SMC Corporation v. Yueqing Bori Pneumatic Equipment Co., Ltd, et al. Dispute over Invention Patent Infringement - Associated Patent Can Be Used to Explain the Functional Features of the Patent Involved

(Writer: Chen Yaoyao)

[Judgment Summary]

Recognition offunctional features and determination of its protection scope are always difficult during the trials of patent infringement cases. The present case is a typical case wherethe people's courtaccurately determines the protection scope of functional features of the patent involved. The judgment is of special significance in that although there're limitations on burden of proof and a great controversy over whether functional descriptive feature should be recognized as functional feature, which, according to the rules of burden of proof, should be recognized as functional feature, the court creatively used the associated patent applied by the patentee before the patent application date to explain the claims of the patent involved. The embodiment disclosed in identical or similar functional feature involved in the associated patent can also be used to explain the functional feature of the patent involved. If the alleged infringing product has the same or equivalent embodiment with the associated patent, it should be deemed to constitute patent infringement. The trial of this case is a useful attempt of the people's court to the protection of functional features, providing reference for the trial of similar cases in the future.

[Case Review]

The plaintiff is the patentee of "solenoid valve" involved. Patent application date is September 3, 2002 and authorized announcement date is October 18, 2006. Patent claim 1 is as below:"a solenoid valve consisting of solenoid portion and valve portion; in solenoid portion, operation-driven movable core, which energizes the coils, is mounted in a magnetic enclosure with openings; in valve portion, valve bodies are provided to switch the passage between multiple ports driven by the said movable core...". The patented embodiment discloses a valve body structure comprising push rod, lift valve, discharge valve seat, supply valve seat,moving throttle device, lift valve spring, and the like. The lifting valve moves between the discharge valve seat and supply valve seat to switch the flow path, where the first action surface on the moving throttle device is large and the second action surface is small, so that the supply valve seat can move towards or away from the lift valve.

In September 2013 and October 2013, the plaintiff bought 8 types of alleged infringing products (SY5120-5LZD-01, etc.) from the defendant Yueqing Bori Pneumatic Equipment Co., Ltd and defendant Shanghai Yuyao Hardware Mould Co., Ltd respectively, all of which bear the trademark of Yueqing Bori. Through comparison, it's found that each valve body of the alleged infringing products comprises push rod, lifting valve, discharge valve seat, supply valve seat, moving throttle device, lifting valve spring and the like; lift valve can move between the discharge valve seat and supply valve seat; supply valve seat is fixed on the moving throttle device; other technical features are the same as those stated in claim 1 of the patent involved. Believing that the above products fell into the scope of protection of the patent involved, the plaintiff requested the court to rule that two defendants stop the infringement, and defendant Yueqing Bori compensated for its  economic losses and reasonable expenses amounting to 1,000,000 yuan.

In addition, it's found that the patentee of "solenoid valve" (patent No.: ZL02130310.X) is also the plaintiff; patent application date is August 12, 2002 and claim 1 is as below: a solenoid valve consisting valve and solenoid; the valve has a spool that switches the flow path by approaching or being away from the valve seat inside the valve casing; the solenoid drives the said spool in a direction close to or away from the said seat... ", the valve structure shown by the embodiment in the drawings is the same as that shown by the embodiment in the drawings of the patent involved. Moreover, it's stated in the patent specification that "here we give an embodiment that the said valve seat (supply valve seat) moves in the axial direction of the valve opening, which, however, can also be fixed."

[Judgment]

After the trial, Shanghai Intellectual Property Court held that the technical feature"in valve portion, valve bodies are provided to switch the passage between multiple ports driven by the said movable core..." state in the preamble of Claim 1 of the patent involved just pointed out that the valve body shall realize the function of"switch the passage between multiple ports driven by the movable core" without mentioning the valve components required to realize this function and their interactions. In this case, no evidence proves that in the technical field concerned, there have been a valve structure that can realize the function of "switch the passage between multiple ports driven by the movable core", which has relatively fixed technological structure and is well known to the persons of ordinary skill in the art. The embodiment of the patent involved discloses a valve body structure only, in which the supply valve seat can move towards or away from the lift valve. The description of valve portion stated in the preamble of Claim 1 of "solenoid valve" (patent No.: ZL02130310.X) is similar to that of the patent involved; valve structure shown by the embodiment in the drawings is the same with that of the patent involved; and the patent specification also stated that "here we give an embodiment that the said valve seat (supply valve seat) moves in the axial direction of the valve opening, which, however, can also be fixed." Therefore, it can be recognized that the patent has disclosed the embodiment that the valve seat can be moved and the embodiment the supply valve seat can be fixed. As "solenoid valve" patent (patent No.: ZL02130310.X) and the patent involved belong to the same technical field and the same patentee, and its patent application date is prior to that of the patent involved, it can be recognized that the valve body structure, capable of realizing the function of "switch the passage between multiple ports driven by the movable core" and having been known by persons of ordinary skill in the art at the application date of the patent involved, contains the embodiment that the supply valve seat of the patent involved can be moved and also the embodiment that the supply valve seat can be fixed, both of which can be ascertained to realize the said function by the persons of ordinary skill in the art directly and clearly by reading the claims of the patent involved and can be included in the protection scope of the technical feature of patent involved "in valve portion, valve bodies are provided to switch the passage between multiple ports driven by the said movable core...". The alleged infringing products have the same embodiment with the patent involved regarding fixation of supply valve seat and fall within the protection scope of the plaintiff's patent involved. Given the above, the court ruled that two defendantsstop the infringement and Bori compensate for the plaintiff's economic losses and reasonable expenses totaling 40,000 yuan. After the judgment, neither the parties file an appeal.

