Principles of judicial adjudication have always been a thorny problem in judicial practices in every country. Just asa German philosopher, Gottfried Wilhelm von Leibniz, ever said: “there are no two identical leaves in the world”, there also does not exist two identical cases. But this does not hamper us in summarizing the facts of the cases, we find out the same sorts of social relationships and legal facts, thereby apply the same judicial principles, and finally achieve the corresponding judicial justice.
Seen as such, the key for fair application of the principles of judicial adjudication lies in the subjective initiative, the same vocational thinking filtering and the same professional skills processing of the legal personnel. Let’s have a review of the legal principles in judicial circle of intellectual property.
1. All Elements Rule
The all elements rule is a most basic and primary principle in the judgment of patent infringement.
The so-calledall elements rule (also referred to as all technical features coverage principle or literal infringement principle) means that, it can be identified to have an infringement behavior if the technical features of an accused infringing product or method (hereinafter referred to as a whole as accused infringing item) are in one to one correspondence and are identical to the entire technical features recorded in the patented claims, or, some other technical features have been added to the technical features of the accused infringing item, on the basis that it has included the entire technical features claimed in the patented claims.
Article 17, paragraph 1 of Several Stipulations on the Problem of Legal Application in the Trail of Patent Dispute Cases (passed in 2001, amended respectively in 2013 and 2015) of the Supreme People’s Court, and Article 7 of Explanations on Several Problems of Legal Application in the Trail of Patent Dispute Cases by the Supreme People’s Court.
Over stick to the literal meanings and scope of the claims, and often fail to provide effective and sufficient legal protection for a patentee.
2. Doctrine of Equivalents
The doctrine of equivalents is originated in USA and has now been generally acknowledged in major countries/regions of the world such as USA, Europe, Japan and Korea. This principle is an important principle in the judgment of patent infringement, as well as a principle that is applied the most by the courts when making judgments of patent infringement. Therefore it is stated as an amendment to the omnidirectional coverage principle.
The so-called doctrine of equivalents refers to that, although the technical features of the accused infringing item have a certain difference with the entire necessary technical features recorded in the patented claims, it can also be determined to have an infringement behavior if the difference is not a substantive one, namely, the former is just a means that is basically the same with the latter, realizing basically the same functions and achieving basically the same effect, and it is a feature, i.e., equivalent feature, that is conceivable for the general persons skilled in the art without paying creative efforts.
Article 59 of Patent Law of People’s Republic of China (2008 amended); Article 17 of Several Stipulations on the Problem of Legal Application in the Trail of Patent Dispute Cases by the Supreme People’s Court; Article 7 of Explanations on Several Problems of Legal Application in the Trail of Patent Dispute Cases by the Supreme People’s Court.
Abuse of civil rights due to the difficulty of unifying the application standards.
The problem to be faced with first of all when the doctrine of equivalents is applied in the judgment of patent infringement is the determination of comparison objects, which problem has experienced the process from overall comparison to one by one comparison of the technical features. The academic circle has two major opinions concerning the comparison object theory, namely, overall equivalence theory and all technical features theory.
1) Overall equivalence theory
The overall equivalence theory refers to that, while performing the judgment of equivalent infringement, determine whether the accused infringing item is equivalent to the patented technical solution as a whole.
2) All technical features theory
All technical features theory is also referred to as element by element theory, which places an emphasis on the comparative analysis of each of the technical elements in the claims. This theory considers that all technical features of an independent claim are non-ignorable, and it can be identified as an equivalent infringement if a certain element of an accused infringing item is different from the corresponding technical feature recorded in the claim while their functions, means and effects are basically the same.
The all technical features theory is more restrict than the overall equivalence theory, which avoids the uncertainty caused by expanding explanations of the claims, and thereby improves the operability of the judgment of equivalent infringement. Both USA and EPC adopt the technical features equivalence theory. There is a case in the judicial practices of China, i.e., patent infringement dispute case of “intracranial hematomasmash puncture needle”. In this case, the first instance court applied the overall equivalence principle, but the second instance court corrected the behavior of the first instance court by applying the all technical features theory.
