*AI-generated translation, for reference only.

Keywords: civil patent ownership; infringement; infringement of invention patent; scope of patent protection; claim construction; claim amendment

Case Facts

 [REDACTED] Company A and [REDACTED] Company B alleged as follows: The two companies were the patentees of Invention Patent No. 20071007****.6, entitled "Floor Cleaner Incorporating a Wiping Device with Sweeping Function" (hereinafter the "Patent-in-Suit"), which was granted on January 20, 2010. In this case, [REDACTED] Company A and [REDACTED] Company B sought protection of claims 1, 2, 4, 5, and 10 as submitted to the China National Intellectual Property Administration (CNIPA) by the patentees on June 15, 2022. Claim 1 of the Patent-in-Suit reads: "A floor cleaner incorporating a wiping device with sweeping function, comprising: a housing, a wiping device mounted at the front end of the housing, a decontamination device for cleaning the wiping device, and a transmission device, wherein the wiping device comprises a rotating shaft and a wiping layer covering the rotating shaft, the decontamination device forms, on the surface of the wiping layer and in a direction parallel to the axial direction of the rotating shaft, a cleaning cavity containing cleaning liquid, and the transmission device drives the rotating shaft to rotate, characterized in that: the inlet of the cleaning cavity is connected to a clean water container and the outlet thereof is connected to a wastewater container; the transmission device further comprises a water pump that injects the cleaning liquid from the clean water container into the cleaning cavity; and a waste collection device is disposed immediately adjacent to the rotating shaft of the wiping device, the waste collection device comprises a guide surface that is in close contact with the floor and adjacent to the wiping layer of the wiping device, and the rotating wiping layer of the wiping device drives waste along the guide surface into the waste collection device by friction."

In July 2021, [REDACTED] Company A and [REDACTED] Company B, through notarized evidence collection, determined that the floor washing machines manufactured, sold, and offered for sale by Di [REDACTED] Company, as well as the floor washing machines produced on an OEM basis for Re [REDACTED] Company by Di [REDACTED] Company, and those sold and offered for sale by Re [REDACTED] Company, infringed the Patent-in-Suit. They accordingly requested that Di [REDACTED] Company and Re [REDACTED] Company be ordered to cease the infringement and pay compensation for economic losses in the amount of RMB 10 million (same currency unit hereinafter).

Di [REDACTED] Company and Re [REDACTED] Company defended as follows: The accused infringing product did not fall within the scope of protection of the Patent-in-Suit and therefore did not constitute infringement. The amount of compensation for economic losses claimed by [REDACTED] Company A and [REDACTED] Company B was manifestly excessive. [REDACTED] Company B was not a proper party to the action. The accused infringing product had a legitimate source, and Re [REDACTED] Company should not bear liability for compensation.

The court, upon trial, found as follows: The "Detailed Description of Embodiments" section of the specification of the Patent-in-Suit described four embodiments of the floor cleaner. In the first embodiment, the transmission device comprised a storage battery and an electric motor, the electric motor had an elongated output shaft connected to the coupling portion of the rotating shaft, thereby transmitting the rotation of the electric motor to the rotating shaft and the wiping layer, and the electric motor could directly drive the rotating shaft to rotate; the floor cleaner in this embodiment further comprised a water pump and a water pump drive mechanism, the water pump drive mechanism comprised rollers and a connecting shaft connecting the rollers, and one end of the connecting shaft was output to the gear set of the water pump, thereby driving the water pump to draw clean water from the clean water container and inject it into the cleaning cavity between the pressing box and the wiping layer. In the second embodiment, the transmission device comprised a gear set and a water pump, the gear set of the transmission device was mounted on the side of the housing, one end of the gear set was connected to the rotating shaft at the front of the housing and the other end was connected to a drive mechanism, the drive mechanism comprised a pair of rollers and a connecting shaft connecting the rollers, one end of the connecting shaft meshed with the gear set, and the rotation of the rollers of the drive mechanism, after being transmitted through the gear set, drove the rotating shaft of the wiping device to rotate. In the third embodiment, the drive mechanism employed an electric motor that drove the gear set to rotate. In the fourth embodiment, the transmission device and the drive mechanism employed a single electric motor that directly drove both the rotation of the rotating shaft of the wiping device and the operation of the water pump. In the First Office Action concerning the Patent-in-Suit application, CNIPA pointed out that original claim 1 lacked inventiveness under Article 22, paragraph 3 of the Patent Law of the People's Republic of China; the applicant amended claim 1 by adding the technical features "the inlet of the cleaning cavity is connected to a clean water container and the outlet thereof is connected to a wastewater container; the transmission device further comprises a water pump that injects the cleaning liquid from the clean water container into the cleaning cavity." The accused infringing product had a water pump and its drive mechanism, as well as an electric motor capable of driving the rotating shaft to rotate; the water pump and the rotating shaft that drove the wiping layer had no physical linkage whatsoever, nor were they installed in the same component \u2014 the water pump and its drive mechanism were located at the bottom of the clean water tank, while the electric motor driving the rotating shaft was located at the front end of the housing, and the two were driven by separate, independent electric motors.

