On January 1, 2010, the Interpretation of the Supreme People’s Court on Certain Issues Concerning Application of Law in Patent Infringement Disputes (“Interpretation”) went into effect. This is the first judicial interpretation that the Supreme People’s Court has issued for the trial of patent infringement disputes. It establishes a few essential rules in the determination of patent infringement. This author will read and comment on some of the key points.

 

 

 

In infringement suits, claims play a central role and are the only criterion to define the scope of protection on a patent. As every claim forms a complete technical solution, Article 1 of the Interpretation stipulates that the scope of patent protection may be defined by either an independent claim or by a dependent claim. On independent and dependent claims, Judge Giles S. Rich of the United States Court of Appeals for the Federal Circuit (CAFC) made a classical observation: “The strongest claims are the weakest, and the weakest claims the strongest.” This means that in terms of the scope of protection, independent claims may be the broadest and strongest, but from the perspective of patent stability, they are the most likely to be challenged and therefore the weakest. In contrast, dependent claims have a narrower scope, can be easily avoided and sometimes are less useful, but they are more likely to be maintained and are thus highly stable. A patentee who is less confident with independent claims than with dependent claims, when filing suit in the court, is permitted to choose between the two. This is also his right of action.

 

 

Because the claim is a depiction in language, concrete technical schematics must be constructed on the basis of the claims, with a description and drawing of the patent, in order to define the protective scope. Only through such an illustrative process can the technical design involved in the infringement suit surface. This process is called “claim construction.” It should be noted, however, that once granted, a patent application becomes independent of the applicant and patent owner. For this sake, Article 2 of the Interpretation stipulates that the understanding of a person having ordinary skill in the art (PHOSITA) shall be used as the standard to construct the claims in an infringement suit. PHOSITA is a very complicated concept and a fictional person created by the law. This fictional person is, “presumed to be aware of all the common technical knowledge and have access to all the technologies existing before the filing date or the priority date in the technical field to which the invention pertains, and have the capacity to apply all the routine experimental measures before that date. However he is not presumed to have creativity.” Such criteria are intended to create a protective scope consistent with that of granting a patent and infringement suit. It tries to preclude subjective judicial determinations to the greatest possible extent in order to reach an objective judgment. It can be said that every infringement suit is concerned with claim construction.

 

 

It would be ideal if the technical solutions could be defined by the claims alone. But in fact, this is more often than not impractical due to the limitations of language. Most words have multiple shades of meaning or are ambiguous. Even the simplest word may have several definitions. The colorfulness of language which helps people express ideas and feelings may also doom patent claims from the very beginning. In patent infringement suits, both parties have many disputes on the concepts and terms of the claims. To resolve the mystery and ascertain a technical solution, i.e., the scope of the patent, the court must state its opinion and make a decision on the disputed issues. This process is called “claim construction.” Most patent infringement cases have such a process. The claim construction will have a profound impact on the interests of the parties. A properly constructed claim will often determine the outcome of the lawsuit. Consequently, both parties conduct exhaust research and utilize every ways and means to convince the court to rule in its favor.

 

Article 3 of the Interpretation stipulates that intrinsic or extrinsic evidence may be used to interpret a claim. “Intrinsic evidence” means the patent documentation per se, including the description, drawing and claims, as well as the patent examination file may be used. Such evidence is obtained from the patent prosecution process and is the most pertinent part of the patent. It can be used to “uncover” the true patent and define the protective scope. Because patents often cover state-of-the-art technologies, if no terms are suitable to describe the technical solution during the patent prosecution, it will be necessary to choose an existing term and give it a new meaning in order to apply for a patent. According to the “own lexicographer” rule, any special term may be defined through a description distinct from its ordinary meaning. This will resolve possible disputes and significantly limit the patent scope.

 

Extrinsic evidence may not be relied on unless the intrinsic evidence is insufficient for the construction of the claim. “Extrinsic evidence” means any public information, including reference books, textbooks, etc., and common knowledge as possessed by a PHOSITA. Compared to intrinsic evidence, extrinsic evidence is farther away and more irrelevant to the patent technology. It supplements the former if the former becomes insufficient to interpret the claim. It will not be allowed if the meaning of the claim can be clearly defined with intrinsic evidence.

