Jiaxing MELLKIT Kitchen Technology Co., Ltd.et.al. v. Zhejiang Youpon Integrated Ceiling Corp. - Interpreting Claims in Multiple Ways (Civil Judgment (2011) Zhe Zhi Zhong Zi No. 241 by the Zhejiang High People's Court on March 5, 2012)
Claim interpretation is the key to determine the scope of protection of claims. The meaning of the claims can be determined based on internal and external evidence using a variety of interpretation methods, wherein the methods of interpretation can verify each other, eliminating contradictory, uncertain or ambiguous conclusions in order to obtain reasonable and accurate protection scope of the claims.
The patentee, Zhejiang Youpon Integrated Ceiling Corp. (“Youpon” hereinafter), has a patent of invention No.ZL200410025046.5 titled “Separate Installation Method and Device for Ceiling Built-in Household Appliances”, wherein claim 1 is directed to a separate installation method for ceiling built-in household appliances, including the technical feature “mask plate made into the shape of indoor ceiling panel.” Claim 3 is directed to the corresponding separate installation device for ceiling built-in household appliances, including the technical feature “at least one ceiling panel below the main body serving as mask plate of the household appliances”. The patentee advocates that the alleged infringer, Jiaxing MELLKIT Kitchen Technology Co., Ltd. (“MELLKIT” hereinafter), infringes the installation method and device claimed in its patent, and files a lawsuit with the court. The court of first instance held that there is an infringement. The alleged infringer unsatisfied with the decision, and appealed to the court of second instance.
The main dispute in the second instance court focused on the different understandings of the feature “mask plate” in claims 1 and 3. MELLKIT contends that, according to the patent specification, claims and examination history, the feature “mask plate” in claims 1 and 3 is formed from the available ceiling panel, so they are the same not only in the installation method and shape but also in material, color and style. MELLKIT also contends that, the “mask plate” in the accused infringing products is produced from material different from the existing ceiling panel material, and thus it is different from the “mask plate” in the claims. On the contrary, Youpon holds that the “mask plate” in the claims is the same as the ceiling panel available only in shape and insertion structure, but may not be the same as the existing ceiling panel in other aspects.
The court of second instance explains the meaning of the “mask plate” from the following four points: (1) the meaning of the feature “mask plate” in the claims 1 and 3 should be the same; if “mask plate” in claim 3 is interpreted as being completely the same as the existing ceiling panel, it will narrow the meaning of “mask plate” in claim 1. (2) According to the technical scheme of the invention in the description and the purpose of the invention, mask plate only needs to be the same as the ceiling panel in size and structure, without necessity of being limited on material or color. (3)From the patent examination files, Youpon's statement has neither defined the production order of the roof panel and the mask plate, nor limited the material and color of mask plate. (4) During the invalidation procedure, MELLKIT also recognizes that “mask plate made into the shape of indoor ceiling panel” literally means that the mask plate and the ceiling panel are the same in size and shape. Therefore, the court of second instance concludes that the ground of appeal is not established, and the accused infringement is established. Therefore, the appeal rejected and the original judgment sustained.
Determining the scope of protection of the claims is the basis of determining infringement, and the claim interpretation is the key to determine the scope of protection of the claims. According to the provisions of Article 56 of the Chinese Patent Law (2001), the extent of protection of patent right for invention or utility model shall be determined by the terms of the claims. However, in judicial practice, it is usually impossible to accurately define the scope of protection only from the text content of the claims in accordance with the general understanding in the related field. Under such a situation, it requires other evidence to determine the protection scope of claims. The evidence can be classified into internal evidence such as patent application documents, examination files and so on, and external evidence such as dictionaries, textbooks and so on. Generally speaking, internal evidence has more probative force than external evidence.
In claim interpretation, the meaning of the claims should be explained comprehensively based on probative force of internal and external evidence using different interpretation methods, so as to reasonably determine the scope of protection. For example, in the present case, the judges use four kinds of methods to interpret the meaning of the claims reasonably.
First of all, the same term in the claims shall have the same meaning. When a term presents in multiple claims that depend on each other or in a unity, the term shall have the same meaning. According to general understanding, the feature “mask plate made into the shape of indoor ceiling panel” in claim 1 shall mean that the mask plate and ceiling panel have the same shape and structure, without necessity of having the same material, color, etc. If the feature “at least one ceiling panel below the main body serving as mask plate of the household appliances” in claim 3 is interpreted as the mask plate is completely the same as the existing ceiling panel, it will lead to different understandings of the same term "mask plate" in claim 1 and claim 3. When a kind of explanation results in that the same term in different claims has different meanings, the rationality and accuracy of the interpretation shall be questioned.
Second, the claim interpretation shall be consistent with the purpose of the invention. The purpose of an invention usually reflects the inventive step of the invented technical solution over the existing technology, and reflects the scope the inventor intends to protect. Under normal circumstances, the claim interpretation in accordance with the aim of the invention is consistent with the interests of the patentee. In the absence of other evidence, the scope of protection shall not be unreasonably broadened or narrowed. For example in the present case, in order to overcome the defects in the prior art wherein integrated household appliances installation is inconvenient, the invention adopts the technical solution that the mask plate and household appliances are separately installed. The technical solution requires only that the mask plate and the ceiling panel are the same in structure and shape to facilitate the installation, but there is no limitation to the material and color. However, it should be noted that, if the interpretation of claims conflicts with the public interest, the scope of protection of the claims shall be reconsidered to provide a balance between the public interest and the right of the patentee.
Third, the examination files can be used for claim interpretation. The examination files include Office Action, amended text of the application document, and the applicant’s response and other materials in the prosecution process of the patent, and truly reflect the communication between the patentee and the examiner and the applicant’s efforts to obtain the patent. The response the applicant made during the examination can be used as the basis to determine the scope of protection of the claims. During the prosecution of the present patent application, in the response to the Office Action, the applicant clearly expresses that the mask plate and the available roof panel are the same in shape and function to facilitate installation and exchange, which further proves the real intention of the patentee for the scope of protection. Of course, during claim interpretation using the examination files, the principle of estoppel should be considered to ensure the patentee will not interpret a claim differently during infringement proceedings and prosecution proceedings, which will damage the public interests.
Final, according to the appellant’s statement during the invalidation process and the invalidation decision itself, it can also be determined that “mask plate made into the shape of indoor ceiling panel” means that the mask plate and the ceiling panel are the same in size and shape, and has nothing to do with the material and color etc.
What needs to be emphasized is that, interpretation of the same claim using different interpretation methods may lead to different protection scopes. In this case, a variety of interpretation methods must be used to verify each other, and a comprehensive consideration should be made on the protection scope of the claim, in order to eliminate contradictory, uncertain, or ambiguous interpretation results, and obtain a reasonable and accurate protection scope of the claim.
Author: Bing WU and Yuan LIU