Introduction of implied condition during claim construction—Koninklijke Philips N.V. v. Superman Group Ltd. over patent infringement

Correction of translation errors in patent claims—ESCO Corporation v. Ningbo Lukun International Trade Co., Ltd. over patent infringement dispute[1]

I.Basic facts of the case

In 2015, ESCO Corporation, a U.S. company, (the “Plaintiff”) filed a patent infringement litigation against Ningbo Lukun International Trade Co., Ltd. (the “Defendant”) based on its Chinese patent No.ZL02813657.8. Ningbo Intermediate People’s Court supported the contention of the Plaintiff that the translation errors arising in the claim granted in the national phase  of  China shall be interpreted and corrected in accordance with the English text of the original PCT application. The court rendered a judgment ([2015] Zhe Yong Zhi Chu Zi No. 626), determining that infringement was established. The Defendant did not appeal and the first instance judgment came into force. This case was selected to 2016 Top 50 Typical IP Cases of Chinese Courts.

II.Case adjudication

In this case, the patent at issue (Patent No.ZL02813657.8) was originated from a PCT international application filed accordingto the Patent Cooperation Treaty (“PCT”). After being filed, the PCT application entered into the national phase of China and was granted in China. The plaintiff asserted Claim 20 in this case. In the document granted in the national phase of China, Claim 20 defines the following technical solution: “A wear member (12) for an excavator having projecting lip with a digging edge (23) and a nose (18) fixed to the projecting lip, which projects from the digging edge to the front end, the wear member (12) comprising converging walls (43, 45) converging to form a narrow front end (51), sidewalls (47, 49) and a socket (53) defined by converging surfaces (55,57) of the converging walls (43, 45) and side surfaces (59, 61) of the sidewalls (47, 49), the converging surfaces (55, 57) converging toward the narrow front end (51), characterized in that, the socket (53) including one groove (65) formed on the nose (18) for receiving a rail (35), and the groove (65) being oriented in the same inclination as one of the converging surfaces (55, 57).” During the litigation, the plaintiff contended that the feature “the socket (53) including one groove (65) formed on the nose (18) for receiving a rail (35)” in Claim 20 is an obvious translation error, and petitioned the court to construe the claim based on the patent specification and the original English text of the PCT application. The plaintiff raised the following arguments:

Firstly, it can be determined from the first half of Claim 20 that the “nose” and the “socket” are different elements matched with each other. However, according to the second half of the claim that “the socket (53) including one groove (65) formed on the nose (18) for receiving a rail (35),” the “nose (18)” limited herein is a structure formed on the “socket (53),” which conflicts with the first half of Claim 20. Claim 21 which depends on Claim 20 further limits a feature of “further including one said groove (65) in each of the side surface (59, 61) [of the socket (53)] to receive rails(35) on the nose (18),” further indicating that the “socket” and the “nose” are two different elements and the groove of the socket is for receiving the rail on the nose. This indicates that there is an obvious translation error in the feature “the socket (53) including one groove (65) formed on the nose (18) for receiving a rail (35),” and it  is the kind of error that the skilled in the art can determine immediately after reading the claim.

Secondly, the embodiment described in the patent specification also discloses the specific structures and the method of assembly regarding the nose 18 and the  socket 53. In the patent drawings, the socket is designated by the reference numeral 53 while the nose is designated by the reference numeral 18. They are different elements which are supposed to match with each other. The socket is formed with grooves and the nose is formed with rails, and the grooves on the socket are adapted for accommodating the rails on the nose. Thus, their method of assembly is clearly described.  After reading the patent specification, the skilled in the art can immediately be aware that there is an obvious error in the expression of “the socket (53) including one groove (65) formed on the nose (18) for receiving a rail (35),” which is inconsistent with the content described in the patent specification.

