PATENT INFRINGEMENT DISPUTES ON “PUBLIC BICYCLE RENTAL SYSTEM”

First Instance Docket: (2016) Hu73MinChu No. 33 Civil Judgment

Second Instance Docket: (2016) HuMinZhong No. 512 Civil Judgment

CASE 3:

City of Shanghai

[Headnotes]

In patent infringement litigation, where disputes arise over different interpretation of punctuation marks in a claim, the Judicial Interpretation of Patent Law (II) Article 4 should be strictly followed in ascertaining the scope of patent protection. A patentee’s contention for a different interpretation of the same punctuation mark appearing in different places in a claim, unless supported by corresponding evidence in the claim or in the written description, shall not be sustained.

[Synopsis]

Appellant (Plaintiff below): Jiangsu Hompe Technology Co., Ltd. (Hempe)

Appellee (Defendant below): Changzhou Youon Technology Co., Ltd. (Youon)

Hompe is an exclusive licensee of an invention patent entitled “Management System of Parking/ Obtaining/Renting/Returning of Nonmotorized vehicles and Method for Control and Identification Thereof” (the “Patent”). Hompe alleged that all the elements in the public bicycle rental system manufactured and operated in Songjiang District of Shanghai by Youon fell in the protective range of claim 1 of the Patent, constituting patent infringement, for which it sued in Shanghai Intellectual Property Court, seeking injunction of manufacture and sale of the alleged infringing products, as well as economic damages and reasonable expenses.

Claim 1 of the Patent states: A management system of parking/ obtaining/renting/returning for non-motorized vehicle, comprising wherein (1) a storage means for coding information of said vehicle; (2) a communications supervision and control unit; (3) receiving data of vehicle and its whereabouts from, and transmitting commands to, said communications supervision and control unit, to manage unit for controlling parking/obtaining/ renting/returning terminals on the vehicle; and (4) storage means of membership portable data for parking/ obtaining/renting/returning vehicle. The relevant mode of application and the accompanying drawings of the Patent specification both relate to two functions of “parking/obtaining” and “renting/returning.”

Upon comparison, the parties disputed over whether the “parking/ obtaining” and “renting/returning” in claim 1 are parallel or alternative choices, and whether there was identical or equivalent elements to other limitations of claim 1. 

The court of first instance found that “parking/obtaining” and “renting/returning” in the preamble and limitations (3) and (4) of claim 1 of the Patent are parallel to each other, rather than alternative, and the accused device has only the management of “renting/ returning” functions for members to rent vehicles. Moreover, the other elements of the accused device are not identical with or equivalent to the Patent limitations. Therefore, the accused device does not fall in the protective range of the Patent.

The Shanghai Intellectual Property Court at first instance trial decides: all complaints of Hompe are dismissed. After the announcement of the judgment, Hompe was dissatisfied and appealed, which was rejected by Shanghai High People’s Court, affirming the decision below.

[Judge’s Comment]

This case focuses on the interpretation of a symbol, to wit, understanding of the meaning of forward slash “/” as used in “parking/ obtaining” and “renting/returning.”

In the realm of patent practice, Article 59 of the Patent Law prescribes the basic rule for ascertaining the scope of patent protection, i.e., in accordance with the contents of the claim, to be interpreted by the patent specification and the drawings. Therefore, the scope of protection of an invention patent is defined by its claim, and the written language of the description, which necessarily involves the accurate use of punctuation marks which, as an important component part of the claim language and the specifications, also play the role of defining the scope of patent protection.

To the extent of common knowledge of language, punctuation marks may not always be unequivocal, and in ordinary daily use may produce ambiguities, neither is it precluded in the area of patent claim drafting. In this case, for example, the disputed forward slash mark “/” according to Chinese Usage of Punctuation Marks (GB/T 15834-2011) is defined as separation mark, indicating two possible logical relationships of parallel or alternative choices before and after the mark, which forms the key issue in determining the scope of patent protection in this case.

On this issue, the Supreme People’s Court handed down on March 22, 2016 the Supreme People’s Court Interpretation on the Several Issues Regarding Application of Law in Adjudicating Patent Infringement Cases (II) (Judicial Interpretation of Patent Law (II)). Under Article 4, it is clearly provided, where there is ambiguity as to grammar, words, punctuation mark, symbol or signs in patent claims, the specification, or the drawings, which nonetheless could be reduced to an exclusive interpretation by a person having ordinary skill in the art (PHOSITA) through reference to the claims, patent specification or the drawings, the people’s court should admit such exclusive interpretation as its finding of fact. This provision clarifies the principle to be followed in solving such problems, which the courts precisely must do in practice, and must make their finding of facts according to the specific claims and specifications in each case. As to how to understand “the exclusive interpretation,” this case made its findings from the perspectives of textual interpretation, logical interpretation, and systematic interpretation, etc.

Besides, this case also reflects the problem of the ambiguities in claims drafting.

The law protects only the limitations stated in the claims. All the limitations included in the claim language by the patentee at the time of publication of the patent are defining on the subject matter of the patent, constituting the indispensable part of the entire patent. This principle must be followed not only by courts in adjudicating patent infringement cases and in ascertaining the scope of patent protection, but also by patent applicants, patent owners, patent professionals, and others when drafting patent documents.

To avoid equivocalities, a patent claim drafter is required to proceed cautiously when drafting patent documents, keeping in mind clear understanding of the prior arts while balancing the document he is drafting with the understanding, or he will have to be content to lie in the bed he made when asserting the patent right. The Chinese patent legislative intent, in fact, has consistently reiterated the requirements of public notice, ascertainability and predictability in patent drafting. 

Back to the present case, the patentee contended that the reason that the two functional limitations of “parking/obtaining” and “renting/ returning” were included in a single claim was because the patent also involves a process, and such way of drafting would facilitate different ways of controlling in each set of functions. If that is exactly what the claim drafter had in mind, he should have put it down in words in the claim or the written description so that a PHOSITA, reading the document, could have precisely, clearly, and unequivocally understand what was intended to be the patentable subject matter, rather than insisting on what was not reflected in the patent specification resulting from ambiguities as basis for patent infringement. On this basis, because of the public notice function of the patent document, and the doctrine of good-faith qui pro quo in patent practice, the patentee should bear the consequences of any adverse result due to his own mistakes of ambiguous drafting.