*AI-generated translation, for reference only.

Keywords: Civil; Invention Patent Right; Functional Feature; Preliminary Judgment; Act Preservation

Judgment Digest

1. Where a technical feature in a patent claim has already defined or implied a specific structure, composition, step, condition, or the interrelationship thereof, etc., even if such technical feature also defines the function or effect it achieves, it does not fall within the functional features referred to in Article 8 of the Interpretation (II) of the Supreme People's Court on Several Issues Concerning the Application of Law in the Trial of Patent Infringement Dispute Cases.

2. In patent infringement litigation, an act preservation order directing cessation of the alleged infringing act has independent value. Where a party simultaneously applies for an order to cease the alleged infringing act and for a preliminary judgment ordering cessation of infringement, and the people's court considers it necessary to render a preliminary judgment ordering cessation of infringement, the court shall, at the same time, examine the application for act preservation; if the conditions for act preservation are met, the court shall issue a ruling in a timely manner.

Relevant Legal Provisions

1. Article 59 of the Patent Law of the People's Republic of China

2. Article 153 of the Civil Procedure Law of the People's Republic of China

Case Facts

Valeo Systèmes d'Essuyage (hereinafter "Valeo") is the patentee of the invention patent at issue entitled "Connector for a Wiper of a Motor Vehicle and Corresponding Connecting Device," which remained within its term of protection. In 2016, Valeo filed a lawsuit before the Shanghai Intellectual Property Court, alleging that the wiper products manufactured, sold and offered for sale without authorization by Xiamen Lucas Auto Parts Co., Ltd. (hereinafter "Lucas") and Xiamen Fuke Auto Parts Co., Ltd. (hereinafter "Fuke"), and those manufactured and sold without authorization by Chen Shaoqiang, fell within the scope of protection of its patent right. Valeo requested the court to order Lucas, Fuke and Chen Shaoqiang to cease infringement and to pay damages and reasonable expenses for stopping the infringement, provisionally calculated at RMB 6 million, and further requested the court to render a preliminary judgment ordering Lucas, Fuke and Chen Shaoqiang to immediately cease the acts of infringing the patent right at issue. In addition, Valeo filed an application for interim act preservation, requesting the court to rule that Lucas, Fuke and Chen Shaoqiang immediately cease the infringing acts.

Result of the Judgment

On 22 January 2019, the Shanghai Intellectual Property Court rendered a preliminary judgment ordering Xiamen Lucas Auto Parts Co., Ltd. and Xiamen Fuke Auto Parts Co., Ltd. to immediately cease the infringement of the invention patent right at issue from the date the judgment took effect. Dissatisfied with the said judgment, Xiamen Lucas Auto Parts Co., Ltd. and Xiamen Fuke Auto Parts Co., Ltd. appealed to the Supreme People's Court. On 27 March 2019, the Supreme People's Court held a public hearing of the case and rendered Civil Judgment (2019) Zui Gao Fa Zhi Min Zhong No. 2, pronouncing the judgment in court, dismissing the appeal and upholding the original judgment.

Judge's Opinion

The Supreme People's Court holds that:

I. On whether the technical feature "in the said closed position, the said safety buckle extends facing the said locking element, so as to prevent elastic deformation of the said locking element and to lock the said connector" constitutes a functional feature, and whether the accused infringing product possesses the said feature

