In April 2013, the Supreme People's Court of the People's Republic of China (the "Supreme People's Court") released the 2012 Top 50 Typical Cases of Intellectual Property Protection in Chinese Courts (Fa Ban [2013] No. 44) as a referential document for fair and efficient adjudications for the People's Courts.The document included an appeal case regarding a patent for invention infringement dispute (Case Number: [2012] Su Zhi Min Zhong Zi No. 0021), which was represented by the IP Litigation Group of King & Wood Mallesons.

  1. Case Brief

The Plaintiff, Harbin Industrial University Xinghe Industrial Co., Ltd ("Xinghe Co. Ltd") filed its invention patent application entitled "Production and apparatus of a steel strip- reinforced plastic pipeline" with the State Intellectual Property Office (SIPO) of the People's Republic of China, which granted the patent on April 4,2007 (Patent No. ZL200510082911.4). The patent has three independent claims, covering the following subject matters respectively:1) pipe product; 2) manufacturing method of the pipe; and 3) manufacturing apparatus of the pipe.

The Defendant, Jiang Su Runde Pipe Industry Co., Ltd ("Runde Co. Ltd") was established in September 2009, producing and selling steel stripe reinforced plastic pipelines and its installments.

In October 2010, Xinghe Co. Ltd filed an action against Runde Co. Ltd with the Nanjing Intermediate People's Court (the "Nanjing Court") for infringement of its patent for invention.Xinghe Co. Ltd alleged that Runde Co. Ltd had been using its patented method and sales of steel strip reinforced plastic pipes, resulting in tremendous amount of damages and therefore, requested the Nanjing Court to stop the infringement immediately and to pay damages up to RMB 0.5 million.The Nanjing Court reckoned that Runde Co. Ltd.'s production of Pipe Products did not fall into the scope of claim 1 of the patent but did infringe claim 2 and 3.As a result, it ruled that Runde Co. Ltd had infringed patent rights in the First Instance Judgment and ordered it to cease such acts of infringement and pay damages of RMB 0.5 million.

Unsatisfied with the First Instance Judgment, Runde Co. Ltd appealed to the High People's Court (the "Jiangsu Court"). The Jiangsu Court deemed at the Second Instance that the manufacturing method and apparatus used by Runde Co. Ltd did not fall into the protection scope of Xinghe Co. Ltd.'s patent. As a result, the Jiangsu Court overruled the First Instance Judgment.

  1. Case Highlight

At First and Second Instance, both parties had been debating on "whether the title of the subject matter in a claim should limit the protection scope of a patent".In particular, Claim 1 and Claim 2 of the patent at issue read as follows:

  1. A plastic drainage pipe reinforced by steel strips, comprising a plastic pipe body and into which the steel strips are incorporated, and the reinforcing ribs are integrated with the plastic pipe body as a whole, wherein rectangular or circular holes are perforated on the steel strips or the surfaces of both lateral sides of the steel strip are pressed to form lines pattern; the plastic part between two ribs has convex shape; the pipe body has a spigot joint at one end of the pipe for jointing the pipes to each other, and the spigot joint has a jointing part where a sealing rubber ring is to be fixed or a sealant is to be used.
  2. A method for making steel strip-reinforced plastic pipelines as described in claim 1, characterized in that it includes the following steps: a) steel strips go through a composite mold where they are enwrapped by the plasticit from a extruder, and profiled bands are formed after cooling, hardening and pulling, wherein the extruder and the composite mold are disposed in a right-angled arrangement; b) the profiled bands are transported to an installation site; c) the profiled bands are spirally wound and then welded to form plastic drainage pipes reinforced by steel strips; and d) a continuous pipeline is form by welding the pipes through a spigot joint provided at one end of each pipe.

With regard to claim 1, the drainage pipes made by Runde Co. Ltd. lack the features of "the steel strips are perforated and pressed" and "the plastic part between two ribs has convex shape", and thus it is undisputed that Runde Co. Ltd. does not infringe claim 1. The main dispute centers around whether Runde Co. Ltd infringes claim 2, provided that its method includes the four steps as recited in claim 2. If the title of the subject matter of claim 2 merely reads "a process of producing steel strip-reinforced plastic pipelines", then the answer would most certainly be yes. Yet, the problem is that claim 2 had in fact cited claim 1. So a more complicated question arises: whether the title of the claimed subject matter should be regarded as a technical feature and hence limits the scope of claim 2? Then, given that claim 1 is not infringed, whether or not claim 2 is infringed?

At First Instance, the Nanjing Court thought that Runde Co. Ltd. had infringed claim 2. The main reason for such judgment is that, first, there is no legal basis to deem the title of the claimed subject matter, "a method for making steel strip-reinforced plastic pipelines as described in claim 1", as a technical feature.Secondly, claim 2 is not an independent claim rather than a dependent claim, so it is obviously against legal regulations when the defendant uses claim 1 to restrict the scope of claim 2.

