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Linda Liu & Partners

Preface

In recent years, along with the increase of infringement lawsuits involved with patents, it has become more important to acquire rights that are capable of being effectively enforced. The present article is written based on the (2007) No.527 First-instance Judgment of Civil Lawsuit of Beijing No. 2 Intermediate People’s Court. The article will be discussed from the viewpoints of the defendant, the patentee, the involved examiner, and the court, and provides a preliminary analysis in terms of several issues, including how the protection scope of a patent right should be determined and how the claims of the invention should be drafted and translated, etc. We really wish to study and discuss it together with the readers.
 
Content

I. Summary of the lawsuit

II. Summary of the patent
1. Technical problem to be solved
2. Summary of the invention and advantageous effects
3. Claim 1

III. Brief introduction of the accused infringing product

IV. Opinion of the defendant

V. Opinion of the patentee

VI. Opinion of the court

VII. Opinion of the examiner of the patent

VIII. Analysis and revelation
1. Why claim 1 of the patent defines the carriage
2. Whether the definition to the carriage in claim 1 limits the protection scope
3. What is actually protected by claim 1 of the patent
4. Why the patentee lost the lawsuit
5. Revelation 1 --- how to draft similar claims
6. Revelation 2 --- how to translate similar claims
 
I. Summary of the lawsuit

The patentee strongly believed that the ink cartridge manufactured and sold by the accused infringer (hereinafter referred to as “the accused infringing product”) infringes his right of an invention patent titled and granted “INK CARTRIDGE”, numbered 20041001693.2 on August 16, 2006 (hereinafter referred to as “the patent”). Therefore, the patentee instituted an infringement lawsuit against the infringer.

One of the technical features of the patent is lacking in the accused infringing product. It is of the patentee’s opinion that this technical feature is not an essential technical feature of the patent, and thereby the accused infringing product falls within the protection scope of the patent. However, not supporting such opinion of the patentee, Beijing No.2 Intermediate People’s Court (hereinafter referred to as “the court”) adjudged it did not constitute an infringement ((2007) No. 527 of the First Instance of Civil Lawsuit by No.2 Intermediate People’s Court).

II. Summary of the patent

1. Technical problem to be solved

The patent relates to an ink cartridge for an ink-jet printer. A semiconductor storage means is provided on the ink cartridge. After the ink cartridge is mounted on a printer, the printer is arranged to read the data stored in the semiconductor storage means and thereby controls the printing operation.
However, when mounting the ink cartridge onto the printer, it sometimes happens to fail to read the data from the semiconductor storage means because of a user’s improper operation, and thus the printing operation cannot be performed.

2. Summary of the invention and advantageous effects

The patent is intended to solve the above problem. As shown in Fig. 1, the semiconductor storage means is disposed on a wall of the ink cartridge that is close to the ink supply ports so that the semiconductor storage means moves along the path determined by the ink supply ports and the ink supply needle on the printer when the ink cartridge is mounted, and thereby the data can be prevented from being lost or disabled to be read because of the user’s improper operation.

3. Claim 1

“1. An ink cartridge mounted on a carriage (3) of an ink-jet printing apparatus, for supplying ink to a print head (5) through ink supply needles (6, 7), the carriage having levers (11, 12) with projections (14, 15) formed thereon; the ink cartridge comprising:

ink containers (41, 51) for containing the ink to be supplied to the print head, the print head having a bottom wall and side walls;

ink supply ports (44, 54) for receiving said ink supply needles when the ink cartridge is mounted on the carriage, which is formed at a position in the bottom wall closer to one side wall than to the opposite side wall;

a circuit board (31), which is mounted on said one side wall;

a plurality of electrical contacts (60) disposed on the circuit board, for establishing electronically connection with contacts (29) of the printing apparatus when the ink cartridge is mounted on the carriage; and

overhang portion (46, 56), which is capable of engaging with the projections (14, 15) on the levers (11, 12) of the ink-jet printing apparatus, and which protrudes from said one side wall, at a position farther away from the bottom wall than from the circuit board, in a direction far away from the said opposite side wall, so as to overhang over the circuit board.”

Please be noted that in claim 1, it is defined “the carriage having levers with projections formed thereon”. According to the description of the patent, the carriage is not a component of the ink cartridge but a component of the printer onto which the ink cartridge is to be mounted, as shown in Fig. 2.


