Can this really infringe on patent rights? — Don’t overlook the characteristics of the usage environment.

With the increasing emphasis on intellectual property protection at the national level, many enterprises are paying attention to avoiding the risks of patent infringement. Especially in technology-intensive fields, more and more technology companies realize that patent infringement is often a major risk to their survival and development. Despite this increased awareness, Chinese companies still face some professional challenges in practice.

For example, some companies have a preliminary understanding of the scope of protection of risky patents and are aware of the principle of full coverage, mistakenly believing that their products do not constitute infringement because they lack a certain technical feature in the claims. However, in infringement litigation, even though the accused product lacks one or more technical features of the patent claims, it is still found guilty of infringement by the court. A typical situation is that these missing technical features are considered as usage environment features. In this case, the determination of usage environment features often becomes the key factor in determining the outcome of the case.

I. The Source and Definition of Usage Environment Features

my country’s current patent system was established in the 1980s. Against the backdrop of the grand historical context of reform and opening up, my country’s patent system urgently needed to align with international standards and extensively drew on the experience of Western patent systems. Therefore, comparative method is a commonly used research method in the study of my country’s patent system. As for the term “use environment characteristics,” the author has not found a clear equivalent in US patent law or European patent law. From the perspective of its origin, “use environment characteristics” is an exploration and contribution made by Chinese courts in judicial practice to the protection of patent rights.

According to currently available information, “use environment characteristics” first appeared in the Supreme People’s Court’s Civil Judgment No. 1 of 2012, in the patent infringement case between Shimano Co., Ltd. and Ningbo Richeng Industry and Trade Co., Ltd. [1]. Subsequently, the Beijing Higher People’s Court, in its “Guidelines for Patent Infringement Determination,” twice refined and elaborated on the use environment characteristics in relation to infringement determination. In 2020, Article 9 of the Supreme People’s Court’s Interpretation (II) on Several Issues Concerning the Application of Law in the Trial of Patent Infringement Disputes (Fa Shi [2020] No. 19, 2020 Amendment) stipulated the infringement determination rules based on “use environment characteristics.” Since then, “use environment characteristics” has been written into the Supreme People’s Court’s judicial interpretation and has officially become part of my country’s patent legal system.

In patent infringement litigation, use environment characteristics are involved in determining the scope of protection for certain types of patents involved in the case. Specifically, when the patent in question is a design patent, it does not involve features related to the environment of use; when the patent in question is an invention patent with a method as its subject matter, there are fewer cases involving features related to the environment of use, and there is also controversy in the theoretical community regarding whether features related to the environment of use can be applied to invention patents with a method as their subject matter; when the patent in question is an invention patent or utility model patent with a product as its subject matter, it may involve features related to the environment of use.

Features related to the environment of use, as the name suggests, refer to the technical features in the patent claims used to describe the environment in which the invention is created. These features are defined based on the specific object defined by the technical features in the claims. Generally, when the subject matter of protection is a product or the shape and structure of a product, the technical features in the claims directly define the patented technical solution itself, typically directly defining its structure, components, materials, etc. Features related to the environment of use, however, define the patented technical solution by limiting technical content beyond the technical solution itself. Common features related to the environment of use, installation, connection, and use of the patented technical solution.

Because the technical solutions claimed by patents are often very complex, merely defining the shape and structure of the product is insufficient to form a complete technical solution. Using environmental characteristics to define the installation location, connection structure, purpose, applicable objects, and usage methods of a product is of great significance for forming a complete technical solution in the claims and for clearly and concisely determining the scope of protection of the claims.

II. The Limiting Role of Environmental Characteristics

As mentioned above, my country’s relevant provisions on environmental characteristics originate from my country’s judicial practice and objectively play a beneficial supplementary role to the application of the principle of full coverage, which is conducive to the protection of patent rights. For example, in a patent infringement case involving a shaping device for human ears, the product claimed by the patent is the shaping device. This shaping device is used for human ears, which inevitably involves the technical features of the ear [2]. The manufacturing, sales, and import of the accused shaping device obviously do not include the technical features of the ear. The aforementioned manufacturing, sales, and import behaviors are the source of infringement and the key to regulating infringement. If the principle of full coverage is applied mechanically without considering the distinction of environmental characteristics, the aforementioned manufacturing, sales, and import behaviors may all be deemed not to have committed infringement because they do not meet the principle of full coverage, and the patentee will inevitably face the inability to protect their rights. Therefore, introducing the characteristic of the usage environment, specifically recognizing the ear as a characteristic of the usage environment, and determining infringement based on this, may be more in line with the principles of fairness and reliance from a public perspective.

In the second-instance civil judgment of the hedge trimmer handle case, the Supreme People’s Court elaborated in detail on whether and to what extent the characteristic of the usage environment limits the scope of protection of the claims. Its explanation is divided into three levels. The first level addresses whether the environmental characteristic has a limiting effect. The Supreme People’s Court held that the characteristic of the usage environment, already included in the claims, is an essential technical feature of the claims and has a limiting effect on the scope of protection of the claims. That is to say, regarding the question of whether or not it has a limiting effect, the characteristic of the usage environment included in the claims definitely has a limiting effect. The second level addresses the degree of limitation, that is, the extent to which the characteristic of the usage environment limits the claims. The Supreme People’s Court held that the degree of limitation of the usage environment on the scope of protection should be determined comprehensively based on the specific circumstances of the case. Generally, it is not required that the protected technical solution must be used in the usage environment specified by the usage environment characteristic; rather, it is sufficient that it can be used in that usage environment. The third level describes a special case: if a person skilled in the art, after reading the patent claims and specification, can clearly and reasonably understand that the protected object must be used in that particular environment, then the environmental feature should be understood as requiring the protected object to be used in that specific environment.

