table of contents
1. The act of infringing the patent right must be an act expressly provided for in the Patent Law
Second, the refined analysis of "preparing but not using".
(1) "Containing a technical solution" is not equivalent to a "exploitation patent" as provided for in the Patent Law
(2) Regarding the "preparation" of "preparation without use"
(3) On the "use" of "preparing but not using"
III. Conclusion
At the end of 2023, the Supreme People's Court made a second-instance judgment in the case of Advanced CodecTechnologies, LLC (hereinafter referred to as "ACT") v. OPPO Guangdong Mobile Communications Co., Ltd. (hereinafter referred to as "OPPO") et al. As soon as the judgment was announced, it was well received by the practical and academic circles, with some scholars commenting that the judgment provides a comprehensive set of trial standards for SEP litigation and establishes the adjudication framework for SEPs in China. However, it is debatable that the second-instance judgment seems to have put forward a more absolute approach to analysis, that is, as long as the product "contains" a certain technical solution, it is "prepared", and even if it is "prepared but not used", it is also a "realization" of the patent, and then it is determined that patent infringement is constituted. This point of view is extremely lethal to the industry and is well worth discussing from the perspective of patent law principles. In the author's opinion, a detailed analysis must be carried out based on the facts of each case, and "preparation without use" does not necessarily constitute patent infringement.
1. The act of infringing the patent right must be an act expressly provided for in the Patent Law
Paragraph 1 of Article 11 of the Patent Law of the People's Republic of China stipulates that: "After a patent right for invention or utility model is granted, except as otherwise provided in this Law, no unit or individual may exploit the patent without the permission of the patentee, that is, it shall not manufacture, use, offer to sell, sell or import its patented product, or use its patented process, or use, offer to sell, sell or import a product directly obtained in accordance with the patented process for the purpose of production or business." ”
Article 65 of the Patent Law stipulates that "exploitation of a patent without the permission of the patentee shall constitute an infringement of its patent right." ”
According to the above provisions, at the objective level, patent infringement must be the act of "exploiting the patent". What is meant by "exploitation of a patent"? For invention patents, there are five types of acts, namely, "manufacturing, using, offering to sell, selling, and importing" as stipulated in the Patent Law.
As we all know, the essence of patent rights is to exchange protection for disclosure, and the right holder discloses the technical solution of its patent, and accordingly, the law grants the right holder the market monopoly benefits obtained based on the technical solution it discloses, and forms the market competitive advantage of the right holder based on this. The law also clearly stipulates that any third party shall not exploit its patent for production and business purposes without the permission of the patentee, that is, the third party shall not use the technical solution disclosed by the patentee without permission to achieve the technical effect of the patent, so that the infringing product that uses the patented technical solution and realizes the patented technical effect can circulate in the market and compete illegally with the right holder. As a result, the market competitive advantage granted by the law that the right holder should have obtained is undermined. It is precisely on this basis that the Patent Law clearly stipulates that the patent must be "implemented" before infringement, because the technical solution and effect of the patent are implemented and used, and the infringer will obtain illegal benefits from the implementation and use of the patent and the technical effect based on the patent, and in this way, the market interests of the patentee granted by the law will be damaged, which is the logic of the Patent Law that patent infringement is premised on the premise of "exploiting" the patent.
Second, the refined analysis of "preparing but not using".
(1) "Containing a technical solution" is not equivalent to a "exploitation patent" as provided for in the Patent Law
The logic of the above-mentioned judgment of the Supreme People's Court of second instance is that as long as the product "contains" the technical solution = exploitation patent = preparation and not use = infringement, in essence, the Supreme Court will "contain" the technical solution = "exploitation" patent, and the author believes that such a determination is subject to discussion.
First of all, according to Article 11 of the Patent Law, "exploitation" of a patent includes five situations, manufacturing, use, sale, offering to sell, and importing, that is, "exploitation" is the superior concept of the five types of infringement.
Second, with regard to the act of "use", one of the five types of infringement, the Guidelines for Determining Patent Infringement of the Beijing Higher People's Court101 clearly stipulate that "the use of an invention or utility model patented product refers to the application of the technical function of the product technical solution recorded in the claims or the realization of the effect", which is also recognized in judicial practice[2]. According to the logic of Article 11 of the Patent Law, the superordinate concept of "use" - "exploitation" of a patent must at least include the application of the patented technical solution and the realization of the patented technical effect, and cannot be equivalent to "containing" the patented technical solution but not applying it, that is, "preparing but not using". Therefore, from the logic of Article 11 of the Patent Law, a exploitation patent is not the same as a patent.
(2) Regarding the "preparation" of "preparation without use"
Returning to the Supreme People's Court ACT v. OPPO case, first of all, did OPPO have any act of "preparation"? Since the author is not the agent of the case, judging from the public judgment, the Supreme People's Court and this court believe that it is partially stated that "OPPO will be able to support the VoLTE function as a component for assembling the alleged infringing mobile phone of the relevant model", from this statement, it can be seen that the alleged technical solution exists in the chip, and if the technical solution is infringing, then the subject of "backup" should be the chip manufacturer, And not OPPO. According to Article 12 of the Interpretation of the Supreme People's Court on Several Issues Concerning the Application of Law in the Trial of Patent Infringement Dispute Cases[3], such an act should be an act of "use". Judging from the word "prepare but not use", "prepare" is not an act of use, otherwise it will be repeated with "use". Therefore, OPPO does not have a "backup". If "preparation" is a manufacturing act, then as shown in the second-instance judgment of the Supreme People's Court, the subject of the manufacturing act should be the chip manufacturer, not OPPO. Therefore, as far as the judgment is concerned, it seems that it is also worth exploring whether OPPO has the act of "preparing" in relation to the alleged technical solution.
