Date: March 20, 1998
• Invalidation Decision Information: No. 37344
• First Instance Information: (2019) Beijing 73 Administrative Initial No. 11300
• Second Instance Judgment Date: November 28, 2023
• Second Instance Judgment: (2021) Supreme People's Court IP Administrative Final No. 888

Controversial Focus

The involved patent is a PCT national phase invention patent, protecting "a material used for preparing an orientation layer of a liquid crystal medium." This material contains a first substance capable of orienting and crosslinking under the action of linearly polarized light and at least one other substance. The innovation lies in:

The at least one other substance is polyamic acid (independent Claim 1).

Evidence 2 discloses a polyamic acid solution and 2-aminoethyl phenyl p-methoxycinnamate, causing them to react to form photopolymerizable polyamic acid ammonium salt. The photopolymerizable polyamic acid ammonium salt is coated on a substrate for photopolymerization, and finally heated at high temperature to polyimidize it, thereby providing an orientation film with a large tilt angle. Its inventive purpose is to provide a frictionless orientation film with a large tilt angle and high durability by means of a single ammonium salt product.

The invalidated decision held that Evidence 2 discloses forming an orientation layer by adding 2-aminoethyl phenyl p-methoxycinnamate to a manufactured polyamic acid solution, thus Evidence 2 provides teaching to use polyamic acid and another substance to prepare an orientation layer. However, the cinnamate in Evidence 2 does not possess the characteristic of orienting and crosslinking under the action of linearly polarized light, so Claim 1 possesses novelty compared to Evidence 2.

Furthermore, the invalidated decision held that since using substances capable of orienting and crosslinking under the action of linearly polarized light to make an orientation layer to obtain a relatively consistent pre-tilt angle is common general knowledge in this field, to improve operational steps and enhance product preparation efficiency, a person skilled in the art would easily think of directly using substances capable of orienting and crosslinking under the action of linearly polarized light with polyamic acid to prepare a liquid crystal orientation layer, replacing the cinnamate in Evidence 2, which does not require inventive effort.

Regarding the invalidation grounds, the second-instance court found: In the opinion statement submitted to the Patent Reexamination Board, the requester, using Evidence 2 as the closest prior art, only argued that Claim 1 of this patent lacked novelty and therefore lacked inventiveness. When combining common general knowledge to comment on the inventiveness of Claim 1 of this patent, the requester did not propose the invalidation ground or specific statement of using Evidence 2 combined with common general knowledge to negate the inventiveness of Claim 1 of this patent.

Patentee's Views

(1) The invalidation request examination procedure violated the hearing principle. The China National Intellectual Property Administration negated the inventiveness of Claim 1 of this patent by combining Evidence 2 with commonly used technical means in this field, without giving the patentee an opportunity to state opinions on this.

(2) Claim 1 of this patent possesses inventiveness.

First, the China National Intellectual Property Administration did not clarify the distinguishing features of Claim 1 of this patent compared to Evidence 2 and the technical problem to be solved.

Second, Evidence 2 and Claim 1 of this patent actually solve different technical problems and use different technical means. The purpose of Evidence 2 is to provide an improved orientation layer. Its Example 1 uses a cinnamate monomer, which cannot orient and crosslink under the action of linearly polarized light and does not belong to the first substance (i.e., LPP material) in Claim 1 of this patent. If the final product formed after the reaction of cinnamate with polyamic acid in Example 1 of Evidence 2 and before irradiation with linearly polarized ultraviolet light is regarded as the closest prior art to Claim 1 of this patent, the difference is that the technical solution of Claim 1 of this patent also includes polyamic acid. Evidence 2 does not involve voltage holding ratio, so a person skilled in the art, under the teaching of Evidence 2, would not have the motivation to add polyamic acid to LPP material.

Finally, the content disclosed in Evidence 2 does not indicate that using LPP material can make an orientation layer with a relatively consistent pre-tilt angle. On the contrary, it teaches that when using polyvinyl cinnamate derivatives, the tilt angle is low, so a person skilled in the art would not have the motivation to combine such prior art with Example 1 of Evidence 2. Claim 1 of this patent possesses inventiveness compared to Evidence 2.

Second Instance Court's View

The second instance pointed out that the first-instance court's determination that "the requester clearly claimed in the invalidation request that the above features were common general knowledge; the China National Intellectual Property Administration had legally forwarded the requester's invalidation request and its attachments to the patentee and sent an oral hearing notice, giving the patentee an opportunity to comment on the requester's claims, but the patentee neither submitted a written reply nor participated in the oral hearing" was inconsistent with the facts, and the court corrected it.

