China: Appeal of Infringement Dispute of Patent for Invention on One of the 2012 Top 50 Typical Cases of Intellectual Property Protection in Chinese Courts — Harbin Industrial University Xinghe Industrial Co., Ltd v. Jiang Su Runde Pipe Industry Co., L

Last Updated: 7 January 2014
Article by Li Zhongsheng and Song Xinyue

In April 2013, the Supreme People's Court of the People's Republic of China (the "Supreme People's Court") released the 2012 Top 50 Typical Cases of Intellectual Property Protection in Chinese Courts (Fa Ban [2013] No. 44) as a referential document for fair and efficient adjudications for the People's Courts. The document included an appeal case regarding a patent for invention infringement dispute (Case Number: [2012] Su Zhi Min Zhong Zi No. 0021), which was represented by the IP Litigation Group of King & Wood Mallesons.

  1. Case Brief

The Plaintiff, Harbin Industrial University Xinghe Industrial Co., Ltd ("Xinghe Co. Ltd") filed its invention patent application entitled "Production and apparatus of a steel strip- reinforced plastic pipeline" with the State Intellectual Property Office (SIPO) of the People's Republic of China, which granted the patent on April 4, 2007 (Patent No. ZL200510082911.4). The patent has three independent claims, covering the following subject matters respectively: 1) pipe product; 2) manufacturing method of the pipe; and 3) manufacturing apparatus of the pipe.

The Defendant, Jiang Su Runde Pipe Industry Co., Ltd ("Runde Co. Ltd") was established in September 2009, producing and selling steel stripe reinforced plastic pipelines and its installments.

In October 2010, Xinghe Co. Ltd filed an action against Runde Co. Ltd with the Nanjing Intermediate People's Court (the "Nanjing Court") for infringement of its patent for invention. Xinghe Co. Ltd alleged that Runde Co. Ltd had been using its patented method and sales of steel strip reinforced plastic pipes, resulting in tremendous amount of damages and therefore, requested the Nanjing Court to stop the infringement immediately and to pay damages up to RMB 0.5 million. The Nanjing Court reckoned that Runde Co. Ltd.'s production of Pipe Products did not fall into the scope of claim 1 of the patent but did infringe claim 2 and 3. As a result, it ruled that Runde Co. Ltd had infringed patent rights in the First Instance Judgment and ordered it to cease such acts of infringement and pay damages of RMB 0.5 million.

Unsatisfied with the First Instance Judgment, Runde Co. Ltd appealed to the High People's Court (the "Jiangsu Court"). The Jiangsu Court deemed at the Second Instance that the manufacturing method and apparatus used by Runde Co. Ltd did not fall into the protection scope of Xinghe Co. Ltd.'s patent. As a result, the Jiangsu Court overruled the First Instance Judgment.

  1. Case Highlight

At First and Second Instance, both parties had been debating on "whether the title of the subject matter in a claim should limit the protection scope of a patent". In particular, Claim 1 and Claim 2 of the patent at issue read as follows:

  1. A plastic drainage pipe reinforced by steel strips, comprising a plastic pipe body and into which the steel strips are incorporated, and the reinforcing ribs are integrated with the plastic pipe body as a whole, wherein rectangular or circular holes are perforated on the steel strips or the surfaces of both lateral sides of the steel strip are pressed to form lines pattern; the plastic part between two ribs has convex shape; the pipe body has a spigot joint at one end of the pipe for jointing the pipes to each other, and the spigot joint has a jointing part where a sealing rubber ring is to be fixed or a sealant is to be used.
  2. A method for making steel strip-reinforced plastic pipelines as described in claim 1, characterized in that it includes the following steps: a) steel strips go through a composite mold where they are enwrapped by the plastic melt from a extruder, and profiled bands are formed after cooling, hardening and pulling, wherein the extruder and the composite mold are disposed in a right-angled arrangement; b) the profiled bands are transported to an installation site; c) the profiled bands are spirally wound and then welded to form plastic drainage pipes reinforced by steel strips; and d) a continuous pipeline is form by welding the pipes through a spigot joint provided at one end of each pipe.

With regard to claim 1, the drainage pipes made by Runde Co. Ltd. lack the features of "the steel strips are perforated and pressed" and "the plastic part between two ribs has convex shape", and thus it is undisputed that Runde Co. Ltd. does not infringe claim 1. The main dispute centers around whether Runde Co. Ltd infringes claim 2, provided that its method includes the four steps as recited in claim 2. If the title of the subject matter of claim 2 merely reads "a process of producing steel strip-reinforced plastic pipelines", then the answer would most certainly be yes. Yet, the problem is that claim 2 had in fact cited claim 1. So a more complicated question arises: whether the title of the claimed subject matter should be regarded as a technical feature and hence limits the scope of claim 2? Then, given that claim 1 is not infringed, whether or not claim 2 is infringed?

At First Instance, the Nanjing Court thought that Runde Co. Ltd. had infringed claim 2. The main reason for such judgment is that, first, there is no legal basis to deem the title of the claimed subject matter, "a method for making steel strip-reinforced plastic pipelines as described in claim 1", as a technical feature. Secondly, claim 2 is not an independent claim rather than a dependent claim, so it is obviously against legal regulations when the defendant uses claim 1 to restrict the scope of claim 2.

