China IP focuses on latest development of China's IP industry and dedicates to forwarding IP voice of China worldwide.
收录于合集#China IP Weekly5个
编辑制作：China IP 国际部
1. JPO Status Report 2021 released
2. World Intellectual Property Report issued by WIPO
3. “Maserati”gained additional protection as well-known trademark
4. IBM patent lawsuit against pet food retailer Chewy was rejected
5. Costs to be paid to Google is ordered to be assessed in patent infringement case
6. Christian Louboutin loses Red Sole trademark case in Japan
7. Synopsys probed on accusation of having given tech to Huawei, SMIC
8. Dutch shipbuilder Royal IHC wins trade secret case against ex-employee
9. Ericsson sues to urge Apple clear proposed 5G patent licensing rate
10. Fiat Chrysler “first sale” defense is revived in Bluetooth trademark case
11. International Financial Asset Exchange Co., Ltd. & Shanghai Lujinsuo Internet Financial Information Service Co., Ltd. v. Xi'an Luzhitou Software Technology Co., Ltd.
JPO Status Report 2021 released
On March 30, Japan Patent Office (JPO) released Status Report 2021, which shows in 2021, 289,200 patent applications have been filed in Japan, including 72,782 international patent applications under the PCT, with an increase compared to 2020, among which 238,557 patent examination requests were received by JPO, with 184,372 eventually granted, both data of examined patents and the actual granted ones also climbed compared to 2020. Except from domestic Japan (222,452 applications in 2021), Japanese patent applications have originated from various countries and regions, the U.S (24,999 applications), China (9,369 applications), Germany (5,965 applications), South Korea (5,936 applications) ranked the top four.The top three domestic patent holders are Mitsubishi, Toyota and Canon, while the top three foreign patent holders are LG Chem, Huawei and Philips. Additionally, the improvement of patent examination quality with shrunk of the cost time, the various measures taken to support diversified intellectual property activities held by multifarious bodies are also mentioned and described in the report.
On April 7, WIPO released WorldIntellectual Property Report, reviewing the characteristics of thedevelopment of science and technology innovation during the period from the lastcentury to present days and providing guidance to innovation development and protection under the background of the COVID-19 pandemic.
The report has examined the rate of patent applications filed over the last century, in which innovations were primarily driven by the transportation sector prior to 1925 (with an annual growth rate of about 21% , representing 28% of all applications in 1925), while from 1926 to 1960, the medical sector became an important boost (with an annual growth rate of about 5%, representing 7% of all applications in 1960). And from1961 to 2000, the sector of computer and related innovations (ICTs) were the main drivers (with an annual growth rate of about 8%, representing 24% of all applications in 2000).
Currently in the 21st century, digitalization is the new big innovation revolution, as digitalinnovation quadrupled in the 20 years up to 2020, when it represented12% of all patent applications, with a 13% annual growth rate. Moreover, new technologies can be leveraged to achieve economic development at a large scale. By 2020, Japan-based innovators held 25% of the world's ICT-relatedpatents, followed by Republic of Korea with 18% and China, at 14%.
In addition, since the oil price shock in 1973, global innovation inlow-carbon emission technologies has growing by 6% annually until 2012, but green innovation has stagnated since then.
“Maserati”gained additional protection as well-known trademark
Recently, Tianjin Intellectual Property Court solved a case involving trademark infringement and unfair competition by mediation, in which the famous automobile company Maserati China Cars Trading Co., Ltd. sued an optical business operation of Tianjin. According to the filings of the case, the defendant of the case has used Maserati’s brand name “MASERATI S.P.A, the Chinese subsidiary’s name and registered trademarks “玛莎拉蒂”“MASERATI” “” on its eyeglasses manufactured or for sale, as well as on its promoting stuffs such as product manuals or leaflets. The defendant of the case has registered trademarks similar to the disputed trademarks in the category of “eyeglasses and other related trademarks”.As the case was settled, the plaintiff’s well-known trademarks have successfully gained additional protection beyond class.