III. Brief introduction of the accused infringing product

The accused infringing product has the same technical features as those defined in paragraphs 2-5 of claim 1 of the patent, as shown in Fig. 3. However, only the ink cartridge itself without the carriage is manufactured and sold by the accused infringer. So it is said that the accused infringing product does not have the technical feature defined in paragraph 1 of claim 1 of the patent, or in other more accurate words, it does not have such a technical feature “the carriage having levers with projections formed thereon” as defined in claim 1 of the patent.

 

IV. Opinion of the defendant

It is of the accused infringer’s opinion that the technical feature in claim 1 of the patent includes “the carriage having levers with projections formed thereon” and the carriage is regarded as an important element of the essential technical features of the patent, since the status of the ink cartridge mounted on the carriage is repeatedly described in claim 1. On the other hand, the accused infringer does not produce the carriage at all, which is a component of a printer, therefore it is believed that the accused infringer’ product does not constitute an infringement.

V. Opinion of the patentee

Against the above opinions of the accused infringer, the patentee argued that, in claim 1 of the patent, the limitation of the carriage is just a description regarding how-to-use of the ink cartridge itself, and it is an interpretation from technical point of view to the technical solution of ink cartridge of claim 1.  In that sense, the description is not a essential technical feature of the patent, and therefore the ink cartridge manufactured and sold by the accused infringer falls within the protection scope of the patent.

VI. Opinion of the court ^[1]

The opinion of the court is that claim 1 of the patent comprises the following six essential technical features:

“1. An ink cartridge mounted on a carriage of an ink-jet printing apparatus, for supplying ink to a print head through ink supply needles, the carriage having levers with projections formed thereon;

2. the ink cartridge comprising: ink containers for containing the ink to be supplied to the print head, the print head having a bottom wall and side walls;

3. ink supply ports for receiving said ink supply needles when the ink cartridge is mounted on the carriage, which is formed at a position in the bottom wall closer to one side wall than to the opposite side wall;

4. a circuit board, which is mounted on said one side wall;

5. a plurality of electrical contacts disposed on the circuit board, for establishing electronically connection with contacts of the printing apparatus when the ink cartridge is mounted on the carriage; and

6. overhang portion, which is capable of engaging with the projections on the levers of the ink-jet printing apparatus, and which protrudes from said one side wall, at a position farther away from the bottom wall than from the circuit board, in a direction far away from the said opposite side wall, so as to overhang over the circuit board.

Although it is an ink cartridge that is sought for protection by claim 1 of the patent, apparently the ink cartridge must be mounted on a special carriage of an ink-jet printing apparatus. Claim 1 not only defines the structure of the ink cartridge, but also clearly defines the structure of the carriage engaging with the ink cartridge, i.e. “the carriage having levers with projections formed thereon”.

The accused infringing product has the same technical features as the above essential technical features 2~6 defined in claim 1 of the patent, but the carriage is neither manufactured nor sold by the accused infringer. Accordingly, it is clear that it does not have essential technical feature 1 of claim 1.
In respect of whether “the carriage having levers with projections formed thereon” in claim 1 of the patent is an essential technical feature, the court deems that, in view of literal interpretation, there is no any other word indicating that the above wording is related only to the “ink cartridge” and should be interpreted as the usage of the ink cartridge. Therefore, it is comprehensively adjudged that such wording is parallel with “the ink cartridge comprising”. In the document of the closest prior art provided in the background of the invention of the specification, it is not disclosed any technical feature related to the carriage. On the other hand, the patentee disclosed many times about how to implement the technical function of the carriage in the present invention. For example, the carriage is directly or indirectly described for 19 times in the drawings. To sum up all the above factors, it is easy for one skilled in the art to know that the technical feature “the carriage” should be an important component which is essential to the patent. If this essential technical feature is entirely omitted in such a manner as the patentee asserted, the protection scope of the patent will thereby be inappropriately enlarged and contrary to the public interests. Therefore, the above opinion of the patentee is not accepted by the court.

As a result, it is adjudged by the court that the accused infringing product does not constitute an infringement because the accused infringing product does not include the carriage and thereby it fails to cover all the technical features of claim 1 of the patent.