(3) On the "use" of "preparing but not using"
The "use" of "preparing but not using" can be roughly divided into two situations: (1) it can actually be used, and (2) it cannot be used in fact.
(1) In fact, it can be used
In the case of Xidian Jietong v. Sony for invention patent infringement, Sony's mobile phone products contain a "WAPI" function module that can be used, and even if the user of the mobile phone does not use the "WAPI" function, it can still be classified as "ready and available". This kind of superficial "preparation but not use" is the conclusion that "the patented technical solution has objectively been implemented in the product, even if the patented technical solution is still in the state of 'preparing but not using' for the end user due to various subjective and objective reasons" as stated in the second-instance judgment, and "it does not prevent the product from being recognized as a product that belongs to the 'exploitation patent'".
If OPPO's mobile phone products do not actually use the VoLTE function, but it provides relevant software, so that any third party can download the relevant software by themselves to use the VoLTE function in the OPPO mobile phone products, in this case, in fact, the VoLTE function is "enabled", that is, the OPPO mobile phone products have the function of supporting VoLTE Then, OPPO as a mobile phone manufacturer may also constitute infringement.
(2) In fact, it cannot be used
According to the contents disclosed in the second-instance judgment, firstly, the technical solution (chip) involved in "preparing but not using" was not manufactured by OPPO, but provided by a third party, and it is clear that OPPO did not "implement" the manufacturing act stipulated in the Patent Law.
Secondly, according to Article 12 of the Interpretation of the Supreme People's Court on Several Issues Concerning the Application of Law in the Trial of Cases Involving Disputes over Patent Infringement, "where a product infringing the patent right of invention or utility model is used as a component to manufacture another product, the people's court shall determine that it is an act of use as provided for in Article 11 of the Patent Law." Then, "OPPO's act of using a chip capable of supporting the VoLTE function as a component for assembling the alleged infringing mobile phone of the relevant model" is, at best, "an act of use under Article 11 of the Patent Law". Therefore, the court needs to find out whether there is evidence on record that "OPPO used a chip capable of supporting the VoLTE function as a component to assemble the alleged infringing mobile phone of the relevant model". "The determination of facts in litigation shall be made on the basis of relevant evidence, without which no facts shall be established"[4]. Since the Chinese operator network has not enabled the corresponding function and does not support the "VoLTE function", and there is evidence that OPPO has taken measures to ensure that the corresponding patented technical function is turned off (not supported) in its mobile phone products, even if the patented technical solution objectively still exists in the mobile phone (in fact, the chip), neither the terminal manufacturer nor the end user can benefit from the corresponding "standby but not use" function. Professor Huang Wushuang made pertinent comments on this: "From the perspective of the terminal manufacturer, if it has taken measures to ensure that the corresponding patented technical function is turned off (not supported) in its mobile phone product, even if the patented technical solution objectively still exists in the mobile phone (in fact, the chip), neither the terminal manufacturer nor the end user can benefit from the corresponding "standby but not use" function 'Unavailable', for the 'unavailable' standard technical solution, the relevant product may be considered to not actually constitute an infringement of the patent corresponding to the standard technical solution. ”[5]
III. Conclusion
In the author's opinion, when judging whether an act constitutes patent infringement, on the one hand, we must accurately understand and grasp the essence of patents, patent infringement and the patent system, and on the other hand, we must always clearly distinguish between the nature of the implementing entity and the carrying act, and the act and the subject must be considered at the same time If some functions of the chip do not fall within the scope of protection of the claims of the standard essential patent, there is no "preparation without use", and there is no "exploitation of the patent". Therefore, although Professor Huang Wushuang tactfully pointed out that the second-instance judgment's view of "preparing but not using" is not "universal", from the perspective of patent law, we must be aware of the necessity of making a detailed analysis of the alleged infringing subject and behavior, and cannot copy the view of the second-instance judgment.
Annotations (scroll up and down to view)
[1] The case numbers are (2022) Zui Gao Fa Min Zhi Zhong Nos. 907, 911, 916, 917, and 918
[2] Guangzhou Intellectual Property Court, (2021) Yue 73 Zhi Min Chu No. 692.
[3] Article 12 of the Interpretation of the Supreme People's Court on Several Issues Concerning the Application of Law in the Trial of Patent Infringement Dispute Cases
[4] If a product infringing upon the patent right of invention or utility model is used as a component to manufacture another product, the people's court shall determine that it is an act of use as provided for in Article 11 of the Patent Law, and the people's court shall determine that the sale of the other product is an act of sale as provided for in Article 11 of the Patent Law.
[5] Where a product infringing on a design patent is used as a component to manufacture another product and sell it, the people's court shall determine that it is a sale as provided for in Article 11 of the Patent Law, except that the product infringing the design patent right only has a technical function in the other product.
[6] In the circumstances provided for in the preceding two paragraphs, where there is a division of labor and cooperation between the accused infringers, the people's court shall find that it is joint infringement.
[7] See the Decision of the Central Committee of the Communist Party of China on Several Major Issues Concerning Comprehensively Advancing the Rule of Law.
[8] Huang Wushuang, "The Innovation and Development of China's Standard Essential Patent Trial Practice: A Review of the Case of HD Company v. OPPO", in Intellectual Property Force, https://mp.weixin.qq.com/s/fqtCb7QPsYfIuvqIncQg-g.
Author: Lin Ye
Edited by Eleven