CNIPA has chosen this case as an example to address a recurring issue of using software simulation to derive technical parameters not expressly disclosed. The decision sets out a four-part framework to assess reliability, focusing on the software’s source, type, core function, and the user’s operating choices. The ruling provides a clear standard for the use of simulation evidence in invalidation and court proceedings.
Case Background Our client faced a series of infringement actions filed by AOET before the Nanjing Intermediate People’s Court during its IPO process. We responded by filing invalidation petitions against the asserted patents.
Upon reviewing AOET’s patents, we discovered that their claims relied heavily on specific lens parameters that were not expressly disclosed in the prior art. To overcome this, we adopted an innovative technical strategy. We used Zemax software to simulate prior art embodiments and derive the relevant parameters, proving that the claimed technology had already been disclosed.
The strategy was a complete success. We invalidated all four patents, clearing the legal roadblocks for Powertip’s IPO.
The CNIPA Decision The central issue was whether software simulations can be used to establish prior art disclosures. Using the ’398 Patent as the representative case, CNIPA fully accepted our approach and clarified exactly how this evidence must be assessed:
1. Software Source We established the authenticity of the Zemax 2014 version used for simulation. First, we notarized the entire installation process. The software required an installer package, an official plugin, and a hardware key. These elements corroborated its origin. Second, we submitted public materials showing that the version was available before the priority date. Third, we ran the exact same simulation using the Zemax 2024 version, which can be downloaded from the official website today. The identical results produced by both versions cemented the 2014 software's authenticity.
The China National Intellectual Property Administration confirmed the reliability of the software and its publication date. It accepted the evidence, found no defects in the notarized process, and rejected the patentee’s challenges as speculative and unsupported by contrary evidence.
2. Software Type and Function We utilized common knowledge, including industry textbooks, to demonstrate that Zemax is a standard engineering tool used for optical ray tracing. The parameters at issue are based on established optical principles. The software performs calculations based on those principles.
The CNIPA agreed with our opinion, holding that using conventional optical design software to derive parameters is a common practice. It further held that the simulation results do not depend on the specific software or version.
3. Operational Adaptation The simulations required user-defined inputs. AOET argued that these manual inputs introduced subjectivity. In response, we explained the technical basis for each setting and applied the same simulation method to an embodiment described in the ’398 Patent. The simulation reproduced the patent’s own disclosed values.
The CNIPA accepted this approach. It held that user inputs are permissible where they align with the embodiment disclosed in the prior art. In the absence of contrary evidence, the resulting parameters form part of the prior art disclosure
Key Takeaways This decision changes how parameter-based patents will be prosecuted and litigated moving forward, especially in the field of optics.
Parameter claims face closer scrutiny Claims based on newly defined parameters are vulnerable if those parameters can be derived from prior art using standard tools.
Evidence must be complete and verifiable Parties relying on simulations should notarize the full process, including software source, setup, and execution. A clear, notarized evidentiary record is critical.
Technical grounding is essential Legal arguments must be supported by a clear explanation of the underlying scientific principles. Courts and CNIPA will test whether the methodology is objective and reproducible.