How to Represent Defendant in
Patent Infringement Court Litigation

(By Ma Hao, CCPIT Patent and Trademark Law Office)

Abstract: This article shows a clear and typical procedure of patent infringement litigation in China through a specific case. More importantly, this article discusses the application of the principle of patent prosecution history estoppel. It would be useful for those who are involved in patent infringement disputes in China as defendants.

Key words: Patent Infringement; Patent Litigation; Patent Prosecution History Estoppel

I. Background

Guangdong Shenzhen Chuangge Technological Industries Co., Ltd. and Taiwanese businessman Ma Xiguang (Plaintiffs) are the owner of a Chinese patent titled "A Computer with replaceable batteries and expansion card slots" and numbered 90204534. On June 1, 1998, the Plaintiffs instituted a lawsuit against Compaq Computer Inc (Defendant) to The Beijing High People's Court for patent infringement over their patent, requesting the Court to order the Defendant to desist from the act of infringement and compensate for economic losses totaling RMB 34,025,899.60 yuan (4.2 millions U.S. dollars), and to pay the legal fees and expenses arising in this case.

Plaintiffs' patent relates to notebook computer, which has two slots in the back of the computer to receive batteries and extension cards.

Notebook computer Armada 1550T produced by Defendant also has two slots, one of the slots can be inserted into either a battery or a floppy disc driver, and the other one can be inserted into a battery.

In their lawsuit, Plaintiffs alleged that the notebook computers produced by Defendant, including the Armada 1550T model computers, have fallen within the protection scope of their patent. The Armada 1550T model computers of Defendant are sold in China in large quantities. The Beijing Representative Office of Defendant is responsible for providing aftersales services in this respect. The act of Defendant to use our patent has constituted infringement, causing huge losses to us.

In response, Defendant argued that the Armada 1550T model computer does not fall within the protection scope of Plaintiffs' patent either literally or under the doctrine of equivalents and requested the Beijing High People's Court to reject the claim of Plaintiffs.

Within the period of response, Defendant filed a request for invalidation with the Patent Reexamination Board of the Chinese Patent Office to invalidate the patent in question according to the Chinese Patent Law. On August 18, 1998, the Beijing High People's Court delivered a ruling to suspend the trial of the case. On April 27, 2000, the Patent Reexamination Board made a Decision No. 2133 maintaining the validity of the patent concerned. On June 1, 2000, The Beijing High People's Court resumed the trial of the case. On October 24, 2000, the Court held a public hearing of the case.


II. Facts found by the Court

After investigation and hearing, The Beijing High People's Court ascertained the following facts:

On April 12, 1990, Ma Xiguang filed a utility model patent application with the Chinese Patent Office. The title of the application is "A Computer with replaceable batteries and expansion card slots." The serial number of the application for this patent is 90204534. On April 24, 1991, the applicant was granted the patent of the utility model, with Ma Xiguang as the patentee. The patented independent claim is "A computer with replaceable batteries and expansion card slots, including a computer main body, more than one battery unit and more than one expansion unit, characterized in that the back of the computer has two slots, the size of which fits the battery units and expansion cards for their insertion; each of the slots having contacts corresponding to the connection points of batteries for electric conduction; besides, a circuit connector connected to the main circuit of a motherboard being provided in the slot, for connecting contacts of a special circuit of a PC board extended from expansion card units".

On July 22, 1997, the name of the patentee was changed from "Patentee Ma Xiguang" to "Patentee Ma Xiguang and co-patentee Shenzhen Chuangge Technological Industries Co., Ltd." On February 13, 1998, Plaintiffs bought an Armada 1550T Compaq notebook computer from Beijing University Founder Electronics Co., Ltd. The purchase registration card is affixed with the official seal of Beijing Representative Office of Compaq. The left-hand side of this computer has a dual carrier and a PC card slot. The former can be used for attaching a floppy disk drive or a battery unit. The latter can be used for holding a 32-digit or 16-digit PC optional card. The right-hand side of the computer has a battery holder, which is capable of holding a rechargeable battery unit.