 

 

Article 4 of the Interpretation addresses technical solutions defined by functional or product-by-process claims. Certain technical solutions, because of the difficulties in describing them in structural terms, or because the patentee seeks a broader scope, are expressed in means-plus-function or product-by-process language. Since the patent defines a species by claiming a genus, the resulting patent scope will often exceed what has been disclosed in the description, thus affecting the interests of the public. To avoid this, in infringement cases, the patent scope may not be construed simply according to the generic claim under the functional or product-by-process language; but in combination with the description and the drawings, to be limited to the specific embodiment or its equivalent as disclosed in the written description. Even if it meets the functional or product-by-process description, any undisclosed technical solution may not be protected by the patent. For this reason, the functional or product-by-process description of a technical feature is like a double-edged sword for the applicant or patentee. He must balance between disclosure and secrecy. If the disclosure is insufficient, the patent may not be granted or the court may not grant protection in an infringement suit.

 

 

 

The all-limitations rule is provided for in Article 7 of the Interpretation, which is one of the most basic rules for patent infringement determination. The determination process involves a comparison between the technical features of the alleged infringing product and those recorded in the claims. The difficulty is that the two often vary much in their appearances. The alleged infringing product is usually a production model or process, while the patent is a technical solution described on the paper and exists in theory. For this reason, to protect the public interest, every single element claimed in the technical solution must be considered. Infringement may be established if, in a comparison, all of the limitations in the patent claims are found in the alleged infringing product either literally or equivalently. Conversely, if one or more of the claimed elements are not found in the alleged infringing product, or the elements are not literally or equivalently read on the allegedly infringing product, no infringement should be found. The all-limitations rule must be satisfied either literally or equivalently before infringement can be determined either literally or by equivalently. If any element fails, there is no infringement, either literally or equivalently.

 

The all-limitations rule negates the “non-essential limitation” rule. The “non-essential limitation” rule means that the court may find infringement by disregarding one or more of the limitations which is not found in the alleged infringing product as non-essential.  This rule may have played a positive role in the early days of the patent law in China. At the time, low-level practitioners often caused various problems when they wrote the patent documentation. The court was sympathetic with the patentee and applied the redundant element rule in order to seek more substantive justice. Although it remedied the defect in patent applications, it passed the risk onto the public. It damaged the “notice” function of the patent by creating an unstable and uncertain boundary for the public. After more than 20 years the Interpretation abolishes the rule, which is considered a positive step forward. On the one hand, it limits patent protection to the claims and restores the claims to the central position. On the other hand, it encourages patent applicants to prepare high-quality documents to balance the interests between the patentee and the public.

 

Also, the all-limitations rule holds that an “inferior invention” is not infringement. An “inferior invention” means any new technical scheme that the alleged infringer creates by omitting some features of the patented technology, so that the new technical scheme performs poorer than the patented one. According to the all-limitations rule, such new technical solutions do not constitute infringement. From the appearance, this will be unfair to the patent owner. But, according to the spirit of the patent law, the superiority or inferiority of a technical solution is relative, subject to the judgment and choice by the market. The patent law defines only different technical solution, it does not provide for better or worse technical solutions. When deciding whether to grant a patent, what the patent office determines is the identicalness between technical solutions, not their superiority or inferiority.

 

 

An estoppel is provided for in Article 6 of the Interpretation, which applies in two situations: A) The patentee may not recapture that which has been surrendered during the prosecution of the patent by resorting to the doctrine of equivalents in litigation when an amendment is made in response to office actions narrowing the claims or modifying the description for whatever reason; B) By the same token, the patentee may not recapture as equivalent what has been surrendered by further limiting his claims or modifying the description or statement in the invalidation proceedings in order to save his patent. This rule is favorable in that it helps narrow down and optimize the protective scope through granting a patent or invalidation proceedings, so that the patent can be matched by its contribution to society. It also brings a risk to applicants or patentees in that they must consider how they will be disadvantaged in future infringement suits if they give up a technical scheme.

 

 

Though not explicitly specified, the doctrine of equivalents is indirectly suggested in the Interpretation, e.g., by permitting the estoppel, which balances the expansive application of the doctrine and public interest.

 

In addition, the application of the doctrine is modified by Article 7 of the Interpretation. In China, the doctrine was first recognized in the judicial interpretation 2001, Article 17 of the Stipulations of the Supreme People’s Court Concerning the Law Application Issues in the Trial of Patent Disputes (“Stipulations”). However, the provision was inconsistent with the then effective Patent Law. Article 56 (1) Patent Law in effect at that time said that, “the protective scope for an invention or utility model patent shall be limited to the claims” (which include both independent and dependent claims, as we should understand it). Article 17 of the Stipulations says that, “the protective scope of a patent shall be limited to the essential technical features recited in the patent claim, as well as the  equivalents thereof.” It limits the protective scope to the “essential technical features” and precludes “additional technical features.”