On December 20, 2022, the Shenzhen Intermediate People's Court of Guangdong Province rendered the Civil Judgment (2021) Yue 03 Min Chu No. 6457, dismissing the claims of [REDACTED] Company A and [REDACTED] Company B. [REDACTED] Company A and [REDACTED] Company B appealed. On June 27, 2024, the Supreme People's Court rendered the Civil Judgment (2023) SPC IP Civ Final No. 732, dismissing the appeal and affirming the original judgment.

Judge's Opinion

The central issue in this case was whether the accused infringing product fell within the scope of protection of the Patent-in-Suit.

Regarding the technical features relating to the "transmission device": The patent applicant amended claim 1 of the Patent-in-Suit during the patent prosecution process. Original claim 1 defined that "the transmission device drives the rotating shaft to rotate." Following the amendment, the limitation in original claim 2 \u2014 "the inlet of the cleaning cavity is connected to a clean water container and the outlet thereof is connected to a wastewater container; the transmission device further comprises a water pump that injects the cleaning liquid from the clean water container into the cleaning cavity" \u2014 was incorporated into original claim 1, further defining the "transmission device." Accordingly, the "transmission device" in amended claim 1 involved at least two aspects of technical features: "the transmission device drives the rotating shaft to rotate" and "the transmission device further comprises a water pump." With respect to the relationship between the transmission device and the water pump in the Patent-in-Suit, the descriptions in the four specific embodiments set forth in the specification were not identical. In the first embodiment, the transmission device comprised a storage battery and an electric motor, the electric motor had an elongated output shaft connected to the coupling portion of the rotating shaft, and the electric motor could directly drive the rotating shaft to rotate; the water pump was driven by a water pump drive mechanism, and the "transmission device" that drove the rotating shaft and the water pump were driven by different devices, nor did they have an "include/comprise" relationship. In contrast, the second and third embodiments expressly stated that the transmission device comprised a gear set and a water pump; Figure 2 illustrated the relationship between the two, and the specification stated "the drive mechanism at the other end of the gear set." In the fourth embodiment, the transmission device and the drive mechanism employed a single electric motor to drive both the rotation of the rotating shaft of the wiping device and the operation of the water pump. A comprehensive analysis of the above four specific embodiments, compared against claim 1 before and after the applicant's amendment, sufficiently demonstrated that the further limitation concerning the transmission device in amended claim 1 differed materially from the specific arrangement in the first embodiment of the specification, and that the aforementioned amendment to claim 1 was a significant basis upon which the Patent-in-Suit was ultimately granted. The specific technical solution of the transmission device in the first embodiment was already materially distinguishable from the technical solution in amended claim 1.

Based on the facts as found, the transmission device driving the rotating shaft and the water pump in the accused infringing product were respectively disposed at the lower part of the housing and beneath the clean water container located below the handle; the two were separately arranged, relatively independent, and driven by different electric motors, nor did they have a "further comprises" relationship with each other. These features differed materially from the corresponding technical features in amended claim 1. Taking into account the reason for and the specific circumstances of the amendment to claim 1, it could be concluded that the accused infringing product did not fall within the scope of protection of the Patent-in-Suit.

Judgment Digest

Where a patent applicant or patentee has amended the claims, and a specific embodiment described in the specification is not recited in the amended claims, such specific embodiment should generally not be deemed to fall within the scope of protection of the patent.

Related Index

Patent Law of the People's Republic of China, Art. 64, para. 1

First instance: Shenzhen Intermediate People's Court of Guangdong Province, Civil Judgment (2021) Yue 03 Min Chu No. 6457 (December 20, 2022)

Second instance: Supreme People's Court, Civil Judgment (2023) SPC IP Civ Final No. 732 (June 27, 2024)