On the basis of these facts, the Plaintiffs filed a lawsuit with the Beijing High People's Court against Defendant for the alleged infringement upon their patent. The court also found out that in the processing of Compaq's application for invalidation of the patent in question, the Plaintiffs and the Defendant disputed over the understanding of the wordings 'replaceable" and "besides" in Claim 1, and the Patent Reexamination Board, on the basis of the specification and drawings of the patent, determined that in Claim 1, the wording "replaceable" should be understood as "exchangeable" and the wording "besides" should be understood as "in addition." In the invalidation procedure, the prior art evidences produced by Compaq and acknowledged by the Patent Reexamination Board include:

Document 1 is Page 176 of the PC World magazine published in 1988 concerning a portable computer of the type Gridcase 1520. This type of computer has a slot for holding either a battery unit or an expansion card, and a slot provided on case of the computer for holding an external battery unit. The battery unit can not be exchangeably held in these two slots. Document 2 is an advertisement catalogue published in 1989 concerning a type of portable computers called "The Book." "The Book" computer has a slot for holding either a battery unit or an expansion card, and also a slot provided in the bottom of the computer for holding an internal battery unit. The battery unit can be exchangeably held in these two slots. Document 7 is a U.S. patent numbered USP4894792 and published on January 16, 1990 concerning a portable computer that has a slot in the back for holding either a battery unit or an expansion card, a slot in the bottom for attaching an auxiliary expansion unit, and a slot in one side for holding a memory unit.

Ma Xiguang and Chuangge expressed the following views:

The present patent has two slots identical in structure and also an identical size for both the battery unit and the expansion card unit. The above-mentioned prior art is different from the technical solution in Claim 1 because the prior art slots are not exchangeable. While the slots in the present patent are exchangeable. It is this difference that enables the present patent to have the advantage of free replacement and mutual backup. Therefore, the present patent satisfies the inventiveness requirement of the Chinese Patent Law.

The Patent Reexamination Board agreed to the views of Ma Xiguang and Chuangge. Therefore, it ruled that Claim 1 of the present patent possessed inventiveness and upheld its validity.


III. Defendant's argument

1. Analysis for literal infringement

Through comparison of the alleged infringing product with Plaintiffs' patent, it is perceivable that the alleged infringing product of Defendant does not have the three necessary technical features in Claim 1:

(1) replaceable batteries and expansion card slots;

(2) the back of the computer has two slots, the size of which fits the battery units and expansion cards for their insertion;

(3) besides, a circuit connector connected to the main circuit of a motherboard being provided in the slot, for connecting contacts of a special circuit of a PC board extended from expansion card units.

Therefore, the alleged infringing product does not literally infringe the plaintiffs' patent.

As the alleged infringing product does not have all the three indispensable distinguishing technical features in Claim 1 of Plaintiffs' patent, it does not have the indispensable distinguishing technical feature necessary for realizing the object of invention and achieving the desired result as defined by Claim 1 of Plaintiffs' patent. The alleged infringing product is not of the technical solution for expanding the capacity of the computer with two components at the same time and for realizing exchangeability and mutual backup. Because of this reason, the alleged infringing product can not reach the object of Plaintiffs' patent, and can not realize the technical effect of the patent of flexible configuration in accordance with the actual need. From this perspective, the alleged infringing product does not infringe Plaintiffs' patent.

2. Analysis under the doctrine of equivalents

Through comparison of the alleged infringing product with Plaintiff's patent, it is perceivable that the alleged infringing product does not have the three necessary technical features in Claim 1 of Plaintiffs' patent. Besides, these absent necessary technical features are not replaced by other technical features. In other words, the alleged infringing product has never had these necessary technical features, or these necessary technical features have never existed in the alleged infringing product and totally missed.

The reason why these necessary technical features missed in the alleged infringing product is that the alleged infringing product lacks the function of mutual exchangeability of Plaintiffs' patent, and can not realize the technical effect of the patent of flexible configuration in accordance with the actual need. Accordingly, the alleged infringing product does not have the technical features for realizing this function and technical effect.

The alleged infringing product does not infringe the patent under the doctrine of equivalents either.

3. Analysis with respect to patent prosecution history estoppels

In the process of invalidation, in order to differentiate the patent from the prior art and to maintain the validity of the patent, the patentee interpreted the wording "besides" as "in addition," and the wording "replaceable" as "exchangeable." As a result of these interpretations, the technical solution of the patent has been interpreted to have two identical slots so that the batteries and expansion cards can freely exchangeable between the two slots which have the same structure. These interpretations can not be withdrawn.


