Supreme People's Court, Annual Report on Intellectual Property Cases (2010) (Abstract)

(Issued by the Supreme People's Court on April 13 2011.)

Fa Ban [2011] No.81

In 2010, the Intellectual Property Division of the Supreme People's Court accepted a total of 313 new intellectual property cases, a 5% increase over the number in 2009. Additionally, there were 50 cases left over from 2009, giving a total of 363 cases sub judice in 2010, and 317 of those cases were concluded. The intellectual property cases in 2010 had the following characteristics: the percentage of difficult cases that require clear and specific definition due to the fact that the legal provisions are more in the nature of a principle is increasing; cases in which the outcome of the trial has a material impact on the immediate interests of a concerned party are increasing, with cases involving market-seizing patents, technical secrets and trademarks being particularly prominent; cases in which the determination of facts relating to special technologies is difficult are increasing, with cases involving high and new technology sectors such as biology, chemicals and pharmaceuticals being particularly prominent; affiliated cases have increased noticeably, with parties exhausting the offensive and defensive means of various procedures, from jurisdiction to substance, from infringement to rights confirmation, from criminal prosecution to claims for civil compensation and from local people's courts to the Supreme People's Court, to protect their own rights and interests, reflecting the intensity of the competition among market entities, all of which has increased the difficulty in trying and coordinating intellectual property cases; the development of network technologies has facilitated the dissemination of intellectual property products, revolutionised business operation models and affected the manner in which the intrinsic benefits of relevant industries are distributed, resulting in a marked increase in new-type intellectual property disputes and unfair competition disputes arising as a result thereof; rules for adjudicating foreign-related cases have drawn ever greater attention from the international community, etc. On the basis of a summarisation of its experience in issuing annual reports on intellectual property cases in past years, the Supreme People's Court has, from among the cases on which a final and conclusive decision was reached in 2010, carefully selected 43 issues with broad guiding significance from 36 cases to prepare and issue this year's report. The cases selected for this year's report manifest the Supreme People's Court's understanding and exploration of the issues of law application and adjudication method in specific intellectual property cases, with the judgments having quite strong individual character, and application of the law itself being a process that changes with the times. Relevant judicial policies will also undergo appropriate revision in keeping with social, economic, scientific, technological and cultural development. In this regard, relevant parties should give full attention to the foregoing when referring to, and drawing on, the opinions on the application of the law contained in this annual report.

I. Trial of Patent Cases

1. Trial of Civil Patent Cases

(1) Several principles that should be complied with when interpreting claims

In the Sun Shouhui vs. KFC Corporation et. al. patent infringement case [(2009) Min Shen Zi No. 1622], the Supreme People's Court applied the first paragraph of Article 56 of the Patent Law effective as of July 1 2001, complying with principles such as that the description and drawings can be used to interpret the claims; where a term in the claims is not given a particular explanation in the description, the normal understanding of such term should be used; that related technical terms used in different claims should be interpreted has having the same meanings; and that consideration be given to the restrictions placed on the scope of protection of a patent by the patentee in a patent grant procedure or patent invalidation procedure in order to ensure that it secures the patent or maintains the validity of the patent in correctly determining the scope of protection of the patent in question.

(2) When a different understanding of the contents of a claim exists, interpretation should be effected based on the description and drawings

In the New GEP et. al. vs. Taishan Forerunner patent infringement case [(2010) Min Shen Zi No.871], the Supreme People's Court held that, pursuant to the first paragraph of Article 56 of the Patent Law, if a different understanding of the contents of a claim arises, resulting in a dispute over the scope of protection under a claim, the description and drawings can be used to interpret the claim. In this case, solely from the textual description of the relationship among “bamboo, wood, plant fibres” in claim 1 for the patent in question, it is difficult to determine whether there is an “and” or an “or” relationship between the three items. From the embodiment in the description for the patent in question reading, “the magnesian gelling plant fibre layer is a compound made from magnesium chloride, magnesium oxide and bamboo fibre or wood sawdust or plant fibre”, it can be seen that the meaning of “bamboo, wood, plant fibre” should encompass an “or” relationship, namely any one of them will do.

(3) If a term in a claim is specifically defined in the description, its use in the claim should be interpreted in light of its definition in the description

In the Fujian Duoling Steel vs. Qidong Baling Gangwan patent infringement case [(2010) Min Shen Zi No.979], the Supreme People's Court held that, in respect of a technical term in the claims for a patent that is disputed by the parties, where such term does not have a clear definition in the relevant industry or sector, but the description for the patent in question assigns it a specific meaning and such definition clarifies the scope of protection under claim 1 for the patent in question, the meaning of the term in the claim should be understood in the light of the definition given in the description.

