GUI (Graphical User Interface) refers to a digital user interface that displays graphically.Since 2014, China has included GUI within the scope of protection for design patents. For a long time, the judicial protection status of GUI design patents in China has attracted considerable attention and has always been a hot topic. This article mainly sorts out and summarizes the judicial opinions of three influential GUI design patent infringement cases.

Case 1: Qihoo & Qizhi vs. Jiangmin regarding Dispute over Infringement of Design Patent [Case Number: (2016) Jing 73 Min Chu No. 276]

  1. Summary of Judgment

In the judgment of this case, Beijing Intellectual Property Court found[i]:

1.1 Whether the alleged infringement constitutes a direct infringement of the asserted design patent

    1. The product displayed in the asserted patent is a computer, and the asserted patent is titled “Computer with a GUI“, indicating that the asserted patent is a design for use on products such as computers. The wording “Computer” has a limiting effect on the protection scope of the asserted patent.
    2. The Defendant’s alleged infringing act is providing the alleged infringing software to users. Since the alleged infringing software does not fall within the category of the design product, as a result, even if the GUI of the alleged infringing software is identical or similar to that of the asserted patent, the alleged infringing software does not fall within the protection scope of the asserted patent, and Plaintiff’s claim of design patent infringement cannot be established.

1.2 Whether the alleged infringement constitutes contributory infringement

The act carried out by users is merely downloading the alleged infringing software to their computers, without any manufacturing, offering to sell, or selling computers, etc. Although Plaintiff claims that there is a possibility that users sell or offer to sell computers with the alleged infringing software pre-installed, Plaintiff has not submitted evidence to prove this allegation. In this case, as there is no direct implementation of the asserted patent, even if the alleged infringing software is an intermediate of an infringing product as stated by Plaintiff, Defendant’s act of providing the alleged infringing software cannot constitute contributory infringement. Accordingly, Plaintiff’s corresponding claim cannot be established.

  1. Result of Judgment

The court dismissed all the claims of Plaintiff, Beijing Qihoo Technology Co., Ltd., and Qizhi Software (Beijing) Co., Ltd.

  1. Impact of the Judgment

This judgment strictly applied the protection scope for design patents, emphasizing the limiting role of “product” in design patents. In the absence of “direct infringement”, even if the GUI of the alleged infringing software is the same or similar to the GUI of the asserted patent, Defendant’s act cannot constitute contributory infringement.

After this judgment was made, it sparked lasting controversy. The public questioned the judicial protection strength of GUI design patents and, to some extent, also affected the enthusiasm of enterprises to apply for GUI patents.

Case 2: Kingsoft vs. TouchPal & Touchjoy regarding Dispute over Infringement of Design Patent. [Case Number: (2019) Hu 73 Min Chu No. 399] This case was selected as one of the top ten intellectual property protection cases by Shanghai courts in 2022.

  1. Summary of Judgment

In this judgment, Shanghai Intellectual Property Court found[ii]:

    1. The asserted patent includes a dynamic GUI for mobile communication terminal products. Since the mobile terminal device itself is of a conventional design, the GUI part has a more significant impact on the overall visual effect. The dynamic GUI should consider both the overall style of the basic interface and the varying degrees of influence that its entire dynamic change process has on the overall visual effect. In this case, the GUI of some versions of the infringing software is quite similar to the GUI of the asserted design patent in terms of overall GUI design and dynamic change process, and there are no substantial differences between these two designs in terms of overall visual effect, constituting a similar interface design.
    2. Products that include GUIs are provided by different entities, from hardware to underlying operating systems to application software, presenting the characteristics of “separation of software and hardware, and separation of software from software.” ……However, the developers of the infringing application software, i.e., the two Defendants, although they did not directly manufacture and sell the infringing mobile phones themselves, the design of the infringing GUI is embedded in the infringing software through a programming language, and the entire dynamic process of the infringing GUI is inevitably presented on the mobile phone through routine operations compatible with the software. The developers of the infringing software are clearly aware of the occurrence of this specific GUI design effect and intend to pursue this consequence. Therefore, in the process of users using the software to present the appearance of the infringing mobile phone, the software plays an irreplaceable substantial role. Developing infringing software for production and business purposes is equivalent to manufacturing the most substantial part of a mobile phone with an infringing GUI, and the act of listing the infringing software for download is also equivalent to offering to sell and selling the most substantial part of a mobile phone product with an infringing GUI. In this case, it should be determined that the two Defendants’ actions of manufacturing (developing), offering to sell, and selling the infringing software constitute an infringement of the asserted patent.
  1. Result of Judgment
    1. The two Defendants are ordered to cease infringement of the plaintiff’s design patent rights;
    2. The two defendants are jointly and severally liable to compensate the plaintiff for economic losses of CNY300,000 and reasonable expenses paid to stop the infringement amounting to CNY50,000.
  1. Impact of the Judgment

This case has been deemed as a breakthrough case for the infringement of GUI design patents. Traditionally, design patents emphasize a specific industrial product as the carrier, and software does not fall within the category of design products defined by patent law, nor is it easy to constitute the same or similar kind of product as an electronic product, which poses a challenge for the enforcement of GUI design patents (see Case 1). This case explored the method of legal application in GUI design patent infringement cases, fully considered the characteristics of industrial products that include GUIs, respected the development rules of the industry in this field, determined that GUI software is an irreplaceable substantial component for generating GUIs, found that the act of developing and listing software that generates infringing GUIs constitutes patent infringement, and for the first time sorted out and analyzed the comparison rules for dynamic GUIs, which has important guiding significance for the trial of similar cases[iii].