IV. The court's ruling

The Beijing High People's Court gave the following ruling:

According to Article 59 of the Chinese Patent Law, the extent of protection of the patent right for invention or utility model shall be determined by the terms of the claims. The description and the appended drawings may be used to interpret the claims. This provision should be interpreted as follows: when the expression of a patent claim is ambiguous, the description and drawings attached should be referred to help understand the meaning of the expression of the patent claim. In determining the scope of protection of the patent, due consideration should be given to the statement on limitation of the scope of protection of the patent claim made by the patentee in the process of determining the validity of the patent. Estoppels should be made to such statement of the patentee. In the present case, the technical solution defined by Claim 1 of the patent numbered 90204534 has the following seven technical features:

(1) replaceable batteries and expansion card slots;

(2) a computer main body;

(3) more than one battery unit;

(4) more than one expansion unit;

(5) the back of the computer has two slots, the size of which fits the battery units and expansion cards for their insertion;

(6) each of the slots having contacts corresponding to the connection points of batteries for electric conduction;

(7) besides, a circuit connector connected to the main circuit of a motherboard being provided in the slot, for connecting contacts of a special circuit of a PC board extended from expansion card units.

The two parties were different in interpreting the wording "replaceable" in Point (1) and the wording "besides" in Point (7). They also disputed over whether the slots described in Point (5) were identical in structure. On the basis of the specification and drawings of the patent, the Patent Reexamination Board has already explained in Invalidation Decision No. 2133 that the wording "replaceable" in Point (1) should be understood as "exchangeable" and that the wording "besides" in Point (7) should be understood as "in addition." In their statement of opinions submitted to the Patent Reexamination Board on February 29, 2000, the patentees claim that because of having two structurally identical and exchangeable slots with the same size, Claim 1 of the present patent possesses inventiveness. The Patent Reexamination Board supports their claim, which can not be withdrawn. In view of these facts, the scope of protection of Claim 1 of the present patent should be defined by the following seven technical features:

(1) exchangeable batteries and expansion card slots;

(2) a computer main body;

(3) more than one battery unit;

(4) more than one expansion unit;

(5) the back of the computer has two slots, the size of which fits the battery units and expansion cards for their insertion;

(6) each of the slot having contacts corresponding to the connection points of batteries for electric conduction;

(7) in addition, a circuit connector connected to the main circuit of a motherboard being provided in the slot, for connecting contacts of a special circuit of a PC board extended from expansion card units.

As the alleged infringing product - the Compaq Armada 1550T notebook computer - has a slot in the left-hand side that can hold a floppy disk drive and a battery, and as either of the two slots in Claim 1 can hold a battery or an expansion card, Plaintiffs hold that floppy disk drives belong to the category of expansion cards, and that the slots in the alleged infringing product and the those in Claim 1 are slots with the same properties. However, in the field of computer technology, expansion refers to a way of increasing the compatibility of computers, and of performing tasks that are not part of the basic system through the attachment of hardware. Expansion cards are actually circuit cards that can be inserted into the bus line of computers for increasing additional functions or resources. Expansion cards used for notebook computers are PC cards about the size of credit cards. However, as part of the basic system of computers, floppy disk drives are electronic-mechanical equipment used to read and write floppy disks. Therefore, the Court holds that floppy disk drives are not expansion cards, that the slots in the alleged infringing product and the ones in Claim 1 are of different functions and properties, and that the claim of Plaintiffs is untenable.

In comparison with the 7 features of Claim 1, the alleged infringing product - the Armada 1550T notebook computer - has features 2, 3, 4 and 6, but does not have features 1, 5 and 7. Therefore, the technical solution of Compaq Armada 1550T notebook computer is neither identical to the technical solution of Claim 1, nor an equivalent thereof, and does not fall within the protection scope of the present patent. Defendant does not infringe Plaintiffs' patent. Plaintiffs' claims lack legal and factual grounds, and are therefore untenable.

In accordance with Article 59 (1) of the Chinese Patent Law, The Beijing High People's Court gave a ruling on December 6, 2000 that includes the following points:

The claims of Chuangge and Ma Xiguang are rejected.
The legal cost of RMB 180,139.00 yuan (21,703 U.S. dollars) in this case shall be paid jointly by Chuangge and Ma Xiguang.

As none of the three parties appealed the case within the time limit of appeal, the ruling became effective.