Complicated Finding of Technical Facts and Claim Interpretation

Civil Case

Invention Patent

–Ascertainment of Patent Protection Scope

[Headnotes]

The specification and the accompanying drawings may assist a person with ordinary skill in the art (PHOSITA) to accurately perceive the contents of the claims, but may not replace the significance and functions of the claims for defining patent protective range. In general, the scope of patent protection is defined by the literary meaning of the technical features, adjustment of which is necessary only when a technical feature does not possess substantive technical contents so as to ensure a rational patent protection scope.

[Synopsis]

Fist Instance: (2012) SuZhongZhiMinChuZi No. 0106

Second Instance: (2015) SuZhiMinZhongZi No. 00172

Appellant (Plaintiff in original instance): Litens Automotive (Suzhou) Co., Ltd. (Litens)

Appellees (Defendants in original instance): Gates Unitta Power Transmission (Shanghai) Co., Ltd. (Gates Unitta), Chery Automobile Co., Ltd. (Chery), Suzhou New Century Automobile Trade Co., Ltd. (New Century)

Litens purchased a complete set of motor model SQR481 made by Chery from New Century on September 27, 2011 through notarization. The motor's timing drive system was designed and provided main component parts by Gates Unitta. On March 30, 2012, Litens filed lawsuit in Suzhou Intermediary People's Court claiming that without permission, in the production and selling of SQR481, SQR484, SQR477 and E4G16, Gates Unitta and Chery for commercial purpose, jointly constituted patent infringement. The first instance court found certain technical features were not met by the accused products in the claims, and therefore not covered by the patent protective range, and thereby dismissed Litens' complaints.

The Jiangsu High Court in the second instance held: By the technical contribution of the patent at issue over the prior art and a PHOSITA's understanding of the literary meaning of the claim, the scope of protection of claim 1 should be defined to "a non-circular rotor profile applies an opposing fluctuating corrective torque which reduces or substantially cancels the fluctuating load torque of the rotary load assembly," rather than to delimit the protective range to the specific values of "the angular positions of the protruding and receding portions of the non-circular profile" or the method of determining such values. Gates Unitta contentions that the technical features J and K are functional technical features which should be defined by the preferred embodiment delineated in the specification and the accompanying drawings, should be rejected as unfounded by facts and unsupported by law. All the elements of the accused products, upon comparison, are all met by the technical features of claims 1, 30, 39, and 58, thereby falling into the protective range of the patent at issue.

Gates Unitta is not applicable to the prior user right defense as its development of the accused device started in 2007, later than the patent application date in 2002. Although the method of obtaining the accused subject matter by Gates Unitta is scientifically feasible, but its ultimate technical solution falls within the protective range of a patent which is previously published and issued. Under such circumstances, the claim that since the accused products were obtained by a different research method does not fall within the protective range of the patent, cannot sustain.

In this case, Gates Unitta supplied the accused technical solution and the main component parts to Chery which assembled the accused products under the guidance of Gate Unitta's technical solution and installed it for sale as a finished unit of a car. Chery is liable for the infringement of the patent by making,using  and selling the infringing products, and Gates Unitta is liable for contributory infringement.

The second instance court, by applying the accounting formula of "the amount of damages = total sales of the infringing products * unit price * rate of interest", and taking into consideration of the technical contributions of the patent, assessed that Gates Unitta and Chery compensate Litens of 9,094,953.7 Yuan, plus reasonable cost of 1,549,080 Yuan, for a total of 10,644,033.7 Yuan.

[Typical Significance]

This case is an experimentation of the operating scheme and mechanism for using the assistance of expert witnesses in establishing complicated technical facts. Both parties introduced their respective technical experts, and the collegial panel creatively introduced independent third party technical expert as litigation assistance. All the expert testimonies were included in the court's opinion as factual basis for determination.

In providing claim interpretation, the concept of substantial technical contents was introduced for broader judicial conceptualization of accurate claim interpretation and fair determination of protective range of the patent.