Typical infringement behaviors related to method patents

According to my country’s Patent Law, methods are the subject matter of patent protection. Against the backdrop of rapid development in digitalization, intelligentization, and informatization, numerous innovative entities, especially companies in new technologies such as the internet and big data, have applied for a large number of method patents. Method patents not only protect the method itself but also have the effect of extended protection. Therefore, infringement of method patents is more complex than that of product patents and design patents. Analyzing typical infringement behaviors related to method patents is of great significance for the protection of method patents.

I. Directly Using the Patented Method in Manufacturing

According to Article 11 of the Patent Law, acts of implementing a patent include “using its patented method and using, offering for sale, selling, or importing products directly obtained by the patented method.” Among these acts, directly using the patented method in manufacturing is the simplest, most traditional, and most common type of infringement.

For example, in the “Gold Wire Enamel Carved Porcelain” case, claim 1 of the patent in question claimed protection for a method of making carved porcelain, which is carried out sequentially in eight steps, including material selection, painting, tracing, and carving. Claim 1 specifically defined each step. The patentee notarized the purchase of porcelain made by the accused infringer and asked a notary to photograph the production site of the accused infringer. After obtaining preliminary evidence, the patentee filed for evidence preservation with the court.

Although the evidence preservation did not obtain the porcelain-making process of the accused infringer, the court of first instance confirmed that the porcelain-making process of the accused infringer included the eight steps in claim 1 of the patent in question, as well as the technical features of some steps, based on the products notarized by the patentee, the photographs taken, and the video taken at the evidence preservation site. Regarding the distinguishing technical features in some steps claimed by the accused infringer, the court of first instance determined that they constituted equivalence. Ultimately, the court of first instance ruled that the infringement was established, and the court of second instance upheld the judgment of the first instance [1].

II. Products Directly Obtained by Patent Method

According to the aforementioned provisions of the Patent Law, the protection of invention patents for methods extends to products directly obtained by the method. For example, in the “stained glass” case, the patent in question claimed protection for a process for making stained glass, and its claim 1 included specific technical features of five process steps. In the first instance, based on the plaintiff’s application for evidence preservation, the court preserved nine stained glass products at the defendant’s location. The defendant, Junhao Company, argued that its stained glass manufacturing process was also patented and therefore did not constitute infringement. Both parties agreed to use the disclosures of their respective patents as the basis for comparing technical features. In the comparison of technical features, the court of first instance held that the manufacturing process of the accused product was equivalent to the patent in question. Regarding Junhao Company’s claim of using its own patented technology, the court of first instance held that, compared to the patent in question, Junhao Company’s patent application was later, and therefore, it was a dependent patent to the plaintiff Qijia Company’s prior patented method. Since implementing this dependent patent covered the scope of Qijia Company’s patent rights, it constituted infringement. The court of first instance ordered the defendant, Junhao Company, to cease production and sales of products manufactured using the patented method and to compensate for economic losses of 150,000 yuan. The court of second instance confirmed the court of first instance’s claim [2]. For example, in the case of “automotive interior panels”, the patent in question claims protection for the manufacturing method of automotive air duct panels and inner roof and roof panels, and its claim 1 includes specific technical features of 7 process steps. Based on the application of the plaintiff Huanghai Company, the court of first instance conducted a second evidence preservation on the manufacturing method used by the defendant Jinguang Company and conducted an on-site inspection. Combining the evidence preservation, on-site inspection and the defendant Jinguang Company’s statement in court, the court of first instance determined the manufacturing method of the accused product and found that the infringement was established. The court of first instance ruled that the defendant Jinguang Company should stop using the patented method, stop selling the products directly obtained by the patented method, and compensate for economic losses of 900,000 yuan. The court of second instance upheld the judgment of the first instance [3].

III. Solidifying the patented method in the product

There is another situation where the accused infringer does not directly implement the method claimed by the patent in question, and the accused product is not directly obtained by using the method claimed by the patent in question. However, as long as the end customer uses the accused product, the accused product can automatically implement the method of the patent in question when the accused product is running normally. In some early cases, the accused infringer often argued that they did not implement the patented method, and the accused product was not directly obtained through the patented method; therefore, they had not committed infringement. In such cases, the patentee often argued that the accused infringer inevitably implemented the patented method directly during equipment installation, debugging, and trial operation.

Regarding this situation, the Supreme People’s Court has clarified in case law that even if the accused infringer did not directly implement the patented method, if they manufactured, sold, or offered for sale products that directly implemented the patented method for production and business purposes, then the accused infringer plays an irreplaceable and substantial role in the process of end users reproducing the patented method using the product. In this case, the accused infringer’s actions are also considered direct infringement, and the product that embodies the patented method is also an infringing product.