Introduction of implied condition during claim construction—Koninklijke Philips N.V. v. Superman Group Ltd. over patent infringement

I.Basic facts of the case

Koninklijke Philips N.V. (“Philips”) filed an action in Shenzhen Intermediate People’s Court against Superman Group Co., Ltd. (“Superman Group”) for a variety of electric razors produced by Superman Group infringing upon the invention patent (patent No. ZL 95190642.9). The Shenzhen Intermediate People’s Court rendered the first-instance judgment ([2012] Shen Zhong Fa Zhi Min Chu Zi No.1419) that the 12 shavers in suit all fall into the protection scope of the subject patent, and ordered Superman Group to compensate Philips’ loss with the amount of RMB 1 million. Dissatisfied with the first-instance judgment, Superman Group appealed to the Guangdong High People’s Court. On the basis of another claim construction, the second-instance court concluded that the infringement could not be established and, thus, overturned the first-instance judgment. Dissatisfied with the second-instance judgment, Philips petitioned for a retrial to the Supreme People’s Court. The Supreme People’s Court corrected the claim construction made by the second-instance court, and confirmed the infringement and, thus, revoked the second- instance judgment.

II.Case adjudication

The invention patent at issue (patent No. ZL 95190642.9) claims a shaving apparatus. In this case, Philips asserts Claim 4, which includes the disputed technical feature— “the axis situated in a plane parallel to a shaving plane defined by the outer surface of the external cutting member.” The infringing products are provided with the external cutting members, the outer surface of which defines the shaving plane. However, the shaving plane is static only in non-use, and may float and/or flip towards any direction along with the contacting skin in use.

The second-instance court held that Claim 4 did not limit the working conditions of the shaving apparatus, and the technical feature that “the axis situated in a plane parallel to a shaving plane defined by the outer surface of the external cutting member” shall be interpreted as “no matter the shaving apparatus is static or moving, in use or not, it shall always meet the feature that the axis situated in a plane parallel to a shaving plane defined by the outer surface of the external cutting member.” When the 12 allegedly infringing products are in use, their corresponding axis do not meet this feature. Based on such a claim construction, the allegedly infringing products do not fall into the protection scope of the subject patent. Thus, the second-instance court overturned the first-instance judgment.

Philips petitioned to the Supreme People’s Court for a retrial. Philips argued that the second-instance court erred in the claim construction of Claim 4, which was contradictory to the embodiment in the specification and failed to realize the purpose of the invention. Philips contended that there was an implicit restrictive condition for the disputed technical feature; the correct interpretation shall be “when the shaving apparatus is not in use, the axis is situated in a plane parallel to a shaving plane defined by the outer surface of the external cutting member.” The Supreme People’s Court finally decided to bring the case to trial after hearing the petition for retrial. The Supreme People’s Court found that the claim construction should be performed from the perspective of the skilled in the art by taking the specification, drawings, patent prosecution files, etc. into account. The claim construction shall not be a mechanical interpretation or its literal description. The correct claim construction shall be supported by and consistent with the contents of specification. Based on the contents of the specification and the prior invalidation decision, the Supreme People’s Court supported Philips’ claim construction that “the shaving plane defined by the outer surface of the external cutting member” in Claim 4 should not be a plane continuously varying from time to time in use. On the contrary, the shaving plane should be defined by the outer surface of the external cutting member in non-use. On such a claim construction, the Supreme People’s Court found that the infringement was established and, thus revoked the second-instance judgment.

III.Analysis of the case

Claim 4 of the subject patent defines the technical feature that “the axis situated in a plane parallel to a shaving plane defined by the outer surface of the external cutting member.” The wording of the claim does not define the conditions for the parallel relationship between the axis and the outer surface.

The second-instance court held that since there was no literal condition for the feature, there is no condition limitation for the parallel relationship. In other words, it should be understood as applying to any state at any time. Given that Claim 4 does not define the specific condition of the shaving apparatus, there are three possible scenarios: 1) only applies in use; 2) only applies in non-use; and 3) applies in both situations. The methodology of the second-instance court strictly followed the  literal wording of the disputed feature. Since the wording of claim does not define the condition, it should be construed as scenario 3) as mentioned above. Such an interpretation seemingly confirms to the description of claim per se, and strictly follows the demonstrative principle of claims. The essence of this argument means that if the structure of product alters in use, this condition must be explicitly specified in the claims. Only in this case, the claim’s protection scope is definite, so that the public can properly anticipate the possibility of infringement. If such condition is  not clearly specified by the wording of the claim, the adverse consequences resulting therefrom shall be borne by the patentee.

