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Patent practice - $6 Million for Patent Infringement?

Jacky Tan | Jan 28, 2022

Successfully Invalidating Claims

By Jiaquan and Easwayer for Client HONGSBELT

  

The Chinese invention patent No. 2007800035278, titled "Systems and Methods for Diverting Objects", is owned by Laitram LLC and is exclusively licensed to Intralox LLC ("Intralox").

On April 1st, 2020, Intralox brought a lawsuit against HONGSBELT before Shanghai Intellectual Property Court. Intralox alleged that HONGSBELT's manufacturing of LOVCAE, offering for sell, and selling the conveyer-based sorting system, infringed Claims 1 to 3 of the aforementioned patent. Intralox requested that HONGSBELT immediately stop the infringement and pay compensation for the damages of 38 million RMB (approximately $6 million USD).

HONGSBELT's response strategies were as follows:

1) Non-infringement defense

2) Prior art defense: Prior art (US4096936A)

3) Patent Invalidation Proceeding: US4096936A (Evidence 3, Novelty)

On August 6th, 2021, the Shanghai Intellectual Property Court made a decision following two trials and a site inspection hearing: the court determined that Claims 1 to 3 of Chinese Patent No. 200780003527.8 were invalid, and the Intralox lawsuit (Case Numbers: (2020) HU 73 MINCHU 353) was subsequently dismissed.

This case was not the first conflict between Intralox and HONGSBELT. In the past, Intralox had sued HONGSBELT for infringing upon two other patents (Case Numbers: (2016) HU 73 MINCHU 797 and 798). Altogether, these three cases claimed a total of 40 million RMB (more than $6.3 million USD) in damages. Based on the CNIPA's decisions during patent invalidation proceedings, all of Intralox's suits were either dismissed or withdrawn.

After carefully analyzing the most recent HONGSBELT case, Jiaquan and Easwayer’s legal team generated a reasonable litigation strategy, responding to the Intralox lawsuit with a combination of non-infringement defense, prior art defense, and patent invalidation proceedings. Following an exhaustive search of prior art, attorneys of Jiaquan and Easwayer successfully identified favorable prior art evidence and filed a patent invalidation request with the CNIPA. Consequently, the CNIPA invalidated Claims 1 to 3 of the patent based on the evidence and arguments provided. According to the Chinese Patent Law, “Any patent right that has been declared invalid shall be deemed to be non-existent from the beginning,” and “Several Rules of the Supreme People's Court on the Application of Laws When Hearing the Patent Dispute Cases(2)”, the Shanghai Intellectual Property Court dismissed Intralox’s lawsuit.

In this case, the legal team of Jiaquan and Easwayer represented their client HONGSBELT throughout the entire patent invalidation and patent infringement proceedings. So far, Jiaquan and Easwayer has helped HONGSBELT win three patent infringement lawsuits and successfully safeguarded the legal rights of their client.

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