[Case Study]

Recognition offunctional features and determination of its protection scope are always difficult during the trials of patent infringement cases, which are also the focus of dispute and difficult problem in this case.

I. Different views on this case

The main dispute in this case is whether the alleged infringing products have the technical feature "in valve portion, valve bodies are provided to switch the passage between multiple ports driven by the said movable core..." as stated in Claim 1 of the patent. There're two different views.

One is the technical feature is defined by the function or effect, which should be recognized as functional feature and protection scope of which should be determined based on the embodiment disclosed in the specifications and its equivalent embodiment. As the patent involved disclosed one embodiment only and the technical solution of alleged infringing products aren't the same as or equivalent to the embodiment, they shall not be deemed to fall within the protection scope of the patent involved and the plaintiff's claims should be dismissed.

The other is such technical features is written in the preamble of the claim, which, also defined by the function or effect, is generally known to persons of ordinary skill in the art. Therefore, it shouldn't be recognized as functional feature and all structures that can realize that function or effect shall fall within the protection scope. Therefore, the alleged infringing products fall within the protection scope of the patent involved and constitute patent infringement.

II. Recognition and dilemma of functional features

Functional features refer to technical features which define the structures, components, procedures, conditions or the mutual relationship thereof, among others, through their functions or effects in invention and creation, i.e. technical features defined by function. However, not all technical features defined by function are functional features. Exceptions mainly include technical terms that have been widely known to the ordinary skill in the art, which, according to Interpretation (II) of the Supreme People's Court on Several Issues concerning the Application of Law in the Trial of Patent Infringement Dispute Cases, mean technical features where persons skilled in the art, after reading the claim only, can directly and clearly ascertain the specific embodiments that realize such function or effect.

In practice, recognition of functional features is essentially a fact-finding problem, which can be solved by the parties' proof-providing and expert consultation, etc. in theory. However, there are many subdivisions in the technical field, and ordinary skill in the art are subjective in terms of their choice and cognition, making it controversial on the fact-finding and difficult to accurately identify if it belongs to functional feature or its exceptions, which were seenin this case. As the technical feature under dispute is stated in the preamble of the claim, the patentee recognizes such technical feature as a feature defined by function, which is an exception to the functional feature. However, it failed to provide relevant evidence.

III. Embodiment disclosed by associated patent can be used to explain the functional feature of the patent involved

Given that existing evidence is insufficient to prove functional descriptive feature is an exception, such feature should be recognized as a functional feature, scope of protection of which shall be determined based on the embodiments disclosed in the specification and its equivalent embodiments according to relevant provisions of judicial interpretations. However, due to limitations on proof-providing and in order to balance some technical features regarded as the exception of functional features but finally recognized as functional features, the people's court may use associated patent applied by the patentee before the patent application date to explain the claims of the patent involved. If the embodiment disclosed in identical or similar functional feature involved in the associated patent can also be used to explain the functional feature of the patent involved, and the alleged infringing product has the same or equivalent embodiment with the associated patent, it should be deemed to constitute patent infringement.

In this case, "solenoid valve" patent (patent No.: ZL02130310.X) and the patent involved belong to the same technical field and the same patentee, its patent application date is prior to that of the patent involved, the description of valve portion stated in the preamble of Claim 1 is similar to that of the patent involved, valve structure shown by the embodiment in the drawings is the same with that of the patent involved, and embodiment of fixation of supply valve seat is also disclosed, it can be recognized that the valve body structure, capable of realizing the function of "switch the passage between multiple ports driven by the movable core" and having been known by persons of ordinary skill in the art at the application date of the patent involved, contains the embodiment that the supply valve seat of the patent involved can be moved and also the embodiment that the supply valve seat can be fixed, both of which can be ascertained to realize the said function by the persons of ordinary skill in the art directly and clearly by reading the claims of the patent involved and can be included in the protection scope of the patent involved. The alleged infringing products have the same embodiment with the patent involved regarding fixation of supply valve seat and fall within the protection scope of the plaintiff's patent involved.