The Supreme People’s Court gave a different understanding and stated that the claim construction shall be performed from the perspective of the skilled in the art, and shall be consistent with the specification, figures, and prosecution history. As such, the restrictive condition that the shaver is in non-use shall be introduced. In addition to fully agreeing with the viewpoints of the Supreme People’s Court, we further believe that when interpreting claims, consideration should also be given to the practice of patent drafting of the relevant industry and the principle of equity. Therefore, when determining whether implied restrictive conditions should be introduced, the following aspects should be considered:

First of all, the capability and knowledge of the skilled in the relevant technical fields shall be taken into consideration. Under the Patent Law of the People’s Republic of China (Patent Law), we should balance the interests of two groups—patentee   and the public. On the one hand, we should prevent the patentee from improperly encroaching on the reliance benefits of the public. On the other hand, we should encourage the initiative of the innovator by awarding reasonable monopoly. As such, when mainly valuing interests of the public, sometimes, claim construction was done from the perspective of the general public rather than the skilled in the art. However, with respect to a specific patent, the interests of the entity implementing patent-related technology who may have interest conflict with the patentee is the entity in the same industry, rather than the ordinary public. That is why the Patent Law specifically defines the concept of the skilled in the art referring to a fictional “person,” and defines its specific capability. “The skilled in the art is presumed to be aware of all the common technical knowledge and have access to all the technologies existing before the filling date or the priority date in the technical field to which invention pertains, and have capability to apply all the routine experimental means before that date. However, he is not presumed to have creativity. If the technical problem to be solved impels that person to seek technical means in other technical filed, he should also be presumed to have access to the relevant prior art, common technical knowledge, and routine experimental means in the other technical field before the filling date or the priority date.” Therefore, the basic capability of the skilled in the art should not be neglected when analyzing the technical solution of the claim. Firstly, he has basic knowledge of this technical field and the ability to do routine experiments. Secondly, when he reads the patent, he will go through the patent specification completely firstly, then determine the scope of protection of the claims. For this case, after acknowledging that the axis is defined by projections 22 and holes 23, the skilled in the field can easily ascertain that the position of the axis is fixed and does not vary with the razor in use. Since the outer surface of the external cutting member try to fit the human skin as close as possible, thus, the outer surface’s position and orientation constantly change in use. On this basis, it can be understood that the axis cannot keep parallel with    the outer surface of the external cutting member which constantly changes when the shaver is in use. In fact, they can only be parallel in non-use. Therefore, when reading the claim, the skilled person in the art can easily eliminate the misunderstanding that obviously conflicts with the essence of the patent. When implementing the technical solution, the skilled in the art will surely refer to the embodiment in the specification. Therefore, when understanding the technical solution of the claim, the capability of the skilled person in the art shall be considered.

