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This is an informal case summary prepared for the purposes of facilitating exchange during the 2025 WIPO IP Judges Forum.

Session 1: Industrial Designs

Shanghai High People’s Court, China [2023]: Beijing Jinshan Security Software Co., Ltd. v Shanghai Mengjia Network Technology Co., Ltd., (2022) Hu Civil Final No. 281

Date of judgment: May 18, 2023

Issuing authority: Shanghai High People’s Court

Level of the issuing authority: Final Instance

Type of procedure: Judicial (Civil)

Subject matter: Industrial Designs

Plaintiff-Respondent: Beijing Jinshan Security Software Co., Ltd.

Defendant-Appellant: Shanghai Mengjia Network Technology Co., Ltd.

Keywords: Design patent infringement, Graphical User Interface, GUI

Basic facts: Beijing Jinshan Security Software Co., Ltd. (hereinafter referred to as Jinshan Company) is the patentee of the design patent titled “Graphical User Interface for Mobile Communication Terminal” (hereinafter referred to as the patent at issue). This patent includes 10 similar designs, among which the view of design 10 is a mobile phone front that includes a dynamic interface view.

Shanghai Mengjia Network Technology Co., Ltd. (hereinafter referred to as Mengjia Company) developed and provided downloadable versions of the “Qu” input method software for iPhone and Android phones.

Jinshan Company filed a lawsuit before the Shanghai Intellectual Property Court, claiming that the graphical user interface (hereinafter referred to as GUI) of the input method software mentioned above belongs to the same or similar design as the patent at issue, and Mengjia Company’s act infringes on Jinshan Company’s patent right at issue.

On December 30, 2021, the Shanghai Intellectual Property Court issued a judgment that:

1. Mengjia Company shall immediately cease infringement of Jinshan Company’s design patent for “GUI for Mobile Communication Terminal” (Patent No. ZL201830455426.5) (the patent at issue) from the effective date of the judgment;

2. Mengjia Company shall compensate Jinshan Company for economic losses of CNY200,000 within ten days from the effective date of the judgment; and

3. Mengjia Company shall compensate Jinshan Company for reasonable expenses paid to stop the infringement amounting to CNY50,000 within ten days from the effective date of the judgment.

Mengjia Company appealed to the Shanghai High Court.

Held: On May 18, 2023, the Shanghai High Court dismissed the appeal, upholding the first instance judgment.

Relevant holdings in relation to industrial designs: The main issues in dispute in this case are: 1. the scope of protection of the patent at issue and whether the alleged infringing GUI falls within the scope of protection of the patent at issue; and 2. whether the defendant’s act of developing and providing the accused infringing software for free download to others constitutes infringement of the plaintiff’s patent rights.

1. The scope of protection of the patent at issue and whether the alleged infringing GUI falls within the scope of protection of the patent at issue

The title of the patent at issue is “GUI for Mobile Communication Terminal,” and the patent views depict a mobile phone with a dynamic GUI. The brief description of the patent at issue 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 patent at issue is the GUI for mobile communication terminals as shown in the patent views.

The patent at issue depicts the design in the images as static and dynamic graphics of the GUI. When comparing the alleged infringing GUI and the patent at issue, the principle of “overall observation and comprehensive judgment” shall be followed: 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.

The conventional design of the mobile phone’s appearance does not have a substantial impact on the design as a whole. When comparing the alleged infringing GUI and the patent at issue, one should mainly consider the impact of the GUI on the overall visual effect. The Court held that the alleged infringing GUI falls within the protection scope of the asserted design patent.

2. Whether the defendant’s act of developing and providing the alleged infringing software for free download to others constitutes infringement of the plaintiff’s patent rights

A product containing a GUI is generally provided by different entities, ranging 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 shall judge in conjunction with the characteristics of the GUI itself. The Court held 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.

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 patent at issue, 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, Mengjia Company 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 patent at issue. This action has a legal causal relationship with the occurrence of patent infringement damage, and therefore, Mengjia Company is liable for patent infringement.

Relevant legislation: Articles 2 and 11 of the Patent Law of the People’s Republic of China (revised in 2021).