China: Judgment Of Infringement Upon Patented Process Through Comparison Between Products Shichang XU v. Sony (China) Co. Ltd. Et Al. (Article No. 10 From "China Patent Case Review 2014" By Beijing East IP Ltd.)

Method of Manufacturing a Multi-layer Metal Pattern

Shichang XU v. Sony (China) Co. Ltd. et al. - Judgment of Infringement upon Patented Process through Comparison between Products (Civil Judgment (2012) Yue Gao FaMin San Zhong Zi No. 624 by the Guangdong High People's Court on December 19, 2012)

A method patent is different from a product patent in that it protects a dynamic operation process. How to compare between the method used by the defendant and the patented process is a key point when the court tries an infringement case involving a process patent. In this case, by finding the technical feature difference of the products, the court held that the two processes are neither identical nor equivalent and thus the defendant does not infringe upon the plaintiff's patent. This shows a new way for judging infringement upon a process patent.

The patentee, Shichang XU, owns a patent with No. ZL 92100257.2 titled as "Method of Manufacturing a Multi-layer Metal Pattern." The lawsuit was filed based on Claim 1 as follows:

"a method of manufacturing a multi-layer metal pattern, which is implemented by engaging one or more modes that is not in sets, each mold is provided with layered figure processed to required metal pattern and each mold is provided with positioning points corresponding to each other so as to facilitate alignment and superposing of each mold, wherein firstly grinding the non-conductive substrate surface, degreasing for standby, aligning and superposing the molds, printing the color printing ink or metal foil powder in the film, then thermally transferring onto predetermined surface of the non-conductive substrate, and then aligning and superposing the molds again and coloring and degreasing one or more times as needed and then washing away thermal transferred ink or metal foil powder, and then aligning and superposing the molds again and printing the desired pattern on the electrically conductive ink and then electroforming, i.e. plating metal pattern of the desired thickness, and again degreasing, cleaning, drying, and finally being coated with a transparent resin to protect the metal pattern made."

Shichang Xu accuses that Sony (China) Co.,Ltd. (hereinafter "Sony") manufactures, sales, and offers for sale, Shenzhen Suning Appliance Co.,Ltd. (hereinafter "Suning Appliance") sales, and Wistron Infocomm (Kunshan) Co.,Ltd. (hereinafter "Wistron") manufactures, sales the allegedly infringing products and infringed his patent right.

The focus of this case is whether the accused process falls within the protection scope defined by Claim 1 of the patent.

The second instance court held that: A process would have certain relation to a product; therefore products not having the same nor equivalent technical features shall correspond to different manufacture method. The second instance court made physical destruction of the accused product and found that the product manufactured by the accused method is different from the product manufactured by the patented process.

In detail, the patentee admitted that the accused product has the technical feature of "on the non-conductive substrate (i.e., the surface of the laptop), the metal pattern was formed with metal material of smooth surface by punching." However, according to Claim 1, the product obtained by the patented method has the technical feature of "the surface of the non-conductive substrate has metal pattern of a certain thickness by plating." By Comparison, at least one technical feature is neither identical nor equivalent, so the two products are different from each other. Base on this, the second instance court also made comparison between the manufacture process described in the notarized video submitted by Sony and the patented process. The court finds that at least one technical feature of the accused manufacturing process is different from the patented process of Claim 1, thus the accused manufacture process cannot cover all the technical features of Claim 1.

The patentee further argues that the technical feature "punch" in the accused manufacture method and the technical feature "plating" in patented process are not identical but constitute equivalent. With respect to this, according to Rule 17.2 of the Certain Provisions of the Supreme People's Court on Issues Concerning the Application of Law in the Hearing of Patent Dispute Cases issued by the Supreme People's Court (the SPC), the second instance court holds that the two features should be physical means and electrochemical means respectively, thus the formed patterns are different. This means the technical means and the results thereof are neither identical nor equivalent.


The second instance court shows a new way for judging infringement upon a patented process. This case is enlightening in that it indicates that products not having the same or equivalent technical features shall correspond to different manufacture method. Thus, in order to determine whether the accused method and patented process are identical or equivalent, it would be useful to see the products first. That is, comparing the product manufactured according to the patented process with the product manufactured by the accused method, and determine whether the latter has different technical feature from the former.

Regarding equivalence argued by Shichang Xu, according to Rule 17.2 of the Certain Provisions of the Supreme People's Court on Issues Concerning the Application of Law in the Hearing of Patent Dispute Cases issued by the SPC, an equivalent technical feature refers to the feature achieve substantially the same function, obtain substantially the same effect by substantially the same means as the disclosed technical feature, and a skilled person in the art can easily conceive the technical features without inventive work. In this case, the second instance court believes that, for the metal pattern formed by stamping and sticking and the pattern formed by plating means the means used to obtain are different (physical vs. electrochemistry), and have different effects (two patterns are different in terms of integrity, finish and attachment tightness). Therefore, the accused manufacture method and the patented process do not constitute as equivalent.

This case reminds us of the limited protection by a process patent. When applying for a patent, the applicant may get maximum protection by submitting both a product claim and the method claim thereof. When the accused product falls within the scope of the claimed product, even if the accused product were made by different method, the infringement would be established. This shows an absolute protection. However, for a method claim, its effectiveness only extends to the product directly obtained by the patented method. Even if the product made by the other party is the same as the product directly obtained by the patented method, it still probably does not infringe the patent because the other party actually uses a method different from the patented process.

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

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

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”

Mondaq Advice Centre (MACs)
Up-coming Events Search
Font Size:
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
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). 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 & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd 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 or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at and we will use commercially reasonable efforts to determine and correct the problem promptly.