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.

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