The Supreme People’s Court held, in an infringement case, that where an alleged infringer sells component parts separately, and those parts can, through simple combination by others, for a product that falls within the scope of protection of the patent at issue, it may generally be determined that the alleged infringer had knew such parts were specially used for implementing the patent, and has, without the patentee's authorization, supplied such parts to others with the intention of production and business, thereby enabling others to infringe the patent, such conduct constitutes contributory infringement, and the alleged infringer shall be held liable.
The invention patent involved in the case is titled “dental handheld device” and owned by Japanese Company A.
Company A filed a lawsuit with the first-instance court, claiming that Company B manufactured, sold, offered to sell the alleged infringing products of the CX235C6-22 handheld device and the C-PUMA motor, and that Company C sold and offered to sell the said alleged infringing products.
Company B argued that the alleged infringing product, the CX235C6-22 handheld device, at least has no technical feature of the driving unit and dental treatment tool involved in claims 1, 2, 4, and 5 of the patent at issue. The CX235C6-22 handheld device does not match the rotation speed ratio that is preset in the C-PUMA motor, and in the user handbook of the C-PUMA motor, Company B has requested users, in a manner of safety warning, to use the motor in the scope mentioned in the handbook, which forbids users from using the two products in combination. Company B has not marketed that the motor can be used with the CX235C6-22 handheld device in combination, and has not informed consumers that the motor can match the handheld device. Therefore, the alleged infringing product does not fall within the scope of protection of the patent at issue. Company C argued that the alleged infringing product was purchased from Company B, and that it did not know that the alleged infringing product was an infringing product, and that it did not manufacture the alleged infringing product, nor has it sold the alleged infringing product. Where Company A pretended to be a client and purchased the product of a designated type, Company C should not bear the compensation liability.
Upon examination, the first-instance court found that: Company B sold multiple types of bending machines, such as the C-PUMA brushless micro-motor and the CX235C6 dental pneumatic motor handheld device. Company B’s website presents a product display page for “C235C6 planting bending machine” under the category “dental handheld device” and displays an advertising phrase “A magical tool necessary for minimally invasive tooth extraction is now freshly available” on a page under the category “electronic motor” followed by a product introduction: “magical tool set for minimally invasive tooth extraction” contains “the C-PUMA brushless micro-motor and a handheld tool for extracting tooth from 45° elevation angle(1:4.2)”, in which the “C-PUMA brushless micro-motor” is introduced to have “extensive speed regulation function” and can match with different dental handheld devices according to different uses, and its speed range varies from 100 to 200000 r/min.
The first-instance court held that the alleged infringing product consisting of the CX235C6-22 handheld device and the C-PUMA motor falls within the protection scope covered by claims of the disputed patent claimed by Company A, and that Company B and Company C were ruled to stop infringing and compensate.
Company B was dissatisfied and appealed.
The Supreme People’s Court made the civil judgment to reject the appeal and uphold the original judgment.
The court holds in the effective judgment that: During the first instance, Company B acknowledged that it had manufactured the C-PUMA motor and the CX235C6-22 handheld device that Company A purchased from Company C. Company C did not object to its own selling behavior. Company B posted pictures of the CX235C6-22 handheld device on its website, but did not provide any special notice of the type of motor with which the handheld device should be used. The existing evidence proves that Company B has manufactured the CX235C6-22 handheld device and offered it for sale on its website, and that Company A also managed to purchase this product.
Claim 1 of the disputed patent discloses the following:
the driving unit is connected to the proximal end of the handle, causing the driving unit to resist the proximal bias of the spring device and press the stop pin towards the distal side, resulting in the spring device being compressed and the distal end of the stop pin being extended from the distal surface of the handle to engage with the blocking device. The connection of the distal end of the stop pin and the blocking device prevents relative rotation between the neck and the handle, while the separation of the driving unit from the proximal end of the handle causes the stop pin to be released from the pressure applied by the driving unit, allowing the stop pin to slide towards the proximal side under the proximal bias of the spring device, and the said stop pin disengage from the blocking device.”
It can be seen that the disputed patent does not limit the specific structure of the driving unit。 Instead, it only limits that the driving unit needs to function as a compressing stop pin; that is, under the technical solution of claim 1 of the disputed patent, the handheld device is a specialized component, while the driving unit is a general purpose component. In accordance with the facts acknowledged by both parties concerned, the dental handheld device must be used with a motor as a driving unit in order to function properly. Company B did not provide a reasonable explanation for selling the CX235C6-22 handheld device alone without offering the matching motor. This means that after purchasing the CX235C6-22 handheld device, the user is bound to seek for a motor that matches its rotation speed to achieve the same technical methods, functions, and effects as those of the technical solution of the disputed patent. Therefore, even if Company B claimed that the C-PUMA motor and the CX235C6-22 handheld device shall not be used together, its behavior of manufacturing and selling the CX235C6-22 handheld device constitutes contributory infringement. This conclusion is in accordance with Rule 21(1) of the Explanation of Several Questions on Law Application in the Examination of Patent Infringement Dispute Cases (II), which stipulates that an enterprise that specializes in producing medical tools and apparatus is deemed to to be aware that the relevant products are materials, equipment, parts, or intermediates for implementing a patent. When such an enterprise provides these products to others for production or business purpose without the patentee’s permission, it infringes the patent and constitutes contributory infringement. Therefore, Company B shall bear the infringement liability.
The determination in this case effectively cracks down on behaviors that infringe a patent by supplying individual parts. It specifies that selling components separately selling cannot exempt a party from infringement liability. The judgment of this case indicates that the intensity of the patent protection does not depend on how an infringer technically segments its products, but on the substantive extent to which the behavior harms the innovation. In highly specialized industries, the producers’ professional knowledge of how a product is intended to be used serves as an important judgment basis of whether it has the requisite awareness. When a producer supplies core parts that are specifically designed to implement a patented invention, such conduct may fall into the scope of contributory infringement. This rule provides a clear boundary for manufacturing and business activities in professional fields such as medical tools and apparatus, with a significant precedential value.
(2022) Zui Gao Fa Zhi Min Zhong No. 1673
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