The estoppels principle is originated in the Equity law of England, and has latter been absorbed into the common law as an important principle by which the parties of an adversarial legal procedure such as litigation shall abide.
Estoppels principle in a broad sense means that, from the date of publication of a technical solution, no different explanation is permitted to be made to the content thereof, no matter during the establishment of the rights or in the maintenance of the rights and infringement litigation thereafter. The estoppels principle in a narrow sense means that, during patent examination, revocation or invalidation procedures, in order to determine that the patent possesses novelty and inventiveness, the patentee performs limitation commitments for the protection scope of the patented claims or partly waives the protection through written statement or by amending patent documents, thereby obtains the patent right. But in patent infringement litigations, if the court applies equivalence principle to determine a patent right protection scope, the patentee shall be prohibited from reintegrating the limited, excluded or abandoned content into the patent right protection scope.
The estoppels principle is considered as an important restriction to the equivalence principle. If the equivalence principle conflicts with the estoppel principle in application, namely, the plaintiff holds that equivalence principle should be used to verdict that the defendant has infringed his patent right, while the defendant holds that estoppels principle shall be used to verdict that the defendant does not constitute infringement of patent right. In such cases, estoppel principle shall be applied preferably.
Article 6 of Explanations on Several Problems of Legal Application in the Trail of Patent Dispute Cases by the Supreme People’s Court enforced on January 1, 2010: where the patent applicant and the patentee have abandoned certain technical solution during the procedures of patent authorization or invalidation announcement, by amending the claims and Description or making observations, but the patentee reintegrates the certain technical solution into the patent right protection scope in a dispute case concerning infringement of patent right, the people’s court shall not support this.
4.Principle of Donation
USA is the first country that applies the principle of donation. In the classic case, i.e., “case that Miller prosecutes Brass, which is heard by the Supreme Court of USA in 1881”, the patentee has disclosed two lamp structures in the Description, but claimed only one of them. After over ten years however, the patentee found that the other structure is better, so he wanted to seek to protect the structure through the reissue procedure. The Supreme Federal Court of USA did not support the request of the patentee. The court pointed out in the judgment that, “from a legal point of view, if a certain device is claimed, while the other device which is very obvious from the surface of the patent is not claimed, then the device that is not claimed is donated to the public, unless it makes a request for reissue in time and proofs that why the other device is not claimed is totally due to negligence, accident or mistake”
Article 5 ofExplanations on Several Problems of Legal Application in the Trail of Patent Dispute Cases of the Supreme People’s Court enforced on January 1, 2010: as regards a technical solution which is described merely in the Description or the accompanying drawings rather than being recorded in the claims, if the patentee includes this technical solution in the patent right protection scope in a dispute case of patent infringement, the people’s court shall not support this.
In the present stage, due to the deficiencies in both aspects of legal theory and judicial practice, the judicial practice in our country is beset with difficulties.
5. Prior use right
The prior use right, i.e., prior use right of defense, is originated in the equity principle of law.
Article 69 of the Chinese Patent Law: it shall not be deemed as infringement of the patent right where, before the date of filing of the application for patent, any person who has already made the identical product, used the identical process, or made necessary preparations for its making or using, continues to make or use it within the original scope only.
In the dispute cases of patent infringement nowadays, the accused infringing party always takes the prior use right as a reason to defense, therefore there are also strict conditions set for the application of the prior use right.
The controversial technical effect which is successfully developed by the prior user and the behavior of preparing to implement the technical effect shall both be performed before the application date on which the patent is proposed by the patentee.
The controversial technical effect should be researched and developed independently or obtained through other lawful ways.
Application range factor:
The continuing use of the technical effect by the prior user should be within the original range, and the prior user should not enlarge the range of use. The so-called “original range” includes two parts, namely, the range of the “use” of the controversial technical effect and the range of “necessary preparation” performed for using the controversial technical effect.
6. Principle that implementing generally known prior art does not infringe the right.
The principle that implementing generally known prior art does not infringe the right, i.e., defense of the prior art and defense of the generally known technology, is a new provision added when the Chinese Patent Law is amended in 2008. The “prior art” refers to the technology known by the public at home and abroad before the application date.
