Supreme People’s Court reaches first administrative decision on GUI design patent infringements

The Supreme People’s Court (SPC) has issued its decision in Epoint v Henan AMR & Glodon (Gao Fa Zhi Xing Zhong No 78 and Zui Gao Fa Zhi Xing Zhong No 79), reaffirming that "the design features distinguishing a patented design from a prior design usually have a greater impact on the overall visual effect of the design than the rest design features of the same". This is probably the SPC’s first administrative decision on infringement assessment of graphical user interface (GUI) design patents, as corroborated by a search on China Judgments Online (6 September 2021).

Case brief

The patentee Glodon filed an administrative complaint with the Administration for Market Regulation Henan Province (Henan AMR) against Epoint, alleging that the engineering cost software V10.X sold by the latter infringed its design patent ZL201530283890.7 and ZL201530284014.6 (’890 patent and ’014 patent), both titled “computer with graphic user interface”.

Henan AMR accepted the complaint on 16 May 2019 and issued administrative decisions on 12 September 2019, finding patent infringement and sanctioning Epoint. Epoint brought two parallel administrative proceedings before the Zhengzhou Intermediate Court at first instance, challenging the AMR decisions, but to no avail. The cases were thrown out on 26 October 2020.

Both the AMR and the first-instance court sided with the patentee, determining that the overall layout of the accused infringing interface is almost identical to that of the patented interface. Both interfaces include three segments from top to bottom, namely the top title bar, the upper menu bar and the lower interface operation area, in approximately the same proportions. The differences are nuanced and have no substantial impact on the overall visual effect. Thus, in the absence of substantial difference, the accused infringing interface, which is similar to the patented GUI, was deemed to fall within the latter’s scope of protection.

As a countermeasure, on 12 July 2019 Epoint initiated an invalidity action against ’890 patent before the China National Intellectual Property Administration (CNIPA), which maintained the validity of the patent on 2 March 2020.

Strategy

Epoint submitted its existing GUI design (V10.0 version) as prior design evidence during the invalidation proceeding. The accused infringing design V10.X was merely a minor update to V10.0, without substantial changes.

In the infringement proceeding the patentee had to prove that the accused infringing design falls within the protection scope of its patented design. In order to do this, it asserted that the protection scope of its patented design should be extended to the three-segment overall layout, which actually belongs to the prior design. In the meantime, in order to maintain the validity of its GUI patent in the invalidation proceeding, the patentee underlined the design features distinguishing its patented GUI from the prior design in terms of the layout and design of each segment, namely the title bar, menu bar and interface operation area, which constitutes de facto limitation of the protection scope of its patent right.

The CNIPA confirmed in the decision on ’890 patent the differences underscored by the patentee and concluded that "the number of icons and the specific arrangement thereof" would lead to different visual impressions, which has a significant bearing on the overall visual effect of the design. Based on this reasoning, the CNIPA affirmed the validity of ’890 patent.

On 13 July 2020, an invalidation request was filed before the CNIPA against ’014 patent, which was overruled on 7 January 2021.

On 10 November 2020, Epoint appealed the AMR decisions before the SPC.

SPC reasoning

During the second-instance proceedings, Epoint made the following arguments:

• The three-segment overall layout is a design feature of the prior design. The design features distinguishing the patents at issue from the prior design are the respective layout and design of the top title bar, the upper menu bar and the lower interface operation area, rather than the three-segment overall layout.
• In the invalidation proceedings against the patents at issue, the patentee underlined the said distinguishing design features, which was affirmed by the CNIPA.
• Compared with the patents at issue, the layout and design of the top title bar, the upper menu bar and the lower interface operation area of the accused infringing interface are obviously different. Such distinguishing features are conspicuous to ordinary consumers and have a significant impact on the overall visual effect.

Therefore, on the premise that the accused infringing interface is devoid of multiple design features that distinguish the patents at issue from the prior design, the accused infringing interface was found not similar to the patents at issue.

The SPC agreed with these arguments. It opined that the CNIPA’s invalidation decisions regarding the ’890 and ’014 patents affirm the overall layout shared by the patents at issue and the prior design is not a distinguishing design feature and has been disclosed by the prior design. In terms of the distinguishing design features, there are differences in the design of the logo, menu bar and interface operation area between the accused infringing interface and the interface shown in the main view of the patents at issue, which are perceived by ordinary consumers during purchase and use of the products. The number of icons and their specific arrangement will lead to different visual impressions, which will have a greater impact on the overall visual effect of the design. Therefore, the accused infringing design is neither identical with, nor similar to, the patents at issue.

Comments

It is a common tactic for the defendant in a patent civil proceeding to challenge the validity of the plaintiff’s (patentee’s) patent in a separate CNIPA invalidation proceeding. In this case, the significance of the invalidation action also lay in ascertaining the distinguishing design features, because even if the defendant’s prior design defence fails in the infringement proceeding, the distinguishing design features could still be utilised in the non-infringement defence, as infringement could be established only on the premise that the accused infringing design contains all the design features that distinguish the patented design from the prior design.

The SPC reaffirmed in this case that the general principle employed in design patent infringement assessment (as introduced in relevant judicial interpretations) also applies to GUI designs.