Application of the foreseeability principle in patent infringement litigation

In June 2022, the Supreme Individuals’s Court docket once more utilized the foreseeability precept in Hongrun Precision Devices v Tangkula Devices et al (2021) to disclaim the patentee’s declare of equal infringement. That is regardless of the foreseeability precept not being explicitly supplied for in present Chinese language legislation and judicial interpretations, and its judicial software nonetheless controversial. The growing software of the foreseeability precept by the Supreme Individuals’s Court docket and native courts in recent times, serving as a limitation on the applying of the equivalence precept, is worthy of consideration.

Particularly, the foreseeability precept signifies that if a technical function was clearly identified or sufficiently foreseeable by the patentee on the time of drafting the patent software, however was not included within the safety scope of the claims, then the equivalence precept can’t be utilized to this technical function throughout the infringement comparability. The authorized foundation of the foreseeability precept is that the applying of the equivalence precept should guarantee enough authorized certainty and foreseeability of the patent safety scope, in any other case the general public can not fairly decide the safety scope of the patent rights primarily based on the content material of the declare publicity and can’t fairly keep away from infringement, thus stopping the general public from freely implementing the expertise within the public area, which is opposite to the unique intention of the patent legislation to encourage innovation.

The important thing to making use of the foreseeability precept is to show that the patentee had express information or enough foresight of the technical function when drafting the patent software doc. The creator will illustrate how the foreseeability precept will be asserted and utilized in patent infringement litigation together with judicial follow and circumstances.

Proof of express information. Express information signifies that the patentee is aware of the technical function with readability and certainty, which should be confirmed by express proof reasonably than inference. Potential proof contains the background expertise part of the patent software doc, the patentee’s different patent functions, dissertation writings and statements or assertions made in different circumstances.

For instance, in Xuzhou Zhongsen Clever Tools v Changzhou Nice Backyard Equipment and Ningbo Anglin Clever Tools (2021), the patentee launched the existence of each motor-driven and gasoline engine-driven strategies within the background expertise part of the patent specification however solely restricted the motor-driven methodology within the claims, after which asserted within the infringement litigation that the gasoline engine-driven methodology constituted equal infringement. The Supreme Individuals’s Court docket held that primarily based on the “hedge trimmer” as outlined within the claims, the introduction of motor-driven and gasoline engine-driven strategies within the background expertise part of the specification, and the aim of the invention part on “environmental safety and pollution-free”, a basic technician within the subject may absolutely perceive that the patentee didn’t search to guard the technical answer of powering the hedge trimmer with a gasoline engine. Beneath such circumstances, if the gasoline engine-driven and electrical motor-driven had been to be thought of as equal technical options in figuring out whether or not the infringing product fell throughout the scope of the patent in query, it could be detrimental to the function of patent declare publicity and the safety of the general public’s reliance pursuits. Subsequently, the Supreme Individuals’s Court docket held that the equivalence precept couldn’t be utilized on this case.

Proof of enough foreseeability. Enough foresight signifies that a basic technician on this subject can absolutely foresee it upfront. Provided that “enough foresight” is a presumption, the court docket might want to make a judgment primarily based on the extent of technical talent and customary information of a basic technician on this subject to which the patent relates. From the court docket’s precedents, there are two prevailing circumstances as follows.

(1) Technical options of various classes with clear classification standards within the subject. For instance, the Supreme Individuals’s Court docket held in Solar Junyi v Renqiu Bocheng Plumbing Tools (2015) that when making use of for the patent in query, the patentee outlined the technical answer claimed for cover as a water inlet sleeve with a tapered higher floor, not a flat floor. Each the tapered and flat surfaces had been technical options typically identified to the overall technicians within the subject. In figuring out infringement, the technical function “tapered floor” can’t be prolonged to “flat floor” for cover. Additionally, in Beijing Xingao Know-how v Taiyuan Caiwei Manor Particular Agricultural Improvement and Shanxi Xiaoniu Energy Sports activities Know-how (2019), the Supreme Individuals’s Court docket held that the technical function of elastic assist sheets aligned in equal top as a substitute function had been foreseen by the patentee when making use of for the patent, however was not included within the patent claims in query, so this technical function shouldn’t be thought to be an equal to the “elastic assist sheets aligned in excessive and low positions” within the patent claims. In each circumstances, flat and non-flat (together with tapered) and equal-height and non-equal-height alignments are apparent and customary classifications within the subject, and the 2 are in an either-or relationship. The court docket can subsequently discover that the opposite technical function is sufficiently foreseeable even with out proof.

(2) To show the express information of the patentee by a lot of technical paperwork. In Hongrun Precision Devices v Tangkula Devices et al (2021), the defendant submitted to the court docket a lot of technical paperwork, together with journal articles and patents, which had been revealed earlier than the submitting date, to show that polycarbonate might be used to make instrument case frames earlier than the submitting date. The court docket held that this proof sufficiently proved that the patentee had express information of the above technical function however didn’t embrace it within the claims’ safety scope; subsequently, the equivalence precept may now not be utilized on this case.

In patent infringement litigation, making use of the foreseeability precept helps reinforce the claims’ publicity precept. In the meantime, it additionally signifies that greater necessities are positioned on the patentee to organize the applying paperwork, to which enterprises ought to give due consideration.

Chen Jian is a director at Wan Rui Regulation Agency. Wan Rui Regulation Agency is a member of Sanyou IP Group