When judging whether an accused infringing technology “belongs” to the prior art, a principle similar to the novelty judgment principle in patent authorization is applied. First of all, the separate comparison principle of novelty is applied in which it is not permitted to compare several prior arts in combination. If one prior art is identical to the accused infringing technology, then the defense of prior art is established. Next, the defense of prior art shall also be identified as established if the accused infringing technology has a difference with the prior art, but which difference is just the “direct replacement of the customary means (such as replacing bolt with screw)” or the “general knowledge in the technical field” etc..
The burden of proof of the defense of the prior art should be taken by the party who proposed the defense. As for the disclosure by publication, the parties shall provide publications having explicit publication date; as for the disclosure through application, the parties can proof the technical features and publication date of the relevant prior art by means of notarization or through other ways. In a word, the pleader not only should proof that the current technical feature is the same as the accused infringing technical feature, but also should proof that the publication date of the relevant prior art is before the application date of the patent.
Article 62 of the Chinese Patent Law amended in 2008: in a patent infringement dispute, where the alleged infringer has evidence to prove that the technology or design exploited by it or him forms part of prior art or is prior design, such exploitation does not constitute infringement of patent right.
7. Compromise principle
The compromise principle is an explanation principle with respect to the patent right protection scope of invention and utility model. On the method of understanding and explaining the claim or on the method of determining the patent right protection scope, there used to have two representative practices in the world, one is the center limitation system represented by Germany, the other is the periphery limitation system represented by England and USA. The center limitation system is not that fair for the public, while the periphery limitation system is instead disadvantage for the patentee. In order to make up the deficiencies of the above two methods, many countries in the world, including Germany who applies the center limitation system and USA who applies the periphery limitation system, has turned to the compromise principle.
Article 59, paragraph 1 of the Chinese Patent Law: the extent of protection of the patent right for invention or utility model shall be determined by the terms of the claims. The description and the appended drawings may be used to interpret the content of the claims.
Article 7 of the Guidelines for Patent Infringement Judgment by the Supreme People’s Court of Beijing has explicitly expounded the compromise principle: the explanation of the claims shall subject to the technical content recorded in the claims, and the patent right protection scope shall be reasonably determined according to the factors such as the contribution of the Description, appended drawings, prior art and the patent to the prior art; the patent right protection scope shall neither be stuck to the literal meaning of the claims, nor be expanded to the content which can only be associated by a ordinary skilled person in the art with creative efforts after reading the Description and appended drawings before the application date.
8. Inferior invention principle
The so-called inferior invention principle refers to: “the accused item replaces an individual necessary technical feature of the patented technology with a simple technical feature, but applies and implements the other necessary technical features, thereby generally realizes the inventive purpose of the patented technology, which however causes the deterioration of the patented technical solution in some degree, and reduces the technical effect thereof.
In the trend that the infringement methods are increasingly diverse nowadays, the definitude of the understanding and legal application of the inferior invention is significant. As for whether the inferior invention has constituted infringement, US and England hold completely opposite attitudes, similarly, controversy and different opinions also exist in legal theories and judicial practices in China. Wherein, the major reason supporting that the inferior invention does not constitute infringement is: when the patentees are applying for a patent, they all wish that the protection scope of their patent can be as large as possible and their patent can successfully pass the examination; or wish to ensure that their patent would not be announced to be invalid in the future. In general, the patentees would write the technical solution with good effect into the claims and abandon the technical solution with poor effect, but on the contrary, during judgment of infringement, they would hold that the technical solution with poor effect which has been abandoned by the patentees should be protected by law. This is obviously unreasonable. Moreover, the technical solution with poor effect can be weeded out by the market, in which the law of the market is applied, and should not be prohibited forcibly by judging it as having infringed rights, which is unfair for the public. At present, the Guidelines for Patent Infringement Judgment issued by the Supreme People’s Court of Beijing has provided a provision explicitly upholding that inferior invention does not constitute infringement, which is applicable at least in the region of Beijing.
Article 117 of the Guidelines for Patent Infringement Judgmentpublished by the Supreme People’s Court in 2013: it does not constitute infringement where the accused infringing technical solution omits individual technical features in the claims, or replaces the corresponding technical features with simple or lower grade technical features, giving up or notably reducing the performance and effect corresponding to the technical features in the claims, and thereby forms an inferior invention.