For example, in the “High Output Driver” case, claim 1 of the patent in question claimed protection for a method of operating a multiphase power supply. The accused product is a frequency converter. After comparing the technical features, the court of first instance held that the frequency converter fully covered the corresponding technical features of the patent claims by implementing the patent method, and the substantive content of the patent method was completely solidified in the accused infringing frequency converter. When the situation specified in the claims occurs, the accused frequency converter can naturally reproduce the process of the patent method. Therefore, the act of manufacturing the accused infringing device is an act of implementing the patent method, which infringes on the rights of the patentee. Since the patent right had expired at the time of the judgment, the court of first instance did not order the cessation of infringement, but ordered the defendant to compensate for economic losses and reasonable expenses of RMB 6.2 million. The court of second instance upheld the judgment of the first instance [4].

IV. Method Patents Implemented by Multiple Subjects

The method patents implemented by multiple subjects mainly occur in the field of network communication. By combining Internet hardware and software with related technologies, the patent-protected technical solution is solidified in the product, and multiple subjects implement different steps respectively. All steps constitute a complete patent-protected method. In judicial practice, the Supreme People’s Court has clarified the infringement determination standards for method patents in the field of network communication. In the “router” case, the Supreme People’s Court held that the patented technology in question belonged to the field of network communication, which is characterized by interconnection, information sharing, multi-party collaboration, and continuous innovation. This determined that the vast majority of inventions in this field were method patents, and they could only be written as method patents that required the participation of multiple entities to implement, or this writing style could better express the substantive technical content of the invention. However, in actual application, these method patents are often installed in a hardware device in the form of software, and the software is automatically run in the background when the end user uses the terminal device. On the surface, the end user is the implementer of the patented method, but in fact, the patented method has already been solidified in the manufacturing process of the accused infringing product. The patented method process reproduced by the end user when using the terminal device is merely a mechanical reenactment of the patented method previously solidified in the accused infringing product [5]. This case is a guiding case issued by the Supreme People’s Court. In the “Multimedia Playback System” case, the Supreme People’s Court held that, in cases where method claims and device claims correspond to each other in the field of network communication, different steps of the method claim are implemented separately by different components in the device claim, and these components are controlled by different entities. In such cases, the infringement determination of a method patent should fully recognize the essence of the method patent. By implementing some steps through components under its own control, and being able to control the operation of modules in other components to achieve their functions and reproduce other steps, it results in the complete reproduction of all steps in the method claim, achieving the effect of all steps recorded in the method claim. Therefore, it should be considered “complete coverage,” constituting the use of a patented method. During the editing and publishing of advertising content on the Yunfa Multimedia Information Publishing Platform, Meigao Company could control the platform to generate data or process the edited data according to its instructions and publish it to specific advertising terminals. Therefore, although the Yunfa Multimedia Information Publishing Platform is operated by Yunguan Company, the steps taken by Meigao Company to process data according to Meigao Company’s operating instructions during its use of the platform should be attributed to Meigao Company, and Meigao Company should bear the responsibility. Therefore, Meigao Company constitutes unauthorized use of a patented method. Furthermore, regarding the use of a patented method, the consideration for the product required to implement the method is not equivalent to the consideration for using the method itself, and the legitimate source of the product required to implement the method does not constitute grounds for a legitimate source defense in a method patent. Repeatedly reproducing the patented method and continuously causing harm to the patentee, especially in the case of using a product manufacturing method, where the process of using the patented method resembles the manufacturing of the patented product, does not conform to the original intent of the legitimate source defense system in patent law. Therefore, the legitimate source defense generally cannot be applied to the use of a patented method, and the accused infringer, Meigao Company, bears liability for infringement of the method claims.

In the above two cases, both were determined to be unauthorized use of the patented method in the infringement determination of multi-party implementation of method patents. This reflects the substantive protection of patented methods and will have a profound impact on intellectual property protection and innovation incentives in high-tech industries represented by internet communication technology.

V. Conclusion

In my country, invention patents can protect both products and methods. For new technology fields such as computers, the internet, and communications, methods are the preferred subject matter for patent protection. Against this backdrop, sorting out typical infringement behaviors related to method patents and clarifying the boundaries of method patent protection is of great theoretical and practical significance.

References:

[1] Jiangxi Provincial Higher People’s Court, (2018) Gan Min Zhong No. 33 Civil Judgment.

[2] Guangdong Provincial Higher People’s Court, (2011) Yue Gao Fa Min San Zhong Zi No. 133 Civil Judgment.

[3] Liaoning Provincial Higher People’s Court, (2012) Liao Min San Zhong Zi No. 688 Civil Judgment.

[4] Supreme People’s Court, (2020) Zui Gao Fa Zhi Min Zhong No. 1593 Civil Judgment.

[5] Supreme People’s Court, (2019) Zui Gao Fa Zhi Min Zhong No. 147 Civil Judgment.

[6] Supreme People’s Court, (2019) Zui Gao Fa Zhi Min Zhong No. 421 Civil Judgment.