In order to implement the work arrangements of the Provincial Party Committee and the Provincial Government on comprehensively strengthening intellectual property protection and effectively intensifying sanctions against acts of intellectual property infringement and counterfeiting, the Guangdong Provincial Administration for Market Regulation has published a batch of “Typical Cases of Administrative Protection of Intellectual Property Rights”. The series of cases concerning design patent infringement disputes over a “controller for electronic devices” handled by Lusheng Law Firm in cooperation with its strategic partner Rouse International on behalf of a certain internationally renowned game company has been honorably selected.
Brief Case Description
The requester is an internationally renowned game company and the patentee of the design patent entitled “controller for electronic devices”. In February 2023, Lusheng Law Firm assisted the right holder in filing 13 administrative adjudication requests for handling patent infringement disputes involving multiple respondents with the Dongguan Administration for Market Regulation, and assisted the Administration in advancing the progress of the cases. The present case is one of this series. The respondent successively raised defenses including prior design, limited design space of the product involved, instability of the patent in suit, and that the accused infringing products were not manufactured by it.
Upon trial, the case-handling authority held that product appearance size and design space are two different concepts. Although the game controller is small in size, this does not mean that the design space is also small. The comparison for infringement should follow the principle of overall observation and comprehensive assessment, taking the overall visual effect being identical or similar as the basis for determination. With respect to the respondent’s defense that the accused infringing products were not manufactured by it, after supplementary inspection and evidence production, the authority enumerated related evidence and, by drawing on the principle of “high probability”, determined that the accused infringing products were manufactured by the respondent. In June 2023, the Dongguan Administration for Market Regulation rendered an administrative adjudication, finding that infringement had been established and ordering the respondent to immediately cease manufacturing products that infringe the requester’s design patent rights.
Typical Significance
1. Reasonable determination of the principles for finding infringement. When the accused infringing product is a small item, the respondent will usually invoke limited design space and minor differences in certain parts as defense grounds. This case clarifies that appearance size and design space are two different concepts, thereby reasonably determining the principles for finding infringement.
2. The principle of “high probability”, which is widely applied in civil disputes, was applied to the determination of the connection between the seller and the manufacturer.
3. Embodiment of the principle of “equal protection” of intellectual property rights. The requester in this case is an internationally renowned enterprise in the video game industry. The 13 related cases were handled fairly and in accordance with the law, effectively safeguarding the lawful rights and interests of the intellectual property right holder.