Next, the superfluity establishing principle and reverse equivalence principle will be introduced, wherein one of them is going far away while the other has not yet arrived!
9. Superfluity establishing principle
In the second amendment of Several Stipulations Concerning the Problem of Legal Application in the Trail of Patent Dispute Cases by the Supreme People’s Court, the patent right protection scope as stipulated under Article 17, paragraph 1 thereof has been amended from “necessary technical features and equivalent features” into “all technical features and equivalent technical features”. This not only follows the overall coverage principle stipulated under Article 7 of the Explanations on Several Problems of Legal Application in the Trail of Patent Dispute Cases by the Supreme People’s Court, which is issued and taken into effect in 2009, but also be considered as an end to the superfluity establishing principle ever used in judicial practices.
The superfluity establishing principle is also referred to as “principle of excluding unnecessary technical features”, the basic meaning of which is that, it is such a principle that,when explaining the patented independent claims and determining the patent right protection scope, omits the obvious additional technical features (i.e., redundant features) recorded in the patented independent claims, determines the patent right protection scope only by the necessary technical features in the independent claims, and judges whether the accused infringing item (product or method) has covered the patent right protection scope. If the accused infringing item of the defendant does not contain the redundant features, the defendant can still be identified as having infringed rights.
As for whether this principle shall be applied in the judgment of patent infringement, different countries in the world hold different opinions. The court of England admits this principle, but holds that, when applying this principle, the court should measure the function of a feature in a claim and deduce the intention of the writer adding the technical feature into the claim. USA finally explicitly negates this principle in the Hilton case after all these years’ ambiguity and irresolution.
Recently, the superfluity establishing principle is no longer applied in Chinese patent judicial adjudication. Therefore, while composing the claims of the application for a patent for invention and utility model, the patent applicant shall reasonably determine the protection scope of the applied patent according to the specific situations of the prior art, and must avoid to write unnecessary technical features into independent claims for obtaining a better prospect of being granted.
10. Reverse equivalence principle
The reverse equivalence principle is also referred to as inverse equivalent principle, which has not yet been established in our country. But along with the development of technology and law, this principle is receiving important attentions from the fields of legal theory and judicial practice.
The so-called reverse equivalence principle refers to that, when an accused infringing item reproduces the entire technical features recorded in the patented claims, it shall not be identified as having infringed rights if the accused infringing item has experienced fundamental changes in comparison with the patented technology, and has achieved the function or effect that are the same or basically the same with that of the patented technology using a method substantively different from the patented technology.
Being established in the judicial practices of USA, the reverse equivalence principle is first seen in the case of Westinghouse v.Boyden Power Brake Co., which is judged by the Supreme Court of USA. In this case, the court held that, even though the device of Boyden has been covered by the literal scope of the patent of Westinghouse, the court still refused to judge that the infringement is established, “… although an accused infringing item is not within the literal scope of the claims, the infringement accusation thereof is still possible to be established, and vice versa. The patentee can proof that the accused infringing item has fallen into the literal scope of the claims, but if the accused infringing item has changed significantly in its principle, causing disconnection between the literal scope of the patented claims and the actual invention of the patentee, then the accused infringing item would not be within the patent right protection scope and thus does not infringe patent right”. This expression becomes the original rudiment of the reverse equivalence principle.
Take Nanotechnology as an example, researchers in Cornell University has developed a “nano-guitar”, the string of which is made by drawing laser and has a width of about only 100 atoms, which can produce a timbre that is seventeen times higher than the frequency that can be heard by human beings. If there exists an ordinary six-string instrument, the claims of which has a broad scope and does not define the size of the instrument, then the patentee is very possible to allege that the above “nano-guitar” is equivalent to his product. In other words, the technical solution applying nanotechnology is very possible to constitute literal equivalence with the traditional similar technical solution, but it is in fact a totally different technical solution. The Nano-scale instrument has an incredible small size, and its electronic structure, conductive property, sensitive degree, melting point and mechanical property are notably different from the prior product similar to it. Seen as such, along with the development of technology, the reverse equivalent principle may not be far away from being applied.