VII. Opinion of the examiner of the patent

The examiner deemed that all the features involved into a claim shall be taken into consideration when the scope of the claim is determined. Such principle also is complied with during the procedure of substantive examination. Furthermore, the examiner also emphasized that the feature should not be omitted especially if it contributes to the inventiveness. That is, in case of the present invention, if the ink cartridge itself does not possess inventiveness, and only the combination of the ink cartridge and the printer possesses inventiveness, this feature should not be omitted when the scope of the claim is determined.

However, instead of lacking inventiveness, it is pointed out in the Office Action that the meaning of the word “engages” in “overhang portions, which engages with a part of the ink-jet printing apparatus” is not clear, which makes the protection scope of claim 1 unclear. In order to overcome this defect, the applicant added the “lever” to claim 1. Such amendment limits claim 1 unnecessarily, which is not a preferred amendment.

VIII. Analysis and revelation

1. Why claim 1 of the patent defines the carriage

The dispute of the present case focuses on whether the technical feature “the carriage having levers with projections formed thereon” is an essential technical feature. Why did the patentee write such a technical feature in claim 1? As shown in Table 1, by comparing the publication version with the issued version of the patent, it can be easily found that such a technical feature was not involved in claim 1 at the beginning, but was added into claim 1 when replying to the first Office Action.

Table 1: claim 1 of the publication version and issued version
 

In the first Office Action, the examiner deemed claim 1 of the patent “fails to clearly define the position of the overhang portion”. In order to overcome such defect, the patentee redefined the position of the overhang portion, defining it as “engaging with the projections on the levers of the ink-jet printing apparatus”. There is high possibility that, in order to describe the “projections on the levers”, the patentee added “the carriage having levers with projections formed thereon” to claim 1. However, it became the dispute of the present case.

It should be noted that the novelty and inventiveness of claim 1 of the patent were not denied by the examiner in the first Office Action. If it is thought that “the carriage has levers with projections formed thereon” was added to claim 1 to make it possess novelty and inventiveness, or if it is thought that claim 1 possesses novelty and inventiveness owing to the above technical feature, it seems no sufficient evidences to support it.

2. Whether the definition to the carriage in claim 1 limits the protection scope

In theory, “every technical feature defined in a claim will limit the protection scope of the claim to some extent. … when a technical feature is involved in a claim, it means that the technical solution sought for protection by the claim shall contain this technical feature” ^[2]. Moreover, it is also explicitly pointed out in (2005) No. 1 Civil Verdict of Civil 3 Suing of the Supreme People’s Court that any technical feature in an independent claim is an essential technical feature and shall not be omitted, but shall be considered when comparing the claim with accused product ^[3]. In the present case, the court considers the limitation to the carriage in claim 1 of the patent constitutes a definition to the protection scope, which is certainly consistent with the viewpoint of the Supreme People’s Court.

However, the present case is a little special. Specifically, it is an ink cartridge rather than a printer that is sought for protection by claim 1 of the patent. Contrary to this, “the carriage having levers with projections formed thereon” defines the printer instead of the ink cartridge, because the carriage, levers, and projections are members of the printer, not members of the ink cartridge. Although the ink cartridge can be mounted on the printer, the ink cartridge and the printer are two independent products. So, it seems illogical that the members of a printer are considered to constitute a definition to the protection scope of an ink cartridge. Moreover, the members of a printer which are involved in claim 1 are not intended to make claim 1 possess novelty or inventiveness but only to define the ink cartridge more clearly. In such a case, it seems unfair to the patentee if the member of a printer is still considered to constitute a definition to the protection scope of the ink cartridge.

In compliance with the viewpoint of the Supreme People’s Court that “any technical feature in an independent claim is an essential technical feature and shall not be omitted”, it is considered that the definition to the carriage in claim 1 of the patent constitutes a limitation to the protection scope. On the other hand, it is illogical that the members of a printer constitutes a limitation to the protection scope of an ink cartridge. Does the definition to the carriage in claim 1 constitute a limitation to the protection scope? Before answering this question, another question should be answered, which is: what on earth is sought for protection by claim 1 of the patent?

3. What is sought for protection by claim 1 of the patent?

What is sought for protection by claim 1 of the patent? This question seems to be simple. The patentee’s answer is that it is the ink cartridge to be protected, and the description of the carriage is just the usage of the ink cartridge itself as well as the component members thereof.

