Posted on December 15, 2016

Established in 2006, Shenzhen DJI-Innovations (“DJI”) is a global leader in R&D and production of drones control system and Unmanned Aerial Vehicle (UAV) solutions. From the earliest commercial flight control systems, ACE series helicopters control systems, multi-rotors flight control systems, spreading wings series S1000 & s900, to all-in-one multi-rotors Phantom series and the handheld 3-Axis camera gimbal Robin series, DJI has filled numerous technology blanks both domestically and internationally and became the leading player in the field.

In between the end of 2015 and the beginning of 2016, Guangzhou WALKERA Technology Co. Ltd. (WALKERA), initiated lawsuits against DJI for two alleged patent infringements, alleging DJI’s Phantom 3 model to have infringed on their utility model patents no. ZL200720060190.1 for “model aircraft” and no. ZL201220100061.1 for“a remote-controlled aircraft with state monitoring function”, and asking for an indemnity of 2.2 million yuan.

After examining the plaintiff’s patents, DJI entrusted Unitalen to rebut the plaintiff by filing invalidation petitions against the plaintiff’s the patents.

The plaintiff’s patent no. ZL200720060190.1 requests to protect a type of “model aircraft”, with the required protection scope in its independent claim as follow: 1. a model aircraft comprises a main body frame and a head cover connected with the top of the main body frame, a foot rest structure connected with the lower portion of the main frame and is used for supporting the main frame, a power assembly arranged on the main frame and a controller capable of receiving an external control signal; and is characterized as having four corresponding corners of the main body frame respectively fixed into a cross-shaped four-axis line, each shaft is fixed with a power assembly.

During search, Unitalen attorneys located a prior art document from Germany about an aircraft, in particular a quadrocopter. The quadrocopter is defined by a preferably cross-shaped structure, each with a drive unit including propeller at the four corners; a processor-based electronic unit to control motor according to the pilot’s control signals, multiple bumper bars spanned in both longitudinal and transverse directions protect the electronics in the event of an impact. Lightweight materials such as aluminum, magnesium or carbon fiber composites are used. The cross-shaped boom is fixed by a screw per strut connector. A landing gear can be constructed of spring steel wires.

Based on the finding, Unitalen requested for invalidation of the plaintiff’s patent due to invalidity of creativity, which was supported by Patent Reexamination Board in their decision made on September 22, 2016. In spite of the plaintiff claiming the German patent is under B64C27/08 professional aircraft category while theirs is under A63H27/00 toy model aircraft category, the difference in technical fields shall lead to other substantial differences in structures, the board believed the development of model aircrafts was done mostly with reference to the real models being used in civil, public and military arenas by the time when the patent application was filed, especially for toy remote-controlled aircrafts, which are hard to distinguish from small-sized UAVs. The technical personnel in this field tend to look for inspiration from the more developed UAV technologies to improve model aircrafts’ structure, and it is technically feasible for the technical personnel to apply the UAV structure to toy model aircrafts. Therefore, it is obvious that the technical personnel in this field would develop toy model aircrafts based on the prior art DE202006013909 quadrocopter. Thus, Patent Reexamination Board announced total invalidation of the No. ZL200720060190.1 patent.

As to the plaintiff’s other patent, namely, ZL201220100061.1 , requests to protect a type of “remote-controlled aircraft”, demanding the protection scope in its independent claim as follows: 1. a remote-controlled aircraft with state monitoring function, is composed of a remote-controlled aircraft with a signal transceiver of the aircraft terminal and a remote control with a signal transceiver of the remote control terminal, the remote-controlled aircraft is provided with a motor powered by batteries, and is characterized as having a sensor assembly arranged on the remote control aircraft, and the sensor assembly is used for transmitting the message of the aircraft condition to the aircraft terminal of the signal transceiver, where the message is then relayed to the remote control terminal of the signal transceiver.

Unitalen lawyers discovered a prior art in China (CN101866180A) that is about a flight control system, which includes airborne and ground systems. The airborne system comprises a micro camera and a GPS receiver which are arranged outside the UAV, a GPS signal acquisition unit which is arranged inside the UAV, a power monitoring unit, a superposition unit and a microwave emitting unit; the ground system comprises a microwave receiving unit, a video display and a remote controller. The airborne system of this invention converts the flight parameters and power supply information etc. into video signals and transmits them to the video display of the ground system. The remote controller can be used for turning on or off the superposition function of the superposition unit. Based on the finding Unitalen requested for invalidation of the plaintiff’s patent due to invalidity of creativity.

Similar to ZL200720060190.1 patent invalidation discussed above, although the plaintiff claimed their patent is under A63H27/00 toy aircraft category, different from G05D 1/00 automatic pilot category of CN101866180A, the collegial panel supported the proposition of invalidity of creativity due to the same arguments illustrated above. Thus, Patent Reexamination Board announced total invalidation of 201220100061.1 as well.

In this case, DJI, as the manufacturer of consumer-level small-sized UAVs, fought against the plaintiff, whose patents are in the toy model UAVs field. With the prior art evidences provided by the invalidation petitioner, Patent Reexamination Board has clarified the features of and connections between toy remote-controlled aircraft and small-sized UAVs technical fields, which shall provide important guidance for determination of the protection scopes of UAV patent claims in the future.