Recently, the Intellectual Property Court of the Supreme People’s Court concluded the case of a dispute over infringement of patent rights for inventions, which included Xuzhou Zhongsen Intelligent Equipment Co., Ltd. (hereinafter referred to as Zhongsen Company), Changzhou Great Garden Machinery Co., Ltd. (hereinafter referred to as Great Company), and Ningbo Anglin Intelligent Equipment Co., Ltd. (hereinafter referred to as Anglin Company), determined to quash the original judgment and rejected the patentee Zhongsen Company’s litigation request.

The case involved the application of the doctrine of equivalence in the patent infringement determination. The second-instance judgment pointed out that if the patentee clearly knew the related technical solution when writing the patent application document, but it did not include in the protection scope of the claim, then in the litigation, it would be no longer applied to equivalence theory to include the technical solution in the scope of protection.

In the first instance, Zhongsen alleged that it was the patentee of the invention patent for "Electric Hedge Trimmer" (Patent No. 201610201500.0), and Great Company produced and sold the alleged infringing products "Broadband Trimmer" that violated claim 1 of its invention patent without its permission, which constituted an infringement; Anglin Company provided parts and components for the alleged infringing product produced and sold by Great Company, which also infringed on its invention patent rights. After the first instance, the court determined that the alleged infringing product fell into the protection scope of Zhongsen Company's patent claim 1, and ordered Great Company and Anglin Company to stop the infringement and compensate losses.

Both the Great Company and Anglin Company dissatisfied and filed an appeal to the Supreme People's Court.

Both Great Company and Anglin Company argued that the alleged infringing product did not fall into the scope of protection of the patent claims involved, and the court of first instance wrongly judged that the relevant technical features of the alleged infringing product were equivalent to the driving method of the involved patent. In addition, Anglin company also claimed that its behavior of selling parts and components did not constitute assistance infringement.

The Supreme People’s Court believed that the determination of patent protection scope should not only strictly protect the interests of the patentee, but also safeguard the publicity of the claims and the public’s trust in the patent documents, and balance the relationship between the patentee and the public.

If the patentee has clearly known the related technical solution when writing patent application documents, but has not included it in the protection scope of the claims, then in the infringement litigation, the technical solution shall no longer be claimed applying to the equivalent theory and included in the scope of protection.

To determine whether the patentee clearly understands and incorporates the specific technical solution into the protection scope of the patent right when applying for a patent, it can be affirmed in conjunction with the content of the description and drawings, and the description and drawings should be viewed as a whole. The judgment standard is the understanding of the technical person in the art after reading the claims, the specification and the drawings.

Meanwhile, generally the subject name of the patent has a restrictive effect, which defines the technical field to which the technical solution applies.

The subject name of the patent involved in this case is "an electric hedge trimmer", and the preamble of the claims also contains an explicit record of "motor" drive.

It can be seen from the description and the claims that when drafting the claims and description of the patent involved, the patentee clearly knew that there were two methods of motor drive and fuel engine drive in the prior art, and “environmental protection” is a new technical effect of this patent compared the prior art, however, the patentee only documented motor drive in the patent claims involved, which clearly demonstrated that the drive mode in the patented technical solution involved is merely limited to motor drive without including fuel engine drive.

In terms of the relevant content of the specification that based on the pursuit of environmental protection, the patent applicant did not seek for the technical solution protecting the hedge trimmer whose power source is a fuel engine when drafting the patent claims involved.

In other words, based on the “electric hedge trimmer” defined by the claims, the introduction of the two driving modes of the hedge trimmer in the background technology section in the specification, and the emphasis on the effect of "environmental protection" in the part of invention object in the specification, etc., can be completely understood as the patent applicant clearly does not seek for the technical solution protecting that hedge trimmers use fuel engines as power sources.

In this case, if the fuel engine drive and the motor drive are determined to constitute the technical features equivalent when judging whether the alleged infringing product is included within the scope of the patent protection involved, it is not conducive to the publicity of the patent claims and the protection of the public trust interest.

From Intellectual Property Court of the Supreme People's Court

November 17th, 2021