The subject matter title of a claim determines the scope of the claim: Analysis of the case of GREE v. MIDEA

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(Author: Sun Mingfei; Source: King & Wood Mallesons)

The subject matter title of a claim is relevant to the technical characteristics in the affidavit of claim and is an important part of a technical solution. It can form the basis of a determination, and should be considered when determining the scope of the claim. These points of view were illustrated in the case of Zhuhai GREE Electric Appliances Co., Ltd. v. Guangdong MIDEA Refrigeration Equipment Co., LLC[1], which were the subject of a second instance trial in Guangdong Provincial Higher People’s Court in March, 2014. This case is significant in correctly understanding the function the subject matter title plays in determining the scope of a claim. King & Wood Mallesons represented Guangdong MIDEA Refrigeration Equipment Co., LLC. and won the case eventually.

I.Background

Zhuhai GREE Electric Appliances Co., Ltd (“GREE Company”) applied for a utility model patent right for a”Dismounting type of baffle for the pipe of an indoor partof air conditioner” on 11th September 2006, and it was granted on 12th September 2007, the patent number: ZL200620064110.5.

On 2nd February, 2012, the GREE Company filed an action against Guangdong MIDEA Refrigeration Equipment Co., LLC (“MIDEA Company”) , claiming a utility model patent right infringement. It was filed in the Zhuhai Municipal Intermediate People’s Court, requesting MIDEA Company to stop the infringement immediately and to pay damages.
In the case, Claim 1 of the patent was an independent claim and Claims 2 to 10 are dependent claims. Claim 1, the independent claim, was for “a method for a detachable pipe baffle for a mounted indoor air conditioner unit.”

The most obvious difference between technical solutions by GREE Company and MIDEA Company can be focused on the undetachable character of air conditioner pipeline installation baffle.

II.Trial

After comparing the two different products, the first instance court identified the subject matter of the alleged infringing products as being a detachable baffle for a pipe for an indoor part of air conditioner. Therefore, the Court of First Instance affirmed the alleged infringing products fell into the scope of protection of the patent involved in the case, delivering a judgment that MIDEA Company should stop the infringing act immediately and compensate for the economic losses of GREE Company.

MIDEA Company appealed the first instance judgment to the Guangdong Provincial Higher People’s Court.

The Court of Second Instance found that in No.20624 decision on the request for invalidation review by the Patent Reexamination Board of the State Intellectual Property Office, upheld the validation of the patent. The technical issue revolved around the baffle being detachable, which will be convenient for dealing with the baffle independentlyof the air conditioner unit and simplifying the production process and saving cost. In addition, the Court found out that once the alleged infringing installation baffle was installed in the air conditioner unit, it would no longer properly function again after demolition, because in the demolition process, the jaw would be broken.

The Court of Second Instance considered the fact those subject matters of the alleged infringing technical solution and the independent Claim 1 are different, also a plenty of technical features in the solution. Thus the court states that the solution did not fall into the protection scope of the patent right.

The Court of Second Instance revoked the first-instance judgment and dismissed all claims of GREE Company.

III.Analysis

The subject matter title of claims is part of the technical characteristics in the affidavit of claim and serves an important part of the technical solution. It determines the scope of a claim and should be considered. In this case, the Court of First Instance did not consider the technical feature, detachability, as described in the subject matter title when determining the scope of the claim. Therefore it drew the conclusion equivalent of infringement, which was revoked by the Court of Second Instance. The part the subject matter title played in the determination of the scope of the claim will be discussed below from two aspects, the legal basis and the patent examination practice.

1. First, The subject matter title being a constitutive element of claims has a clear legal basis

The subject matter title does not appear in The Patent Law of the People’s Republic of China[2], but is contained in Articles 21 and 22 of Detailed Rules for the Implementation of the Patent Law of the People’s Republic of China.[3]

“Article 21 An independent claim of an invention or utility model shall contain a preamble portion and a characterizing portion, and be presented in the following forms:
(1) the preamble portion: indicating the subject matter title of the technical solution to the invention or utility model which is claimed to be protected and those essential technical features that are common to the subject matter of the invention or utility model and the closest technology currently available;
(2) the characterizing portion: stating, in such diction as “characterized in that …” or in similar diction, the technical features of the invention or utility model, which distinguish it from the closest technology currently available; these features, in combination with the features indicated in the preamble portion, serve to define the scope of protection of the invention or utility model…”

“Article 22 A subordinate claim of an invention or utility model shall contain a reference portion and a characterizing portion, and be presented in the following form:
(1) the reference portion: indicating the serial number(s) of the quoted claim(s), and the title of the subject matter;
(2) the characterizing portion: stating the additional technical features of the invention or utility model…”

In relation to independent claims, the preamble with the subject matter title and the characterizing portion together constitute the independent claim. For dependent claims, the reference portion with the subject matter title and the characterizing portion together constitute the dependent claim. In other words, the subject matter title is a constitutive element for both independent and dependent claims, serving to define the scope of protection for the invention or utility model.

