Recently the Shanghai IP Court issued its 2016 Annual White Paper on Trials, consisting of three trial white papers and 20 typical cases. The W&B case in which Mr. Huang Jianguo represented SMC against defendant Bouri for invention patent infringement was chosen as a “Typical Shanghai IP Court Case for 2016”.

[Case Review]

Incorporated in 1959 and headquartered in Tokyo, Japan, SMC Corporation is a professional manufacturer and distributor of pneumatic and electrical components. As a technological leader in the industry, SMC owns multiple technology patents. In 2015, SMC discovered that the electromagnetic valve product manufactured, sold or offered for sale by Leqing Bouri Pneumatic Equipment Co., Ltd. infringed SMC’s patent, and it entrusted Watson & Band to file a patent infringement lawsuit with the Shanghai IP Court.

One of the main disputes during the trial was the interpretation of the technical feature in the patent claims described as “the valve is equipped with another valve within the valve body that switches between the passages of multiple ports driven by the mobile iron core”. W&B relied on Supreme Court judicial interpretations released and enacted in 2016 to stress to the collegiate panel the rules for determining a functional technical feature -- functional technical features refer to features defined by the function or effect but exclude those features for which an ordinary technician in the field can, merely by reading the patent claims, directly and unequivocally define specific examples to achieve the function or effect.

The collegiate panel supported our argument that the technical features in dispute were not functional and that their scope of protection covered the specific configuration of the alleged product. On that basis, the court issued a ruling that the alleged product was infringing because it exhibited all of the technical features of the patent in dispute and thus fell within the scope of protection of SMC’s patent rights.

[Significance]

The identification of functional features and the determination of the scope of protection have always brought challenges to patent infringement trials. This case serves as a precedent for courts to identify the scope of protection of the functional technical features of patents. When there is dispute over whether features described as functional should be identified as functional technical features or their exception. The court creatively used the affiliated patent applied for by the rights holder before the date of the patent application to interpret the claims of the patent in dispute. The implementation method disclosed for identical or functional features of the affiliated patent may also be used to interpret the functional features of the patent in dispute. The trial of this case represents a productive exploration by the court into the protection of functional features, and it also carries precedential value for the trial of similar cases in the future.

Partly from: Shanghai IP Court