Beijing First Intermediate People's Court announced a judgment on the morning of 8 July, supporting Decision No. 21307 made by the Patent Reexamination Board (PRB) of the State Intellectual Property Office (SIPO) which determined that the patent "a chatting robot system" owned by Shanghai Zhizhen Network Technology Company is valid. Apple announced in court that it would file an appeal.

In the 30,000-word verdict, Beijing First Intermediate People's Court upheld the decision by the PRB that the patent in question was valid. The name of the patent under application number CN200410053749.9 is "a chatting robot system". The patent was applied for in August 2004 and officially granted in 2009. Shanghai Zhizhen Network Technology Company filed a lawsuit with Shanghai First Intermediate People's Court in June 2012, alleging that the Siri program used by Apple on its iPhone infringed the patent of its product Xiao i robot.

Siri is a program built into Apple's phones which enables users to realize functions like dialing, sending messages, etc. via voice. Xiao i robot is similar smart software which was established in 2001 according to official information. After 2007, Xiao i robot turned to the provision of intelligent robot customer services for governments and enterprises.

After the filing of the suit against Apple by Shanghai Zhizhen, the Shanghai court conducted two court hearings of the case in July and August of 2012 and the case is still pending. In the meantime, Apple applied to the PRB of the SIPO for a declaration that the patent of Xiao i robot was invalid. The PRB, however, made Decision No.21307, upholding the validity of this patent. Therefore, Apple instituted administrative proceedings against the PRB at Beijing First Intermediate People's Court at the end of 2013. The case was tried in the court on 27 February 2014 and a judgment was handed down on 8 July which didn't support the series of arguments put forward by Apple. The announcement of Beijing First Intermediate People's Court said that Apple had stated in court after the judgment was made that it would file an appeal.

Si Weijiang, the attorney representing Shanghai Zhizhen, told the reporter that the judgment on 8 July was in accordance with expectations. Neither Shanghai Zhizhen nor Apple has made any response to the judgment.

It remains unclear what impact the judgment will have on the litigation between Shanghai Zhizhen and Apple. If Apple finally loses, then Siri will be restricted or even banned in China, or both parties will need to reach a settlement just like Apple did in its iPad trademark case against Shenzhen Proview Technology in 2012 when the iPad maker paid $60 million to the latter.

(Source: Southern Metropolis Daily)

【Comment and analysis】

David Li: Being ordinary administrative proceedings involving patents, the case of Apple v. State Intellectual Property Office (the PRB under the SIPO, in fact), which was reported by numerous media and for which the Beijing First Intermediate People's Court had just announced its judgment, became "extraordinary" and attracted extensive attention from the public simply because it was related to Apple.

The reason why administrative proceedings involving patents are ordinary is that Beijing First Intermediate People's Court accepts hundreds of patent administrative cases every year. In 2013, Beijing First Intermediate People's Court accepted 818 such cases and concluded and passed verdicts for about 700 of them, which means it made judgments for about two patent administrative cases every day on average.

According to Article 46 of the Patent Law of the People's Republic of China, where any party is dissatisfied with the decision of the Patent Re-examination Board with regard to declaring a patent invalid or maintaining a patent, such party may, within three months of receipt of the notification, bring a lawsuit to the people's court. As a state administrative organization, the decision of the Patent Re-examination Board on declaring a patent invalid or maintaining a patent is a specific administrative act. According to Article 11 of the Administrative Procedure Law of the People's Republic of China, the people's courts shall accept suits brought by the subject person of specific administrative acts who is dissatisfied with the specific administrative acts regarding the property by the administrative organization.

The trial of patent administrative litigation is usually connected with patent infringement litigation. This case is also connected with the patent infringement case instituted by Shanghai Zhizhen against Apple in 2013. If Apple is determined to have infringed the patent of Shanghai Zhizhen, manufacturing and sale of all products of Apple involving the Siri function (including a series of related products after iPhone 4S) in China should be stopped.

Although none of Apple's arguments (such as insufficient disclosure of specifications, unclear claim of rights, lack of necessary technical features, novelty and innovativeness, etc.) at the PRB for declaring the patent "Xiao i robot" invalid were supported and none of its claims at Beijing First Intermediate People's Court were supported either, it doesn't mean that the Siri function of Apple's products with the Siri function is not usable. Apple stated in court that it would file an appeal. Even if the appeal is unsuccessful, the trial of first instance and second instance involving patent infringement litigation will take some time.

In 2012, in the case concerning the trademark iPad, Apple finally paid $60 million to Shenzhen Proview Technology. The final outcome of the patent infringement case in question this time remains unknown, though, the suit filed by Shanghai Zhizhen sets a good example for Chinese enterprises with intellectual property rights.