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Supreme People’s Court Took Opposite Directions on Claim Construction in Two Cases
DATE：2022-01-10
FROM：LexField
David
Huang
Whether it is a patent infringement action or an invalidation action, how to interpret the terms of the claims is a basic issue. The Intellectual Property Division of the Supreme People’s Court took basically opposite directions on this issue in two recent judgments: in one case, the court interprets the key term as the usual meaning in the subject field that is wider and beyond embodiments taught in the specification, while in the other case the key term is interpreted in a restrictive manner according to the purpose of the invention. It is worth noting that the result of the interpretation is beneficial to the patentees in both cases.
These two judgments are worthy of in-depth comparative reading, and have strong guiding significance for infringement actions, invalidation actions and the drafting of patent specifications and claims.
"Touch screen" case: the usual meaning in the subject field
This case is an infringement case, the involved patent is patent No. 201010235151.7, and the title is "A touch screen and its multi-channel sampling method". Claim 1 reads:
1. A touch screen, comprising an infrared emitting tube, an infrared receiving tube, a touch detection area, a first-level processing circuit and a second-level processing circuit...
The key question in this case is whether the term "touch screen" covers tangible physical hardware.
The court of first instance, the Guangzhou Intellectual Property Court, interpreted the term as a tangible hardware structure mainly based on the general dictionary "Modern Chinese Dictionary", and determined that there was no infringement on the grounds that the alleged infringing product does not have a corresponding hardware structure, with the following specific reasoning:
• The specification of the subject patent does not give a special definition for "touch screen".
• From the interpretation of "touch screen" given by the Modern Chinese Dictionary, it can be determined that it is a tangible medium.
• The touch screen in all embodiments throughout the specification of the subject patent is a tangible medium.
The Supreme People's Court however reached the opposite conclusion based on the following reasons:
• According to the evidence submitted by the parties on common knowledge in the field, "touch screen" is a technical term with a definite meaning in this field, covering contact touch screens with a physical screen structure and non-contact touch screens without a physical screen structure. The lower court used the Modern Chinese Dictionary and other reference books that are not from this field as the main evidence, which is out of touch with the technical background and knowledge system of this field and needs to be corrected.
• The embodiments related to the touch screen in the specification do not specifically limit the term, and the construction of this term should not be restricted. In particular, the invention of this patent does not lie in improving the material or structure of the touch screen, but in how to improve the response speed of the touch screen, the sampling method and the corresponding circuitry.
• Even if dependent claim 16 further limits the touch screen in its technical solution as a touch screen with a physical screen structure, this limitation should not be applied to independent claim 1.
"Calculation" case: purpose of the invention can narrow the meaning of a term
This case is a patent invalidation case. The involved patent is patent No. 201310072198.X, and the title is "Planar echo imaging sequence image reconstruction method". Claim 1 reads:
1. An image reconstruction method of planar echo imaging sequences, characterized in comprising the following steps:
acquiring planar echo imaging data Si, and simultaneously collecting three reference echo signals R1, R2, R3 that are not phase-encoded…;
calculating, via the reference echo signals, parameters that are needed to correct the plane echo imaging data...
The key issue in this case is how to interpret the term "calculation" in claim 1.
In the invalidation proceeding before the National Intellectual Property Administration (CNIPA), the invalidation requester argued that "calculation" should cover all calculation methods (including the calculation method in the prior art it cited), and accordingly claim 1 is not novel. However, in its decision, CNIPA, based on the teachings on the defects of the prior art in the specification of the patent, held that the "calculation" of this patent should reflect improvements over the prior art, and should therefore be construed as "direct calculation from the reference echo signals". Based on this, CNIPA concluded that claim 1 is novel over the prior art cited by the requester.
The court of first instance (Beijing Intellectual Property Court) overturned CNIPA’s determination based on the following reasons:
• The term "calculation" has a clear and definite meaning to those skilled in the art: calculating an unknown quantity based on known parameters. Thus, it is not necessary to use the relevant definitions in the specification to construe its meaning.
• Even if the term is interpreted in accordance with the principle of “broadest reasonable interpretation" as determined by the Supreme People's Court, the above-mentioned broad interpretation ("calculating an unknown quantity based on known parameters") does not exceed the reasonable range.
• The decision in dispute interpreted the "calculation" as "direct calculation", which essentially is a conclusion from first summarizing the specific embodiments taught in the specification and then comparing it with the calculation method of the cited prior art. This method of interpreting claims will bring great uncertainty, and what is "direct" is vague in itself. As the result, the scope of protection of claim 1 will become unclear, which does not comply with the purpose of claim construction.
However, in the second instance, the Supreme People’s Court basically adopted CNIPA’s determination based on the following reasons:
• • Article 2 of the Supreme People’s Court’s Provisions on Several Issues Concerning the Application of Law in the Trial of Administrative Cases for Patent Examination and Validation (I) stipulates: “The People’s Court shall define terms of a claim according to the usual meaning persons in the art would understand after reading the claims, specification and drawings. If a term of a claim has a definite definition or explanation in the specification or drawings, the definition or explanation shall be followed.”
• Accordingly, the interpretation of the term "calculation" in claim 1 of this patent should not simply be based on its literal meaning, but should be understood by those skilled in the art after reading the claims, specification and drawings. Even when applying the principle of broadest reasonable interpretation to interpret the claims, “reasonable” should be the start and end within the broadest scope of meaning of the term.• In view of the purpose of the subject invention and explanations and descriptions of "calculation" in the specification and drawings of this patent, it can be known that the "calculation" in this patent does not cover all possible calculation methods, but has its specific meaning. This patent points out several shortcomings of the prior art in the Background section and Content of the Invention section. In order to overcome the above shortcomings, this patent intends to provide a more accurate image reconstruction method for planar echo imaging sequences. It can be seen that the purpose of the invention of this patent has clearly excluded the calculation method of the two echo signals having phase difference and thus losing phase information. Thus, those skilled in the art could understand by reading the specification and drawings that the "calculation" in claim 1 of this patent is a direct calculation without loss of phase and other information.
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