Multifunction Programmable Boxing Training Device

Qiang ZHANG v. Yantai Qixia Dayi Industry and Trade Co.,Ltd. – Division of Technical Features in Patent Infringement (Civil Ruling (2012) Min Shen Zi No. 137 by the Supreme People’s Court on August 6, 2012)

When determining whether an infringement is established by employing the equivalent doctrine, it is necessary to compare technical features of an involved patent with those of an alleged infringing product, so division of technical features will influence determination of an equivalent feature. In this case, the Supreme People’s Court suggests that for division of technical features of a claim, a technical unit that is able to implement a relatively independent technical function generally should be considered as one technical feature, and it should not designate multiple technical units that implement different technical functions as one technical feature.

The patentee, Qiang ZHANG, has a utility model patent No. ZL200420073525.X with title of “multifunction programmable boxing training device”, in which claim 1 is as follows:

“A multifunction programmable boxing training device for boxing training, comprising five target drones, dynamometers, an indicator, a displayer, a speech processing chip, a music chip, an audio playback device, a foldable keyboard, a remote control, a remote control receiver, one or more stepper motors and corresponding drives, and the circuits being controlled by a microprocessor, characterized in that: the dynamometers are installed inside the five target drones respectively, respective signal output terminal of which is connected with an analog signal input pin of the microprocessor through a gating circuit and a preamplifier circuit, the function of the gating circuit can also be replaced by an internal program module within the microprocessor, a set of indicators are arranged around each of the target drones, and each set is connected with a pulse output pin of the microprocessor via a driver, the microprocessor can only strobe one set of indicators at a time which is consistent with a target drone selected by the gating circuit, the gating circuit has three address lines connected with the output control pin of the microprocessor, one of which is selected by the dynamometer inside the five target drones during a certain period according to a gating address instruction of the microprocessor.” 

In the claim 1, it is recited that “the training device comprises five target drones.” In the specification, it is described that “on the panel, there are five target sites arranged in the order of head, chest, abdomen, each target site has a target drone,” as shown below:

The corresponding technical feature of the alleged infringing product includes nine target drones. According to its product specification, the nine target drones are “left head hitting site, right head hitting site, left arm hitting site, right arm hitting site, left rib hitting site, right rib hitting site, abdomen hitting site, left hip hitting site and the right hip hitting site”.

After hearing, both of the first and second instance courts consider that the technical feature of “the training device contains five target drones” of claim 1 of the involved patent is different from the corresponding technical feature of “nine target drones” of the alleged infringing product. The patentee should know that the number of target drones is variable at the date when filing the application, but still defines the number to be five. The assertion that the technical feature of “nine target drones” of the alleged infringing product is equivalent to the technical feature of “five target drones” of claim 1 of the involved patent cannot be supported.

The patentee filed a request to the Supreme People’s Court for retrial with an assertion that the “five target drones” of the involved patent is equivalent to the “nine target drones” of the alleged infringing product.

After hearing, the Supreme People’s Court considers that the number of target drones of the involved patent differs from that of the alleged infringing product, but the five target drones of the involved patent cannot be deemed as one single technical feature because each of the five target drones functions in a separate way when being hit, but should be split into a head target drone, abdomen target drones, and waist target drones for consideration. The alleged infringing product contains head and abdomen target drones and the hip target drones thereof are equivalent to the waist target drones of the involved patent, and thus the technical solution of the alleged infringing product contains identical or equivalent technical features to the five target drones of the involved patent.

Remarks

In this case, regarding determination of an equivalent feature, both of the first and second instance courts consider the “five target drones” in claim 1 of the involved patent as one single technical feature and compare it with the “nine target drones” of the alleged infringing product, while the Supreme People’s Court divides the “five target drones” in claim 1 of the involved patent into three separate technical features of “a head target drone, abdomen target drones, and waist target drones” based on different functions independently implemented by these target drones and compares the three separate technical features with the corresponding technical features of the alleged infringing product.

When determining whether an infringement is established by employing the equivalent doctrine, it is necessary to compare technical features of an involved patent with those of an alleged infringing product, so division of technical features will influence determination of an equivalent feature. If the division is too rough, the application of the equivalent doctrine would be unreasonably expanded, while if the division is too specific, the application of the equivalent doctrine would be unreasonably restricted.

