In April 2016, the Supreme People's Court released the
"Annual Report of the Intellectual Property Cases Heard by the
Supreme People's Court in 2015". According to the report,
the Supreme Court accepted 759 IP cases and concluded 754 in
According to the report, the newly accepted cases exhibit the
Most of the cases are still related to patents or
The administration of cases involving grant and validation of
patents or trademarks has increased substantially;
The administration of patent cases mostly involves basic legal
issues, such as division and interpretation of technical features,
determination of the disclosure of the background technology, and
sufficiency of disclosure of the description. Civil patent cases
involving the doctrine of equivalents account for a high
proportion, and prior art and prior user right defences are
Identity comparison via DNA technology, etc, in new plant
variety cases is developing in depth and the technical issues have
become more complex and specialised;
Administration of trademark cases increased rapidly again in
2015. Legal issues such as determination of trademarks'
similarity and protection of prior rights still dominate the cases,
and the good-faith principle plays a prominent role in guidance of
trademark cases' adjudication;
The number and proportion of copyright cases remain steady,
internet infringement is still a prominent issue in new business
models, and disputes over film and TV works arise frequently;
Most of the competition cases involve trade secret disputes, in
which the owner's ability to collect and present evidence is
poor, making it difficult to determine the protection scope in some
As stated in the report, determination of infringement under the
doctrine of equivalents is a key issue in patent infringement
cases. In a case included in the report, the Supreme Court points
out that the application of the doctrine of equivalents should
consider the interests of both the patentee and the public, and
consider the levels of technology when the patent application is
filed and when the alleged infringing act occurs, so that the
protection scope of the patent can be determined appropriately. If
a technical solution was excluded when the patent application was
filed, it should not be included in the protection scope of the
patent via application of the doctrine of equivalents when
determining patent infringement.
This case, lodged by Sun Junyi, the owner of utility model
patent 200320112523.2, relates to an exhaust valve used in heating
system. The patentee argued that the product manufactured and sold
by the defendants infringes his patent under the doctrine of
equivalents, even though the product is different from the claim of
the patent in that the inlet cover of the product is flat while the
inlet cover of the claimed "anti-blocking automatic exhaust
valve" is in a cone shape.
The court noted that it is recited in both the description and
the claims that the upper surface of the inlet cover is a cone
shape. The court also noted that the person skilled in the art
would know that the upper surface of the inlet cover may be a cone
or a flat shape before the filing date of the patent. Now that the
patentee limits the upper surface of the inlet cover to a cone
shape, he in fact excludes the technical solution involving a flat
upper surface of the inlet cover.
The court therefore determined that the technical feature
"upper surface in cone shape" shall not be expanded to
"a flat upper surface"; otherwise, reliance of the public
on certainty and predictability of the protection scope of the
patent right would be impaired. Accordingly, the court made a
ruling that infringement under the doctrine of equivalents was not
Another patent infringement case involving the same patent,
finally heard by the Supreme Court in 2014, was selected as one of
the top ten innovative IP cases of 2014 and is regarded as
providing judicial guidance on determining subjective fault of the
seller. It has been noticed that the patentee, Junyi, is very
active to enforce his patent mentioned above, and filed more than
ten patent infringement complaints with courts in several
Guangyu Zhang is a partner at Peksung Intellectual Property. He
can be contacted at: email@example.com
This article first appeared in World Intellectual Property
Published by Newton Media Ltd.
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