Unfortunately, the court does not think so. The court considers that the ink cartridge is the one which is mounted on a special carriage of an ink-jet printing apparatus. Moreover, no other words support that “the carriage having levers with projections formed thereon” is used to define the “ink cartridge” to describe the usage of the ink cartridge. Therefore, as mentioned above, the court neither considers it is only an ink cartridge that is sought for protection by claim 1, nor considers that the description of the carriage is to the usage of the ink cartridge. Instead, the court indicated in the decision that what claim 1 requests to protect is not a single ink cartridge but an ink cartridge that is mounted on a special carriage of an ink-jet printing apparatus. In other words, claim 1 requests to protect a technical solution constituted by the ink cartridge together with the carriage on which the ink cartridge is mounted.

From this point of view, it seems logical that the court deems the definition of the carriage as a limitation to the protection scope. That is because the “protection scope” herein does not include the ink cartridge itself, but include both the ink cartridge and the carriage.

4. Why the patentee lost the lawsuit

The reason why the patentee lost the present lawsuit can be concluded as follows: claim 1 of the patent is to protect an ink cartridge; in order to define the ink cartridge more clearly, the patentee added a technical feature regarding the carriage in claim 1, for describing the usage of the ink cartridge; neither considering claim 1 requests to protect only an ink cartridge, nor considering that the technical feature regarding the carriage is used to describe the usage of the ink cartridge, the court thus concluded the technical feature regarding the cartridge is an essential technical feature of claim 1; the accused infringing product does not have the technical feature regarding the carriage, in consequence it does not constitute an infringement.

Obviously, the court’s construction to claim 1 of the patent differs from the patentee’s. That is the basic reason why the patentee lost the present lawsuit. Let us analyze claim 1 once again to find out why there is such kind of difference?

In the first paragraph of claim 1 of the patent, it is defined “an ink cartridge, mounted on a carriage of an ink-jet printing apparatus, for supplying ink to a print head through ink supply needles, the carriage having levers with projections formed thereon, the ink cartridge comprising …”.

First of all, there is a wording “mounted on a carriage of an ink-jet printing apparatus” after the subject matter “ink cartridge” to be protected.

Such wording leads to the ambiguous definition, which has two meanings: (1) the ink cartridge has already been mounted on the carriage; (2) the ink cartridge is to be mounted onto the carriage. The first meaning can be explained as the patentee requests to protect an ink cartridge that has already been mounted on a carriage, namely the technical solution constituted by the ink cartridge together with the carriage, which is obviously disadvantageous to the patentee. The second meaning can explicitly show that it is the ink cartridge to be protected by the patentee, and “mounted on a carriage of an ink-jet printing apparatus” defines the usage of the ink cartridge, which is advantageous to the patentee.

Unfortunately, the court accepts the first meaning, which directly results in the patentee’ loss in the lawsuit. If the wording of claim 1 of the patent does not have ambiguous meanings, “mounted on a carriage of an ink-jet printing apparatus” can be explained only as a definition to the usage of the ink cartridge, and so the result of the present case may be the contrary.

Secondly, it is not clear of the function of “the carriage having levers with projections formed thereon” in claim 1 of the patent.

The patentee tried to explain “the carriage has levers with projections formed thereon” as a definition to the usage of the ink cartridge, however such meaning is difficult to be seen. Literally, “the carriage having levers with projections formed thereon” is in parallel with the ink cartridge. It is reasonable for the court to consider it as an essential technical feature of claim 1 of the patent, instead of defining the usage of the ink cartridge. It should be noted that, if the wording is capable of explicitly indicating “the carriage having levers with projections formed thereon” is a definition to the usage of the ink cartridge, then the result of the present case may also be the contrary.

5. Revelation 1——how to draft similar claims

So far, the present case has proceeded in the first instance. The opinion of the court of first instance may not be completely correct. If the patentee appeals, there is possibility that the court of second instance disagrees with the lower court and overturn the decision of the present case. However, the most important meaning of the present case for the applicant and/or the patentee is how to draft similar claims, so as to prevent the difference between the explanations of the court and the technical solution sought for protection by the patentee.

For the sake of simplicity, the present case may be concluded as follows: a product A has a feature A’; a product B has a feature B’; the product A is mounted on the product B, A’ is engaged with B’; how to draft a claim regarding the product A, so as to make the product B and its feature B’ not limit the product A?