Having represented Runde Co. Ltd., we believe that the judgment of the Nanjing Court is debatable. Hence, we rebutted from different perspectives through appeals. Firstly, with regards to the related regulations of the Patent Law of the People's Republic of China (the "Patent Law") and the Implementing Regulations of the Patent Law (the "Implementing Regulations"), the title of the claimed subject matter, which is the basic component that composes the technical solution, is classified as a technical feature and should be taken into consideration when defining the patent's scope of protection. Article 59 of the Patent Law states that "the scope of protection in the patent right for an invention or a utility model shall be determined by the contents of the patent claim. The specification and appended drawings may be used to interpret the patent claim." Rule 21 of the Implementing Regulations of the Patent Law state that "An independent claim of an invention or utility model shall contain a preamble portion and a characterizing portion", while the preamble portion indicates "the title of the claimed subject matter of the technical solution of the invention or utility model, and those technical features which are necessary for the definition of the claimed subject matter but which, in combination, are part of the most related prior art. The preamble portion and the characterizing portion together define the scope of protection of the invention or utility model". The laws explicitly prescribe that the title of the claimed subject matter belongs to the preamble portion, which is an indispensable and inseparable part of the claim and defines the scope of protection together with the characterizing portion.

Moreover, according to patent examination practices, "steel strip-reinforced plastic pipelines as described in claim 1" indeed restricts the definition of claim 2. In the "Guidelines for Patent Examination 2010", Part II Chapter 2 section 3.1.2, "in determination of scope of patent protection for such an independent claim containing reference to another claim, all the features of the claim referred to shall be taken into account, and their actual limiting effect shall depend on what final impact they may impose on the claimed subject matter of the independent claim". In this case, we should consider the technical features of claim 1, and the actual limiting effect should be reflected in the manner where the product's special features influence the patented process. There are two aspects on which the product in claim 1 influences the process in claim 2. The first aspect is relating to the raw materials and intermediate products. The construction and meaning of the technical terminology, in this case "steel strip", in both claim 1 and claim 2 should be construed as having the same meaning. In particular, the steel strip recited in claims 1 and 2 should both have perforated rectangular or circular holes formed on the steel strips or the surfaces of both lateral sides of the steel strip are pressed to form lines pattern, and the plastic part between two ribs has convex shape. The second aspect is the method steps, where the method should involve the corresponding steps of making rectangular or circular holes and molding the convex shape between two ribs. Without these steps, claim 2 could never produce the pipeline product mentioned in claim 1, and therefore could not be named "a method for making steel strip-reinforced plastic pipelines as described in claim 1".

Furthermore, during the substantive examination, the patentee made amendment to claim 2 by modifying the title of subject matter. The original version says, "method for making steel strip-reinforced plastic pipelines", while the amended version specifically refers to claim 1: "method for making steel strip-reinforced plastic pipelines as described in claim 1". In doing so, the patentee manifestly limits the scope of claim 2 to those methods through which the product described in claim 1 is made. According to the doctrine of prosecution history estoppel, the patentee should not inappropriately broaden the scope of claim 2 during litigation.

In addition, the rationale adopted by the Nanjing Court seems to be illogical. The First Instance Judgment says that Runde Co. Ltd.'s infringement did not fall into the scope of claim 1 but did fall into that of claim 2. According to Article 11 of the Patent Law, the scope of protection of the patent can be extended to products directly obtained by the patented method. When we look into the case, if claim 2 is said to be infringed, then all pipeline products produced by the method described in claim 2 should also infringe. Now that claim 2 reads, "method for making steel strip-reinforced plastic pipelines as described in claim 1", obviously this method produces a product described in claim 1. As a result, we can see that if we start from the premise that claim 2 is infringed, then the product directly obtained by claim 2, i.e. claim 1, should is also infringed. This reveals a huge contradiction in the judgment given by the Nanjing Court.

Finally, it is not difficult to spot out the absurdity of the First Instance Judgment from a patent drafting point of view. In practice, the following is common for claim drafting: claim 1: A method for producing XX, which comprises steps XXX; claim 2: The product obtained from the method of claim 1. It is thus clear that claim 2 only contains a title of the claimed subject matter, and according to the viewpoint of the Nanjing Court, a title of the claimed subject matter is not a technical feature. Hence, claim 2 does not include any technical features, whereas its scope of protection remains uncertain. This is obviously against the Patent Law.

The Jiangsu Court was eventually convinced by the above arguments and stated that the First Instance court erred in its ruling. The title of the claimed subject matter should be deemed as an essential technical feature and should be given full consideration when defining its protection scope. Consequently, it ruled that Runde Co. Ltd. did not infringe the patent at issue, and reversed the judgment of lower court .

  1. Typical Significance

From 2008 onwards, the Supreme People's Court, with reference to the recommendations from various High People's Court, has announced the 10 major cases and 50 typical cases of judicial protection of intellectual property, aiming at promoting juridical protection towards intellectual property rights, displaying its successful outcomes and creating a favorable atmosphere for such development.

The Xinghe Co. Ltd. v. Runde Co. Ltd. case, as one of the 50 typical cases, relates to the issue of determination of patent scope, which is the premise and basis for patent infringement analysis. It is very common in practice to draft an independent claim by citing another independent claim. When ascertaining the protection scope of such a claim, the technical features of the cited claim should have limiting effects. The principle established by this case has brought high referential value to future cases of the same kind.

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.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
Similar Articles
Relevancy Powered by MondaqAI
 
Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Related Topics
 
Similar Articles
Relevancy Powered by MondaqAI
Related Articles
 
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions