Abstract

The case discussed in this article is not a real case, and the patent at issue and the alleged infringing product involved in the case are all discussed on a hypothetical basis. The purpose of discussing this hypothetical case is to illustrate issues that may exist in the determination of literal infringement and equivalent infringement as well as the consequences that the said issues may lead to. Given that the preciseness of legal provisions and the flexibility of law implementation seem to contradict each other, this article does not involve much of the analysis of the ways to solve the said issues.

Key words: literal infringement, equivalent infringement, technical problem

Case Introduction

Patent at Issue
The patent at issue involves a kind of travel suitcase, and a division plate is installed within the travel suitcase, which divides the space inside the suitcase into two parts from top to bottom. In addition to the function of space division, the other important function of the division plate is that it firmly supports the suitcase, making the suitcase stronger. The division plate plays the role of reinforcing the suitcase, but it also adds weight to the suitcase. The purpose of the patent at issue is to provide a division plate with the same firmness but lighter weight.

Claim 1 of the patent at issue reads as follows: "a division plate of a box, characterized in that eight holes are drilled in the division plate, and the connection of the centres of the eight holes forms a square. The centre of the square and the centre of the said division plate overlap each other, and there are two holes on each side of the square." The division plate for which patent protection is being requested under Claim 1 of the patent at issue can be illustrated in the following Figure 1 (top view): 

The black circles in Figure 1 represent the holes, and the dotted lines do not actually exist in the division plate, but are drawn solely for the purpose of indicating the relative positions of the eight holes. The specification of the patent at issue describes the technical effects as follows: the weight of the division plate is reduced because of the drilling of holes, and experiments show that the way of drilling holes in the division plate will not weaken the supporting effect provided by the division plate to the travel suitcase.

Alleged Infringing Product
The alleged infringing product is a kind of box publicly sold for containing chemicals. There is also a division plate within the box, which divides the box into two parts from top to bottom. The two parts are used to contain two different kinds of chemicals namely A and B. In order to stabilize A and B, a kind of stabilizer C is placed within the box. C is placed in the upper part of the box, and in order to enable C to volatilize to reach the lower part of the box and to stabilize A and B placed therein, some holes are drilled in the division plate of the box; the way of setting out the holes is exactly the same as that in Figure 1. It is described in the operation instruction of the alleged infringing box that the purpose of drilling holes in the division plate is to enable the stabilizer C to volatilize to reach the lower part of the box, but other effects which can be brought about by the division plate are not mentioned. What should be emphasized here is that although it is true that the division plate can bring about the effect of supporting the box, the manufacturer of the alleged infringing product does not realize that the division plate with the use of holes enables it to reduce its weight without weakening its effect of supporting the box. This is because the holes are made solely for the purpose of enabling the stabilizer to reach the lower part of the box.

Determination of Patent Infringement
Article 59 of the "Patent Law of the People' Republic of China" (hereinafter the "Patent Law") provides that "for the patent right of an invention or a utility model, the scope of protection shall be confined to what is claimed, and the written description and the pictures attached may be used to explain what is claimed". Article 7 of the "Interpretations of the Supreme People's Court on Several Issues concerning the Application of Law for the Trial of Patent Infringement Dispute Cases" (hereinafter the "Interpretations") provides that "When a people's court adjudicates whether an alleged infringing technical solution falls into the scope of protection of patent rights, it shall examine all the technical features recited in the claims asserted by the right-holder. If the alleged infringing technical solution includes all the same technical features or equivalent technical features recited in a claim, the people's court shall determine that the accused infringing technical solution falls within the scope of protection of the patent rights. When comparing the technical features of an alleged infringing technical solution and all the technical features recited in the claim, if one or more of the technical features recited in the claim are missing, or if one or more of the technical features are not identical or equivalent, the people's court shall determine that the alleged infringing technical solution does not fall within the scope of protection of the patent rights".

The patentee asserted that the alleged infringing product infringed Claim 1 of the patent at issue. It is "a division plate of a kind of box" that is recited in Claim 1, that is, it is not a travel suitcase that is recorded in Claim 1. Under such circumstance, the box recited in Claim 1 includes all boxes containing a division plate. It can be concluded from the Interpretations that as long as the alleged infringing product includes all the technical features recited in the claims of the patent at issue, the alleged infringing product falls within the scope of protection of the claims of the patent at issue.

What is requested for protection by the alleged infringing product is a kind of box containing chemicals, and the technical features are exactly the same as those recited in Claim 1 of the patent at issue. Therefore, the alleged infringing product falls within the scope of protection of Claim 1. If a non-infringement defence is not applied, the alleged infringing product will be determined to have infringed the patent at issue.

Thus it can be seen that the alleged infringing product falls within the scope of protection of Claim 1 because it includes all the "same" technical features recited in Claim 1.

However, the purpose of drilling holes in the division plate of the alleged infringing product is different from that of in Claim 1, which is not reflected in the determination of the "same" technical features. It can be concluded from the Interpretations that the determination of whether or not an alleged infringing product falls within the scope of protection of the claims of another patented product is only dependent on whether or not the technical features of the alleged infringing product are the same as those of the patented product, and is not dependent on the technical problems to be solved by the technical features and technical effects brought about by the technical features.