Having represented Runde Co. Ltd., we believe that the judgment of the Nanjing Court is debatable. Hence, we rebutted from different perspectives through appeals. Firstly, with regards to the related regulations of the Patent Law of the People's Republic of China (the "Patent Law") and the Implementing Regulations of the Patent Law (the "Implementing Regulations"), the title of the claimed subject matter, which is the basic component that composes the technical solution, is classified as a technical feature and should be taken into consideration when defining the patent's scope of protection. Article 59 of the Patent Law states that "the scope of protection in the patent right for an invention or a utility model shall be determined by the contents of the patent claim. The specification and appended drawings may be used to interpret the patent claim.". Rule 21 of the Implementing Regulations of the Patent Law state that "An independent claim of an invention or utility model shall contain a preamble portion and a characterizing portion", while the preamble portion indicates "the title of the claimed subject matter of the technical solution of the invention or utility model, and those technical features which are necessary for the definition of the claimed subject matter but which, in combination, are part of the most related prior art. The preamble portion and the characterizing portion together define the scope of protection of the invention or utility model". The laws explicitly prescribe that the title of the claimed subject matter belongs to the preamble portion, which is an indispensable and inseparable part of the claim and defines the scope of protection together with the characterizing portion.

Moreover, according to patent examination practices, "steel strip-reinforced plastic pipelines as described in claim 1" indeed restricts the definition of claim 2. In the "Guidelines for Patent Examination 2010", Part II Chapter 2 section 3.1.2, "in determination of scope of patent protection for such an independent claim containing reference to another claim, all the features of the claim referred to shall be taken into account, and their actual limiting effect shall depend on what final impact they may impose on the claimed subject matter of the independent claim". In this case, we should consider the technical features of claim 1, and the actual limiting effect should be reflected in the manner where the product's special features influence the patented process. There are two aspects on which the product in claim 1 influences the process in claim 2. The first aspect is relating to the raw materials and intermediate products. The construction and meaning of the technical terminology, in this case "steel strip", in both claim 1 and claim 2 should be construed as having the same meaning. In particular, the steel strip recited in claims 1 and 2 should both have perforated rectangular or circular holes formed on the steel strips or the surfaces of both lateral sides of the steel strip are pressed to form lines pattern, and the plastic part between two ribs has convex shape. The second aspect is the method steps, where the method should involve the corresponding steps of making rectangular or circular holes and molding the convex shape between two ribs. Without these steps, claim 2 could never produce the pipeline product mentioned in claim 1, and therefore could not be named "a method for making steel strip-reinforced plastic pipelines as described in claim 1".

Furthermore, during the substantive examination, the patentee made amendment to claim 2 by modifying the title of subject matter. The original version says, "method for making steel strip-reinforced plastic pipelines", while the amended version specifically refers to claim 1: "method for making steel strip-reinforced plastic pipelines as described in claim 1". In doing so, the patentee manifestly limits the scope of claim 2 to those methods through which the product described in claim 1 is made. According to the doctrine of prosecution history estoppel, the patentee should not inappropriately broaden the scope of claim 2 during litigation.

In addition, the rationale adopted by the Nanjing Court seems to be illogical. The First Instance Judgment says that Runde Co. Ltd.'s infringement did not fall into the scope of claim 1 but did fall into that of claim 2. According to Article 11 of the Patent Law, the scope of protection of the patent can be extended to products directly obtained by the patented method. When we look into the case, if claim 2 is said to be infringed, then all pipeline products produced by the method described in claim 2 should also infringe. Now that claim 2 reads, "method for making steel strip-reinforced plastic pipelines as described in claim 1", obviously this method produces a product described in claim 1. As a result, we can see that if we start from the premise that claim 2 is infringed, then the product directly obtained by claim 2, i.e. claim 1, should is also infringed. This reveals a huge contradiction in the judgment given by the Nanjing Court.

Finally, it is not difficult to spot out the absurdity of the First Instance Judgment from a patent drafting point of view. In practice, the following is common for claim drafting: claim 1: A method for producing XX, which comprises steps XXX; claim 2: The product obtained from the method of claim 1. It is thus clear that claim 2 only contains a title of the claimed subject matter, and according to the viewpoint of the Nanjing Court, a title of the claimed subject matter is not a technical feature. Hence, claim 2 does not include any technical features, whereas its scope of protection remains uncertain. This is obviously against the Patent Law.

The Jiangsu Court was eventually convinced by the above arguments and stated that the First Instance court erred in its ruling. The title of the claimed subject matter should be deemed as an essential technical feature and should be given full consideration when defining its protection scope. Consequently, it ruled that Runde Co. Ltd. did not infringe the patent at issue, and reversed the judgment of lower court.

  1. Typical Significance

From 2008 onwards, the Supreme People's Court, with reference to the recommendations from various High People's Court, has announced the 10 major cases and 50 typical cases of judicial protection of intellectual property, aiming at promoting juridical protection towards intellectual property rights, displaying its successful outcomes and creating a favorable atmosphere for such development.

The Xinghe Co. Ltd. v. Runde Co. Ltd. case, as one of the 50 typical cases, relates to the issue of determination of patent scope, which is the premise and basis for patent infringement analysis. It is very common in practice to draft an independent claim by citing another independent claim. When ascertaining the protection scope of such a claim, the technical features of the cited claim should have limiting effects. The principle established by this case has brought high referential value to future cases of the same kind.