Mercury-free Alkaline Button Cell Battery
Dongguan Jiachang Toys Co.,Ltd. et.al. v. Zhaoqing New Leader Battery Industry Co.,Ltd. et.al.-Importance of Specification on Claims Interpretation (Administrative Judgment (2012) Xing Ti Zi No. 29 by the Supreme People's Court on December 20, 2012)
When evaluating whether a claim has novelty and/or inventiveness, the protection scope of the claim should be determined first. Article 56, Paragraph 11of the Chinese Patent Law (2001)stipulates that: the protection scope of the patent right for invention or utility model shall be determined by the terms of the claims; and the description and the appended drawings may be used to interpret the content of the claims. Therefore, the protection scope of a claim should be determined from those skilled in the art, who would understand the technical solution of the claim as a whole and explain the claim in combination with the description and drawings if necessary. In invalidation cases, explanations to technical features of the claim usually determine whether the claim has novelty and/or inventiveness as compared with a reference, so as to determine whether the involved patent is maintained or invalidated.
The patentee, Zhaoqing New Leader Battery Industry Co.,Ltd. et.al.(“New Leader Battery” hereinafter), has a utility model patent No. ZL01234722.1 titled “Mercury-free Alkaline Button Cell Battery.” The involved patent underwent three rounds of invalidation after the date of authorization proclamation. Finally, the Patent Reexamination Board (the “PRB” hereinafter) made the No. 13560 decision on the request for invalidation (hereinafter referred to as the invalidation decision) on June 9, 2008 declaring that all claims of the involved patent are invalidated. In the subsequent administrative litigation, both the court of first instance and second instance judged that the invalidation decision should be reversed. However, the Supreme People's Court reversed the judgments of the court of first instance and the court of second instance and maintained the invalidation decision on December 20, 2012.
The involved patent includes one independent claim and three dependent claims, wherein the independent claim recites:
“An mercury-free alkaline button cell battery, comprising: an anode plate, a cathode cover, cathode calamine cream, a silicon seal, an anode shell and a membrane, characterized in that: a layer of indium or tin material is electroplated on a cathode plate and indium is added into the calamine cream to replace mercury.”
Dongguan Jiachang Toys Co.,Ltd. et.al. (“Jiachang Toys” hereinafter) requested to invalid the patent before the PRB. Throughout the invalidation procedure and the subsequent litigation procedure, one of the dispute’s focuses was how to explain the meaning of the “cathode plate” in claim 1. In the invalidation procedure conducted by the PRB and trials of the subsequent litigations by the court of first instance and second instance, it is held that the “cathode plate” in claim 1 of the involved patent means “a metal sheet with nickel or copper electroplated.” In the request for retrial submitted to the Supreme People's Court, however, the Jiachang Toys contends that the “cathode plate” generally refer to a sheet implementing the function of the cathode of a battery, which should not interpreted as “a metal sheet with nickel or copper electroplated”. New Leader Battery insisted that the “cathode plate” in claim 1 of the involved patent designates the electroplated structure.
In the administrative judgment of the Supreme People's Court, the Judge explained how to properly explain the meaning of the “cathode plate” in claim 1 of the involved patent.
First, claim 1 of the involved patent does not specify structure of the “cathode plate” and its modeling method. In accordance with common sense, cathode plate of a battery refers to a sheet functioning as cathode of the battery.
Second, when a claim is explained with reference to the description and drawings, the explanation should be based on the specification, so as to keep the protection scope of the claim fitting the scope disclosed by the specification. The involved patent does not improve the structure of the cathode plate of the battery. Therefore, the “cathode plate” in claim 1 of the involved patent should not be interpreted as designating the electroplated structure for the following reasons..
- according to corresponding recitations in the description2, the applicant of the involved patent thinks the way to obtain the mercury-free button cell battery is to find a material to replace the mercury, which can also isolate zinc from other material or metal, but he never make specialized improvements to the structure of the cathode plate of the battery;
- according to corresponding recitations in the description3, during exploration of the involved patent, the applicant of the involved patent mainly worked to explore which metal may be electroplated on the cathode plate so as to successfully control contact between the cathode calamine cream and the cathode plate. But the applicant conducted any tentative exploration to change the structure of the cathode plate of the battery;
- according to corresponding recitations in the description,4the applicant of the involved patent thinks that gas expansion caused by contact between zinc and the cathode plate may be prevent by electroplating indium or tin on the cathode plate so as to achieve the invention. But he never mentioned to further improve the completed invention, such as, further improve the structure of the cathode plate of the battery, and make creative efforts to implement the improvements; and
- according to corresponding recitations in the description,5the cathode plate of the battery may either be a metal sheet without nickel or copper electroplated or a final product with indium or tin electroplated; therefore, the applicant of the involved patent did not realize to distinguish the concept of the cathode plate to reflect that he has improved the structure of the cathode plate of the battery.
Based on the abovementioned explanation on the cathode plate of the battery, the Supreme People's Court considered that claim 1 of the involved patent covers the prior art of the cathode plate of the battery including the laminar structure cathode plate. Therefore, the claim should be invalidated according to evidences of the prior art provided by the petitioner of the request for invalidation of the involved patent.
Rule 2 of Interpretations of the Supreme People’s Court on Certain Issues Concerning the Application of Law in the Trial of Patent specifies that: the people's court should determine the content of the claims stipulated by Article 59, Paragraph 1 of the Chinese Patent Law (2009), according to the recitation of the claims and combined with understanding of the claims by those skilled in the art after reading the description and drawings. Article 12 of theGuidelines for Patent Infringement Determination issued by the Beijing High People's Court also specifies that, “description and drawings of a patent may be used to make a reasonably explanation on protection scope of technical solutions literally defined by claims of the patent, i.e., technical features identical to those recited in the claims may be explained into the protection scope of the patent, or some technical features recited by the claims may be defined according to the description and drawings of the patent.”
Patent documents are a cohesive whole, including the initially filed description, claims, drawings, and amendments and observations in response to Office Actions during the examination. All of the patent documents may influence on the protection scope of the claims during patent invalidation The correspondence between the claims and the description and drawings may be interpreted as that: the claims are generated on the basis of the description and drawings, which are a summarization of the description and drawings; the description and drawings are supplementary explanations to the claims, like a dictionary of the claims.
When writing the patent documents, the patentee should try to keep technical solutions of the claims consistent with the invention purpose and the primary technical problem to be solved. Moreover, the content of the claims should reasonably summarize the technical solutions recited in the description and drawings. Terms, those cannot be definitely and literally defined by the claims, should be definitely illustrated in the description, so that the claims can be properly explained and obtain protection identical to their contribution to improvements of science and technology. For example, in this case, when explaining the technical feature “cathode plate” in claim 1, the patentee proposed that the “cathode plate” means “a metal sheet with nickel or copper electroplated”, But that definition is not definitely recited in the description. On the contrary, according to the description, the cathode plate of the battery may either be a metal sheet without nickel or copper electroplated or a final product with indium or tin electroplated, thus the description cannot support the patentee’s proposition. The vague recitations in the description lead to ambiguity and the failure to make no contribution to explain the claims, and finally result in invalidation of the claims.