Clothing for Electromagnetic Pollution Protection
Wanqing BAI v. Shanghai Tianxiang Industrial Co., Ltd. et.al. - The Influence of Ambiguity in Claim on Patent Infringement (Civil Ruling (2012) Min Shen Zi No. 1544 by the Supreme People’s Court on December 28, 2012)
Regarding problems raised under the condition that distinct defects existed in a claim make the protection scope of the claim unclear. For example, how to define the protection scope of the claim and how to enforce the patent right. This case gives the explicit attitude of the court.The Supreme People’s Court explicitly states that: accurately defining the protection scope of a patent right is a precondition for judging whether the accused technical solution constitute an infringement; if the protection scope of a patent right cannot be clearly defined, it should not confirm the infringement act of the accused technical solution.
The case relates to an infringement dispute between Patentee, Wanqing BAI, and Chengdu Nanxun Marketing Service Center (hereinafter referred to as “Nanxun Center”), Shanghai Tianxiang IndustryCo.,Ltd. (hereinafter referred to as “Tianxiang Industry”).
The patentee is the assignee of a utility model patent No.ZL200420091540.7 titled “Clothing for Electromagnetic Pollution Protection.” This utility model patent has only one claim, which recites:
“A clothing for electromagnetic pollution protection, comprising a top and a bottom, characterized in that, the clothing provides metal mesh or film for shielding in its fabrics, wherein the metal mesh or film is constituted of metal filaments or powders with high magnetic permeability and no remanence.”
The Patentee brought a lawsuit against the Tianxiang Industry and the Nanxun Center to the Chengdu Intermediate People’s Court (hereinafter referred to as “the court of first instance”) on July 19, 2010 for the reason that a top clothing for electromagnetic pollution protection which is produced by Tianxiang Industry and sold by Nanxun Center has infringed the utility model patent right owned by the patentee.
The court of first instance held that, Wanqing BAI failed to specify in the claim the standard for the technical feature “high magnetic permeability,” and cannot prove that the magnetic permeability of stainless steel wire utilized by the accused product has achieved the “high magnetic permeability” recited in the claim either; the proposition of the patentee that the feature in the accused product “stainless steel wire” was the same as the feature “the metal mesh or film for shielding, wherein the metal mesh or film is constituted of metal filaments or powders with high magnetic permeability and no remanence” in the claim was untenable; thus the court of first instance rejected the petition of Wanqing BAI. Wanqing BAI was not satisfied with this judgment, and appealed to the Sichuan High People’s Court (hereinafter referred to as “the court of second instance”).The court of second instance supported the opinions of the first instance and rejected the appeal and affirmed the original judgment.
Again, Wanqing BAI was not satisfied with the judgment of second instance and appealed to the Supreme People’s Court for retrial. Along with this appeal, Wanqing BAI submitted new evidences such as textbooks, reference books, science literatures, etc., trying to prove that the scope of the technical feature “high magnetic permeability” is clearly defined.
After the retrial procedure, the Supreme People’s Court determined that the dispute of this case focused on the definition of the protection scope of the feature “high magnetic permeability” in the claim.The opinions of the Supreme People’s Court are as below:
First, the specification of the utility model failed to clearly indicate whether the magnetic permeability in the technical solution of the utility model was a relative magnetic permeability, an absolute magnetic permeability or other meanings, failed to recite the detailed scope covered by the high magnetic permeability, and failed to describe objective conditions (such as the intensity of magnetic field etc.) used for calculating the magnetic permeability.Based on said specification, those skilled in the art will have difficulty to determine the specific meaning of the feature “high magnetic permeability” in the related utility model.
Second, though the expression of “high magnetic permeability” has been used in some prior arts as proved by the submitted evidences, the meaning of the high magnetic permeability varies a lot, depending on the differences of the magnetic field intensity and the technical field. The difference between values of the magnetic permeability in some literatures is as large as four orders of magnitude.Therefore, the evidences submitted by the patentee cannot prove that person skilled in the technical field to which the utility model belongs have a relatively consistent knowledge of the meaning or scope of the high magnetic permeability.
Last, the patentee contends that those skilled in the art may determine the desired magnetic permeability according to the specific lower limit of magnetic permeability for safety depending on the specific using environment.However, this argument actually covers all the situations that achieve the purpose of electromagnetic radiation protection into the protection scope of this claim, which is to seek a much broader protection scope and lacks supports of facts and laws.In conclude, as the meaning of the technical feature “high magnetic permeability” in the claim 1 cannot be determined definitely, neither can the protection scope of this claim be determined definitely.
The Judge of the Supreme People’s Court held that, accurately defining the protection scope of the patent right is a precondition for judging whether the accused technical solution contributes an infringement; if the drafting of the claims has distinct defects, and the meaning of the technical terminology in the claims cannot be determined or the protection scope of the patent right cannot be determined definitely even by combining the specification, common knowledge in the art and related prior art, there is no way to perform meaningful infringement comparison between the patent right and the accused infringement technical solution, thus it should not confirm the infringement act of the accused technical solution.
Regarding this case, the Supreme People’s Court concluded that the judgment of second instance is proper and rejected the retrial request.
In dispute cases regarding a patent right, the protection scope of the patent right should be first determined in order to judge whether the defendant implemented the patent of the plaintiff.In accordance with the stipulations of Paragraph 1, Article 59 of the Chinese Patent Law (2009), the protection scope 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.
In terms of the situation that a defect in the drafting of a claim causes the scope of the claim to become unclear, the Court should not simply refuse to take the case.Instead, the Court may explain the claim based on the contents recorded in “the patent specification and drawings, related claims in the appended claims, patent examination history and effective legal writing.” If the meaning of the claim cannot be determined by the above approaches, the claim can be explained by “combining common known literature such as reference book, textbook, etc. and customary understanding of those skilled in the art.”However, regarding the situation that, after exhausted all possible methods by combining specification, common knowledge in the art and related prior art, the protection scope of the patent right still cannot be ascertained, the Supreme People’s Court specifically alleges in this case that, under this situation, the accused technical solution should not be confirmed as an infringement.
In the judgment of the latest case of Nokia vs. Huaqin, the court also held that the act of the defendant did not constitute an infringement for the reason that the protection scope of the patent right owned by the plaintiff cannot be determined.
Furthermore, although the unclarity of the claim can cause the patent to be invalidated in accordance with the Rule 65 of the Implementing Regulations of the Chinese Patent Law (2010), however, there does not ever exist an precedent in Chinese patent practice where the Court directly makes judgment on the validity of a patent without the interlocutory administrative procedure (i.e., the invalidation procedure that is submitted to the Patent Reexamination Board (PRB)).