PRC Supreme People's Court Patent Infringement Enforcement Guidance: The "Draft" Published for Comments by the Patent Community*

PRC Supreme People’s Court (SPC) Justice He Zhonglin introduced the draft of Several Provisions of the Supreme People’s Court on Issues Concerning Applicable Laws to the Trial of Patent Infringement Controversies (Judicial Interpretations). The Judicial Interpretations draw from and parallel the implementation of the recent Third Amendment to the Patent Law. Justice He announced that the SPC would welcome comments concerning the draft guidance, including comments from interested observers from the United States and other overseas countries.

Speaking at a seminar, “Cutting-Edge Intellectual Property Issues Between the U.S. and China, held on June 19, 2009 at the State Intellectual Property Office Training Center in Beijing, Justice He shared the stage with several other Chinese experts as well as former Under Secretary of Commerce and current Foley & Lardner LLP Partner Jon W. Dudas and several of his partners from Foley.

The Judicial Interpretations document is particularly important, as it comes from the SPC and, when finalized, will represent a powerful interpretative tool for Chinese patent law and practice. Justice He emphasized that the SPC will welcome suggestions concerning the draft version, which addresses a number of complex issues in patent infringement cases such as claim construction, standards for determining patent infringement, and calculation of damages.

Scope of Protection
The first 12 of 25 sections of the Judicial Interpretations concern determination of scope of patent protection.

1. Level of Skill in the Art
   Specifically, the Judicial Interpretations document sets forth that the scope of protection is determined by how one possessing ordinary skill in the art would construct the claims in light of the specification and drawings (Section 2).
2. Equivalents
   The scope of claim protection also shall include technologies that substantially use the same means to implement substantially the same functions and to achieve substantially the same goals, and that can be perceived by one possessing ordinary skill in the art without creative work at the time of infringement (Section 4).
3. Design Patent Infringement
   For design patents, identicalness or similarity of designs shall be determined in accordance with the knowledge and cognition of the “relevant public.” The term “relevant public” is defined as a person who has general knowledge of the concerned patented design; who has a certain capacity of distinguishing shapes, patterns, or colors of different designs; and who does not usually notice trivial variances in the shapes, patterns, or colors (Section 11).
4. Narrow Interpretation for “Means” Claims
   The Judicial Interpretations document also provides for narrow interpretation of means-plus-function claims, similar to the United States (35 USC §112, ¶ 6).
   However, during prosecution, most patent examiners currently read the means-plus-function claims broadly to cover all possible mechanisms that perform the same function. Such examination practice is likely to change in light of the Judicial Interpretations.
5. All Elements Rule
   The Judicial Interpretations document also explicitly requires that all technical features or their equivalents shall be present in the accused infringing product for a finding of patent infringement (Section 8). This essentially abandons the widely criticized “superfluity establishing principle,” which was adopted by the Beijing High People’s Court in an earlier decision. In that decision, the Court considered a feature of an independent claim apparently “non-essential” and removed it from consideration when determining infringement.
6. Prosecution History Estoppel (Narrowing Amendments)
   The Judicial Interpretations document indicates that, if during prosecution or invalidity proceedings, a patent applicant or patent holder abandoned or narrowed the scope of certain claims, the scope of protection shall exclude such abandoned subject matter (Section 7).

Prior Art Defense
The Third Amendment to the Patent Law codifies the doctrine of prior art defense, under which the SPC may find no infringement if the defendant has evidence to prove that his technology or design is covered by or performed in accordance with prior art or prior art design. The Judicial Interpretations document requires the reliance upon one piece of prior art (or design) in such a defense, but also allows certain changes from the cited prior art. For example, with respect to invention or utility model patents, the features of the accused infringing product can be “equivalents” to those of the prior art; with respect to design patent, the design of the accused infringing product can be “similar” to that of the prior art.

Cease and Desist Letters
The Judicial Interpretations document sets forth that the accused infringer is entitled to file a declaratory judgment if the patentee — within one month after receipt of written notice from the accused infringer who has received a cease and desist letter therefrom, urging the patentee to take legal actions — fails to withdraw this letter or to bring a lawsuit. Such an additional procedural requirement may give the patentee significant advantages over the accused infringer in terms of forum shopping.

Comments to the Court
The deadline for comments is July 10, 2009. Comments may be e-mailed via the Web site http://www.chinacourt.org/wsdc/, or mailed to:

Intellectual Property Tribunal
The Supreme People’s Court of China
No. 27 Dong Jiao Min Xiang
Dongcheng District
Beijing, PRC

* This paper benefits from the views expressed in the question and answer period of the seminar, “Cutting-Edge Intellectual Property Issues Between U.S. and China,” held on June 19, 2009 at the State Intellectual Property Office Training Center in Beijing, particularly the comments made by PRC Supreme People’s Court Justice He Zhonglin.

The authors of this alert are members of Foley & Lardner LLP. Yan Zhao is an attorney in the firm’s Shanghai office and is admitted to practice in China and the State of New York. He earned his LL.B. from Peking University and his LL.M. from George Washington University Law School. Alex Y. Nie, Ph.D., practices in the firm’s Silicon Valley office. He earned his J.D. from Rutgers School of Law – Newark, his Ph.D. in biochemistry and M.S. in computer science from Rutgers – New Brunswick, his M.S. from the University of Science and Technology of China, and his B.S. from Wuhan University. Yang Tang is a patent agent in Foley’s San Diego/Del Mar office. She earned her M.S. in biochemistry from Case Western Reserve University and her B.S. in biochemistry from Xiamen University.

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