China: The Standards For Determining An Equivalent Feature Shaohong LIU v. Junpei LIANG (Article No. 8 From "China Patent Case Review 2014" By Beijing East IP Ltd.)

Device Having Replaceable Liquid Crystal Display Card

Shaohong LIU v. Junpei LIANG - The Standards for Determining an Equivalent Feature (Civil Judgment (2011) Min Shen Zi No.438 by the Supreme People's Court on March 9, 2012)

An equivalent feature is a feature that, as compared to the feature described in a claim, performs substantially the same function by substantially the same means, produces substantially the same effect, and can be associated by an ordinary person skilled in the art without any inventive work. While determining whether a prosecuted product falls within equivalent infringement, the means, function, effect, and inventive work should be determined in the above order. Only when all four elements of a feature meet the above conditions, the feature can be determined as an equivalent feature.

The patentee, Shaohong LIU, owns a utility model patent No. 02225694.6 titled "Device Having Replaceable Liquid Crystal Display Card", where claims 1 and 2 are as follows:

"1. A device having a replaceable liquid crystal display card, including a case and a circuit board mounted therein, characterized in that, a display window within which a liquid crystal display card be plugged is provided on the case; the circuit board is provided with a microprocessor, a memory storing a plurality of different display types of programs and a display contact connected with a display output terminal of the microprocessor; the circuit board is provided with a conductive rubber strip, one side of which is pressed on the display contact and another side of which is conductively touched with pins of the liquid crystal display card directly.

2. The device of claim 1, characterized in that the circuit board is provided with a plurality of touching switches connected with the microprocessor, wherein one or more of the touching switches can be triggered by a corresponding concave-convex element on an outer side of the liquid crystal display card to output a display type selection signal to the microprocessor."

A prosecuted product is a game console of YD693. Both parties disputed on whether the feature "a short-circuited point provided in the pins of the liquid crystal display card is connected with a program in-out coding contact via a conductive rubber strip, so as to deliver a display type selection signal to the microprocessor on a circuit board" in the prosecuted product belongs to an equivalent feature of the technical feature "the circuit board is provided with a plurality of touching switches connected with the microprocessor, wherein one or more of the touching switches can be triggered by a corresponding concave-convex element on an outer side of the liquid crystal display card to output a display type selection signal to the microprocessor" in claim 2 of the involved patent. There is no disagreement on other features.

The first trial gave a decision that the prosecuted product does not fall within the equivalent scope of claim 2 of the involved patent and there is no infringement. The second trial supported the decision of the first trial.

The patentee submitted a retrial request to the Supreme People's Court and claimed that the prosecuted product falls within the equivalent scope of claim 2 of the involved patent.

The Supreme People's Court made the following opinions after retrial, although the technical features "short-circuit point," "conductive rubber strip" and "program in-out coding contact" in the prosecuted product realize substantially the same functions as those of "concave-convex element" and "touching switch" in the involved patent, different means are employed and different technical effects are achieved. So, the prosecuted product does not fall within the equivalent protecting scope of the involved patent. Accordingly, the retrial request of the patentee was rejected.

Remark

The Doctrine of Equivalent is an important principle in the patent infringement determination. It expands the literal infringement, reliefs the disadvantageous limits on claims by words and expressions, and provides the patentee with airer and more reasonable protection.

The Doctrine of Equivalent was proposed for the first time in China in Certain Provisions of the Supreme People's Court on Issues Concerning the Application of Law in the Hearing of Patent Dispute Cases.1 According to this provision, "during determining whether a technical feature of a prosecuted product and a patent technical feature are equivalent, it needs not only to consider whether or not the technical feature of the prosecuted product is a technical feature an ordinary person skilled in the art can conceive without any inventive work, but also needs to consider whether or not the technical feature of the prosecuted product, compared with the patent technical feature, is substantially the same means, performs substantially the same function and achieves substantially the same effect. Only when the conditions in the above two aspects are met at the same time, the technical feature of the prosecuted product and the patent technical feature can be determined as equivalent technical features." 2

In the practice of judicial judgment, the abuse of the Doctrine of Equivalent would expand the patent protection scope of the patentee improperly, and injure the public interest. To prevent the abuse of the Doctrine of Equivalent, conditions of applying the Doctrine of Equivalent shall be limited strictly. Namely, "having substantially the same means, function and effect and being obvious to an ordinary person skilled in the art are necessary conditions for the equivalent infringement."3 The patentee should provide evidence to prove or explain sufficiently that the prosecuted product and the involved patent meet all of the above conditions; and the prosecuted infringer can contend that there is no equivalent infringement as long as he/she puts in a plea that the prosecuted product does not meet any one of the above conditions against the involved patent.