Secondly, Article 59 of the Patent Law provides that for the patent rights ofan invention or a utility model, the scope of protection shall be confined to what      is claimed, and the written specification and the pictures attached may be used to explain what is claimed. This  Article establishes a basic rule for claim construction, that is, when interpreting the technical solution of a claim, the contents and solutions in the specification shall be considered. The technical solution of the claim shall be consistent with the purpose of invention and cannot contradict with the contents in the specification. With respect to claim construction, different theories have been raised with the development of the trial practice. In recent years, theories widely discussed include “the Broadest Reasonable Interpretation,”[2] “the Theory of Opportunity” and “the Theory of Context.”[3] Accordingly, the discussion also involves the different standards that should be applied in different procedures, i.e. patent prosecution, patent post-grant review and civil infringement procedure.[4][5]Although these theories have different viewpoints on the opportunity and standard of claim construction, they all acknowledge the significant role of specification playing in claim construction. In this case, different embodiments are provided in the specification. In the embodiments corresponding to Claim 4, the “axis” is defined by the projections 22 and holes 23  of which positions are substantially fixed. When the shaver is in non-use, the outer surface of the external cutting member keeps static and parallel to the axis. When  the shaver is in use, the external cutting member with elastic support may move and flip towards any direction. Accordingly, the plane defined by the outer surface of  the external cutting member also constantly changes. Thus, the axis cannot always keep parallel to the plane. In other words, according to the embodiment in the specification, the axis only keeps parallel with the plane defined by the outer surface of the external cutting member when the shaver is static and in non-use. If Claim 4’s claim construction found by the second-instance court was applied, then the technical solution of Claim 4 would be inconsistent and contradictory with the embodiment in the specification. In the invalidation procedure for the subject patent, Superman Group alleged that the technical solution of Claim 4 cannot be supported by the specification. However, the invalidation decision finds that the Claim 4’s disputed technical feature “the axis situated in a plane parallel to a shaving plane defined by the outer surface of the external cutting member” is clear and complete, and can be supported by the specification. This invalidation decision further proves that “the axis situated in a plane parallel to a shaving plane defined by the outer surface of the external cutting member” shall be interpreted as that the restrictive condition “when the shaver is static and in non-use” is introduced. For the civil procedures, it is necessary to respect the claim construction found in the post-grant review procedures. In addition, the civil procedure shall also bear the responsibility for the correct definition of the scope of claims on the presumption that the patent is valid. Thus, in civil procedures, more attention shall be paid to the restrictive effect of the specification upon the claims.[6] In this case, “when the shaver is static and in non-use” has to be introduced into the technical feature of Claim 4 “the axis situated in a plane parallel to a shaving plane defined by the outer surface of the external cutting member,” and it will be consistent with the understanding of the post-grant review procedure and with the embodiment in the specification.

Thirdly, based on the practice of patent drafting, there are two kinds of products in the mechanical field. (1) The structural relationship of parts remains unchanged either in use or in non-use, such as table and stove. For this kind of product, the structure and relative relationship of the parts are fixed no matter what kind of state the product is. (2) The structure and relative relationship of the parts will change in use, such as massage chair, juicer, and crane. For the latter, because of the uncertainties of relative relationship of the parts in different states, the features of product usually are defined based on its static state, which is the common practice of patent drafting. For example, the patent ZL 201410164588.4 “an abdomen massager,” the patent   ZL 201410296573.3 “an electric treadmill,” the patent ZL 201420112372.9 “a book cover push device for book covering machine,” ZL 200980148906.5 “a self-ligating bracket for orthodontics,” etc., in which the structural features in non-use are used to describe and define the technical solution of the claimed products. Further, in such patents’ claims, there is no text such as “in non-use,” which complies with common practice of claims drafting. A fundamental requirement for drafting a claim is clarity and completeness so that the skilled in the art can reproduce the technical solution after reviewing the patent. Because of the uncertainty of parts’ structural features that may change, it is impossible to describe and define the products based on structures which are changed all the time in use. In order to define the technical solution of  this kind of product, it is common practice to describe and define the structure of the product in non-use, which is in line with the usual cognitive patterns. For this case, the shaver belongs to the latter kind of product, and its structure should also be interpreted with the implied conditions of being in non-use, which is also in line with the practice of patent drafting.

Finally,  from the perspective of fairness, the core value of the Patent Law is to protect innovation, promote technological advances, and eventually promote the progress of the society. The key of protecting innovation is to stimulate the innovation and award reasonable protection and monopoly for the contributions to technological improvement, thereby forming a virtuous circle and building an innovative society. In this case, the patentee has disclosed a complete technical solution through the embodiments in the specification. If the claim is not protected just because it fails   to include the specific conditions which are already stated in the specification, then it totally ignores the contribution made by the patentee, which may be unfair. On the other hand, it also connives at infringing acts, which is ultimately detrimental to the promotion of innovation and social welfare.

To sum up, the protection scope of claims shall not merely rely on the wording of claim, but should be based on a comprehensive understanding of the patent. With respect to the claim construction, it is not enough to only consider the technical features that are explicitly stated in the claims. To determine the reasonable protection scope of the claims, the implied condition shall be properly introduced based on the overall understanding of the embodiments in the specification from the perspective of the skilled in the art.