Guest Post: Contradictory Interpretations of Means-plus-function Claims in China

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This article a guest post by Xiao HAN (Ms.) and Haoyu (Elliot) ZHOU (Mr.).

According to the Chinese Patent Law and practice, means-plus-function claims are interpreted differently at the time of Chinese patent prosecution and Chinese patent litigation.

Basically, while “means-plus-function” claims are interpreted as “any means that could achieve the function” by examiner(s) during patent examination (i.e., a broad claim that is difficult to be granted), such claims are merely interpreted as “embodiments disclosed in the Specification, or equivalent thereof” by the judge(s) during patent litigation (i.e., a relatively narrow claim that makes it difficult to enforce).

Apparently, the China National Intellectual Property Administration (CNIPA) and the Court(s) have not reached consensus on how to interpret “means-plus-function” claims at examination stage and at enforcement stage. However, such a discrepancy indicate that both CNIPA and the Court(s) do not like “means-plus-function” claims and thus treat such claims in a way that is not in favor of the patentee(s).

Therefore, if the applicant wants to pursue a patent protection in China with means-plus-function claims, it would be highly recommended to at least add some structural claim(s) as fallback positions, in order to put the patent application at a better position during both prosecution and litigation.

Case Study

In the case of Nokia Corporation vs. Shanghai Huaqin Telecom Technology Co., Ltd., the key issue was the interpretation of claims relating to computer program, including the determination of functional features.

The patentee Nokia accused Shanghai Huaqin of patent infringement, and Shanghai Huaqin subsequently filed a Request for Invalidation against Nokia’s patent.

The dispute focused on the interpretation of claims 6 and 7 of the patent in question:

 Claim 6. A terminal device configured to determine a message to be transmitted based on input received from a user.

The terminal device is further configured to: check …; and

the terminal device is configured to: in order to transmit the message, select … , characterized in that:

the characteristic information is one of the following information:…

 Claim 7. The terminal device of claim 6, characterized in that: the terminal device is configured to: select the data transmission method to be applied to a message editor for inputting a message; the terminal device is configured to: based on the selection of the data transmission method performed in the message editor, transmit the message to a data transmission application that supports the selected data transmission method; and the terminal device is configured to: transmit the message to the telecommunications network according to the data transmission protocol used by the data transmission application.

In the invalidation proceeding, the Reexamination board of the CNIPA held that, as the terminal device cannot be clearly described by structural features, the use of method features to characterize the product is allowable and claim 6 is definite. The Reexamination board also held that based on the contents of the specification and common general knowledge in the field, those skilled in the art can understand the composition and working mode of the terminal device as recited in claims 6-10. Therefore, the claims are supported by the disclosure in the specification.

In the infringement litigation proceeding, the court of the first instance held that embodiments in claim 7 is disclosed in the specification, but the description involves merely methods, steps or functions without the description of the device. Further, specific implementations on how the device is “configured to” cannot be found in the specification. Therefore, the claim scope of Nokia’s patent cannot be definitely determined in conjunction with the specification. Consequently, the court of first instance held that it was impossible to determine whether Huaqin had implemented Nokia’s patents, and Huaqin did not infringe. The court of the second instance upheld the decision .

Summary

Regarding claim 7, Nokia submitted that a skilled artisan can understand how each technical feature is “configured to” and how its structure is improved. In the invalidation decision, the Reexamination board of the CNIPA has confirmed that the claims are clear, that the claims are fully disclosed in the specification, and that the claims are supported by the specification.

However, the claims which remained valid after the invalidity challenge were not supported in the infringement litigation. Specifically, the court held that the device claim is unclear because the specific implementation of the device was not specifically disclosed in the specification. In other words, the judicial decision in the infringement litigation essentially ruled that the patent was not enforceable, which does not have much difference in effect from being invalid.

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