Sieged Honda with their defense
Response in patentability defense would affect on the judgment of infringement.The China supreme people’s court using the same standard judging patentability and infringement in Honda v Shuanghaun Auto case, which results in the preservation of the patent and no infringement of the patent.
Background
Honda sued Shuanghaun Auto for patent infringement in November 2003. The infringement product, LAIBAO S-RV, is very similar to Honda CR-V and the design of CR-V is protected by China design patent CN3222860S ( ‘860 patent ). Honda have sent warning letters to Shuanghaun Auto and their distributors asking for stopping infringement in mid September, and later sent letter to related government department accusing that LAIBAO S-RV constituted patent infringement. Honda also spread statements of patent infringement constituted by LAIBAO S-RV in print media and web media, indicating that Honda would ask for a huge compensation from Shuanghaun Auto in the infringement suit.
Shuanghaun Auto argued the validity of ‘860 patent in December 2003 and the Board of Patent Appeals and Interferences (BAPI) made the invalidation decision no.8105 to declare that the ‘860 patent is invalid in 2006. According to the invalidation decision no.8105, the court rejected Honda’s infringement issue in July 2009. Honda sued BAPI asking for reexamining the patentability of ‘860 patent, finally the supreme administrative court decided to cancel the invalidation decision no.8105 an corresponding decisions in 2010. Honda drop the case in June 2011 and restarted with higher compensation of 348.57 million CNY in November 2011. Honda lose the lawsuit finally in 2015, when they have appealed again and again until the China supreme people’s court a make the decision.
Self-contradictory Honda
Although the ‘860 patent was judged to be invalid according the standard of “The overall visual effect” by BAPI and the administrative court, the supreme court accepted Honda’s complaint that decorative partial design would affect on the overall visual effect distinguishably and canceled the invalidation decision no.8105 with the reason that the ‘860 patent is different from prior art in the headlamps, fog lights, front fender, rear combination lamps, grille, rear bumper, side windows and roofline part.
However, the supreme court also decide that sued infringement product did not constitute infringement since there are differences between ‘860 patent and the sued product, including headlamps, fog lamps, front and rear fender, rear combination lamps, rear, top, roofline, front grille, hood, center portion of hood, side mirror and side lights, which affect the overall visual effect distinguishably so that consumer could distinguish the product from the ‘860 patent.
The supreme court provided another consideration of the overall visual effect standard, which could be extensively explained that partial design would be observed carefully when the product is large as a car, therefore, we should be spend much attention on the partial design while evaluating the patentability of design patent of large product. Moreover, whether Honda is forced to take the complaint to overcome patentability issue of ‘860 patent, or it is just a mistake on litigation strategy, the result remind us again the importance of prior art search.
Shuanghaun Auto just laugh for a short while
On the other hand, Shuanghaun Auto countersued Honda for unfair competition with malicious slander, which results in poor sales performance of LAIBAO S-RV and stopping production thereof, and asked for compensation of 365.74 million CNY. The court decided compensation of 16 million CNY since spreading statements of patent infringement constituted by LAIBAO S-RV in print media and web media without practical evidence of infringement is beyond the reasonable enforcement of patent.
Some say that the results of the case would encourage copycat, however, Shuanghaun Auto is removed from the list of granted automobile manufacturer in February 2016, which is declared by the Ministry of Industry and Information Technology of the People’s Republic of China. Is this the answer from China government to reveal how they treat copycat ? Let’s wait and see.
Reference:
(1) Honda sued China motor company of design patents infringement, conversely lost the case and make good a loss of 1.6 million RMB（http://goo.gl/FHRY0L）
(2) Overview Honda design patent invalid case to adjust the “as a whole” （http://goo.gl/MMIDQ7）
(3) China Supreme Court: Honda sue Shuanghaun Auto, the design patent infringement case takes 13 years finally closed (Final Verdict)（http://goo.gl/xrnVkM）
(4) Why Shuanghaun Auto CR-V can win the patent infringement suit case and make Honda a loss of ten million RMB ?（http://goo.gl/5AnUCw）
Author：
Project Leader Maii Kuo