In the hedge trimmer handle case, claim 1 claims protection for a hedge trimmer handle. The structural features of the hedge trimmer were deemed to be environmental features, thus having a limiting effect. However, the patent documents and examination files of the patent in question did not limit the handle to be used only in hedge trimmers. Therefore, the fact that the accused handle can be used in that environment is sufficient to establish that environmental feature. The first instance judgment in this case found infringement, and the second instance upheld the first instance judgment [3]. In the second instance civil judgments of the patent infringement case for a shaping device for human ears [2] and the case of magnetic mounting elements and optical modules [4], the limiting effect of environmental features was also explained in more detail. The feature determination and judgment results in these cases are similar to those in the hedge trimmer case, and due to space limitations, they will not be analyzed in detail here. III. Categories and Identification of Environmental Features in Practice

Environmental features originate from judicial practice, but in patent examination practice, there is currently no explicit definition of environmental features. The Patent Law, the Implementing Regulations of the Patent Law, and the Patent Examination Guidelines do not explicitly define environmental features. However, the provisions regarding use-limiting features in the Patent Examination Guidelines are related to environmental features. Use-related environmental features are a typical type of environmental feature. For example, in the case of the desulfurization system, the use-related environmental feature of the “ammonia water storage tank” is that storing “ammonia water” is the purpose of the “storage tank.” In this case, the accused product included the technical feature of a “storage tank,” but the “storage tank” did not store ammonia water. The Supreme People’s Court determined that infringement was established based on the degree of limitation of the environmental features [5]. In the case of the laser tube with stable power output, the technical feature of “applied to small and medium power laser cutting and engraving” was identified as an environmental feature, and the court also determined that infringement was established in this case [6].

Condition-related environmental features are also highly typical. For example, in the case of the joint structure, the defendant argued that the accused product did not include the technical feature that “the installation device enables the ventilation arm to be installed on the support structure supporting the ventilation arm in the room”. The court of first instance held that this technical feature limited the specific structure and usage conditions of the installation device connecting to the support ventilation arm, and was a feature of the usage environment, and ruled that the infringement was established. The Supreme People’s Court supported the above view in the second instance and upheld the judgment of the first instance [7]. In the case of the chain formed by the fixed clamp, the feature of the “crossbar” was also identified as a feature of the usage environment related to the conditions. The accused infringing technical solution usually needs to be under the conditions of the usage environment to produce technical functions. The Supreme People’s Court made this clear in its judgment [8].

Usage environment features related to its own structure are also a common type of usage environment feature. This type of usage environment feature is often controversial in practice. For example, in the case of the drum double-selection threshing machine, the accused infringing product did not have the two technical features of the protective cover and drive mechanism in the claims. Based on the product manual, notarized photos and other evidence, combined with the statement of the accused infringer, the Supreme People’s Court determined that the above features were features of the usage environment and ruled that the infringement was established [9]. In the case of the concrete continuous wall, the court of first instance held that the insertion of steel beams, the hanging method of flanges, the use of upper and lower rebar openings, the use of threaded rods through limiting holes, and the insertion of concrete delivery pipes into the grouting port were not technical features of the flexible formwork structure itself, but rather features of the usage environment, and ruled that the infringement was established. In the second instance, the Supreme People’s Court did not recognize the above-mentioned features of the usage environment, but recognized the distinguishing technical features and reversed the judgment to dismiss the lawsuit [10].

IV. Summary and Outlook

As can be seen from the analysis of the above cases, the determination of features of the usage environment is often the key to the success or failure of patent infringement cases. Accurately identifying features of the usage environment plays a crucial and decisive role in defining the scope of patent protection and judging the occurrence of infringement. With the rapid development of technology and the continuous changes in the market environment, the determination of features of the usage environment also faces new challenges. For example, in patent infringement cases involving high-tech fields such as the Internet and artificial intelligence, how to accurately identify features of the usage environment often becomes a difficult and important point in the trial of the case. Therefore, in patent infringement cases, both parties must be extremely cautious and accurate in their analysis of the characteristics of the use environment. They should base their arguments on thorough preliminary work, conduct multifaceted evidence gathering, case analysis, and reasoning, and accurately define the characteristics of the use environment to ensure reasonable protection of patent rights and fair and orderly market competition.

Notes:

[1] Supreme People’s Court, Civil Judgment No. 1 of 2012.

[2] Supreme People’s Court, Civil Judgment No. 468 of 2020.

[3] Supreme People’s Court, Civil Judgment No. 1434 of 2021.

[4] Supreme People’s Court, Civil Judgment No. 841 of 2020.

[5] Supreme People’s Court, Civil Judgment No. 1192 of 2020.

[6] Supreme People’s Court, Civil Judgment No. 2415 of 2021. [7] Supreme People’s Court, Civil Judgment No. 2371 of 2021.

[8] Supreme People’s Court, Civil Judgment No. 312 of 2020.

[9] Supreme People’s Court, Civil Judgment No. 1776 of 2021.

[10] Supreme People’s Court, Civil Judgment No. 442 of 2020.