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Unitalen Client American Company Rogers Won Consecutive Patent Invalidation Cases


Case facts:

Rogers Corporation was founded in the United States in 1832 by Peter Rogers and is headquartered in Chandler, Arizona, USA. It is a global leader in engineered materials, and produces products in the United States, China, Japan, South Korea, Germany, Hungary and Belgium. The company's products cover many fields, including laminates, 3D printable media materials, prepreg/bonding sheets, ceramic substrates, heat sinks, elastomer parts, polyurethane materials, specialty silicone materials, pressure sensitive tapes, engineered porous rubber, flexographic pads, the solutions include advanced electronic solutions, radio frequency solutions, busbar solutions, elastomer material solutions, etc., and are industry benchmarks in terms of reliability, efficiency and performance.

In the process of entering the Chinese market, Rogers Corporation found that many domestic enterprises took advantage of the loopholes that substantive examination is not conducted for utility model patents, and applied for patents for technical solutions that obviously belong to the prior art and the applications had been allowed. With the help of the Unitalen team, Rogers Corporation filed invalidation request procedures against the above-mentioned patents, and finally completely invalidated the utility model patents including, patent number of ZL2017*******2.4 of a Dongguan Technology company with a title of "a ... foam", and the utility model patent of a Dongguan Technology company with a title of "a ... foam" with a patent number of ZL2018*******4.8. Unitalen successfully helped Rogers Corporation defuse the risks and avoid the threat of infringement on the production and sales of its main products.

Case analysis:

For the first patent invalidation case, the Unitalen team found the optimal prior art in view of the fact that the claims are open-ended and the protection scopes are overbroad. Although the specific embodiments disclosed in the prior art are different from the specific embodiments of the target patent, they can still fall within the protection scopes of the claims; meanwhile, the Unitalen team explained to the collegiate panel that although the technical terms used are different, there is no substantial difference between the respective features of the target patent and the prior art, and those skilled in the art can understand that the above-mentioned different technical terms have substantially the same reference. Finally, all four claims of the target patent were announced to be invalid due to lack of novelty.

For the second patent invalidation case, in view that the claims involve a method, the Unitalen team submitted invalidation reasons that the claims do not comply with the provisions of Article 2.3, and Article 22.2 and Article 22.3 of the Chinese Patent Law, in the meantime, formulated an invalidation strategy of double-pronged attack of both the formal invalidation grounds and the substantive invalidation grounds, which put the patentee in a dilemma. Therefore, the collegiate panel determined that the difference between the preparation processes of the target patent and the prior art does not constitute any difference between the claims and the prior art, and the target patent has no unexpected technical effect relative to the prior art. Finally, all of the claims of the target patent were announced to be invalid for lack of an inventive step.