Unitalen Client BSC Group Won the Patent Infringement Litigation with the Supreme People’s Court – Whether “Estoppel” Applicable to a Modification Made during Patent Substantive Examination?

August 17, 2020


The plaintiff and patentee, BCS Group (Italy), submitted an invention patent application titled "Agricultural Drives and Related Tools" (hereinafter referred to as “the patent involved”) to the State Intellectual Property Office of China on March 30, 2010, which was granted on September 9, 2015.

The defendant, Yongkang Hongyue, manufactures and sells a “Snow Blower” product of "Hongyue 740" model, which used the patent involved without the permission of the plaintiff and thus infringed the patent right involved.

Entrusted by BSC Group, Unitalen filed a patent infringement lawsuit with the Hangzhou Intermediate Court in 2018. The Hangzhou Intermediate Court ruled in July 2019 that Yongkang Hongyue should immediately stop the infringement and compensate BCS for economic losses. In refusal to accept the judgment of the first instance, the defendant appealed to the Supreme People’s Court.

Court Ruling:

After the trail, the IP division of the Supreme People’s Court found that Yongkang Hongyue's appeal was not valid, so the ruling of the first instance shall be upheld. Thus BCS Group won the ultimate victory in this patent infringement case against Yongkang Hongyue.

Typical Significance:

The focal dispute in this case is: under what circumstances will BCS’ modification to the claims and statement of opinions in the patent examination process constitute “estoppel”?

During the substantive examination of the patent involved, the examiner rejected the novelty of the additional feature "approximately inclined by 45°" in the original claim 5 and 10 in the first examination opinion. In reply to the first examination opinion , BCS merged all the additional features in the original claim 2-5 and 7-10 and some of the features in the specification into claim 1 and 6, respectively; thus finally obtained the authorization.

First of all, it is necessary to determine whether the above-mentioned modification made by BCS constitutes the abandonment of the "approximately inclined by 45°" technical solution and other similar solutions. In the above-mentioned reply, BCS did not conduct a comparative analysis of the feature "approximately inclined by 45°", did not specifically state the difference between this feature and the prior art, nor did BSC point out the possible technical effects of the difference in angle; also, the distinguishing features and technical effects pointed out by BCS have nothing to do with the above-mentioned angle features, so the above-mentioned modifications do not lead to the legal effect of abandoning the technical solution.

Therefore, the defendant’s claim that "the angle of its products is greater than 60 degrees, and the constrictive modification made by BCS has led to the abandonment of other equivalent solutions to the 45-degree angle technical solution, the estoppel principle should be applied" cannot be established.