Technical features that describe the context or conditions under which the invention was used are often found in patent claims. For this technical feature, it was firstly summarized as "environmental characteristics" in the judgment of the Supreme People's Court (2012) Minti Zi No. 1 and defined as "the use environment characteristics are the technical features used in the claim to describe the background or conditions under which the invention is used".
On the basis of this judgment, in 2016, the Supreme People's Court promulgated Article 9 of the Interpretation of the Supreme People's Court on Several Issues Concerning the Application of Law in the Trial of Dispute Cases Concerning Patent Infringement (II):”Where the alleged infringing technical solution cannot apply to the environment defined by the environment characteristics in the claim, the people's court shall hold that the alleged infringing technical solution has not fallen into the protection scope of the patent right”
It can be seen that the above judicial interpretation did not directly define the environmental characteristics but only limited the circumstances that do not constitute environmental characteristics.Therefore, there is still room for discussion on the application of environmental characteristics in the determination of infringement.The author will analyze the application of environmental characteristics in infringement judgment according to following classic cases.
Case 1:Case of Dispute over Invention Patent Infringement between Shimano Corporation and Ningbo Richi Industry and Trade Co., Ltd
What is involved in this case is a "rear shift bracket of a bicycle". In its claim 1, it also defines the rear shift bracket to which the shift bracket is connected and the specific structure of the bicycle frame
The SPC holds that these technical features have a limiting effect on the rear shift bracket, and together with other technical features, they constitute a complete technical scheme and have a limiting effect on claim 1.It makes the limited role of the environmental characteristics on the claim clear.
On this basis, the SPC also points out that, in general, the use of environmental characteristics should be understood as requiring that the protected subject object can be used for the environmental characteristics, but not requiring that the protected object must be used for the environmental characteristics, except where a technician in the field reasonably understands, based on the original records, that the protected object must be used in the environment in which it is used. That is to say, the Supreme Law also indicates the degree to which this feature limits the claim.
Case 2: Appeal Case of Invention Patent Infringement Dispute between Shanghai Ruifeng Biological Technology Co., Ltd. and EMD Millipol Corporation
The original judgment held that the "complementary support structure" described in Claim 16 belonged to the installation location of the module instead of a part of the module or the elements or the interrelationships among elements of a technical solution protected by claim 16, which, it is believed, cannot alone constitute a technical characteristic.
The Beijing High Court corrected the original trial decision, holding that for the characteristics of the use environment in the product claim,where the technical characteristics of the alleged infringing technology scheme have determined that it can be applied to the environment of use as recorded in the claim, the alleged infringing technology scheme shall be deemed to have the characteristics of the environment of use as recorded in the claim, and not to be premised on the fact that the infringer actually uses the environment.Therefore, the above environmental characteristics still have a limiting effect on the technical scheme of the claim.
To sum up, it can be seen that when there is a feature of the matching, connection or use environment of the structure in the claim, in the judgment of infringement, this feature should be regarded as the feature that has a limiting effect on the claim and form a complete technical scheme together with other technical features.
In addition, according to the above cases, it can be seen that when the accused infringing product exists in an environment where it may be used for environmental characteristics, it will fall into the limited scope of the environmental characteristics of the claim. Therefore, the judgment of infringement of environmental characteristics is different from that of general technical characteristics.
In the burden of proof, the plaintiff is not required to prove that the product has actually been used in the environmental characteristics, nor is it required to provide such evidence. It is only necessary that the product be used for that environmental characteristics.