When judging an infringement by applying the Doctrine of Equivalent, a corresponding technical feature in the prosecuted product should be found with reference to a technical feature in the involved patent. A two-step method can be used to judge whether there is an equivalent infringement. In the first step, it is determined whether the two features are substantially the same in terms of means, functions and effect. If so, go to the second step. If the two features are not substantially the same in either means, functions, and effect, it can be concluded that the two features do not belong to equivalent features. In the second step, the question of whether the corresponding technical feature in the prosecuted product is easily contemplated must be determined. If it is not easily contemplated, it can be concluded that there is no equivalent infringement. If it is easily contemplated, it can be concluded that there is an equivalent infringement.

In the present case, the judge explained in detail whether the technical feature (technical feature A hereafter) consisted of "short-circuit point," "conductive rubber strip," and "program in-out coding contact" in the prosecuted product and the technical feature (technical feature A' hereafter) consisted of "concave-convex element" and "touching switch" in the involved patent are equivalent.

Viewed from the function, the function realized by the technical feature A' of claim 2 in the involved patent utilizes the concave-convex element on the outer side of the liquid crystal display card to trigger the touching switch on the circuit board so as to deliver a display type selection signal to the microprocessor, i.e., a signal output function.

Viewed from the means, the way to realize a signal output function by the prosecuted product involves in connecting the short-circuit point provided in the pins of the liquid crystal display card with a program in-out coding contact via a conductive rubber strip, so as to deliver a display type selection signal to the microprocessor on a circuit board. Except for the signal input function as above, the "conductive rubber strip" in the prosecuted product also has the same function as the element "conductive rubber strip" in claim 2 of the involved patent, i.e., delivering the display output signal of the microprocessor to the liquid crystal display card via the pins of the liquid crystal display card.

Viewed from the effect, since the "conductive rubber strip" in the prosecuted product has both the signal input and output functions, compared with the involved patent, the prosecuted product reduces elements, simplifies the structure, and makes the input and output more stable and reliable. Thus, the technical effect achieved by the prosecuted product is different from that of the involved patent.

Therefore, the technical feature A in the prosecuted product and the technical feature A' in the involved patent do not constitute equivalent features.

Moreover, in China, the time for determining an equivalent infringement is a date on which the infringement took place. However, some opinions from the court say that, for claims including functional features, the time point of equivalent determination shall be the application date of the patent,4 and for other claims, the time point of equivalent determination shall be a date on which the infringement took place5.

Device Having Replaceable Liquid Crystal Display Card Case - PowerPoint Presentation (Chinese Version)

Footnotes

1 As stipulated in Paragraph 2, Rule 17, an equivalent feature is a feature that, as compared with the feature described in a claim, performs substantially the same function by substantially the same means, produces substantially the same effect, and can be associated by an ordinary person skilled in the art without any inventive work.

2 See the Civil Judgment No.(2010) Min Shen Zi No. 181 by the Supreme People's Court, Shanxi Jingye Fiberglass Co.,Ltd. v. Yongchang Jishui Composite Material Co.,Ltd.

3 See the Opinions of the Supreme People's Court on Issues concerning Maximizing the Role of Intellectual Property Right Trials in Boosting the Great Development and Great Prosperity of Socialist Culture and Promoting the Independent and Coordinated Development of Economy issued by the Supreme People's Court on Dec 16, 2011.

4 See Rule 54 of Guidelines for Patent Infringement Determination issued by the Beijing High People's Court: As to a claim including functional features, if not only a corresponding technical feature in the prosecuted technical solution realize the same function, but also the structure and steps of the corresponding technical feature for realizing the function are equivalent with the structure and steps in the embodiments recited in the specification of the patent, it can be determined that they constitute equivalent features. The time point to determine the equivalent shall be the application date of the patent.

5 See Rule 52 of Guidelines of Patent Infringement Determination issued by the Beijing High People's Court, The time point to determine whether a technical feature of the prosecuted technical solution and a technical feature of a claim are equivalent shall be the date on which the prosecuted act took place.

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.

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