Recently, China's SPC concluded a second-instance patent infringement case, in which the SPC interpreted the technical features in combination with the purpose of the invention, and finally rendered a judgment contrary to the first instance, ruling that the infringement was not established.

The patent involved in this case is a utility model patent entitled "Notebook with USB disk", wherein the technical feature recorded in claim 1 is "one end of the USB disk is inserted into the other end of the nose belt in a plug-in mode, and the other end of the USB disk is magnetically connected to the metal buckle". In the alleged infringing product, a circular magnet piece is embedded in a leather compartment on the front side of the notebook, and one end of the nose belt is fixed to the back of the notebook, and the other end is connected to a metal containment part, and the end of the metal containment part has another circular magnet piece, which can be magnetically connected to the magnet piece on the front side of the notebook, so that the nose belt snaps the notebook; the end with connecting finger of the USB disk is inserted into the above metal containment part, and the other end of the USB disk is also magnetic, and when the USB disk is inserted into said metal containment part, the other magnetic end of the USB disk is magnetically connected to the end of the metal containment part.

The patentee believed that the alleged infringing product falls within the protection scope of its claims and constitutes infringement, so the patentee initiated a lawsuit, requesting the court to order the alleged infringer to immediately stop the infringement, to compensate for the patentee's economic losses and reasonable expenses for safeguarding rights, and to immediately destroy the mold for manufacturing the infringing product and destroy the infringing product in stock. After trial, the court of first instance held that in the alleged infringing product, a magnet is configured in the metal containment part on the front end of the nose belt, and the magnet could be magnetically connected to either the magnet on the USB disk or the metal buckle on the notebook, but this technical feature is an additional technical feature of the alleged infringing product. After the magnet in the metal containment part on the front end of the nose belt is removed from the alleged infringing product, the insertion and extraction of the USB disk in the alleged infringing product would not be affected, and the magnet on the USB disk could still be magnetically connected to the metal buckle, and therefore the alleged infringing product completely covers all the technical features of claim 1 of the patent involved and falls within the scope of protection of claim 1 of the patent involved in the case. The court of first instance also held that the prior art defense claimed by the alleged infringer could not be established, and ordered it to immediately stop the infringement and compensate the patentee for economic losses of CNY 100,000 and reasonable expenses of more than CNY 30,000 for rights protection.

Unsatisfied with the first-instance ruling, the alleged infringer appealed to the SPC. During the second instance, the judge held that in claim 1 of the patent involved, the technical features "one end of the USB disk is inserted into the other end of the nose belt in a plug-in mode, and the other end of the USB disk is magnetically connected to the metal buckle" should be understood as a whole. Neither the technical feature "one end of the USB disk is inserted into the other end of the nose belt in a plug-in mode" nor the technical feature "the other end of the USB disk is magnetically connected to the metal buckle" can be used as an independent technical means to achieve the corresponding function, and by connecting the two ends of the USB disk to the metal buckle and the nose belt respectively, these technical features of claim 1 of the patent involved make the USB disk a necessary part of the snapping process. The invention purpose of the patent involved is that when the USB disk is removed, the nose belt cannot directly snap the notebook, so as to remind the user that the USB disk is left behind, and thus achieve the effect that the USB disk is not easily lost. In contrast, in the alleged infringing product, the notebook can be snapped by using the nose belt without using the USB disk, and the USB disk is only inserted into the metal containment part at the end of the nose belt and magnetically connected to the metal containment part; when the USB disk is removed, the snapping of the notebook will not be affected, and thus it cannot achieve the effect of reminding the user that the USB disk is left behind and lost, and accordingly cannot achieve the invention purpose of the patent involved. Therefore, the means, functions and effects of the corresponding technical features of the alleged infringing product are obviously different from those of the above-mentioned disputed technical features of claim 1 of the patent involved, and the alleged infringing product cannot achieve the inventive purpose of the patent involved, and thus the two are neither the same nor equal, so the alleged infringing technical scheme does not fall within the scope of protection of claim 1 of the patent involved. Accordingly, the second-instance court changed the first-instance judgement and ruled that the infringement was not established.

The second-instance judgment of this case makes it clear that the technical features of a patent should be interpreted according to the recitation of claims, in combination with the overall understanding achieved by a person skilled in the art after reading the claims and the description, and for the interpretation, one should not only consider the technical means used in the technical features, but also consider the technical problems solved and the functions and the effects achieved by the technical means, in combination with the purpose of the invention. As can be seen, this case provides some guidance on how to reasonably determine the scope of protection of the claims of a patent and how to accurately determine an infringement.

https://ipc.court.gov.cn/zh-cn/news/view-2020.html

AFD China Newsletter is intended to provide our clients and business partners information only. The information provided on the newsletter should not be considered as professional advice, and should not form the basis of any business decisions.