Based on the principle of comprehensive cover, when determining the scope of claims in patent infringement litigation, the subject matter title of an independent claim should be considered as an essential technical feature and it should also be essential when quoting the precedent claim for a dependent claim.The scope of a claim is the boundary of the patent right, impacting on the balance of interests between the patentee and the public. This comprehensively and fully respect to all of technical features in the claim, identifying the boundaries of the patent right and assuring the certainty of rights.

In the GREE case, the Court of Second Instance affirmed that the subject matter title in Claim 1, an independent claim, has specified the technical feature of “detachability”, which is not the same or equivalent to the corresponding technical feature in the alleged infringing technical solution. So, dependent claims 4 to 7 are also not the same or equivalent to the corresponding technical features in the alleged infringing technical solution on account of that they all have the technical feature of “detachability” shown by the subject matter title.

2. Second, Consideration of the subject matter title in patent examination practice

In patent infringement litigation, patent review files have the effect of estoppels for patentees. So, it is necessary to review the relevant provisions of patent examination.

Article 3.2.2 in the second chapter, second part of the Patent Examination Guidelines (2010 Revision) states that “First, the category of each claim must be clear. The title of the subject of a claim shall indicate clearly whether the claim is a product claim or a process claim…On the other hand, the subject matter title of a claim shall also be adaptive to the technical contents of the claim.” The “adaptive” here should be understood as: (1) “the subject matter title” should reflect the technical field involved in the technical solution requesting protection, (2) types of claims should adapt to the limited features of it.

Article 3.1.1 states that “for a product claim, where the subject matter title contains definition by use then the definition by use shall be taken into account in determining the scope of patent protection”. However, the actual definitive effect of the use definition shall depend on the impact it imposes on the claimed product per se.”

In this case, the patentee clearly and definitely stated that “a detachable pipe baffle for a mounted type of indoor part of air conditioner” was the subject title of the claim, showing that the attributives, “dismounted type” and “pipe mounting of air conditioner indoor machine”, apply to the technical content of the claims, and both shall be taken into account in determining the scope of the claim. From another perspective, this title can be understood as “a baffle used in a detachable air conditioner indoor unit pipe”, belonging to “the subject matter title which contains definition by use” with the definition by use having a substantial impact and shall be taken into account in determining the scope of the claim.

(This article was originally written in Chinese, and the English version is a translation.)

Notes:

[1] The Civil Judgment (2012) ZHU ZHONG FA ZHI MIN CHU ZI No.165; the Civil Judgment (2013) YUE GAO FA SAN ZHONG ZI No.615.

[2] Adopted at the fourth Session of the Standing Committee of the Sixth National People’s Congress on March 12, 1984; amended for the first time by the Decision on Amending the Patent Law of the People’s Republic of China adopted at the 27th Session of the Standing Committee of the Seventh National People’s Congress on September 4, 1992; amended for the second time by the Decision on Amending the Patent Law of the People’s Republic of China, adopted at the 17th Session of the Standing Committee of the Ninth National People’s Congress on August 25, 2000; amended for the third time by the Decision of the Standing Committee of the National People’s Congress on Amending the Patent Law of the People’s Republic of China adopted at the sixth Session of Standing Committee of the 11th National People’s Congress of the People’s Republic of China on December 27, 2008

[3] Promulgated by Order No. 306 of the State Council of the People’s Republic of China on June 15, 2001; Amended for the first time according to the Decision of the State Council on Amending the Detailed Rules for the Implementation of the Patent Law of the People’s Republic of China on December 28, 2002; Amended for the second time according to the Decision of the State Council on Amending the Detailed Rules for the Implementation of the Patent Law of the People’s Republic of China on January 9, 2010

(Courtesy: King & Wood Mallesons, http://www.kwm.com)