Protecting IP in China

The Stanford Program in Law, Science & Technology, Orrick, Herrington & Sutcliffe LLP, and the Stanford Law Society of Silicon Valley present: Protecting IP in China (August 15, 2007)

中国知识产权法官代表团在美国斯坦福大学交流中国最高法院近年来审判的部分重要案例

Some highlights:

1. Ningbo Oriental Movement Factory vs. Jiangyin Jinling Hardware Co., Ltd. for retrial for patent infringement - the first case of the SPC to which the doctrine of equivalent was applied.

“When determining the protection scope of patent right, neither the protection scope of patent right should be limited to the rigid literary meaning of the Claims, nor the Claims be taken as just a technical guideline which can be explained freely. The protection scope of patent right for invention and utility model contains two aspects: (1) the scope determined by the indispensable technical features recorded in the Claims; and (2) the scope determined by the features equivalent to the indispensable technical features, i.e., comparing to the corresponding technical feature in the Claims, and by the basically same method, a technical feature can realize the basically same function and produce basically same effect, of which an ordinary person skilled in the art can take no creative effort to conceive. ”

2. Dalian Xin Yi Building Materials Co., Ltd. vs. Dalian Renda New Materials of Wall Factory for retrial for patent infringement - the SPC clearly denied applying the so-called “principle of superfluity establishing”.

“All the technical features that the patentee wrote in the Independent Claims are the indispensable technical features, which can not be ignored; therefore, these technical features should be brought into the comparison of technical features. This Court does not agree to use the so-called 'principle of superfluity establishing' recklessly. …… The public will be at a loss because of the unpredictable change of the contents of the patent. All technical features recorded in the Claims should be considered roundly and adequately, which could guarantee the stability of the legal rights, and guarantee the normal operation and the realization of the value of the patent system.”

3. Founder Group, etc. vs. Gao Shu Tianli Technology Co., Ltd., Gao Shu Technology Co., Ltd. for retrial for infringement of copyright of computer software - the SPC clarified issues for the legality of entrapped evidence in this case.

“In civil litigation, illegal activities have been explicitly defined by laws. However, despite of these explicit illegal activities and in the light of the universality of the social relationship and the complexity of the relationship of interests, laws do not exhaustively list all the activities that might be illegal. Laws authorize the judges the jurisdictional power to determine what kind of activities are illegal according to the balance of interests and the orientation of value. Therefore, with respect to those activities from which laws do not explicitly prevent, whether they are illegal or not could mainly be determined by their substantial justification.

For the current case, through the way of notarization, Founder has not only obtained evidence showing the whole process that Gao Shu installed the pirate copy of Founder’s computer software, but also has obtained evidence showing that Gao Shu sold pirate software to its other clients, and evidence or evidence clue on Gao Shu’s infringing activities of the same kind. The intention of Founder to obtain the above evidence is of justification. And these activities did not harm the public interests or other’s legal rights and interests as well.

In addition, the infringing activities against copyright of computer software feature high degree of concealment. It is also difficult to obtain related evidence. The entrapped evidence approach in this case is thus helpful to resolve the above problems. It also has effects on deterring and restricting such infringing activities, which meets the spirit of laws to legally protect the intellectual property.”