How to assess whether a patent has been infringed by features of the usage environment

The concept of ‘usage environment feature’ was first introduced by the Supreme People’s Court (SPC) on 11 December 2012, in the retrial decision Min Ti No 1 pertaining to a patent infringement dispute between Shimano INC and Ningbo Sunrun Industry & Trade Co Ltd. The retrial decision defined a usage environment feature as “those technical features included in patent Claims for the purpose of describing the backgrounds or conditions under which the patented solution is used”. The court further elucidated that “the usage environment features having been written into Claims are the essential features of Claims, functioning as the limitation to the protection scope of Claims.”

Later, the concept was incorporated into the Interpretation (II), of the Supreme People’s Court Several Issues Concerning Law in the Trial of Cases Involving Patent Infringement Disputes. It became effective on April 1, 2016. Article 9 of this reads: “Where an alleged infringing technical solution cannot be applied in the usage environment as defined by the usage environment features included in the claims, people’s court shall ascertain that the alleged infringing technical solution does not fall within the scope of patent protection.” In other words, the interpretation specifies under what conditions the alleged infringing solution should be held not to fall within the patented scope, without elaborating on the circumstances in which patent infringement could be established.

In Shimano INC v Ningbo Sunrun Industry & Trade Co LtdAlthough the patent in question sought to protect a bicycle rear-shifter bracket, Claim 1 states that the bicycle frame and rear shifter were not structurally integrated into the subject matter. Claim 1 reads:

“A bicycle rear shifter bracket for connecting a rear shifter (100) to a bicycle frame (50), wherein, The rear shifter includes a bracket member (5), a support members (4) for supporting a chainguide device (3), and a pair (6 & 7) of connecting members (6 and 7). The bicycle frame also has a connecting structure (14) formed on a shifter mounting extension (14) from a rear fork (51)., the rear shifter bracket includes…”.

The rear shifter and bicycle frame are both used as a background and connect with the subject matter.

The definition was too broad and made it difficult to find a universally applicable infringement assessment criteria. The Beijing High Court attempted to clarify it in Article 24 of its Guidelines for Patent Infringement Assessment (2017) as: “Different from the subject matter, usage environment features refer to technical features in a claim which are used to describe the background or conditions under which the invention or utility model applies and which are in connection or coordination with the technical solution.”

The criteria for infringement assessment are still unclear.

This article proposes that patent infringement should be determined based on the fact that the accused infringer intends using the infringing solution, in the limited way allowed by the usage environment feature. We have therefore outlined the parameters and proposed a methodology for assessing patent infringement involving usage environment features.

All Elements Rule still applies

The Supreme People’s Court has made it clear in its retrial decision and in the judicial interpretation that usage environment features limit scope of patent protection. The All Elements Rule should be used to assess the infringement of usage environment features. In order to establish infringement, an allegedly infringing instrument must be equal to or equivalent to every element of a claim (established in Article 7 of The Interpretation I of Supreme People’s Court On Several Issues Concerning Law Application in the Trial of cases Involving Patent Infringement. Effective January 2010, 2010). This reasoning is based on the fact that usage environment features written into claims are treated equally in patent granting or invalidation procedures. When assessing the novelty of a claim that involves usage environment features, it is important that you consider whether these features have been previously disclosed or taught.

Actual intent to use matters

If the sole focus of the infringement assessment is on whether the accused infringing solution technically applies to the usage environment feature, it will unreasonably burden public with an excessive duty of care. The infringement risk clearance (also known as freedom to operate (FTO) analysis), is expensive and time-consuming.

To relieve this duty of care, consideration may be given to the actual intent to use. This means that the accused infringer must demonstrate an actual intention for the accused infringing solution to be used in accordance to the usage environment feature. In the absence of an actual intention to use, even if the product of an accused infringer is technically applicable to the usage environment feature, the product would still be excluded from the patent’s scope of protection scope.

Other intention not to use an admissible defense of non-infringement

Infringers who have other plans to use this solution shall not be allowed as a defense of non-infringement.

This principle applies to an accused infringing product that is used in multiple ways. If the accused product can be used in multiple ways and one of these exceeds the limitations of the usage feature, and the accused intends to use the product the same way as it, then it is possible that the principle has been violated. To ensure that its intent is not in conflict with another patent, a practicing entity must fulfill the risk clearance obligation.

Comments

Patentees tend not to use a larger unit as the subject matter in claims. They also include usage environment features to improve enforceability.

If a claim refers only to a device, system or subject matter, it is likely that it won’t be as enforceable in practice. A single patent subject matter is less likely than not to be manufactured or offered for purchase by one entity due to the increasing division of labor. This would create the problem that under the All Elements Rule, a group of entities could jointly exploit the patented tech and no infringement could result. Even if a patentee claims that these entities should be held responsible for contributory infringement, judicial practice dictates a finding of contributory infringement based on the existence of direct infringement.

A smaller unit claim with usage features can be enforced against a smaller unit, such as a part. It should be possible to prove infringement once a patentee has established that the component is technically applicable to a usage environment feature and that the accused infringer intended the component to be used under the usage environment.

The remaining issue lies in inferring an accused infringer’s intention. A patentee may produce evidence to demonstrate the context in which the accused infringing product is being used, with the product’s user manual, characteristics and any applicable standards also be deployed to establish intention.

Zhao Hewen

Wanhuida Intellectual Property

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