Supreme Court clarification on hybrid technical features chosen as exemplary case

On 27 March 2019 in VALEO SYSTEMES D’ESSUYAGE v Xiamen Lu Ka Si Car Accessories Ltd the IP Tribunal of the Supreme People’s Court of China maintained a patent infringement judgment handed down by the Shanghai Intellectual Property Court  and held that if a technical feature defines or implies a specific structure (or a step, composition, condition or correlation thereof) of an invention solution, the technical feature is not a functional feature in principle, even though it defines a function (or effect) that it can achieve. The case was selected as one of the IP Tribunal’s guiding cases in 2019 and was chosen as an exemplary case by the Supreme People’s Court on 16 April 2020.

Facts

VALEO SYSTEMES D’ESSUYAGE accused Xiamen Lu Ka Si Car Accessories Ltd and Xiamen Fuke Car Accessories Ltd, among others, of infringing its Chinese Invention Patent 200610160549.2 before the first-instance court. The plaintiff requested that the court prioritise its finding on patent infringement and cessation of infringement, leaving other matters, including the calculation of damages, to be adjudicated at a later date.

As shown in Figure 1 below, the subject patent refers to a wiper connector (42) for a motor vehicle intended to pivotally connect a wiper arm (22) with a shell-like component (40) of a wiper blade (24). The connector has a pair of elastic lug-like locking elements (60) with nose-like free ends (62) for locking the arm (see Figure 2). Figure 3 shows that a cap-shaped safety fastener (74) rotatable around an axis (V1) is provided with inner surfaces (77) extending along outer surfaces (59) of the elements (60) of the connector when the fastener is in its close position, thereby preventing the locking elements (60) from outward deforming and locking the connector.

Claim 1 of the subject patent recites the disputed technical feature, which reads “in its close position, said safety fastener extends facing said locking element, for preventing said locking element from elastically deforming and locking said connector”.  This feature includes a first segment “in its close position, said safety fastener extends facing said locking element” and a second segment “for preventing said locking element from elastically deforming and locking said connector”.

The first-instance court confirmed that the focus of the dispute lay in whether the disputed technical feature is a functional feature and held that the disputed technical feature is indeed a functional feature.

Appeal tribunal decision

Although neither party objected to the first-instance court finding that the disputed technical feature is a functional feature, the appeal tribunal expatiated on the matter as follows:

• If a technical feature defines or implies a specific structure (or a step, composition, condition or correlation thereof) of an invention solution, the technical feature is, in principle, not a functional feature as defined by Interpretation II of the Supreme People's Court on Several Issues Concerning the Application of Law in the Trial of Disputes over Infringement of Patent Rights 2016, even though it also defines a function or effect that it can achieve.
• The first segment of the disputed feature not only defines the orientation limitation of the fastener and the locking elements, but also implies the structure limitation “said safety fastener extends facing said locking element”.  After reading the specification and its appended drawings of the subject patent, those skilled in the art would understand that the structure limitation can achieve the function of preventing and locking in the second segment when distances between extending portions of the fastener and outer surfaces of the locking elements are small enough.  The disputed technical feature defines both “a specific orientation and structure limitation” and the “function of such orientation and structure limitation”.   Only by taking into account both aspects (orientation/structure and function) would a person skilled in the art determine the specific contents of the orientation and structure limitation for achieving the function. In a nutshell, the disputed technical feature is essentially a technical orientation or structural feature rather than a functional feature.

Comment

The Supreme People’s Court defines ‘functional feature’ in Article 8 of Interpretation II of the Supreme People's Court on Several Issues Concerning the Application of Law in the Trial of Disputes over Infringement of Patent Rights 2016 as follows:

Functional features refer to technical features defined by their functions or effects in the innovation-creation with respect to structures, compositions, steps, conditions, relationships thereof or the like, unless those skilled in the art, only by reading the claim, can directly and clearly determine the specific embodiments that achieve the functions or effects.

Compared with technical features that are described in a patent specification and its appended drawings and are necessary to achieve the function or effect mentioned in the preceding paragraph, if corresponding technical features of accused infringing technical solutions apply substantially the same means to perform the same functions and achieve the same effects, and if the corresponding technical features can be envisaged by those skilled in the art without inventive efforts upon occurrence of accused infringing acts, the People’s Court shall find that the corresponding technical features are identical or equivalent to the functional features.

According to this article, once a technical feature in a patent claim is deemed to be a functional feature in a patent infringement suit, the protection scope of the claim may be drastically narrowed because the claimed feature will be further limited by the technical features (disclosed in the specification and appended drawings of the patent and being necessary for performing the function of the claimed feature) and their equivalents. Thus, whether the claimed technical feature is functional is a crucial matter because it could have direct bearing on the outcome of the infringement lawsuit.

In the absence of explicit legislation and judicial interpretation, court practice varies in respect of ascertaining the nature of a technical feature that is a hybrid of both structural and functional limitations. To solve this conundrum, the IP Tribunal set the following parameters:

• If a technical feature in a patent claim is a hybrid of structures (or compositions, steps, conditions or correlations thereof) and functions (or effects), it must be presumed not to be a functional feature in principle.
• The aforesaid hybrid technical feature will not be deemed as a functional feature, provided that those skilled in the art – by reading the specification and its appended drawings of the patent, and taking into account the structures and functions –  would clearly determine specific contents of the structures for performing the functions.

The IP Tribunal’s new holding is expected to help establish a unified jurisprudence on the ascertaining of functional features in patent infringement lawsuits in China.