The Supreme People’s Court, in this case, proposes a method of dividing technical features. That is, for division of technical features of a claim, a technical unit that is able to implement a relatively independent technical function generally should be considered as one technical feature, and multiple technical units that implement different technical functions should not be considered as one technical feature. According toArticle 17, Paragraph 2 of Certain Provisions of the Supreme People’s Court on Issues Concerning the Application of Law in the Hearing of Patent Dispute Cases,^[1] one of the most important steps to determine whether a technical feature of an alleged infringing product is equivalent to that of an involved patent is to determine whether the means, function and effect of them are basically identical. Among them, the means and the effect are closely related to the function. Specifically, the effect is a reflection of a result of the function and the means is a prerequisite for the function.

As can be seen, technical function is an important factor that should be considered in division of technical features. In determination of equivalent features, it is not appropriate to combine and consider multiple technical features implementing different functions as a whole, or to split multiple technical features implementing a same function into individuals. In addition, Guidelines for Patent Infringement Determination^[2] issued by the Beijing High People’s Court also make similar provisions^[3].

However, it should be noted that claim 1 of the involved patent only defines “five target drones,” but the Supreme People’s Court, based on the description of “on the panel, there are five target sites arranged in the order of head, chest, abdomen, each target site has a target drone” in the specification, divides the “five target drones” in claim 1 into a head target drone, chest target drones, and abdomen target drones. It is controversial whether such division belongs to a clarification of the meaning of the claim or brings a substantial change in content of the claim.

Some people think that interpretation of a claim by referring to the specification and appended drawings should be made with respect to the defect of unclear protection scope caused by any unclearness in the claim.^[4] In this case, the feature of “five target drones” defined in claim 1 is clear itself, thus it should not be interpreted by referring to the content described in the specification. Further, replacing the “five target drones” in claim 1 with “head target drone, chest target drone, and abdomen target drone” according to the content described in the specification substantially changes the protection scope of the claim, which increases the unpredictability of protection scope of the claim and departs from the purpose of publication of claims.

But the judge handling the case clearly does not agree on this viewpoint. The judge reasoned that in this case, the specification describes a specific location of the five target drones, and a person skilled in the art, upon reading the specification, will naturally understand the “five target drones” defined in claim 1 as “a head target drone, chest target drones, and abdomen target drones,” and such understanding is to clarify the meaning of the claim.

In summary, this case gives a useful guidance regarding how to divide technical features in application of the equivalent doctrine. As for determining whether interpretation of the claim in this case is reasonable, it involves a balance between benefits of the patentee and the public. This requires needs to consideration of various factors and requires comprehensive evaluation. For this case, the author thinks that a claim of a patent application should have a relatively stable protection scope, should not be interpreted freely with reference to the contents described in the specification, and especially for a clear claim, it should not substantively change the protection scope of the claim by incorporating features of embodiments described in the specification.

Written by Lijian DU and Min SANG

Author Profile: Ms. Du is a patent attorney in our Japanese & Korean division.

Email: lijian.du@beijingeastip.com

Ms. Sang is a patent attorney in our electrical division.

Email: min.sang@beijingeastip.com

[1] Equivalent feature refers to the feature that is able to implement basically same function with basically same means and attain basically same effect as compared with the descried technical feature and could be conceived by a person skilled in the art without inventive efforts.

[2] Guidelines for Patent Infringement Determination can be used for reference by all levels of courts in Beijing to handle patent infringement cases.

[3] Rule 5: a technical feature refers to a smallest technical unit or unit combination in technical solution defined in a claim that is able to implement relatively independent technical functions and can attain relatively independent technical effects.

[4] For example, Guidelines for Patent Infringement Determination issued by Beijing High People’s Court stipulates in Rule 11 that interpretation of a claim includes three forms, clarification, supplementation and amendments in particular circumstances, that is, when a technical content expressed by a technical feature in a claim is unclear, the meaning of the technical feature is clarified; and when there is defect in understanding of a technical feature of a claim, the technical feature is supplemented; and when there exists conflict between technical features of claims, the meaning of the technical feature is modified.