Is there a problem for such an approach to determine patent infringement?

Possibilities of Invalidating Claim 1
Suppose that the alleged infringing products were publicly sold prior to the filing date of the patent at issue; is it viable to invalidate Claim 1 of the patent at issue on the ground that the alleged infringing product is prior art?

Article 22 of the Patent Law provides that "inventions and utility models for which patent rights are to be granted shall possess novelty, inventiveness and practical applicability. Novelty means that the invention or utility model concerned does not form part of the prior art; nor has any entity or individual filed previously before the date of filing with the patent administration department under the State Council an application relating to the identical invention or utility model disclosed in patent application documents published or patent documents announced after the said date of filing. Inventiveness means that, as compared with the prior art, the invention has prominent substantive features and represents a notable progress, and that the utility model has substantive features and presents progress". And "for the purposes of this Law, the prior art means any technology known to the public before the date of filing in China or abroad".

Novelty
Page 156 of the "Guidelines for Patent Examination 2010" (hereinafter the "Guidelines") sets forth the principles of examination of novelty, which reads as follows: "comparing the application being examined with the relevant content of the prior art or of the applications for invention or utility model filed previously by any entity or individual with the Patent Office and published or announced on or after the filing date of the application being examined, if their technical fields, technical problems to be solved, technical solutions, and their expected effects are substantially the same, they shall be regarded as identical inventions or utility models".

Thus it can be seen that the following indispensable four aspects need to be considered in the determination of novelty: whether the technical fields are the same, whether the technical solutions are the same, whether the technical problems to be solved are the same, and whether the technical effects are the same.

The alleged infringing product is a box containing chemicals, and the patent at issue involves a kind of travel suitcase, so both of the products concerned can be determined to be in the field of boxes. Therefore, their technical fields are the same. The technical solution applied in the alleged infringing product is also the same as that in Claim 1 of the patent at issue. The alleged infringing box is a concept subordinate to the box recited in Claim 1 of the patent at issue. However, only the sameness in technical fields and technical solutions cannot prejudice the novelty of Claim 1. This is because the problem to be solved by the technical feature of drilling holes in the division plate of the alleged infringing product is how to enable the stabilizer C to volatilize to reach the lower part of the box, while the problem to be solved by Claim 1 of the patent at issue is how to reduce the weight of the division plate without weakening its supporting effect afforded to the travel suitcase. Therefore, the technical problems to be solved by the same technical features are not the same, and under such circumstance, Claim 1 possesses novelty as compared with the alleged infringing product, and Claim 1 cannot be invalidated by virtue of lack of novelty.
 
Inventiveness
The most important step in the determination of inventiveness is the determination whether a claimed invention is obvious as compared with the prior art. Page 172 of the Guidelines sets forth the three steps to be followed in the determination of obviousness: (1) determining the closest prior art; (2) determining the distinguishing features of the invention and the technical problem actually solved by the invention; and (3) determining whether or not the claimed invention is obvious to a person skilled in the art.

If the three-step approach is adopted, the technical features of the alleged infringing product and that in Claim 1 are the same, and there seems to be no distinguishing technical feature of the patent at issue. However, I think that there are differences between the technical features of the alleged infringing product and the patented product. The publicly disclosed technical features of the alleged infringing product are holes that are drilled for the purpose of volatilizing chemical substances, while the holes recited in Claim 1 are for the purpose of reducing the weight of the division plate without weakening its supporting effect. The "holes" of the alleged infringing product are different from those of the patented product, which is the distinguishing technical feature of the alleged infringing product as compared with that in Claim 1. Then, is the distinguishing technical feature obvious to persons skilled in the art? After getting hold of the alleged infringing product, persons skilled in the art can only realize that the holes in the division plate of the alleged infringing product are for the purpose of enabling the stabilizer to volatilize to reach the lower part of the box, and of course, they may also realize that the weight of the division plate will be reduced due to the drilling of the holes. However, persons skilled in the art cannot realize that these holes will not weaken the supporting effect brought about by the division plate afforded to the box. Therefore, the technical solution recited in Claim 1 is not obvious as compared with that of the alleged infringing product, and thus Claim 1 has prominent substantive features. The technical effect brought about by the technical solution recited in Claim 1 cannot be realized by persons skilled in the art from the alleged infringing product; thus Claim 1 represents a notable progress. Therefore, Claim 1 possesses inventiveness as compared with the alleged infringing product.

It thus can be concluded from the above analysis that even if the alleged infringing product is prior art, it cannot, as a reference document, prejudice the novelty and inventiveness of Claim 1, that is, the alleged infringing product cannot serve as evidence to invalidate Claim 1 of the patent at issue.

"Literal Infringement" and "Equivalent Infringement"
What is discussed above leads to an interesting phenomenon, whereby the alleged infringing product constitutes infringement of the patent at issue; however, even if the alleged infringing product was known to the public before the filing date of the patent at issue, it cannot invalidate the patent at issue, which makes the alleged infringer a bit helpless.

