Shimano Inc v Ningbo Sunrun Industry & Trade Co, Ltd
Application of assessment criteria
Parameters to be considered
The concept of a "usage environment feature" was first introduced by the Supreme People's Court (SPC) on 11 December 2012, in a retrial decision pertaining to the patent infringement dispute between Shimano Inc and Ningbo Sunrun Industry & Trade Co, Ltd.(1) The retrial decision defined a "usage environment feature" as the "technical features included in patent claims for the purpose of describing the backgrounds or conditions under which the patented solution is used". The SPC further elucidated that "usage environment features having been written into claims are the essential features of claims, functioning as the limitation to the protection scope of claims".
The concept was later written into the Interpretation (II) of the Supreme People's Court on Several Issues Concerning the Application of Law in the Trial of Cases Involving Patent Infringement Disputes, effective as of 1 April 2016. Article 9 of the Interpretation reads as follows:
Where an alleged infringing technical solution cannot be applied in the usage environment as defined by the usage environment features included in the claims, people's court shall ascertain that the alleged infringing technical solution does not fall within the scope of patent protection.
In other words, the Interpretation specifies in what circumstance the alleged infringing solution should be found not to fall within the patented scope, without elaborating on the circumstances in which patent infringement could be established.
Shimano Inc v Ningbo Sunrun Industry & Trade Co, Ltd
In Shimano Inc v Ningbo Sunrun Industry & Trade Co, Ltd, the patent at issue sought to protect a bicycle rear shifter bracket. However, the rear shifter feature and the bicycle frame were not structurally incorporated in the subject matter of claim one (a bracket). Claim one of the patent at issue read as follows:
A bicycle rear shifter bracket for connecting a rear shifter (100) to a bicycle frame (50), wherein, the rear shifter has a bracket member (5), a support member (4) for supporting a chain guide device (3), and a pair of connecting members (6 & 7) for connecting the support member (4) and the bracket member (5), the bicycle frame has a connecting structure (14a) formed on a shifter mounting extension (14) of a rear fork end (51), the rear shifter bracket includes.
The rear shifter feature and the bicycle frame, which constituted a use background for the subject matter and connected and worked in coordination with the subject matter, were usage environment features.
Application of assessment criteria
In practice, the overly broad nature of the aforementioned definition makes it difficult to arrive at a universally applicable infringement assessment criterion. The Beijing High Court clarified the definition in article 24 of its Guidelines for Patent Infringement Assessment (2017) as follows:
Different from the subject matter, usage environment features refer to technical features in a claim which are used to describe the background or conditions under which the invention or utility model applies and which are in connection or coordination with the technical solution.
However, the infringement assessment criteria remain ambiguous.
This article tentatively proposes that patent infringement should be found on the premise that the accused infringer has an actual intention to have the accused infringing solution used in the manner as limited in the usage environment feature. The follow sections list the parameters to be considered when the proposed methodology is applied in assessing the infringement of patents involving usage environment features.
All elements rule still applies
The SPC made it clear in the retrial decision and the Interpretation that usage environment features have the effect of limiting the patent protection scope. The infringement assessment for usage environment features should follow the "all elements rule", according to which an allegedly infringing device must be equal or equivalent to each element of a claim in order to establish infringement. The "all elements rule" is applicable to all claim features, as established in article 7 of the Interpretation I of the Supreme People's Court on Several Issues Concerning the Application of Law in the Trial of Cases Involving Patent Infringement Disputes (effective as of 1 January 2010), since usage environment features that have been written into claims are treated indiscriminately in patent granting and invalidation procedures. For instance, in assessing the novelty or non-obviousness of a claim involving usage environment features, whether the usage environment features have been disclosed or taught by prior art needs to be taken into consideration.
If the "all elements rule" were to apply to usage environment features, it would promote claim interpretation consistency in both patent infringement and patent invalidation procedures.
Actual intention to use matters
If the infringement assessment is based merely on whether the accused infringing solution is technically applicable to the usage environment feature, it significantly and unreasonably burdens the public with an exorbitant duty of care. In order to fulfil such obligation, the practising entity must not only check and clear the risk of infringement for its products, but also ensure that all of the technically viable use backgrounds and conditions thereof do not fall within the protection scope of others' patents.
Infringement risk clearance, also known as "freedom-to-operate (FTO) analysis", is time-consuming and costly. It would be an arduous task for a manufacturer to effectively control all of the scenarios in which its products are utilised, particularly those products with an extensive range of exploitation, let alone to conduct FTO analysis in myriad settings.
To alleviate the duty of care, it is proposed to take the actual intention to use into account. In other words, the accused infringer needs to exhibit an actual intention to use the accused infringing solution in the manner as limited in the usage environment feature. In other words, in the absence of such actual intention, even if the product of an accused infringer is technically applicable to the usage environment feature, the product still falls out of the protection scope of the patent.
Other intention to use not an admissible non-infringement defence
The fact that an accused infringer, apart from exploiting a technical solution in the usage environment of the patent at issue, has other intentions of using such technical solution, shall not be admitted as a non-infringement defence.
This principle specifically targets an accused infringing product with multiple usages. If an accused product could be used in several manners, among which one meets the limitation of the usage environment feature, and the accused infringer intends to have the product used in the same way as the usage environment feature, infringement should be established. That means that a practising entity should fulfil the risk clearance obligation to make sure that none of its intentions conflict with the patents of third parties.
This principle enables a patentee to effectively enforce its right against those products with multiple functions.
In drafting claims, patentees tend to use a smaller unit as the subject matter of claims and include usage environment features for greater enforceability of the patent right.
If a claim refers to a device or system as the subject matter, the chances are that such patent claim is less enforceable in practice. With the increasing division of labour, a single patented subject matter is less likely to be manufactured or offered for sale by one entity. This would lead to the conundrum that under the "all elements rule", no infringement could be found, if a cohort of entities jointly exploit the patented technology. Even if the patentee claims these entities should be held liable for contributory infringement, judicial practice dictates that a contributory infringement finding shall be based on the presence of direct infringement.
In contrast, a smaller unit claim with usage environment features can be easily enforced against a smaller unit such as a component. Once the patentee proves that the component is technically applicable to the usage environment feature and the accused infringer has the intention to have the component exploited under the usage environment, infringement could be established.
The remaining issue would be how to infer an accused infringer's intention. The patentee could produce evidence to demonstrate the context under which the accused infringing product is being used. The user manual of the product, its characteristics and the standard the product is mandated to follow could also be used to establish the intention.
For further information on this topic please contact Hewen Zhao at Wanhuida Intellectual Property by telephone (+86 10 6892 1000) or email ([email protected]). The Wanhuida Intellectual Property website can be accessed at www.wanhuida.com.