China: The Application Of Prior Art Defense In Patent Infringement Litigation Yancheng Zetian Machinery Co., Ltd. V. Yancheng Greater Machinery Co., Ltd.(Article No. 15 From "China Patent Case Review 2015" By Beijing East IP Ltd.)

Direct-Connected Hydraulic Control Apparatus for a Hydraulic Rocker Cutting Machine

Yancheng Zetian Machinery Co., Ltd. v. Yancheng Greater Machinery Co., Ltd. – the Application of Prior Art Defense in Patent Infringement Litigation (Civil Ruling (2012) Min Shen Zi No. 18 by the Supreme People's Court on July 11, 2012)

The principle of prior art defense established in patent infringement litigation means that the scope of protection of a patent right shall not encompass the prior art. The rationale of the principle is that the public have the right to freely practice the prior art known to the public, and no one is entitled to claim the prior art into the scope of an exclusive patent right, or else the public interest will be damaged. In addition to examining the legal validity of the patent right in the patent invalidation procedure, examining an accused infringer's assertion of the prior art defense in the patent infringement litigation is advantageous for timely resolving disputes, reducing litigation exhaustion of the parties, and realizing unification of equity and efficiency. The prior art defense and its difference from determination of novelty judgment or inventiveness in the patent invalidation procedure are articulated in this case, which facilitate the parties' understanding the standards of application of the prior art defense by the courts in China.

The patentee, Yancheng Zetian Machinery Co., Ltd. (hereafter referred to as "Zetian Machinery"), owns a utility model patent No. ZL 200420109343.3, titled "Direct-Connected Hydraulic Control Apparatus for a Hydraulic Rocker Cutting Machine" (hereafter called "the control apparatus"). The independent claim of the utility model patent reads:

"A hydraulic control apparatus for a hydraulic rocker cutting machine, comprising a hydraulic cylinder, a rod piston installed in the hydraulic cylinder, an electromagnetic valve, an oil pump and a relief valve, characterized in further comprising a regulating valve and a flexible shaft, wherein an upper oil chamber channel, a lower oil chamber channel and an unloading channel are provided on the rod piston, a regulating valve chamber, in which the regulating valve is provided, is provided at an upper portion of the unloading channel, the regulating valve is connected to one end of the flexible shaft, a handle is provided on the other end of the flexible shaft, an output of the electromagnetic valve is directly connected to an outer end of the rod piston, the electromagnetic valve is connected to the oil pump via a square flange and a connective pipe, and the relief valve is provided at a side of the square flange."

Zetian Machinery brought a lawsuit against Yancheng Greater Machinery Co., Ltd. (hereafter referred to as "Greater Machinery") for infringing the utility model patent at issue. Greater Machinery argued that the accused product was the same as the F45 hydraulic rocker cutting machine in the prior art, and thus did not infringe the patent right. The Intermediate People's Court of Yancheng city, Jiangsu province (hereafter referred to as "the court of the first instance") held that Greater Machinery failed to provide adequate evidence to prove that the accused product was the prior art and the prior art defense was not justifiable, and upheld the infringement.

Both Zetian Machinery and Greater Machinery refused to accept the judgment of first instance and appealed. The Jiangsu High People's Court (hereafter called "the court of the second instance") found that the prior art defense was justifiable via on-scene investigation and held in favor of Greater Machinery.

Zetian Machinery refused to accept the judgment of second instance and applied for retrial to the Supreme People's Court. As to the prior art defense, the retrial petitioner, Zetian Machinery, argued that the accused product possessed all technical features of the asserted patent, and several technical features such as the electromagnetic valve in the accused product were different from those of the F45 hydraulic rocker cutting machine in the prior art, so the second instance court erred in its judgment.

The Supreme People's Court set forth the following opinions in retrial.