The reason accounting for this phenomenon is that only the sameness of technical features is considered in the determination of literal infringement while the technical problems and technical effects are not considered.

Let's get back again to the analysis of the Interpretations. There are provisions in the Interpretations which read as follows: "if the alleged infringing technical solution includes all the same technical features or equivalent technical features recited in a claim..." Thus, in addition to "same technical features", there are "equivalent technical features". Then what does the term "equivalent" mean here?

The patent infringement case of Jingye Co., Ltd. vs. Yongchang Co., Ltd. [Min Shen Zi No.181 (2010)] is recorded in the "Annual Report of the Supreme People's Court on Intellectual Property Right Cases (2010)" (hereinafter the "Report"). The Supreme People's Court put forward in the guiding opinions for the said case that only when the following two conditions are concurrently met can the technical features of a patent at issue and those of an alleged infringing product be determined as equivalent technical features.

1. The technical features of the alleged infringing product are those that can be realized by persons skilled in the art without creative work.

2. The alleged infringing product uses substantially the same technical means to realize substantially the same functions and achieve substantially the same effects as compared with the technical features of the patent at issue.

It thus can be seen that the functions and technical effects are considered in the determination of "equivalent infringement", but such factors are not considered in the determination of "literal infringement".

Let's get back to the hypothetical case discussed above again. Suppose Claim 1 of the patent at issue reads as follows: "a division plate of a box, characterized in that eight circular holes are drilled in the division plate, and the connection of the centres of the eight circular holes forms a square. The centre of the square and the centre of the said division plate overlap each other, and there are two circular holes on each side of the square." Compared with the original claim, the eight holes are changed to eight circular holes. The division plate of the alleged infringing product is as shown in Figure 2:

Suppose that for persons skilled in the art, they can know without creative work that the unchanged supporting effect brought about by the patented division plate is dependent on the positions where the holes are drilled, and has nothing to do with the shape of the holes. If the division plate of the alleged infringing product also has the supporting effect, then the alleged infringing product constitutes "equivalent infringement" of the patent at issue in accordance with the opinions under the Report. If the holes of the alleged infringing product are for the purpose of volatilizing the stabilizer to reach the lower part of the box as mentioned above, the alleged infringing product apparently does not constitute "equivalent infringement" of the patent at issue, because the functions and effects should be taken into consideration in the determination of "equivalent infringement".

It can be concluded from the above analysis that functions and effects are not considered in the determination of "literal infringement", but are considered in the determination of "equivalent infringement". Therefore, the criteria for determining "literal infringement" are to some extent looser than those for determining "equivalent infringement", which is not in compliance with the spirit of the Interpretations.

Advantages and Disadvantages of Considering and Not Considering Technical Problems and Technical Effects in the Determination of "Literal Infringement"

If technical problems or technical effects are not considered in the determination of literal infringement, the alleged infringing product will be deemed to have infringed the patent at issue. However, as prior art, the alleged infringing product cannot invalidate the patent at issue, which is a bit ridiculous. The alleged infringing product being deemed to have infringed the patent at issue suggests that the alleged infringing product had used the patented technology, but what was used by the alleged infringing product was actually prior art. In other words, the patented technology is actually the prior art, but it cannot be invalidated by the prior art.

Although the alleged infringer may apply the non-infringement defence on the ground of prior art with a high probability of success, the public may not know the existence of such prior art, which is unfavourable to the public interest. However, the successful invalidation of the patent at issue by the alleged infringer is favourable to the public interest. After all, the patent system is a system of balancing the relationship between patentees and the public interest.

Therefore, not considering functions and effects in the determination of "literal infringement" is unfavourable to the public interest.

If functions and effects are considered in the determination of "literal infringement", the alleged infringer does not constitute infringement of the patent at issue. Under such circumstance, other travel suitcase manufacturers may also manufacture travel suitcases with such division plates as long as they do not describe in their product manuals that the weight of the division plate is reduced by the drilling of the holes. For instance, they may describe that a sachet is placed within each of their suitcases, and the purpose of drilling holes in the division plate is to enable fragrance to volatilize from the upper part to the lower part of the suitcase. In this way, these travel suitcase manufacturers cannot be determined to have infringed the patent at issue even if they have the deliberate intention of patent infringement. This is obviously unfavourable to the patentee, and it is highly possible that it will gradually become a common practice of avoiding risks of being accused of patent infringement.

Therefore, considering functions and effects in the determination of "literal infringement" may be unfavourable to the patentee.

Flexibility in Law Implementation
If the current laws remain unchanged, it is recommended to adjudicate the case in question as follows: given that the purpose of drilling holes in the division plate of the alleged infringing product is to enable the stabilizer to volatilize, and that the alleged infringer does not have the deliberate intention of patent infringement, the alleged infringer shall not be deemed to have infringed the patent at issue. As for other alleged infringing travel suitcase manufacturers, although they assert that their purpose of drilling holes in the division plates of their products is to enable fragrance to volatilize, they have the deliberate intention of patent infringement; thus they shall be deemed to have infringed the patent at issue.

Of course, what is discussed here is only a hypothetical case, and further discussion is required for its rationality and legitimacy.