Case 3: Kingsoft vs. Mengjia regarding Infringement of Design Patent Dispute [Case Number: (2022) Hu Min Zhong No. 281]

  1. Summary of Judgment

In the second-instance judgment of this case, Shanghai Higher People’s Court found[iv]:

  1. Protection Scope for the Asserted Patent

The title of the asserted design patent is “GUI for Mobile Communication Terminal,” and the patent views depict a mobile phone with a dynamic GUI. The brief description of the asserted patent states: “The key points of the design of this product lie in the GUI on the screen; the mobile communication terminal is of existing design.” Based on this, the protection scope of the asserted patent is the GUI for mobile communication terminals as shown in the patent views.

  1. Method and Conclusion of Design Comparison

2.1 Comparison Method

    1. The brief description of the asserted patent states: “The key points of the design of this product lie in the GUI on the screen; the mobile communication terminal is of existing design.” Therefore, for the asserted patent, the mobile communication terminal shown in the patent views is generally of existing design. When comparing the designs, one should mainly consider the impact of the GUI on the overall visual effect.
    2. The asserted patent depicts the design in the images as static and dynamic graphics of the GUI. When comparing the designs, one should follow the principle of “overall observation and comprehensive judgment,” considering both the overall style of the basic interface and the entire or detailed dynamic change process, as well as taking into account the characteristics of the specific GUI and the different degrees of impact each interface and the dynamic change process of each interface have on the overall visual effect.

2.2 Comparison Conclusion

The alleged infringing GUI falls within the protection scope of the asserted design patent.

  1. Whether the Appellant who developed and provided the software that could display the GUI upon operation should bear infringement liability
    1. Products containing a GUI are generally provided by different entities, from hardware to the underlying operating system to application software, showing the characteristics of “separation of software and hardware, and separation of software from software.” Therefore, for the implementation of a granted GUI design patent, one must judge in conjunction with the characteristics of the GUI itself. The court believes that applying the design of the GUI to a product in a manner substantially identical to manufacturing can be recognized as implementing the GUI design patent.
    2. In this case, when the software is downloaded and installed on a mobile phone by a user, the alleged infringing GUI, which is similar to the design of the asserted patent, can be presented on the mobile phone after the user operates the software in the operating system. Therefore, the alleged infringing GUI is presented on the mobile phone with the joint participation of the hardware manufacturer, operating system developer, user, and software developer and provider. ……The hardware manufacturer, operating system developer, and user merely provide the environment or conditions for the alleged infringing GUI to be presented on the mobile phone, and their actions do not have a legal causal relationship with the damage to the patentee’s rights. However, the Appellant developed and provided the software for users to download for free, which inevitably leads to the presentation of the alleged infringing interface on the mobile phone, resulting in the implementation of the asserted patent. This action has a legal causal relationship with the occurrence of patent infringement damage, and therefore, the Appellant should bear the corresponding infringement liability.
  1. Result of Judgment
    1. Mengjia shall immediately cease infringement of Kingsoft’s design patent for “GUI for Mobile Communication Terminal” (Patent No. ZL201830455426.5) from the effective date of the judgment;
    2. Mengjia shall compensate Kingsoft for economic losses of CNY200,000 within ten days from the effective date of the judgment;
    3. Mengjia shall compensate Kingsoft for reasonable expenses paid to stop the infringement amounting to CNY50,000 within ten days from the effective date of the judgment.
  1. Impact of the Judgment

This case followed the judicial opinion of Case 2, and considered the characteristics of products containing GUIs, such as “separation of software and hardware, and separation of software from software,” it further refined the method of comparison for GUI design patent infringement and the thought process for determining infringement. It weakened the limiting role of “product” on the protection scope for design patents and provided a referable set of rules for the judicial protection of GUI design patent infringement.

Conclusion:

From the above cases, it can be seen that Beijing Intellectual Property Court was relatively conservative in the early case of Qihoo and Qizhi vs. Jiangmin, which was unable to provide effective judicial protection for GUI design patents. However, Shanghai Intellectual Property Court made a bold breakthrough in the principles of infringement comparison and the determination of infringement liability for GUI design patents in the case of Kingsoft vs. TouchPal & Touchjoy, solving the long-standing challenges of GUI design patent protection. Shanghai Higher People’s Court in the case of Kingsoft vs. Mengjia followed the approach of the Kingsoft vs. TouchPal & Touchjoy case and further refined the rules for similar cases.

It can be anticipated that after the Fourth Amendment to China Patent Law and the Amended Guidelines for Patent Examination came into effect, the judicial protection for GUI design patents in China will gradually be strengthened.

Author: Nancy Qu

Footnotes

[i] (2016) Jing 73 Min Chu No. 276 Civil Judgment.

[ii] (2019) Hu 73 Min Chu No. 399 Civil Judgment.

[iii] Beijing Kingsoft Security Software Co., Ltd. vs. Shanghai TouchPal Information Technology Co., Ltd. and Shanghai Touchjoy Information Technology Co., Ltd. Infringement of Design Patent Rights Dispute Case — One of the Top Ten Cases of Intellectual Property Judicial Protection by Shanghai Courts in 2022, Author: Shanghai Higher People’s Court.

[iv] (2022) Hu Min Zhong No.281 Civil Judgment.

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