Jurisdiction - China
Reports and Analysis
China – How Does Claims Of The Infringed Patent Determine Selection Of Technical Features To Be Compared with Those Of The Prior Art?

7 May, 2014

 

 

In regard of the retrial case instituted through adjudicatory supervision procedure on utility model patent infringement between the retrial applicant Yancheng Zetian Machine Co., Ltd. and the opposing party Yancheng Greater Machinery Manufacturing Co., Ltd., the Supreme People’s Court found in its judgment (Supreme People’s Court Civil Judgment (2012) Min Shen Zi No.18)


“With respect to examination of the legal basis for prior art defense, the appropriate comparison method is comparing the accused infringing technical plan with the prior art instead of comparing the prior art with the technical plan of the claimed infringed patent. As for examination details, the people’s court shall, in reference to the claims of patent protection, determine what technical features of the accused infringing technical plan falls within the scope of patent protection, and then decide whether or not the prior art includes technical features identical with or equivalent to those of the accused infringing technical plan. A tenable defense of prior art dose not require all technical features of the accused infringing technical plan are identical with or exactly the same to all the technical features of the prior art. On the contrary, if the accused infringing technical plan contains one or more technical features that do not fall within the scope of patent protection as stated in the claims, such technical features shall be dismissed from further consideration for prior art defense. 


“As the case mentioned above shows, while comparing the accused infringing technical plan with the prior art, the people’s court do not compare a technical plan constituted by all technical features of the accused infringing product or process with the prior art, instead, the court shall compare the technical plan only constituted by technical features which are accused to fall within the scope of patent protection with the prior art. In other words, any technical feature included in the accused infringing product or process, if it is beyond the scope of patent protection, shall be excluded from comparison with those of the prior art. Thus it can be seen that to select the appropriate technical features to compare with the prior art, the people’s court shall refer to the claims of patent protection. 


“The so-called Principle of Full Coverage is a general criterion to determine a patent infringement, and it requires the people’s court to examine whether the technical features of the accused infringing product or process cover (that is, are identical with or equivalent to) all the technical features stated in the claims of patent protection for the claimed infringed invention or utility model. This criterion goes as follows: if all technical features contained in the accused infringing technical product or process are identical with or equivalent to all those stated in the claims, the people’s court shall determine that the accused infringing technical plan constituted by the said technical features falls within the scope of patent protection; if the accused infringing technical plan includes one or more technical features in addition to those identical with or equivalent to all the technical features of the claims, the people’s court shall also determine that such technical plan falls within the scope of patent protection.


“Rationale of prior art defense is that all technical features of the accused infringing technical plan which fall within the scope of patent protection are identical with or similar to (equivalent to) a corresponding technical feature of the prior art, or that the accused infringing technical plan, as deemed by the ordinary technological personnel in the pertinent field, are an simple combination of the prior art with common knowledge in this field. 


“Where all technical features of the accused infringing technical plan are identical with or equivalent to all those stated in the claims of patent protection, the people’s court shall determine that all technical features contained in the accused infringing product or process are those contained in the accused infringing technical plan that fall within the scope of patent protection. For example, the technical features stated in the claim of patent protection are a1 and b1, and the technical features of the accused infringing technical plan are a2 and b2. If a2 and b2 are separately identical with or equivalent to a1 and b1, a2 and b2 are the technical features of the accused infringing technical plan that fall within the scope of patent protection provided by a1 and b1. To examine the legal basis of the prior art defense, the people’s court shall compare the accused infringing technical plan constituted by technical features a2 and b2 with the prior art. 


“Where the accused infringing technical plan includes but without limitation to technical features that are identical with or equivalent to those stated in the claim, such technical plan still falls within the scope of patent protection; however, while comparing with the prior art, the people’s court shall include in the technical plan to be compared not all the technical features of the accused infringing technical plan but those falling within the scope of patent protection. For example, technical features stated in the claim of patent protection are a1 and b1, and technical features of the accused infringing product or process are a2, b2 and c2. If a2 and b2 are separately identical with or equivalent to a1 and b1, a2 and b2 are the technical features contained in the accused infringing technical plan which fall within the scope of patent protection provided by a1 and b1. To examine the legal basis of the prior art defense, the people’s court shall compare not the accused infringing technical plan constituted by a2, b2 and c2 but the technical plan constituted only by a2 and b2 with the prior art.” 


Let’s premise the second example that the technical features of the prior art are a3 and b3, and a2 and b2 are separately identical with or equivalent to a3 and b3. There is a possibility that the accused infringing technical plan constituted by a2, b2 and c2 is different from the prior art constituted by a3 and b3, even though the claimed infringed technical plan constituted by a1 and b1, as compared with the prior art constituted by a3 and b3, lacks novelty (In fact, claims of such patent shall not be granted. But in this case, the court in charge shall not decide the validity of the infringed patent rights; instead, it shall determine the accused infringing product or process has not infringed its patent rights by defense of priorart.), and therefore it can be concluded that the defense of prior art is not tenable. However, such conclusion is erroneous due to inappropriate selection of technical plan to be compared with the prior art.

 

Jun He 4

 

For further information, please contact:

 

Zhaohui (Zoe) Wang, Partner, Jun He

wangzh@junhe.com


Xiaodu Zhang, Jun He

zhangxd@junhe.com

 

Jun He IP Practice Profile in China

 

Homegrown IP Law Firms in China 

 

Comments are closed.