Invalidation of Utility Model Patent of Oerlikon

Administrative Case

Utility Model Patent

–Consistency Between the Interpretation of a Patent Claim and the Purpose of the Invention

[Headnotes]

During the patent validation process under Paragraph 4 of Article 26 of the Patent Law, the claims of the patent should be interpreted first in order to determine the scope of its protection. The interpretation of a claim should be from the perspective of a person skilled in the art, with a view to the contents of related specifications and give comprehensive consideration to  how much the invention has contributed to the technical field, instead of being constrained by the literal meanings of specific words. Moreover, the interpretation should comply with the purpose of the invention, but should not incorporate any technical scheme that is obviously unhelpful in achieving that purpose. Otherwise, it would easily lead to the misuse of Paragraph 4, Article 26 of the Patent Law.

[Synopsis]

First instance: (2015) YiZhongXing(Zhi)ChuZi No. 1312

Second instance: (2016) JingXingZhong No. 2859

Appellant (third party in original instance): Oerlikon Textile GmbH & Co., KG (Oerlikon)

Appellee (plaintiff in original instance): Beijing Hong'an Technology Co., Ltd (Hong'an)

Defendant in original instance: The Patent Reexamination Board of CNIPA (Patent Reexamination Board)

On June 27, 2014, regarding the invalidation request raised by Hong'an towards the utility model patent ("Patent") named "a device for cooling synthetic tows" and numbered 200820181507.1, which was owned by Oerlikon, the Patent Reexamination Board made its decision at No. 23181 on the results of the examination requested, ruling to maintain the validity of the Patent. Disagreeing with the decision, Hong'an brought an administrative action with the No. 1 Intermediate People's Court of Beijing City.

The court held that Hong'an argued that the sentence "said cooling drum (7) arranged in a row and placed horizontally and eccentrically between the side walls (11.111.2) opposite to the blow box (1)" was in violation of Paragraph 4, Article 26 of the Patent Law, because it was not in line with the specification.

The High People's Court of Beijing City held that Paragraph 4, Article 26 of the Patent Law required that a claim should be based on the specifications to specify the scope of protection for the patent. In applying this section, the related patent claims should be interpreted for the definition of the scope of protection. The interpretation of the claim should be from the perspective of a person skilled in the art, with a view to the contents of the specifications and give comprehensive consideration to how much the invention had contributed in the technical field, instead of being constrained by the literal meanings of specific words of the claim. Moreover, in principle, it should comply with the purpose of the invention, but should not incorporate any technical scheme that was obviously unhelpful in achieving that purpose. If otherwise, it would easily lead to the misuse of Paragraph 4, Article 26 of the Patent Law. The second instance court decided that the original judgment was unclear in finding the facts and erroneous in applying the law, and should be reversed.

[Typical Significance]

Currently, the Patent Law and related judicial interpretations only set out general principles for interpretation of patent claims, but contain no explicit provision that the interpretation of a claim should comply with the purpose of the invention concerned.

In the case, the specifications of the Patent already specified the general principle of how the issue of unevenness in wind blowing was solved through the eccentric layout of the cooling drums. The first instance court held that Claim 1 was not supported by the specifications on the grounds that "Scheme 2 was not supported by the specifications," so that the entire technical plan could not be protected. This was a mechanical and erroneous interpretation of the claim. This way of interpretation should be corrected. In addition, the High People's Court of Beijing City expounded on a new principle for claims interpretation, that was, the interpretation should comply with the purpose of the invention, but should not incorporate any technical scheme that was obviously unable to help achieve that purpose. The case added to the judicial practice of claims explanation and provided valuable reference for similar cases in the future.

(Translated by Ren Qingtao)