Case brief:

In 1993 Arno Kütt, one of Cleveron’s owners, founded AS Eerung – a company that manufactured and sold furniture. In 2000, the owners of today's Cleveron started a furniture retailer ON24. By 2009, ON24 has already become the largest furniture retailer in Estonia. In 2006, ON24 created a logistics company SmartPost, and started to develop its unique click and collect solutions, creating hardware and software for automated parcel terminals. In 2007, the name Cleveron was registered. In 2009, SmartPOST parcel terminal network-based delivery service was declared the Logistics Deed of the Year in Estonia. Cleveron is the innovation leader in creating robotics-based parcel terminals and developing last mile click and collect pickup solutions for retail and logistics sectors. Its product range goes from automated smart lockers to parcel robots and parcel terminals.

In the process of entering the China's market, Cleveron found that the PackRobot devices exhibited to the public at the Post-Expo held in Paris in 2015 and actually sold have been counterfeited by a Chinese enterprise which had applied for a patent for utility model. Cleveron entrusted Unitalen litigation team to file a request for invalidation against the above patent after its negotiation failed, and finally all the patent rights for the utility model under the title of "GOODS CARRYING DEVICE FOR WAREHOUSE TYPE AUTOMATIC STORING AND TAKING EQUIPMENT" of that infringing enterprise were invalidated.

Case analysis:

This case has gone through two rounds of invalidation proceedings. In the first round of invalidation proceedings, CNIPA held that although the petitioner made the video published on YouTube website notarized in Hong Kong, the authenticity of the video published on YouTube website was not recognized because the video publishing and modification rules of YouTube website were unknown, and made a decision to uphold the validity of the patent right. Cleveron then filed an administrative litigation against the decision on the invalidation. After trial, the Beijing Intellectual Property Court reversed the invalidation decision and made the judgment that the video published on YouTube website can be used as prior art evidence to evaluate the novelty and inventive step of the patent right involved. In the second round of invalidation proceedings, CNIPA finally recognized all the evidence and determined that the relevant evidences could confirm each other and are sufficient to prove that PackRobot products had been exhibited at the Post-Expo held prior to the application date of the patent involved, and were for public sale in the market prior to that date. Meanwhile, the relevant graphic, literal and video evidence disclosed by PackRobot products have been sufficient to disclose the relevant features of the claims. Even if a small number of features of the claims still cannot be directly observed from the above evidence, these features are all common knowledge in the art. Finally, CNIPA determined that the relevant claims lack novelty or an inventive step and made a decision to invalidate all patent rights.

Thus, Unitalen’s litigation team has successfully helped the client invalidate the counterfeit patents of the competitor and protected the production and sales of the client's products in China from undue infringement threats.