"The rationale of the principle of prior art defense established in patent infringement litigation is that the scope of protection of a patent right shall neither encompass the prior art, nor be obvious or as an equivalent technique with the prior art. In addition to examining the legal validity of the patent right in the patent invalidation procedure, examining an accused infringer's assertion of the prior art defense in the patent infringement litigation is advantageous for timely resolving disputes, reducing litigation exhaustion of the parties, and realizing unification of equity and efficiency. When the prior art defense is examined, it is the accused technical solution, rather than the technical solution of the patent, that is compared with the prior art. The manner of examining the prior art defense is as follows: comparing an asserted patent claim with an accused technical solution, identifying the technical features of the accursed technical solution that are alleged as meeting the limitations of the asserted claim, and determining as to whether the same or equivalent technical features are disclosed in the prior art. Establishment of the prior art defense does not require that the accused technical solution is exactly the same as the prior art, and any technical feature of the accused technical solution that is irrelevant to the claim scope of the patent right shall not be considered when judging whether the prior art defense is justifiable. Whether the accused technical solution is the same as or equivalent to the technical solution of the patent is not necessarily relevant to whether the prior art defense is justifiable. Therefore, even if the accused technical solution is exactly the same as the technical solution of the patent and different from the prior art, it might be found that the prior art defense is justifiable."

In this case, the independent claim of the asserted patent defines the connection mode of the electromagnetic valve, i.e. "an output of the electromagnetic valve is directly connected to an outer end of the rod piston," and does not define the specific structure of the electromagnetic valve. Therefore, the specific structure of the electromagnetic valve is irrelevant to the scope of protection of the patent right, and hence irrelevant to whether the prior art defense is justifiable. Although the electromagnetic valve disclosed in the F45 hydraulic rocker cutting machine as the prior art comprises three portions, and its specific structure is obviously different from that of the electromagnetic valve in the accused product, however the prior art has already definitely disclosed that the output of the electromagnetic valve is directly connected to the outer end of the rod piston. Accordingly, the Supreme People's Court affirmed that the judgment of the court of the second instance.

The Supreme People's Court further pointed out that,

"In the patent invalidation procedure, the technical solution of the patent is compared with the prior art to examine whether the prior art has already disclosed the technical solution of the patent, i.e. whether the technical solution of the patent possesses novelty and inventiveness as compared with the prior art. However, in the patent infringement litigation, the object of examination of the prior art defense is whether the accused technical solution is the same as or equivalent to the prior art, rather than whether the prior art has already disclosed the technical solution of the patent. Therefore, both their object of examination and legal application are different."

Remarks

We will discuss the differences between the prior art defense and invalidation.

First, the difference in legal status. The prior art defense is a defense to an assertion of patent infringement by arguing that an allegedly infringing product falls into the prior art in a specific patent infringement litigation case, the decision of which is merely applied for the specific patent infringement litigation case. However, the invalidation procedure is to judge whether a patent right is valid, and the conclusion of declaring invalidation of a patent right is to fundamentally cancel the patent right - the patent right declared invalid shall be deemed non-existent from the beginning.

Second, the difference in manners of examination. The manner of examining the prior art defense is based on the comparison between an alleged product and the prior art. And the manner of examining the prior art defense is as follows: comparing an asserted patent claim with an accused technical solution, identifying the technical features of the accused technical solution that are alleged as meeting the limitations of the asserted claim, and determining as to whether the same or equivalent technical features are disclosed in the prior art; any technical feature of the accused technical solution that is irrelevant to the claim scope of the patent right shall not be considered when judging whether the prior art defense is justifiable. However, the determination of novelty and inventiveness in the patent invalidation procedure is made by comparing a patent at issue with the prior art and examining as to whether the technical solution of the patent at issue is disclosed by the prior art.

Last, the difference in standards of evaluation. The prior art defense can compare an accused technical solution with one prior technical solution, or an obvious combination of one prior technical solution and common knowledge in the art. However, the determination of novelty or inventiveness in the patent invalidation procedure can compare the patent with one prior technical solution or an obvious combination of one prior technical solution and other prior art and/or common knowledge in the art. Apparently, the requirements of the prior art defense are more stringent.

How to draft claims with the consideration of prior art defense. In order to seek an assured and reliable protection of a patent right for an invention-creation, the patentee shall draft multiple claims in as many levels as possible to progressively define protection scopes. Although the retrial petitioner in this case alleged that the electromagnetic valve in the patented technique was a particular electromagnetic valve, the internal structure and output of which were improved, however the improvements are not recited in the claims. Therefore, although the specific structure of the electromagnetic valve in the accused product is exactly the same as that of the electromagnetic valve in the patented product and different from the prior art, it is not considered when judging whether the prior art defense is justifiable. If the patentee had further defined the specific structure of the electromagnetic valve in the patented product in dependent claims, it would likely to obtain a totally different outcome.

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