IBM patent lawsuit against pet food retailer Chewy was rejected
On April 12, according to an order made public in Manhattan federal, District Judge Jed Rakoff has thrown out a lawsuit from International Business Machines Corp (IBM) claiming online pet food retailer Chewy Inc's website and mobile app violated several IBM patents covering improvements to website functionality and targeted advertising, from which IBM would seek at least $83 million in damages.The judge said Chewy's online services do not infringe the patents for Chewy’s technology functions differently than IBM's.The court also found that one of the IBM patents was invalid for it covered an unpatentable abstract idea and another of the five patents in the case had been invalidated in November. Last year, Florida-based Chewy sued IBM to head off a potential lawsuit and accused tech giant IBM, one of the largest patent owners in the world, of seeking "exorbitant licensing fees for early Internet patents having no value.", after it supposedly rejected a $36 million IBM patent licensing offer. Moreover, IBM was said to have similarly sued other internet-based companies including Twitter Inc, Airbnb Inc and Zillow Group Inc, and that most of them had "basically surrendered" before the trial.
4月12日，美国纽约南区联邦地区法院公开的一份裁定显示，地区法官Jed Rakoff驳回了IBM对于佛罗里达州的在线宠物食品零售商Chewy Inc的侵权诉讼。IBM在该案中指控Chewy公司的网站和手机应用程序侵犯了IBM的几项涉及网站功能及定向广告改进的专利，并拟请求被告赔偿损失8300万美元。而法官认为Chewy的线上服务使用的技术与IBM专利有着不同的运行机制，故不构成侵权。同时，法官还裁定IBM的一个专利因涵盖了不具专利性的基础概念而归于无效，去年11月，涉案的五个专利中的其中一个专利也被宣告无效。据称，Chewy在去年疑似拒绝IBM的一份3600万美元专利许可报价后，先发制人地起诉IBM作为世界上最大的专利拥有者之一漫天要价，对没有价值的早期互联网专利收取高昂许可费。另外，据悉，IBM也同样起诉了包括包括Twitter Inc、Airbnb Inc和Zillow Group Inc在内的其他互联网公司，其中大多数公司在审判之前就 "基本上缴械投降了"。
Costs to be paid to Google is ordered to be assessed in patent infringement case
On April 11, the Federal Court of Canada has ordered an assessment of costs in the long-running patent infringement case between Paid Search Engine Tools, LLC and Google Canada Corporation., as Google’s fees should be assessed in accordance with the upper range of the Federal Court’s Column of IV of Tariff B, “and that Google shall be reimbursed for the disbursements that are shown to be reasonable and necessary.”
The court’s public judgement and reasons were handed down by Justice McDonald in January, having dismissed the plaintiff's claim against the defendant for infringing a patent, “Paid Search Engine Bid Management,” designed to support advertisers in managing their bids for online advertising space on paid search engines. The disputed patent was eventually found invalid on several grounds including anticipation, obviousness, and insufficiency. Google’s counterclaim was allowed and it claimed costs of nearly $2.6 million in fees and disbursements. However, Paid Search Engine Tools, LLC, submitted that costs should be limited to $507,866, and that Google should not be allowed to recover certain expert witness fees.
Christian Louboutin loses Red Sole trademark case in Japan
On April 5, Cisco Systems Inc told a U.S.appeals court that a $2.7 billion patent award against it should be thrown out because the presiding judge's wife owned stock in the company. A three-judge panel of the U.S. Court of Appeals for the Federal Circuit seemed receptive to Cisco's argument that U.S. District Judge Henry Morgan should have recused himself from the case, though it did not signal how it would rule. The disputed case was a lawsuit started by Centripetal Networks Inc in 2018, alleging that Cisco has infringed its cyber security patents, and Morgan as the judge of the first instance ordered Cisco to pay Centripetal over $2.7 billion for infringing the patents will fully plus royalties.
Synopsys probed on accusation of having given tech to Huawei, SMIC
Synopsys Inc., the biggest supplier of software used to design semiconductors, is under investigation by the U.S. Department of Commerce (DOC) for possibly passing key technology to banned Chinese companies, according to people familiar with the matter.It is said that Investigators are looking into allegations that Synopsys, working with affiliates in China, provided chip designs and software to Huawei Technologies Co.’s HiSilicon unit （华为的海思半导体部门） for manufacture at Semiconductor Manufacturing International Corp..（SMIC，即中芯国际集成电路制造有限公司）Yet the details of the process haven’t been made public. U.S. companies are barred from selling some types of technology to Huawei and SMIC because they’ve been designated as threats to national security by the Commerce Department’s Bureau of Industry and Security. In December Synopsys disclosed it had received a subpoena from BIS relating to “transactions with certain Chinese entities,” without specifying when it received the request or providing further details. At the time, the company said it was in compliance with all regulations and was working to respond to the inquiry.
