China: Limitation Of Usage Environment Feature On Protection Scope Of Claims Shimano Inc. V. Ningbo Sunrun Industry & Trade Co., Ltd. (Article No. 13 From "China Patent Case Review 2015" By Beijing East IP Ltd.)

Rear Derailleur Bracket

Shimano Inc. v. Ningbo Sunrun Industry & Trade Co., Ltd. - Limitation of Usage Environment Feature on Protection Scope of Claims (Civil Judgment (2012) Min Ti Zi No.1 by the Supreme People's Court on December 11,2012)

The usage environment feature refers to a technical feature for describing the environment or conditions under which an invention is applied. The usage environment feature included in a claim is a part of the essential technical features of the claim, contributes to define the protection scope of the claim, and thus shall be considered when determining the protection scope of the claim.

Shimano Inc. ("Shimano" hereinafter) is the patentee of the invention patent No. ZL94102612.4 (hereinafter "the '612 Patent"), titled "Rear Derailleur Bracket". The allowed claim 1 of the '612 Patent is as follows:

"1. A bicycle rear derailleur bracket for connecting a rear derailleur (100) to a bicycle frame (50), wherein the rear derailleur is provided with a bracket member (5), a supporting member (4) for supporting a chain guide device (3), and a pair of links (6 and 7) for connecting the bracketing member (4) with the bracket member (5), the bicycle frame is provided with a connection structure (14a) which is formed on a derailleur mounting extension (14) of a rear fork end (51) of the bicycle frame, and the rear derailleur bracket comprises a bracket body (8) which is formed by an approximately L-shaped plate, a first connection structure (8a) which is arranged adjacent one end of the bracket body (8) for connecting the bracket member (5) of the rear derailleur (100) to the bracket body (8), and which is capable of pivoting around a first axis (91), a second connection structure (8b) which is arranged adjacent the other end of the bracket body (8) for connecting the bracket body (8) to the connection structure (14a) of the bicycle frame (50), and a positioning structure (8c) for contacting the derailleur mounting extension (14) to place the rear derailleur (100) in a predetermined posture relative to the rear fork end (51), the bicycle rear derailleur bracket characterized in that the first connection structure (8a) and the second connection structure (8b) are arranged so that a connection point provided by the first connection structure (8a) is positioned below and rearward of a connection point provided by the second connection structure (8b) when the bracket body (8) is mounted on the rear fork end (51)."

Shimano sued Ningbo Sunrun Industry & Trade Co., Ltd. ("Sunrun" hereinafter) over the dispute that the bicycle rear derailleurs of types No. RD-HG-30A and RD-HG-40A manufactured and sold by Sunrun infringed the '612 Patent. The court of the first instance ruled that the rear derailleur bracket of the '612 Patent can be mounted on the bicycle frames of other structures, and the allegedly infringing products have not been mounted on bicycles yet, thus it is unclear whether the bicycles intended to mount the allegedly infringing products comprise the essential technical features that "the bicycle frame is provided with a connection structure (14a) formed on a derailleur mounting extension (14) of a rear fork end (51) of the bicycle frame" and whether the manner of mounting the allegedly infringing products to the bicycles is the same as that defined by the claims of the '612 Patent. Therefore, the court of the first instance did not support the argument of Shimano on the infringement of the '612 Patent.

Shimano was not satisfied with the judgment of the court of first instance and appealed to the court of the second instance. The court of the second instance held that the main technical features of the '612 Patent can be categorized to the structural features and the mounting features. The focus of the dispute is whether the allegedly infringing products have the same mounting features as those defined by the asserted patent, that is: "the bicycle frame is provided with a connection structure (14a) formed on a derailleur mounting extension (14) of a rear fork end (51) of the bicycle frame", and "the first connection structure (8a) and the second connection structure (8b) are arranged so that a connection point provided by the first connection structure (8a) is under and behind a connection point provided by the second connection structure (8b) when the bracket body (8) is mounted on the rear fork end (51)." As Sunrun did not engage in mounting actions, and the allegedly infringing products can also be mounted in other ways than that defined by the '621 Patent, the actions of Sunrun did not infringe Shimano's patent right. The court of the second instance rejected the appeal and affirmed the judgment of the court of the first instance.

Shimano once again was dissatisfied with the judgment of the second instance and applied for a retrial before the Supreme People's Court. The Supreme People's Court appointed the court of the second instance to retry. In this retrial, the court of the second instance continued to held that the main technical features of the '621 Patent are comprised of structural features and mounting features, and although the alleged infringing products include the structural features of the '621 Patent, the alleged actions of Sunrun did not infringe the '621 Patent as Sunrun embodied no actions of mounting the alleged products and Shimano failed to prove that the allegedly infringing products are mounted with the mounting feature as claimed by the '621 Patent. As a result, the court of second instance ruled that the reason for applying the retrial by Shimano was unsound.

