The Supreme People's Court stated in a utility model patent infringement dispute that: The scope of patent protection should correspond to the technical contribution and level of innovation. The patent examination records serve as an important evidence for interpreting claims, reasonably determining the scope of protection, and subsequently assessing infringement. Specific grounds cited in relevant patent invalidation decisions for recognizing the inventiveness of claims and maintaining their validity, as well as the patentee's observations regarding the claims during the patent invalidation proceedings, all belong to the examination records of the patent involved. When determining whether the accused infringing product falls within the protection scope defined by the claims, these factors should be duly considered to prevent inconsistencies between the determination standards for maintaining patent validity and the standards for assessing infringement, thereby avoiding the patentee's "double recovery of benefits."
In this case, Shenzhen A Company is the owner of a utility model patent titled "A Mobile Phone Number Plate Mounting Stand" (hereinafter referred to as “the patent”) and sought protection for Claims 2 and 3. Shenzhen A Company accused that Dongguan B Company, without authorization, manufactured, sold, and offered to sell products identical to the patent, which constituted patent infringement. The first-instance court found that the technical solution of the accused infringing products sold and offered for sale by Dongguan B Company fell within the scope of protection of the patent, but the defense of legitimate source was upheld. The first-instance court ruled that Dongguan B Company must immediately cease selling and offering to sell products infringing the patent and compensate for reasonable costs for rights protection. Both Shenzhen A Company and Dongguan B Company appealed the judgment after it was announced.
The Supreme People's Court, during the second instance, found that: The CNIPA issued Invalidation Decisions Nos. 55861 and 562751 on May 5, 2022, and July 11, 2023 (during the second instance of this case), respectively, maintaining the validity of Claims 2-5 and 7-9 of the patent. Decision No. 55861 stated: "The patentee submitted an observation arguing that the patent employs a seesaw that rotates at both ends, eliminating the need for the need for the combination of springs, fixed buckles and the fixed groove, with the seesaw partially accommodated in the base's groove." "From the known structure of the seesaw, it can be understood that the middle of the seesaw's convex portion is pivotally connected to the rotating shaft, allowing the entire seesaw to rotate around this shaft, causing both ends of the seesaw to rise and fall. By partially inserting the convex portion into the groove, the seesaw cooperates with the groove, with the upper parts of both ends exposed outside the groove in the elevated high position and the lower parts located inside the groove in the lowered low position, enabling the number plate disposed on the side of the seesaw's ends to be displayed or hidden by the groove. Relying on gravity, the seesaw can maintain stability in a state where one end is elevated and the other is lowered, with one end necessarily remain in a high position protruding outside the groove, meaning the seesaw is 'partially accommodated' in the groove." "The patent adopts a seesaw structure, which, by its inherent working principle, achieves rotation and maintains a stable state with one end elevated and the other lowered." This decision has already taken legal effect. Decision No. 562751 stated: "Regarding essential technical features, the patentee argued that the seesaw in the patent relies on gravity to display or hide and maintain stability, while magnets or increased friction are technical means adopted for enhanced stability and are not essential technical features."
The Supreme People's Court, in its second-instance judgment, held that the scope of patent protection should correspond to the technical contribution and level of innovation. The patent in this case is a utility model, and based on the entire content disclosed in the patent's description and drawings, its structure is not complex. Whether considering the fundamental “seesaw” principle or the patent description's recordation of "under the influence of gravity, unless acted upon by an external force, the seesaw remains in a state with one end elevated," these concepts are common knowledge in daily life. Although Claim 2 was recognized as inventive in the relevant invalidation decision by CNIPA, its degree of innovation is evidently very limited, and thus, the scope of protection should not be excessively broad, leading to a disproportionate outcome.
The specific reasons cited by CNIPA in the relevant invalidation decisions for recognizing the inventiveness of Claim 2 of the patent and maintaining its validity, as well as the patentee's observations regarding Claim 2 during the patent invalidation administrative proceedings, all belong to the examination records of the patent involved. When determining whether the accused infringing product falls within the protection scope defined by Claim 2, these factors should be duly considered to prevent inconsistencies between the determination standards for maintaining patent validity and the standards for assessing infringement, thereby avoiding the patentee receiving "duplication of benefits." During the patent invalidation administrative proceedings, the patentee made observations regarding Claim 2, such as: "The patent adopts a seesaw that rotates at both ends, eliminating the need for the combination of springs, fixed buckles, and a fixed groove," "the seesaw's inherent working principle enables rotation and maintains a stable state with one end elevated and the other lowered," and "magnets or increased friction are technical means adopted for enhanced stability and are not essential technical features." Invalidation Decision No. 55861 recognized that the patent's seesaw, by its inherent working principle, achieves rotation and maintains a stable state with one end elevated and the other lowered, and thus Claim 2 of the patent was inventive. Invalidation Decision No. 562751 further determined that the inclusion of magnets was not an essential technical feature for solving the technical problem addressed by the patent, and consequently maintained its validity. Accordingly, when determining whether the accused infringing product falls within the scope of protection defined by Claim 2, the patentee's observations during the invalidation proceedings should be duly considered. In this case, the accused infringing product relies on a positioning stabilization structure to stabilize the seesaw in a state with one end elevated and the other lowered. Compared to the seesaw in the patent, which maintains stability "solely by its own gravity," the accused infringing product, which "relies on a positioning stabilization structure (including a spring) to maintain stability," does not possess the same or equivalent technical features. Therefore, it should be concluded that the accused infringing product does not fall within the scope of protection defined by Claims 2 and 3 of the patent and does not constitute infringement. Dongguan B Company's defense invoking the doctrine of estoppel was upheld. The Supreme People's Court, in its second-instance judgment, revoked the first-instance judgment and ruled to dismiss all claims of Shenzhen A Company.
The positive significance of this case lies in urging patentees to adhere to the principle of good faith when exercising their rights, preventing patentees from receiving “duplication of benefits” by unfair means, such as narrowing the scope of patent protection during patent invalidation administrative proceedings to maintain patent validity while later expanding the interpretation of the scope of protection during infringement litigation.
(2023) Zui Gao Fa Zhi Min Zhong No. 607
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