1. The term "sale" in the Patent Law shall be interpreted as "the establishment of sales contract"
LIU Hongbin v. Beijing Jinglianfa CNC Technology Co. Ltd. & Tianwei Sichuan Silicon industry Co. Ltd.
Supreme People's Court, (2015) Min Shen Zi NO.1070
Case Brief:
LIU Hongbin is the patentee of the utility model patent ("Patent") at issue. LIU Hongbin claimed Beijing Jinglianfa CNC Technology Co. Ltd (hereinafter referred as "Jinglianfa") and Tianwei Sichuan Silicon industry Co. Ltd (hereinafter referred as "Tianwei") infringed his utility model patent and filed a lawsuit with the court. The court ordered Tianwei to stop the infringement immediately. Then, the defendant appealed to the higher court, and the appeal court of the 2nd instance held that the alleged sales action had been completed before the patent's granting announcement date, and thus Tianwei's behavior did not infringe the Patent. The Supreme People's Court retried the case and affirmed the court's judgment of the 2nd instance.
Essence:
To determine whether or not the sale has occurred, one should usually adopt the criteria of establishment of the sales contract. The time of establishing the contract is the time the parties can carry out the sales action according to the Patent Law. The court shall hold that the sales action has been completed if the time of establishing the contract is earlier than the patent's granting announcement date.
2. The alleged design falls within the protection scope of the design patent if the overall visual effect of the alleged design has no substantial difference from the litigating patent.
Shanghai Xinkete automobile sales co., LTD v. Tianjin Shizhiyuan automobile sales co., LTD
Tianjin Higher People's Court, (2014) Jin Gao Min San Zhong Zi NO. 19
Case Brief:
Shanghai Xinkete automobile sales co., LTD ("Xinkete") claimed Tianjin Shizhiyuan automobile sales co., LTD ("Shizhiyuan") infringed its design patent right of "automobile (Guest star 2008)". The first instance court had the opinion that the alleged products had substantial differences from the litigating patent in respect of specific details and the overall visual effect, and held that Shizhiyuan did not infringe Xinkete's patent right. The Tianjin Higher People's Court of the second instance revoked the first instance judgment and ordered Shizhiyuan to stop the sales action and compensate 400,000 RMB.
Essence:
To determine whether or not the alleged design is similar to the patented design in litigation, the court shall examine whether the design features embedded in the main visual part, innovation part, and easily observed part can incur strong visual impact to the general consumers. If the overall visual effect between the alleged design and the patented design has no substantial and obvious difference, then they are similar designs and the alleged product falls within the design patent's protection scope.
3. The alleged product does not infringe the patent if there is no evidence to prove the alleged product must have used the patent's technical method.
Huawei Technologies Co., LTD v. ZTE Communications Co. , Ltd & Hangzhou Alibaba Advertising Co., LTD
Zhejiang Higher People's Court, (2014) Zhe Zhi Zhong Zi No. 161
Case Brief:
Huawei Technologies Co., LTD ("Huawei") alleged that a switch ZTE Communications Co., Ltd ("ZTE") manufactured, offered to sell and sold infringed its patent of the claimed method, and Alibaba sold said switch. Huawei filed the infringement lawsuit against them before the court. The first instance court held that the existing evidences cannot prove ZTE had adopted the patented method and thus rejected Huawei's claims due to failure of burden of proof. The court of the second instance affirmed the first instance judgment.
Essence:
On the condition that it can only be proven that the alleged product reproduces the patented technical method when satisfying a specific circumstance as alleged by the patentee, but it is not sufficient enough to prove that the alleged product necessarily uses its patented technical method, then infringement of the patent cannot be established.
4. The technical solution described in the specification or appended drawings but not recorded in the claims shall be regarded as patentee's "donation" to the public
Shaanxi Galaxy Fire control technology and equipment Co., LTD v. Shandong Tianhe Fire control equipment Co., LTD
Shandong Higher People's Court, (2015) Lu Min San Zhong Zi No.151
Case Brief:
Shaanxi Galaxy Fire control technology and equipment Co., LTD ("Shaanxi Galaxy") claimed the products Shandong Tianhe Fire control equipment Co., LTD ("Shandong Tianhe") manufactured and sold infringed its patent right. The first instance court found that there was one technical feature of the alleged product that was neither identical with nor equivalent to the patent at issue, and held that Shandong Tianhe did not infringe Shaanxi Galaxy's patent. The court of the second instance affirmed such judgment.
Essence:
This is a typical case which uses the "donation rule" to identify the patent's protection scope. The technical solution described in the specification or appended drawings but not recorded in the claims shall be regarded as patentee's "donation" to the public. If the patentee initiates the infringement lawsuit to claim that the protection scope includes such donated solution, the court shall not support the claim.