However, Shimano was dissatisfied with the judgment of the retrial and applied for a retrial for the second time before the Supreme People's Court. The Supreme People's Court conducted the second retrial and reversed all the judgments. The Supreme People's Court held that the claimed subject matter of the '691 Patent is a bicycle rear derailleur bracket, and claim 1 of the '691 Patent actually defines the specific structures of the rear derailleur and the bicycle frame that are to be connected to the rear derailleur bracket, in addition to the description of the structural features of the rear derailleur bracket itself. The features of the rear derailleur and the bicycle frame that are to be connected to the rear derailleur bracket define the working environment and conditions of the rear derailleur bracket and thus corresponds with the usage environment features providing limitations on the rear derailleur bracket claimed in claim 1. Although the allegedly infringing products have not yet been mounted on the bicycles, the mounting method adopted by Sunrun, that is, directly mounting the allegedly infringing products on the bicycle frames without the rear fork end extension by adding a gasket, is not customary in the industry. Sunrun also failed to prove that it is commercially popular in the market that the allegedly infringing products are mounted on the frames without the rear fork end extension. For these reasons, the Supreme People's Court held that based on the comparison of the technical features, the alleged infringing products are certainly to be used commercially for the bicycle frames as defined by the '621 Patent. Therefore, the Supreme People's Courts found the usage environment features concerning the bicycle frame in the allegedly infringing products, where the allegedly infringing products include both the structural features of the rear derailleur bracket and the usage environment features of the rear derailleur in the asserted claim 1. The Supreme People's Courts ruled that the allegedly infringing products fall within the scope of protection of the claim 1 of the '621 Patent. As a result, the judgments of the courts of first and second instances are reversed.

Remarks

According to the principle of universal coverage, a technical solution shall be determined to fall in the protection scope of a patent if the technical solution includes all and each technical features of a claim of the patent. That is to say, all the technical features in the claims of the patent must be taken into account in the infringement determination. However, some technical features, for example, the usage environment feature in this case, generally does not define any specific structure of the product or any specific step of the method as claimed in the claims, and instead, they are mainly used for describing the working environment or conditions of the subject matter claimed by the claims. Therefore, in patent infringement disputes, the allegedly infringing products or methods normally exclude or fail to directly reflect the usage environment feature. Under this circumstance, it is important to determine whether and in what degree do the usage environment feature limits the protection scope of the claims.

Epson v. Mipo is also related to the issue of usage environment feature.1 In this case, the asserted patent claims an ink cartridge, defining in the claims both the structure of the ink cartridge and the carriage to which the ink cartridge is mounted, that is, "the carriage is provided with a lever and the lever is formed with a projection." The plaintiff, Seiko Epson Corporate, held that the definition of the carriage is merely the description of the usage environment of the ink cartridge and thus it should be disregarded when comparing the allegedly infringing ink cartridge with claimed ink cartridge of the patent. However, the court ruled that the technical feature of the carriage constitutes an important part of the technical solution of the patent and should be taken into account when determining the scope of protection of the patent. As the allegedly infringing product did not contain the carriage, it did not cover all of the technical features of any of the claims and thus did not infringe the asserted patent right. According to this case, the judge held that the usage environment feature will contribute to define the protection scope of a claim. Where the allegedly infringing technical solution only contains the usage environment feature, it shall be determined as infringing.

In Shimano v. Sunrun, the Supreme People's Court touched again the issue of usage environment feature, and set forth in the judgment specifically whether and in what degree the usage environment feature will limit the protection scope of a patent, and how to consider the usage environment feature in infringement determination.

First, regarding the limitation of the usage environment feature on the protection scope of protection patent, the judge of the Supreme People's Court held that all the technical features contained in a claim should be interpreted as indispensable essential technical features of the technical solution of the patent, which contribute to define the protection scope of the patent and thus must be taken into account when determining the protection scope of the patent. The usage environment feature is nevertheless one of the essential technical features of a claim once written in the claim and thus contributes to define the protection scope of the claim.

Second, regarding the degree of the limitation of the usage environment feature on the protection scope of protection patent, the degree of the limitation specifically refers to whether the claimed subject matter defined by the usage environment feature has to or may be used in the usage environment. The judge of the Supreme People's Court pointed out that the degree of the limitation of the usage environment feature on the protection scope needs to be specifically determined case by case. Generally, the usage environment feature should be interpreted as requiring that the claimed subject matter may be used in the usage environment rather than that the claimed subject matter has to be used in the usage environment. However, if those skilled in the art can clearly and reasonably learn that the claimed subject matter can only be applied to the usage environment after reading the claims and the specifications of the patent, and the patent prosecution history, the usage environment feature should be interpreted such that the claimed subject has to be applied in the specified environment.

Final, regarding how to consider the usage environment feature in infringement determinations, the judge's opinion is that when an allegedly infringing technical solution is compared with a claim of the asserted patent, the technical solution, as long as applicable to the usage environment feature as defined in the claim, the asserted patent shall be determined as containing the usage environment feature, no matter whether or not the technical solution is actually embodied in the environment as defined by the usage environment feature. Apparently, the judge of the Supreme People's Court has given a different opinion in this case from the judge in the earlier Epson v. Mipo case.

In short, the judgment of Shimano v. Sunrun provided more reasonable opinions about the limitation of the usage environment feature on the protection scope of the claims, and illustrated a guideline for patentee when enforcing the patents with the usage environment feature.

Footnote

1. Civil Judgment (2007) Er Zhong Min Chu Zi No.527 by Beijing Second Intermediate People's Court http://bjgy.chinacourt.org/paper/detail/2008/01/id/7298.shtml

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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