Dutch shipbuilder Royal IHC wins trade secret case against ex-employee
China’s No. 3 Intermediate People’s Court of Tianjin Municipality in March ruled in favor of IHC Dredging Technology (Tianjin) Co., Ltd. (艾曲西疏浚技术装备（天津）有限公司), Royal IHC’s Chinese unit, in an action brought by it against its ex-employee Zhao for misappropriating its trade secrets. The defendant was sentenced to 10 months in prison and a criminal fine of 60,000 yuan, an amount the court determined to equal a royalty payment due to the plaintiff if and when the misappropriated confidential information is legally licensed.The methodology underpinning the court’s award of damages in this case has set a precedent for damages assessment in trade secret misappropriation lawsuits in China, which has long been commonplace in many other jurisdictions worldwide.
Ericsson sues to urge Apple clear proposed 5G patent licensing rate
On April 6, Swedish telecom giant Ericsson Inc has sued Apple Inc in federal court in Texas seeking a declaration that the rates it offered Apple to license its 5G wireless patents are fair and reasonable. Typically, Ericsson requires licensees to be pay $2.50 to $5 for each 5G device. In the renewal negotiations with Apple, Ericsson asked the price to be $5. But Apple is suspected to deem the price too high and refused to sign a new license contract by sticking to its position that Ericsson's rates aren’t FRAND. Ericsson requests the court to allow Apple to confirm whether Apple will accept the terms of Ericsson's 4G and 5G patent licensing and thus sign the contract if the terms are confirmed to be complied with the "fair, reasonable and non-discriminatory (FRAND)" principles by the court. The case is scheduled to be heard in June 2023.
Fiat Chrysler “first sale” defense is revived in Bluetooth trademark case
On April 6, the 9th U.S. Circuit Court of Appeals gave Fiat Chrysler (FCA US LLC) a new chance to argue that it did not violate a Bluetooth standards organization's trademark rights by using the Bluetooth name without permission and sent the case back to a Seattle federal court after finding a judge wrongly rejected defense arguments. In the case, Bluetooth SIG argued FCA violated its trademark rights by marketing the entertainment platforms in Fiat, Jeep, Chrysler, and other cars as being Bluetooth capable without going through its verification process, however FCA said it bought the systems from companies that had verified them with Bluetooth SIG, and according to the trademark “first sale” doctrine, it shouldn’t be legally liable for infringement.
4月6日，美国联邦第九巡回上诉法院给了菲亚特克莱斯勒汽车公司（Fiat Chrysler Automobiles N.V.）一个新的机会，来证明该公司未经许可使用“蓝牙”这个名称的行为没有侵犯商标权。该上诉法院判定，美国华盛顿西区联邦地区法院驳回克莱斯勒汽车集团（FCA US LLC）的抗辩理由的裁决是错误的。同时，上诉法院将案件发回该下级法院做进一步审理。蓝牙商标的所有人蓝牙技术联盟在华盛顿西区联邦地区法院起诉FCA侵犯了其蓝牙商标。该组织称，FCA没有进行资格验证而在其旗下多个品牌的汽车上安装了信息娱乐系统，并宣传这些系统具有蓝牙功能，侵犯了其商标权。 其中，涉案汽车品牌包括菲亚特、吉普、克莱斯勒等。而FCA认为其从第三方公司处购买了这些车载信息娱乐系统，且这些第三方公司均已通过蓝牙技术联盟的身份验证，地方法院应该根据美国商标法的“首次销售（first sale）”原则判决此案。
International Financial Asset Exchange Co., Ltd. & Shanghai Lujinsuo Internet Financial Information Service Co., Ltd. v. Xi'an Luzhitou Software Technology Co., Ltd.