(4) Determination of the equivalence of technical features in a patent infringement dispute

In the Jingye vs. Yongchang patent infringement case [(2010) Min Shen Zi No.181], the Supreme People's Court held that, when determining whether a technical feature of the alleged infringing product is equivalent to a technical feature of the patent, not only does consideration need to be given as to whether the technical feature of the alleged infringing product is a technical feature that a person having ordinary skill in the art could think of without doing any creative work, but consideration also needs to be given as to whether the technical feature of the alleged infringing product, when compared to the technical feature of the patent, is essentially an identical technical means, realises an essentially identical function and achieves an essentially identical result. The two can be determined to be equivalent technical features only if the foregoing two conditions are satisfied.

(5) Revision of a claim to overcome the flaw that the description does not support a claim may result in the applicability of the doctrine of estoppel

In the Aonuo vs. Wushi et. al. patent infringement case [(2009) Min Ti Zi No.20], the Supreme People's Court held that, from the approval file for the patent in question, it could be seen that the revisions by the patent applicant were made in view of the State Intellectual Property Office's review opinion that held that the scope of protection under the claim in the publicly disclosed version of the patent application in question was overly broad and, in fact, was not supported by the description; and as the relevant technical feature of the alleged infringing product was a technical solution that the patentee had relinquished during the patent grant procedure, it should not be deemed equivalent to the technical feature described in claim 1 and therefore included within the scope of protection of the patent.

(6) A statement of opinions by a patentee during a grant or confirmation procedure may result in the applicability of the doctrine of estoppel

In the Youta vs. Vanguard et. al. patent infringement case [(2010) Min Ti Zi No.158], the Supreme People's Court, pursuant to the statements of opinion made by the patentee during the procedure for the grant of the patent in question and the patent invalidation procedure, and a comparative analysis of the technical results under the relevant different process conditions stated in the description for the patent in question, determined that the relevant technical feature in the alleged infringing product was not equivalent to the corresponding technical feature in the patent in question, consequently, the alleged infringing product did not fall within the scope of protection under claim 1 of the patent in question.

(7) Extension of the protection of process patents

In the Zhang Xitian vs. Ouyi et. al. patent infringement case [(2009) Min Ti Zi No.84], the Supreme People's Court held that, pursuant to Article 11 of the Patent Law, the scope of protection of a process patent could extend only to the product that is directly derived from the patented process, i.e. the original product derived from using the patented process, and could not be extended to follow-up products derived from further processing of the original product.

2. Trial of Administrative Cases Involving the Granting and Confirmation of Patents

(8) Review and determination of whether a claim is supported by the description

In the administrative case for the invalidation of Eli Lilly's invention patent for a “stereoselective glycosylation process” [(2009) Zhi Xing Zi No.3], the Supreme People's Court held that the technical solution for which a claim requests protection should be a technical solution that a person skilled in the art could derive or broadly obtain from the fully-disclosed contents of the description, without exceeding the disclosed scope of the description; if the broad outline of the claim would cause a person skilled in the art to have reason to doubt that one or more subordinate concepts or selected methods included in the superordinate broad outline or juxtaposed broad outlines would not resolve the technical problem that the invention is intended to resolve and achieve an identical technical result, the claim should be determined as not being supported by the description.

(9) Basic method for determining whether designs are identical or similar and the design features to which attention should be paid

In the administrative case for the invalidation of Honda's “automobile” design patent [(2010) Xing Ti Zi No.3], the Supreme People's Court analysed the basic method for determining whether designs are identical or similar and held that, when determining whether designs are identical or similar, because a design feature that is common to products has a relatively limited impact on the visual sense of the average consumer, attention should be paid to the variation in other design features that are more likely to draw the attention of the average consumer.

(10) Consideration of design space in determining whether designs are identical or similar

In the administrative case for the invalidation of Wanfeng's “motorcycle wheel” design patent [(2010) Xing Ti Zi No.5], the Supreme People's Court held that design space was of important significance in determining the knowledge level and cognitive abilities of the average consumer of the relevant design product; in determining whether designs are identical or similar, design space, in other words, the designer's degree of creative freedom, should be taken into consideration so as to accurately determine the knowledge level and cognitive abilities of said average consumer; the size of the design space is a relative concept, one that is variable and, as such, when considering design space of a design product in a procedure for the invalidation of a patent, the state on the patent filing date shall prevail.