In two judgments issued consecutively in November, the Supreme People’s Court of China (“SPC”) reversed the lower courts’ finding of infringement under the doctrine of equivalents.  In both judgments, SPC held that the specification and claims of the patents include language that would lead persons in the art to believe that the accused technical solution should be outside the scope of the patents, thus preempting the application of the doctrine of equivalents.

In one of the judgments, SPC revives the “foreseeability” concept in the equivalency analysis, while the other judgment revives the “intentional exclusion” concept (which can also be analyzed under the “foreseeability” concept).  SPC’s reasoning in applying the concepts points to imperfections in the drafting of the two patents in dispute.  Apparently, by issuing the judgments consecutively and giving them good publicities, SPC wants to send a stern alert that while China is enhancing protection of patent rights, patent owners should also spend more resources enhancing the drafting quality of their patents.

Foreseeability

The plaintiff in this case owns invention patent No. 201610201500.0 entitled “Electricity-driven Hedge Trimmer”, which is also the preamble of claim 1.  The defendant’s trimmer is driven by fuel while reflecting all other features of claim 1.

The lower Intermediate People’s Court of Suzhou found equivalency between “driven by electricity” and “driven by fuel” on the following grounds:

--Both “driven by electricity” and “driven by fuel” have been commonly used in the art.

--The core function of the patent, switching between two trimming modes, is irrelevant to how the trimmer is driven.  That is, the problem to be solved by this patent, the key technical features adopted and the technical result achieved are all irrelevant to how the trimmer is driven.

--Therefore, “driven by electricity” and “driven by fuel” are features adopting substantially the same means, realizing substantially the same function and achieving substantially the same result that could be perceived by persons in the art without innovative efforts.

SPC however found no equivalency based on the following rules:

--Determining the scope of a patent needs to balance the patent owner’s interests and the public’s reliance on the “public notice” function of patent documents.

--If the patent owner, when drafting the patent application documents, clearly knew (i.e. foreseeable) a technical solution but failed to include the solution within the scope of the claims, he should be prohibited from claiming that solution back via the doctrine of equivalents.

--To determine whether the patent owner “clearly knew” a technical solution when drafting the patent should be done based on a wholistic reading and understanding of the claims, specification and drawings from the perspective of persons in the art.

SPC applies the above rules to the following facts related to the subject patent:

--From the title of the patent, the preamble of the claims and relevant teachings in the specification (particularly the Background section), it is clear that the patent owner was aware of the two driving modes (by electricity or by fuel).

--The specification also states that “environment friendly without pollution” is a very effect to be achieved by the subject patent over the prior art.

--From all the above factors, persons in the art would know that to achieve the “environment friendly without pollution” effect, the patent owner explicitly did not seek to protect technical solutions driven by fuel.  If the patent owner is allowed to cover such solutions via the doctrine of equivalents, the public’s reliance on the “public notice” function of patent documents would be undermined.

Intentional Exclusion

The plaintiff in this case owns utility model patent No. 201420474545.1.  Claim 1 of the patent defines a tin printing patch welding fixture for PCB comprising a square fixture ray, and specifically recites that “each edge of the fixture tray is movably provided with an edge-position push-pull device for clamping each edge position of the PCB”.  The accused product also has a square fixture tray, and is different from claim 1 only in that its fixture tray has the push-pull devices provided only at two opposite edges.

The lower Intermediate People’s Court of Shenzhen found equivalency between the two features on the following grounds:

--Both the patent and the accused product use corner-position and edge-position push-pull devices of the same configuration for clamping a PCB and facilitating the assembly and disassembly of the PCB.

--When both the patent and the accused product also use the corner-position push-pull devices, providing edge-position push-pull devices at each of the four edges or only at two opposite edges achieves substantially the same function and effect, and the interchange between the two options would not need innovative efforts.

In reversing the lower court’s equivalency finding, SPC again highlights the public’s reliance on the “public notice” function of patent documents, and specifically holds that if persons in the art, after reading the specification and claims, would understand that the patent owner intentionally excluded a technical solution from the scope of the patent, the patent owner should be prohibited from claiming that solution back via the doctrine of equivalents.

Specific to this case, SPC made the following reasoning:

--When a claim uses language like “at least” or “no more than” to limit a numerical value and persons in the art after reading the specification and claims would understand that the patent specifically stresses the limiting effect of such language, the patent owner should be prohibited from trying to cover a different numerical value via the doctrine of equivalents.

--Persons in the art would know that providing the push-pull devices at four or two opposite edges of the tray has substantially the same effect, and the patent owner also admitted to this in the legal proceedings.  However, the patent owner still used the language “each edge” in claim 1, which should be regarded as an intentional highlight.  Given this, persons in the art would understand that the patent owner intentionally excluded the “two opposite edge” solution from the scope of the patent when applying for the patent.  In this case, the patent owner should be prohibited from claiming the solution back via the doctrine of equivalents.

Comments

The “foreseeability” concept has been the subject of controversy since it was introduced into the patent laws, as opponents argue that the concept would impose an unduly burden on patent owners in drafting patent applications.  While SPC has applied it several times in individual cases, the High People’s Court of Beijing has formally stipulated it in Article 60 of its Guidelines for the Determination of Patent Infringement (2017) (which are legally binding on courts in the Beijing Municipality and also commonly referenced to by courts across the country).  This article limits the application of this concept to 3 scenarios: (1) a non-innovative feature of invention patents, (2) an amended feature of invention patents and (3) features of the claims of utility model patents.  The above SPC judgment corresponds to scenario (1).  Meanwhile, Article 59 of the Guidelines has stipulation on the “intentional exclusion” concept.

The High People’s Court of Beijing has published a book giving article-by-article explanations to the above Guidelines, and the explanations on Article 60 provide a complete examination to the history of and debates around “foreseeability”, including a comparison with practice in the United States and Japan, which is a must-read on this concept.  The book particularly explains SPC’s key rational to have introduced this concept: to discourage the filing of patent applications of a low quality (which are usually the products of patent attorneys working under very low legal fees for the drafting) and encourage patent filers to spend more resources enhancing the quality of drafting.  The High People’s Court of Beijing also recognizes the disagreements on this concept and states in the book that it should be applied very carefully.

In view of the history, and given the publicities SPC made to the above two judgments, obviously SPC wants to send a stern alert to the public on quality of patent drafting.