1. Regarding Whether the Hearing Principle Was Violated

Article 23 of the Provisions of the Supreme People's Court on Several Issues Concerning the Application of Law in the Trial of Patent Authorization and Validity Administrative Cases (I) stipulates: "If a party claims that the following circumstances in the patent reexamination or invalidation request examination procedure fall under the 'violation of legal procedures' as stipulated in Item 3 of Article 70 of the Administrative Procedure Law, the people's court shall support it: ... (4) failing to give the party adversely affected by the decision an opportunity to state opinions on the grounds, evidence, and facts on which the decision is based; ..." Accordingly, in the patent invalidation request examination procedure, the China National Intellectual Property Administration shall notify the parties of the grounds, evidence, and facts on which the invalidation decision is based, giving the parties an opportunity to explain and state opinions on the relevant grounds, evidence, and specific facts, especially before making a decision adverse to the parties; otherwise, it shall be determined to violate the hearing principle, falling under the "violation of legal procedures" as stipulated in Item 3 of Article 70 of the Administrative Procedure Law.

According to the provisions of Section 2.5, Chapter 1, Part IV of the Patent Examination Guidelines on the hearing principle, before making a decision, the party adversely affected by the decision shall be given an opportunity to state opinions on the grounds, evidence, and facts on which the decision is based, that is, the party adversely affected by the decision has been informed of the grounds, evidence, and facts on which the decision is based through notice, forwarded documents, or oral hearing, and has had an opportunity to state opinions.

In this case,

First, from the perspective of invalidation grounds, whether in the invalidation request initially submitted or in the opinion statement submitted in response to the patentee's amended claims, the invalidation requester only argued that because Claim 1 of this patent lacked novelty compared to Evidence 2, it also lacked inventiveness, and did not propose specific reasons for Claim 1 of this patent lacking inventiveness. The invalidated decision accordingly directly determined that "it is obvious for a person skilled in the art to obtain the technical solution of Claim 1 based on Evidence 2 combined with commonly used technical means in this field," without giving the patentee an opportunity to state opinions on this. The first-instance judgment determined that "the China National Intellectual Property Administration had forwarded the opinion statement submitted by the requester on May 17, 2018, to the patentee, and the patentee had sufficient opportunity to express opinions," but in fact, because the requester also only argued in that opinion statement that Claim 1 of this patent lacked novelty compared to Evidence 2 and therefore lacked inventiveness, and did not clarify the specific reasons for Claim 1 of this patent lacking inventiveness compared to Evidence 2, the patentee could not express targeted opinions on this.

Second, from the perspective of the oral hearing process, according to the oral hearing record, the requester still insisted during the oral hearing that Claim 1 of this patent lacked novelty compared to Evidence 2 and therefore lacked inventiveness. The China National Intellectual Property Administration asked both parties: "Are there any differences when using Evidence 2 to comment on inventiveness?" The patentee answered: "Evidence 2 discloses a single vinyl cinnamate and polyamic acid reacting to form ammonium salt; it does not disclose polyamic acid as at least one other substance; that other substance being polyamic acid is not disclosed." It can be seen that throughout the oral hearing, the China National Intellectual Property Administration did not clearly investigate whether it was obvious to think of the technical solution of Claim 1 of this patent based on Evidence 2 combined with common general knowledge, let alone give the patentee an opportunity to express opinions on this. The first-instance judgment held: "According to the oral hearing record, the requester mentioned using Evidence 2 combined with common general knowledge to comment on the inventiveness of Claim 1, and the China National Intellectual Property Administration investigated during the oral hearing whether common general knowledge could be used to comment on the inventiveness of Claim 1." But in fact, when the requester argued during the oral hearing to use Evidence 2 to comment on the novelty of Claim 1 of this patent, the common general knowledge involved was to explain that polyamic acid is a precursor of polyimide and can be equivalently replaced, which is different from the common general knowledge cited when the invalidated decision determined that Claim 1 of this patent lacked inventiveness compared to Evidence 2 combined with common general knowledge. This cannot be used to determine that the China National Intellectual Property Administration gave the patentee an opportunity to state opinions on Evidence 2 combined with common general knowledge commenting on the inventiveness of Claim 1 of this patent.

Third, from the perspective of the invalidation grounds of the invalidated decision, the invalidated decision determined that "since using substances capable of orienting and crosslinking under the action of linearly polarized light to make an orientation layer to obtain a relatively consistent pre-tilt angle is common general knowledge in this field, for example, the polyvinyl cinnamate derivative described in paragraph [09] of Evidence 2, etc. ..." "To improve operational steps and enhance product preparation efficiency, a person skilled in the art would easily think of directly using substances capable of orienting and crosslinking under the action of linearly polarized light with polyamic acid to prepare a liquid crystal orientation layer, thereby replacing the cinnamate in Evidence 2, which does not require inventive effort." However, the requester never proposed the above claims, and the China National Intellectual Property Administration did not inform the patentee of the above grounds through notice, forwarded documents, or oral hearing, nor did it give the patentee an opportunity to state opinions on this.