In this case, the claim was drafted in the following manner:

“a product A mounted on a product B, the product B having a feature B’, the product A having a feature A’.”

Because the wordings “mounted on a product B” and “the product B having a feature B’” fail to explicitly show that they are used to describe the usage of the product A, it is explained by the court as a technical solution different from that to be protected by the patentee.

To prevent the above problem from appearing, it is recommended to draft “mounted on a product B” and “the product B having a feature B’” to a wording explicitly describing the usage of the product A. For example, the claim may be drafted as follows:

“a product A configured to be mounted onto a product B having a feature B’, the product having a feature A’.”

In summary, the claim should be drafted in such a manner that:

(1) the wording “configured to be” is added before “mounted on a product B”, the expression having ambiguous meanings, so as to explicitly indicate the wording “mounted on a product B” is to describe the usage of the product A, instead of that the product A has already been mounted on the product B;

(2) the wording “a product B having a feature B’” is drafted as a property of the product B and is only to define the product B, so as to avoid a parallel relationship between the products A and B.

6. Revelation 2——how to translate similar claims

As described above, it is highly suggested to draft similar claims in such a manner that “a product A configured to be mounted onto a product B having a feature B’, the product having a feature A’.” But if the translation is not appropriate when translated to Chinese, the Chinese claims possibly fail to reflect the original meaning of the claims, which results in the granted patent right cannot be enforced, although the original claim does not have any ambiguous meanings.

Because the Chinese translation of “mounted on a product B” has both meanings of “have already been mounted on a product B” and “to be mounted on a product B”, some attorneys may translate it in such a manner that both meanings are included therein.

However, the present case reveals that such manner is actually unreliable. For a claim having uncertain meaning, it is impossible to predict what explanation will be made by the court. The patent attorney puts himself at a seemingly “reliable” status, while puts the applicant and/or the patentee in danger, and finally puts himself in danger as well. From now on, patent attorneys should review their translation habits or rules. Of course, it can be easily understood that at the beginning of application, the claim is deliberately drafted to have ambiguous meanings so as to cover a wider scope, because it is difficult to predict what infringements will appear in the future. But the applicant and/or the patentee should closely cooperate with patent attorneys at the beginning of application, predict all disadvantageous cases that will appear in the future when enforcing patent rights, so as to reflect the countermeasures against these disadvantageous cases when drafting claims and description. Such countermeasures are quite different from patent attorneys, when translating, choosing ambiguous meaning without confirmation of the applicant and/or patentee.

As to “a product B having a feature B’”, in the case that the property of the product B is too long to make the restriction relationship unclear, some patent attorneys may divide a long sentence into several short sentences. For example, as to such a long sentence as “a product B having a feature B’ that consists of members B1’, B2’ and B3’”, some patent attorneys may translate it to “a product B having a feature B’; the feature B’ consists of members B1’, B2’ and B3’”.

Besides, for the above example of a long sentence, some examiners may also consider it unclear and ask the applicant to amend or explain it. In such cases, some patent attorneys merely explain its meaning to the examiner without amending the long sentence; but others may divide the long sentence into several short sentences so as to make the restriction relationship more clear.

Because of the difference between different languages, it is sometimes necessary to divide a long sentence into several short ones. But as taught by the present case, we should pay more attention when dividing a long sentence into several short sentences. To divide a long sentence should on the basis of completely and accurately understanding the inherent logic of the long sentence, and the divided sentences should not only clearly reflect the restriction relationship, but also completely and accurately reflect the inherent logic of the long sentence.
 
This text, on the basis of introducing the content of the No.527 first-instance judgment of civil lawsuit of Beijing No. 2 Intermediate People’s Court and analyzing the reason why the patentee lost this lawsuit, briefly states the reference value for the writing and translation of the patent application document. It is hoped that this text will be a reference for those involved in the industry of intellectual property, such as the patentees, the patent attorney, and so on. Furthermore, we also would like to discuss with peoples working in this industry about such problems as writing and translating the patent application document.
 
Bibliography:

[1] No.527 of the first instance of civil lawsuit by No.2 intermediate people’s court, 2007
[2] Guide to the Newly Amended Patent Law, written by the law department of SIPO, Intellectual Property Press, 2001, pages 198-199.
[3] (2005) No. 1 Civil Verdict of Civil 3 Suing

（2008）