5. If the alleged product has all the technical features of the patent's independent claim, then the alleged products constitute infringement.
Wuhan Kelan Jinli Building Materials Co., Ltd. v. Huangpi District of Wuhan city Water Conservancy Construction and Installation Engineering Company, Wuhan Jiuzhouxing Construction Group Co., Ltd & RUAN Yonghong
The Intermediate People's Court of Wuhan City, Hubei Province, (2014) Yue Wuhan Zhong Zhi Chu Zi No. 8
Case Brief:
Wuhan Kelan Jinli Building Materials Co., Ltd. claimed that Huangpi District of Wuhan city Water Conservancy Construction and Installation Engineering Company and Wuhan Jiuzhouxing Construction Group Co., Ltd infringed its exclusive license of the invention patent right. The court held that the alleged product included all the technical characteristics of patent's Claim 1 and thus fell within the protection scope of the patent. RUAN Yonghong also directly manufactured the products after consulting with Wuhan city Water Conservancy Construction and Installation Engineering Company and Wuhan Jiuzhouxing Construction Group Co., Ltd, and thus all defendants infringed the plaintiff's patent right.
Essence:
In the patent infringement lawsuit, the court only needs to identify whether the alleged products include all technical features of the independent claim, which means even if the alleged products include additional technical features not defined in the claim, the technical solution still fall into the protection scope of the patent. According to China's judicial practice, the principle of "full coverage of the technical features in the patented claim" applies.
6. When the patentee, after using exhaustive means for proving the alleged technology has the possibility to implement its patented method, but failed, the court may require the party implementing this technology to bear obligation of clarifying its technical content.
Gansu Zhongshun Petrochemical Engineering Equipment Co., LTD v. Zhunyi Guangli Environmental Protection Engineering Co., Ltd & Yunnan Chihong Zinc Germanium Co., Ltd
The Intermediate People's Court of Kunming City, Yunnan Province, (2014) Kun Min Chu Zi No. 384
Case Brief
Gansu Zhongshun Petrochemical Engineering Equipment Co., Ltd ("Zhongshun") claimed that Zhunyi Guangli Environmental Protection Engineering Co., Ltd ("Guangli") used its patented method when Guangli provided service for equipment plugging construction to Yunnan Chihong Zinc Germanium Co., Ltd. The court found that the alleged technical method had high probability to be identical as the plaintiff's patent after review of the evidence provided by Zhongshun, and it could be asserted Guangli had implemented the patented technical method. The court concluded that the defendants infringed the plaintiff's patent right and shall compensate plaintiff's economic loss.
Essence
The patentee has the prima facie evidence to prove the defendants have used its patented technical method, but cannot prove the alleged technology has implemented its patent after exhaustive means because the alleged infringement had ended. Under such circumstance, the court may shift the burden of proof and require the party allegedly implementing this technology to clarify the used technical content of its own.
7. In the patent granting and right-affirmation procedures, interpretation of the claims usually adopts the principle of reasonable explanation in maximum extent.
LI Xiaole v. Patent Reexamination Board, GUO Wei & Shenyang Tianzheng Electrical Equipment Co., Ltd.
Supreme People's Court, (2014) Xing Ti Zi No.17
Case Brief:
Guo Wei and Shenyang Tianzheng Electrical Equipment Co., Ltd. are the joint patentees. LI Xiaole applied before the Patent Reexamination Board ("PRB") for invalidation of the patent, and the PRB made the No. 14794 decision to maintain the validity of the patent. LI Xiaole filed the administrative lawsuit against the Decision with No. 1 Intermediate People's Court of Beijing, and the court maintained the PRB's decision. Then LI Xiaole appealed to Beijing higher people's court, and the court maintained the first instance decision. LI Xiaole applied before the Supreme People's Court for retrial. The Supreme People's Court revoked the PRB's decision as well as the two court decisions.
Essence:
In general, interpretation of the claims usually adopts the principle of reasonable explanation in maximum extent during the patent granting and right-affirmation procedures, which means making the broadest reasonable explanation based on the claim's written records in combination with understanding of the specification. If the specification does not specially define the claim's terms, then in principle one should adopt the general meaning of these terms as understood by the person skilled in the art after reading the claims, specification and appended drawings. It should be avoided to constrain the terms inappropriately by citing the specification or patent examination files.
To follow the above principle in explaining the claim's terms, clearer conclusion can be made as for whether the claim meets the patent granting conditions or not. In the future patent practice, this may make the applicants pay more attention to the quality of the patent application documents.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
