The concept “usage environment feature” is first introduced by the Supreme People’s Court (SPC) on December 11, 2012, in the retrial decision (2012) Min Ti No. 1 pertaining to the patent infringement dispute between Shimano INC. and Ningbo Sunrun Industry & Trade Co., Ltd. The retrial decision defined the “usage environment feature” as “those technical features included in patent Claims for the purpose of describing the backgrounds or conditions under which the patented solution is used”. The SPC further elucidated that “the usage environment features having been written into Claims are the essential features of Claims, functioning as the limitation to the protection scope of Claims.”

The concept was later written into the “Interpretation (II) of the Supreme People's Court on Several Issues Concerning the Application of Law in the Trial of Cases Involving Patent Infringement Disputes”, effective as of April 1, 2016. Article 9 of the Interpretation reads: “Where an alleged infringing technical solution cannot be applied in the usage environment as defined by the usage environment features included in the claims, people’s court shall ascertain that the alleged infringing technical solution does not fall within the scope of patent protection.” In other words, the Judicial Interpretation specifies in what circumstance should the alleged infringing solution be found not to fall within the patented scope, without elaborating on the circumstances where patent infringement could be established.

In Shimano INC. v. Ningbo Sunrun Industry & Trade Co., Ltd., the patent at issue seeks to protect a bicycle rear shifter bracket, yet Claim 1 includes the feature of the rear shifter and the bicycle frame not structurally incorporated in the subject matter of Claim 1 (a bracket). Claim 1 of the patent at issue reads: “A bicycle rear shifter bracket for connecting a rear shifter (100) to a bicycle frame (50), wherein, the rear shifter has a bracket member (5), a support member (4) for supporting a chain guide device (3), and a pair of connecting members (6 & 7) for connecting the support member (4) and the bracket member (5), the bicycle frame has a connecting structure (14a) formed on a shifter mounting extension (14) of a rear fork end (51), the rear shifter bracket includes...”. The feature of the rear shifter and the bicycle frame, which constitutes a use background for the subject matter and connects and works in coordination with the subject matter, are usage environment feature.

In practice, the overly broad nature of the aforesaid definition makes it difficult to arrive at a universally applicable infringement assessment criterion. Therefore, the Beijing High Court clarifies the definition in Article 24 of its “Guidelines for Patent Infringement Assessment” (2017) as “Different from the subject matter, usage environment features refer to technical features in a claim which are used to describe the background or conditions under which the invention or utility model applies and which are in connection or coordination with the technical solution”.

Still the infringement assessment criteria remain ambiguous.

This article tentatively proposes that patent infringement should be found on the premise that the accused infringer has an actual intention to have the accused infringing solution used in the manner as limited in the usage environment feature. Below are the parameters to be considered, when proposed methodology is applied in assessing infringement of patent involving usage environment features.

1.      All elements rule still applies

The SPC has made it clear in the retrial decision and the Judicial Interpretation that the usage environment features have an effect of limiting the patent protection scope. The infringement assessment for the usage environment features should follow the “All Elements Rule” (according to which an allegedly infringing device must be equal to or equivalent with each element of a claim in order to establish infringement), which is applicable to all claim features, as established in Article 7 of the “Interpretation I of the Supreme People's Court on Several Issues Concerning the Application of Law in the Trial of Cases Involving Patent Infringement Disputes” (effective as of January 1, 2010), since the usage environment features, which have been written into Claims, are treated indiscriminately in patent granting and invalidation procedure. For instance, in assessing the novelty or non-obviousness of a claim involving usage environment features, whether the usage environment features have been disclosed or taught by prior arts needs to be taken into consideration.

If the “All Elements Rule” were to apply to usage environment features, it will promote the consistency on Claims interpretation in both patent infringement and patent invalidation procedure.

2.      Actual intention to use matters

If the infringement assessment is merely based on whether the accused infringing solution is technically applicable to the usage environment feature, it will significantly and unreasonably burden the public with exorbitant duty of care. In order to fulfill the obligation, the practising entity is obligated not only to check and clear the infringing risk for its products, but also to ensure that all the technically viable use backgrounds and conditions thereof do not fall within the protection scope of others’ patents.

The infringement risk clearance, also known as FTO analysis, is time-consuming and costly. It would be an arduous task for a manufacturer to effectively control the scenarios where its products are utilised, particularly those products with an extensive range of exploitation, let alone conducting FTO analysis in a myriad of settings.

To alleviate the duty of care, it is proposed to take the actual intention to use into account, namely the accused infringer needs to exhibit an actual intention to use the accused infringing solution in the manner as limited in the usage environment feature. In other words, in absence of actual intention to use, even if the product of an accused infringer is technically applicable to the usage environment feature, the product still falls out of the protection scope of the patent.

3.      Other intention to use not an admissible non-infringement defense

The fact that an accused infringer, apart from exploiting a technical solution in the usage environment of the patent at issue, has other intentions of using the said technical solution, shall not be admitted as a non-infringement defense.

This principle specifically targets at an accused infringing product with multiple usages. If an accused product could be used in several manners, among which one meets the limitation of the usage environment feature, and the accused infringer does intend to have the product used in the same way as the usage environment feature, infringement should be established. That means, a practising entity should fulfill the risk clearance obligation to make sure that none of his intention conflicts with other’s patent.

This principle is installed so that patentee can effectively enforce his right against those products with multiple functions.

Comments

In drafting of Claims, patentees tend to use a smaller unit as the subject matter of claims and include usage environment features, for greater enforceability of the patent right.

If a claim refers to a device or system as the subject matter, chances are that such patent claim is less enforceable in practice. With the increasing division of labor, a single patented subject matter is less likely to be manufactured or offered for sale by one entity. It would lead to the conundrum that under the “All Elements Rule”, no infringement could be found, if a cohort of entities jointly exploit the patented technology. Even if the patentee claims these entities should be held liable for contributory infringement, judicial practice dictates that a contributory infringement finding shall be based on a presence of direct infringement.

In contrast, a smaller unit claim with usage environment features can be easily enforced against a smaller unit such as component. Once the patentee proves that the component is technically applicable to the usage environment feature and the accused infringer has the intention to have the component exploited under the usage environment, infringement could be established.

The remaining issue would be how to infer an accused infringer’s intention. Patentee could produce evidence to demonstrate the context under which the accused infringing product is being used. The user manual of the product, its characteristic and the standard the product is mandated to follow could also be used to establish the intention.

By Hewen Zhao