Patent trolls failed to stop Yevgeny Plyushchenko's ice show “The Nutcracker 2”

The Intellectual Property Court dismissed the patent holder's claims to invalidate the decision of Rospatent made on the results of the consideration of the objection filed by LLC Zuykov and Partners in its own name in order to prevent the attempts to disrupt Yevgeny Plyushchenko's ice show.

In October 2017, LLC Zuykov and Partners applied to the Federal Service for Intellectual Property with the objection to the grant of patent No. 138553 for utility model “DEVICE FOR OBTAINING A VOLUME VIDEO PROJECTION (OPTIONS).” The basis for filing an objection were repeated attempts by the patent holders of the above utility model to disrupt ice show “The Nutcracker 2,” which had gained a wide recognition and admiration among the spectators, with the participation of titled figure skater Yevgeny Plyushchenko.

In the opinion of the patent holders, the use of high-tech 3D effects in the show was a direct violation of the exclusive right to the utility model, which was protected by patent of the RF No. 138553.

LLC Zuykov and Partners, stopping the attempts to disrupt the show by responding to numerous claim letters, learned that the technical solution protected as a utility model that related to a device failed to meet with the “novelty” patentability criterion, what was the basis for recognizing the patent as fully invalid. In addition, in the opinion of the lawyers of LLC Zuykov and Partners, the utility model was not a device, but a group of independent devices that were not connected to each other.

By the decision of Rospatent of 16.02.2018 the patent for a utility model was recognized fully invalid. The decision of Rospatent is based on the fact that the features given in the independent claims describe a set of independent devices, each of which has its own functionality, namely: a video source, at least one video projector, at least one projection screen, a display, an electronic control device. Rospatent also pointed out that the listed devices had not only an independent functional value, but they also were spaced in space, whereby those devices did not have a constructive connection. Thus, the legal protection under patent for a utility model No. 138553 was provided to the system, what contradicted to the law.

Disagreeing with the decision of Rospatent, the patent holder applied to the Intellectual Property Court. LLC Zuykov and Partners was involved as an intervener with respect to the subject of the dispute as the person who had filed an objection.

In the statement of claim the patent holder, in support of his claim, pointed out to the following circumstances. Firstly, the decision of Rospatent had been made in violation of the Rules for filing objections, applications and their consideration in the Chamber for Patent Disputes, as it had been signed by an improper official – a deputy head of the Federal Service for Intellectual Property.

Secondly, the patent holder believed that LLC Zuykov and Partners could not file an objection in its own name, since the decision to grant a patent in accordance with Paragraph 3 of Article 1387 of the Civil Code of the Russian Federation could be challenged only by the right holders and only within a six-month period.

Thirdly, the patent holder believed that when considering the objection, Rospatent had exceed its powers, since the patent was recognized invalid because the protected device was a system, and not because it failed to meet with the “novelty” patentability criterion. Also, the patent holder saw a contradiction in the actions of Rospatent, which was expressed in the cancellation by Rospatent of its own decision, although in considering the application materials the examiner had agreed with the arguments about the possibility of granting a legal protection to the applied technical solution.

The lawyers of company LLC Zuykov and Partners submitted to the court a reasoned report to the application and substantiated the inconsistency of every argument of the patent holder.

Having thoroughly examined the case materials and the positions of the parties, the Intellectual Property Court came to a conclusion that the decision to invalidate patent for a utility model No. 138553 fully had been made by Rospatent lawfully, as a result of which the statement of claim should be dismissed.