 

As we know, the essential technical features are recited in the independent claims and further technical features are recited in the dependent claims. The omission of further limitations was therefore inconsistent with the then Patent Law and judicial practice. Now it is stipulated in Article 7 of the Interpretation that, “to examine whether an alleged infringing technical scheme falls within the protective scope of the infringed patent, the People’s Court shall examine all the technical features recorded in the claims asserted by the patent owner.” It takes into consideration all of the relevant technical features which are claimed, rather than the necessary technical features alone.  

 

 

The donation rule is provided for in Article 5 of the Interpretation. It means that an applicant is deemed to have donated ownership of a technical scheme to society if he fails, intentionally or unintentionally, to include the technical scheme in the claim, even if such technical solution was described in the description or drawing. As the technical solution has been donated to society, the patent owner has no rights to the donated technical solution in infringement suits. The donation rule is intended to ensure the central role of claims in patent protection. It is favorable in that the social public can easily delineate the boundary of the protective scope and avoid any risk of infringement. It is unfavorable in that it causes patent applicants to be unwilling to disclose more of their technical contents. When preparing the patent literature, an applicant will want to disclose technical content to a degree no more than necessary for a grant. This places a higher demand on the writing of the documents.

 

However, the donation rule should not create a restriction on the equivalence rule. If a claim is equivalent with any other recorded claim, the technical features disclosed in the description and drawing should be included, but not precluded from the protective scope. This is because such disclosed features are meant for the description to support the claims and this is encouraged by the patent law. Only those technical features that the description and drawing discloses, which do not have any identical or equivalent counterparts in the claims, may be deemed donated. Only in this way can the interests of the patent owner and those of the public interest be balanced.

 

 

The first user right defense and prior art defense are also detailed in the Interpretation. Among them, the prior art defense was established in the Patent Law as amended in 2008. Article 62 of the Patent Law 2008 stipulates that if the alleged infringer proves that the technology it exploits belongs to the prior art, the exploitation does not constitute an infringement. This is a powerful weapon that the alleged infringers may use. It will be even more powerful to strike a balance, if the patent literature is poor quality. Article 22 defines a very broad scope for “prior art” which includes “all the technologies that are known to the public in China or abroad prior to the application date.”

 

Prior art has been an essential factor to consider in patent granting. It is used to decide the utility, novelty and creativity of an application, and the granting of a patent. Whether a technology belongs to the prior art or not will be determined by the State Intellectual Property Office (SIPO). Previously, the court would not tough prior art in infringement suits. It compared the alleged infringing product with the patent, decided that the two are identical, equivalent or different, and reached a judgment on infringement or non-infringement. Once the alleged infringer requested to invalidate the patent, the determination on the prior art and the validity of the patent would be turned over to the administrative proceedings. The SIPO Patent Reexamination Board would make the decision.

 

The earlier system is advantageous in that it allows the administrative organ to deal with the technical determination and the court to deal with the legal determination. It gives full play to the state organs. It is disadvantageous in that it easily leads to unnecessary litigation. In the judicial practice, the questioned technical solution is often found identical or equivalent with the prior art and for the nature of the Patent Law, the patent should not have been granted. Despite this, the alleged infringer has to initiate the time and effort-consuming invalidation proceedings. This creates a heavy burden on the alleged infringer and caused a waste of the administrative and judicial resources. For this sake, the current Patent Law grants the court the power to determine on the prior art, without incurring patent validity. It provides a solution by not conflicting with the administrative power.

 

Article 62 of the Patent Law is explained in detail in Article 14 of the Interpretation. That is, an alleged infringing technical scheme belongs to the prior art, if the comparison finds that the alleged infringing technical scheme contains identical or equivalent features with those in the prior art. Therefore, if required by the alleged infringer, the court may compare the alleged infringing technical scheme with the prior art. If the two are identical or equivalent, the court may go ahead to render a judgment of non-infringement and conclude the proceedings. Only if this condition is not met, the infringement suit will go further. The court will determine the identicalness or equivalency between the alleged infringing technical scheme and the patented technical scheme, and deliver a judgment of infringement or non-infringement.