First, as to whether the said technical feature constitutes a functional feature. A functional feature refers to a technical feature that does not directly define the structure, composition, step, condition, or the interrelationship thereof of an invention's technical solution, but rather defines the structure, composition, step, condition or the interrelationship thereof through the function or effect it performs in the invention. Where a technical feature has already defined or implied a specific structure, composition, step, condition, or the interrelationship thereof in the technical solution of the invention, even if such technical feature also defines the function or effect it achieves, it in principle does not fall within the functional features referred to in Article 8 of the Interpretation (II) of the Supreme People's Court on Several Issues Concerning the Application of Law in the Trial of Patent Infringement Dispute Cases, and shall not be treated as a functional feature for the purpose of infringement comparison. The said technical feature in fact defines the positional relationship between the safety buckle and the locking element, and implies a specific structure— "the safety buckle extends facing the said locking element"; the role played by this positional and structural relationship is to "prevent elastic deformation of the said locking element and lock the said connector." Based on this positional and structural relationship, and read in conjunction with the specification and drawings of the patent at issue—in particular the recitation in paragraph [0056] of the specification that "the locking of the connector is ensured by the inner surface of the vertical sidewall of the buckle, the inner surface extending along the outer surface of the claw; therefore, the buckle prevents the claw from deforming laterally outward of the connector, and the connector therefore cannot be released from the hook-shaped end" —a person of ordinary skill in the art can understand that, with respect to "the safety buckle extends facing the said locking element," so long as the distance between the extending portion and the outer surface of the locking element is sufficiently small, it can produce the effect of preventing elastic deformation of the locking element and locking the connector. It can be seen that the said technical feature is characterized in that it defines both a specific position and structure and the function of that position and structure, and only by understanding the position and structure together with the function it performs can the specific content of such position and structure be clearly determined. Although such a technical feature in the form of "position or structure + functional description" contains a description of function, it is in essence still a positional or structural feature, and is not a functional feature within the meaning of Article 8 of the Interpretation (II) of the Supreme People's Court on Several Issues Concerning the Application of Law in the Trial of Patent Infringement Dispute Cases.

Second, as to whether the accused infringing product possesses the foregoing technical feature. The said technical feature of Claim 1 of the patent at issue defines both the positional and structural relationship between the safety buckle and the locking element and describes the function performed by the safety buckle, and such function has a defining effect on determining the positional and structural relationship between the safety buckle and the locking element. The said technical feature is not a functional feature, and in determining infringement both the definition of positional and structural relationship and the definition of function shall be taken into account. In this case, the inner surfaces of the two side walls of the safety buckle of the accused infringing product are provided with a pair of protrusions perpendicular to the side walls; when the safety buckle is in the closed position, the protrusions on the inside of the side walls face the outer surface of the elastic element, and can produce the effects of restraining the deformation and opening of the elastic element, locking the elastic element, and preventing the wiper arm from disengaging from the elastic element. When the safety buckle of the accused infringing product is in the closed position, the protrusions on the inner surfaces of the two side walls of the safety buckle, perpendicular to the side walls, face the outer surface of the elastic element, which constitutes a form of "the said safety buckle extends facing the said locking element" as recited in Claim 1 of the patent at issue, and likewise can achieve the function of "preventing elastic deformation of the said locking element and locking the said connector." Accordingly, the accused infringing product possesses the said technical feature and falls within the scope of protection of Claim 1 of the patent at issue. Although the court of first instance, on the basis of finding the said feature to be a functional feature, held that the accused infringing product had a technical feature equivalent to the said feature, and although there is a deviation in the comparison method and conclusion, this did not affect the infringement determination in this case.

II. On the specific handling of the application for act preservation pending litigation in this case

The special circumstance that needs to be considered in this case is that, although the court of first instance had rendered a preliminary judgment ordering cessation of the infringement of the patent right at issue, the judgment had not yet taken effect, and the patentee continued to maintain its application for act preservation filed in the first-instance proceedings. In such circumstances, the court of second instance may, with respect to the application for act preservation to cease patent infringement, consider the following situations and handle them respectively: where the situation is urgent or other damage may be caused, and the patentee files an application for act preservation, and the court of second instance is unable to render a final judgment within the time limit for handling the act preservation application, it shall handle the act preservation application separately and issue a ruling in a timely manner in accordance with the law; if the conditions for act preservation are met, preservation measures shall be taken in a timely manner. In such circumstances, since the original judgment has already found infringement to be established, the court of second instance may examine the act preservation application according to the circumstances of the case, and the provision of security shall not be required as a mandatory condition. Where the court of second instance is able to render a final judgment within the time limit for handling the act preservation application, it may render the judgment in a timely manner and dismiss the application for act preservation. In this case, Valeo maintained its application for act preservation pending litigation seeking to order Lucas and Fuke to cease the infringement of the patent right at issue; however, the evidence it submitted was insufficient to prove the occurrence of any urgent circumstance causing damage to it, and the Supreme People's Court had already rendered its judgment in court such that the judgment in this case has taken legal effect, making it unnecessary to separately issue a ruling on act preservation ordering cessation of infringement of the patent right at issue. The application of Valeo for act preservation pending litigation is therefore not supported.