In summary, the China National Intellectual Property Administration did not inform the patentee of the specific reasons for whether Claim 1 of this patent possesses inventiveness compared to Evidence 2 combined with common general knowledge, and the patentee was not given an opportunity to explain and state opinions on the specific facts and reasons on which the invalidated decision determined that Claim 1 of this patent lacks inventiveness. The invalidated decision's determination that "it is obvious for a person skilled in the art to obtain the technical solution of Claim 1 based on Evidence 2 combined with commonly used technical means in this field" exceeded the reasonable expectations of the patentee in the invalidation request examination, violated the hearing principle, and falls under the "violation of legal procedures" as stipulated in Item 3 of Article 70 of the Administrative Procedure Law, and should be revoked. The first-instance judgment's determination that the making of the invalidated decision did not violate the hearing principle lacks factual and legal basis, and the court does not recognize it.

2. Whether the Invalidated Decision's Determination That Claim 1 of This Patent Lacks Inventiveness Is Erroneous

In the appeal, the patentee argued: 1. The invalidated decision did not adopt the three-step method when commenting on the inventiveness of this patent. 2. Evidence 2 and this patent involve different inventive concepts and orientation mechanisms. 3. Evidence 2 teaches that the orientation performance of LPP alone is insufficient, adding (non-orienting) polyamic acid will dilute LPP and reduce its orientation ability. A person skilled in the art would not add polyamic acid to LPP under the teaching of Evidence 2; instead, they would worry that doing so would worsen the orientation performance of LPP.

The second-instance court pointed out: The description of this patent records that by mixing LPP material with other polymers, oligomers, or monomers, voltage holding ratio can first be improved; if LPP-type polyimide (polyamic acid) is mixed, pre-tilt angle can also be adjusted. Claim 1 of this patent protects a material used for preparing an orientation layer of a liquid crystal medium. This material contains a first substance capable of orienting and crosslinking under the action of linearly polarized light (i.e., LPP material) and polyamic acid. Its inventive concept is to directly use non-LPP-type polyamic acid monomer or LPP-type polyamic acid as an additive in the mixture for preparing the orientation layer to adjust the pre-tilt angle of the liquid crystal layer and improve voltage holding ratio. The inventive purpose of this patent is not to prepare a new LPP but to provide a material used for preparing a linear photopolymerization (LPP) orientation layer of a liquid crystal medium. The orientation layer prepared by this material can improve voltage holding ratio and/or adjust pre-tilt angle. The material used for preparing the orientation layer in Claim 1 of this patent must contain a first substance capable of orienting and crosslinking under the action of linearly polarized light; otherwise, it loses the object for adjusting pre-tilt angle and improving voltage holding ratio and cannot achieve the inventive purpose of this patent.

As mentioned earlier, the inventive purpose of Evidence 2 is to provide a frictionless orientation film with a large tilt angle and high durability by means of a single ammonium salt product. There is no evidence in this case proving that 2-aminoethyl phenyl p-methoxycinnamate in Evidence 2 can orient under the action of linearly polarized light, so it cannot correspond to the first substance of this patent. The description of Evidence 2 also does not record whether the technical solution it discloses can improve the voltage holding ratio of the orientation layer, nor does it involve adjusting the pre-tilt angle of the orientation layer. Therefore, the inventive purpose and inventive concept of Evidence 2 are different from those of this patent. Under these circumstances, a person skilled in the art has no motivation to replace the cinnamate derivative in Evidence 2 with the first substance capable of orienting and crosslinking under the action of linearly polarized light in Claim 1 of this patent. The grounds of the invalidated decision that Claim 1 of this patent lacks inventiveness compared to Evidence 2 combined with common general knowledge cannot be established.

Author's Note:

The distinguishing technical features and the achieved technical effects are consistent with those of the second-instance court. The actually solved technical problem: providing a material that enables the prepared orientation layer to improve voltage holding ratio and/or adjust pre-tilt angle. In the prior art, there is no technical teaching that a material composed of polyamic acid + a first substance capable of orienting and crosslinking under the action of linearly polarized light can solve the above technical problem, and there is no motivation to modify D2. If following the logic of the invalidated decision, the first substance capable of orienting and crosslinking under the action of linearly polarized light is common, but there is a lack of motivation to add polyamic acid.