Lower Court Docket No.: 11133, first instance (初), civil case (民), (2019) Shanghai Pudong New Area People's Court (沪0115)
SUMMARY OF THE ARGUMENT
When an internet rushing buy service uses technical means to provide users of the target platform with an unfair rushing buy advantage, which destroys the established rushing buy rules of the target platform and deliberately bypasses its regulatory measures, causing serious damage to the user stickiness and business environment of the target platform, it shall be deemed to have constituted unfair competition.
The plaintiff, LUFAX, is a well-known Internetbased wealth management platform, and LUp2p.com is the former's wholly-owned subsidiary. Both Plaintiffs have financial service websites and mobile applications, with the trading of debt transfer products being a popular service. To purchase the debt transfer products, members of the two Plaintiffs have to often log on to the aforementioned websites or mobile applications and frequently refresh and follow the information of the debt transfer products. The Defendant was the provider of the software "LUFAX purchase tool". By installing and running the software, users could automatically purchase the debt transfer products based on preset conditions without having to follow the information of the products released by the two Plaintiffs on their platforms, and could complete a transaction before the members who made purchases manually.
The two Plaintiffs argued that the unfair competition act carried out by Luzhitou had damaged the competitive advantages accumulated by the two Plaintiffs through years of operation, resulting in the loss of members, the decline of attention to the products, and the damage to the goodwill of the two Plaintiffs, which had caused large losses to the two Plaintiffs. Accordingly, the two Plaintiffs requested the court to order the Defendant to stop the latter's unfair competition act, eliminate the impact and compensate the Plaintiffs a total of RMB 500,000 for economic losses and reasonable costs. The Defendant argued that: there was no competition between the Plaintiffs and the Defendant, and that the core of the rushing buy service provided by the Defendant was to make it more convenient for users to purchase the debt transfer products of the two Plaintiffs' platforms under the premise of the users' authorization; the rushing buy service neither prevented users from logging into the two Plaintiffs' platforms normally to carry out transactions nor did it affect the normal purchase behavior of other registered users of the two Plaintiffs' platforms. The Defendant thus requested the court to reject all the claims proposed by the Plaintiffs.
After hearing, the Pudong Court held that operators, in their providing online rushing buy services, should follow the provisions of Article 12 of the Anti-Unfair Competition Law and not use technical means to hinder or disrupt the normal operation of internet products or services legally provided by other operators by manipulating users' choices or in other ways. In the event that the Internet rushing buy service is not within the scope of the types of behaviors explicitly listed in the Internet-specific article of the Anti-Unfair Competition Law and is thus applicable to the underwriting clause of the article, consideration should be given to whether it is unfair in addition to whether it would cause damage to the target platform and users of the rushing buy service.
The Defendant's behavior of providing rushing buy services through operating software caused serious damaging consequences to the Plaintiffs: first, the impairment to the interests of platform traffic. The rushing buy service resulted in a decrease in the frequency of user visits to both Plaintiffs' platforms, which in fact reduced the opportunity of both Plaintiffs to present other financial products. Second, the deprivation of potential trading opportunities for users. The rushing buy service changed the distribution of the proceeds of the debt transfer products among the users of the two Plaintiffs' platforms, which resulted in the reduction in the opportunity interests of a significant number of users. Third, the destruction of the business environment of the platforms. The rushing buy service would affect investors' confidence, which both Plaintiffs' platforms have relied on the most, resulting in a reduction in user stickiness and an exodus of the investors and capital to other investment channels.
Also, the rushing buy service in question in the case was clearly unfair. On the one hand, the rushing buy service has subverted the rules of both Plaintiffs' platforms, which has undermined the fair basis for the rushing buy of the products. The overall success rate of the rushing buy was heavily leaning in favor of users who had used the rushing buy service, causing the complete missing of the basis for fair competition among users. On the other hand, the rushing buy service in question deliberately circumvented the monitoring and regulation mechanism of the two Plaintiffs, reflecting the subjectiveintent of the Defendant's act.
The fintech industry has been developing in recent years, and fintech products launched through online platforms have been widely welcomed by users. However, they have also given rise to various kinds of online rushing buy services. How to evaluate and regulate, according to the Anti-Unfair Competition Law, online rushing buy services as market competition behaviors implemented by operators is not only relevant to the protection of the competitive interests of fintech enterprises and of the interests of consumers as investor users, but also important for the maintenance of the business environment of financial platforms.