Construction of Claims Involving Environmental Features and Infringement Determination - Comments on Shanghai Zhaobang Electric Facility Co., Ltd v. Shandong Zhont-Sunny Electrical Science Co., Ltd, et al. Dispute over Invention Patent Infringement February 22, 2017China Intellectual Property News Edition 09: Rights Protection . Weekly (Case writer: Ling Song) [Case No.] No. 272 [2015], First Instance, Civil Division, SIPC [Judgment Summary] This is the first case in which judgment was made according to Article 9 of Interpretations (II) of the Supreme People's Court on Several Issues Concerning the Application of Law in the Trial of Cases Involving Patent Infringement Disputes (hereinafter referred to as "Interpretation II") since it made provisions on the use environment features. Pursuant to documented evidences, the court found that in the course of installation and usage, the alleged infringing product could be applied to the use environment defined by use environment features contained in the claims of patent the involved. Therefore, its technical solution covered all technical features stated in the patentee's claims and fell under the scope of protection of the patent claims. [Case Review] Shanghai Zhaobang Electric Facility Co., Ltd(hereafter referred to as "Zhaobang") is the patentee of "lightning protection post insulator"(hereinafter referred to as the "patent involved"), which specified that claims 1, 2, 5, 6 and 7 of the patent involved should be protected in this case, specifically as follows: 1. A lightning protection post insulator comprising an insulating cover and a wire clamping fitting composed of upper and lower pressing blocks inside the cover, characterized in that it also has a starting rod connected with the side end of the wire clamping fitting; and an electrical insulator with two ends connected with the lower end of wire clamping fitting and the lower steel pin respectively. 2. The lightning protection post insulator as set forth in claim 1 is characterized by a plurality of grooves on the lower surface of the upper pressing block and the upper surface of the lower pressing block, and connection of the upper and lower pressing blocks by two bolt inserts and two compression nuts. 5. The lightning protection post insulator as set forth in claim 1 is characterized by an insulating bush provided for the starting rod. 6. The lightning protection post insulator as set forth in claim 1 or 5 is characterized by a hemisphere jut at one starting rod end close to the lower steel pin. 7. The lightning protection post insulator as set forth in claim 1 is characterized by a jut at the lower steel pin close to the starting rod. Zhaobang bought the "lightning-protection post composite insulator for high voltage transmission lines" from Shanghai Tingying Power Technology Co., Ltd (hereinafter referred to as "Tingying"), which was manufactured by Shandong Zhont-Sunny Electrical Science Co., Ltd (hereinafter referred to as "Zhont-Sunny"). According to the installation methodstated in the attached instructions, the clip slot of lightning-protection post insulator shall be installed on the pole arm in parallel direction with the conductor. Then Tighten thesteel pin nut and follow the traditional insulator installation method to make the starting rod face towards the far lateral of the pole arm (farthest from the pole arm). Zhaobang believed that Zhont-Sunny's act of producing and selling and Tingying's act of selling the above alleged infringing products infringed upon its patent involved. Through comparison, it's found that the technical solutions used for the alleged infringing product were the same as corresponding technical features set forth in claims 1, 2, 5, 6 and 7 of the patent involved, except lack of pole arm as stated in claim 1, which were affirmed by Zhaobang and Zhont-Sunny. During the trial, Zhaobang said it's for the purpose of preservation of evidence that Tingying bought the alleged infringing product from Zhont-Sunny and sold it to Zhaobang. After the trial, Shanghai Intellectual Property Court held that although the alleged infringing product had no pole arm, it must be installed before use and it's explicitly stated in the instructions that the clip slot of lightning-protection post insulator shall be installed on the pole arm in parallel direction with the conductor and starting rod shall face towards the far lateral of the pole arm, indicating that the pole arm was needed for installing and fixing the alleged infringing product, in other words, the alleged infringing product had the technical feature "pole arm" of the patent involved during its installation anduse; besides, its other structure components and position relations were consistent with corresponding technical features set forth in the claims of the patent involved. Hence, it could be ascertained that technical features contained in the technical solutions of the alleged infringing product were identical to corresponding technical features set forth in the claims of the patent involved and fell under the scope of protection of the latter. Zhont-Sunny's act of producing and selling the alleged infringing products without the patentee's authorization infringed upon the patentee's right and should bear civil liability of ceasing infringement and compensating for the losses according to law. On the other hand, Tingying bought and sold the alleged infringing products at Zhaobang's behest, which, in essence, didn't sell the alleged infringing products for business purpose without authorization. Given the above, the court ordered Zhont-Sunny to stop infringement and compensate for Zhaobang's economic losses and reasonable expenses. [Case Study] Useenvironmentfeatures refer to technical features in claims used to describe the background or conditions of an invention. In recent years, patent infringement cases involving recognition of useenvironmentfeatures often take place, which were often seen by the Supreme people's Court and local courts at all levels without clear recognition criteria. Interpretation (II) made provisions on this issue through judicial interpretations. When applying them in this case, two questions should be figured out: the role and extent of use environmentfeatures in defining the scope of protection of patent claims. 1. Role of use environmentfeatures in defining the scope of protection of patent claims According to Paragraph 1, Article 59 of the Patent Law, for the patent right of an invention, the scope of protection shall be confined to what is claimed, and the written description and drawing attached may be used to explain what is claimed. According to Paragraph 1, Article 17 of Several Provisions of the Supreme People's Court on Issues concerning the Application of Law in the Trial of Cases Involving Patent Disputes, the first paragraph "the extent of protection of the right for invention or utility model shall be determined by the terms of the claims. The description and the appended drawings may be used to interpret the claims" of Article 56 of the Patent Law means that the extent of protection of patent right should be determined by all technical features expressly stated in the claims, including the extent as determined by the features equivalent to such technical features. Therefore, all technical features stated in the claims should be regarded as indispensable to resolve the technical problems involved in technical solutions, which limit the scope of protection of patent claims and must be taken into account when determining such scope of protection. The patent protection subject matter is "lightning protection post insulator" in this case. However, when claim 1 describes the the structural features of the lightning protection post insulator, the technical feature "the insulator is installed on the pole arm through the lower steel pin" contained therein also defines the specific structure used to connect the insulator with supporting fixed element, i.e. use conditions, which is a use environment feature and together with other features stated in claim 1, form a complete technical solution defining the scope of protection of claim 1. 2. Extent of use environmentfeatures in defining the scope of protection of patent claims Before Interpretation (II) was issued, there'remainly two views on this problem in theory and judicial practice: one is that the protected subject matter must be used for that use environment; and the other is the protected subject matter can be used for that use environment. Interpretation (II) stipulated the recognition of use environment features in a double negative way. It pointed out that if an alleged infringing technical solution cannot be applied to the use environment defined by the use environment features contained in the claim of rights, the competent people's court shall determine that the alleged infringing technical solution does not fall under the scope of patent protection, which means the protected subject matter "can" be, rather than "must" be used for the use environment defined by the use environment features. In this case, although the alleged infringing product had no pole arm, it must be installed before use and it's explicitly stated in the instructions that the clip slot of lightning-protection post insulator shall be installed on the pole arm in parallel direction with the conductor, indicating that the alleged infringing product could be used in the use environment defined by the use environment features contained in the claims. Therefore, it could be ascertained that the technical solutions of the alleged infringing product had the technical feature "the insulator is installed on the pole arm through the lower steel pin" stated in the claims of the patent involved and fell under the protection scope of claims of the patent involved. (Writer affiliation: Shanghai Intellectual Property Court)
