SEB wins patent infringement appeal involving rotating brush for hairstyling before the Supreme Court
1st instance: (2018) Zhe 02 Min Chu No. 752
2nd instance: (2019) Zui Gao Fa Zhi Min Zhong No. 47 (Final)
Keywords
Clarity – functional limitation/feature
Synopsis
The Intellectual Property Tribunal of the Supreme People’s Court (“the IP Tribunal”) rendered a second instance and final civil judgment on August 15th, 2019, affirming the Ningbo Intermediate Court’s 1st instance judgment that Ningbo Quanli Electric Appliance Co., Ltd (“Quanli”) infringed an invention patent owned by SEB S.A. (“SEB”) on a rotating brush for hairstyling (“subject patent”).
In October of 2015, SEB found at the 118th Canton Fair that a rotating brush for hairstyling exhibited by Quanli infringed the subject patent.
After collecting and notarising evidence, SEB filed in April of 2018 a patent infringement lawsuit in the Ningbo Intermediate Court, accusing that Quanli had manufactured, sold, and offered to sell the accused infringing product and thereby infringed the subject patent.
On April 8th, 2019, the 1st instance court rendered a civil judgment, finding infringement and ordering cessation, damages of RMB300,000 and destruction of the molds for manufacturing the infringing product.
Quanli appealed to the IP Tribunal, arguing that, (1) there is no way of ascertaining the exact spatial scope of the wording "close" in the feature “the rod has a cylindrical portion having a first diameter close to that of the handle” of claim 1, thus the scope of protection of the claim is unclear, which makes it impossible to conduct infringement comparison; even if a skilled person in the art could determine the specific range of "close", the accused infringing product does not embody this feature; (2) the term “coupling element" in claim 1 of the subject patent is a functional limitation, and its protection scope should be limited to the technical features and equivalents that are indispensable for realizing the function in the embodiments disclosed in the specification of the subject patent. Compared to the indispensable features, the corresponding features of the accused product are neither identical features nor equivalents; therefore, the accused product does not fall within the scope of protection of claim 1. Quanli also cited several precedent judgments of the SPC to support its arguments, inter alia, the SPC’s Guiding Case No. 55.
In rebutting Quanli’s argument (1), SEB dug internal evidence including records and drawings in the specification of the subject patent, citing applicable judicial interpretation affirming superiority of internal evidence over external evidence in claim construction, and argued that the wording “close” in claim 1 is clear in the context of internal evidence.
Regarding Quanli’s argument (2), SEB responded that, ①the whole technical feature including the term is not merely defined by function or effect, and a person skilled in the art could directly and clearly determine the embodiments for realizing the function of "coupling" only by reading the claim; ②even if the coupling element was deemed a functional limitation, the notch engagement in the specific embodiment of the subject patent is not an indispensable technical feature to achieve this function. The coupling way of the accused product, socketing with a hexagonal prism, still falls within the scope of the claim.
SEB also submitted a SPC precedent judgment, (2018) Zui Gao Fa Min Shen No. 1018 to explain the exception to the functional limitation as provided in the relevant judicial interpretations.
Judge's Comment
1. The interpretation of claims shall be based on the usual understanding by those skilled in the art upon reading the claims and the specification. When the description does not specifically describe a technical term, the interpretation of the claims shall not go beyond the reasonable expectations of those skilled in the art. In this case, claim 1 of the subject patent describes that the rod has a cylindrical portion with a first diameter close to that of the handle, but it does not specifically limit the exact value (the difference between the two diameters). However, according to the abovementioned description, combined with the specification and drawings of the subject patent, those skilled in the art could clearly understand the relationship between the diameter of the cylindrical portion and that of the handle. Therefore, the protection scope of claim 1 of the patent at issue is clear.
2. Claim 1 recites that the coupling element is mounted on the output shaft of the second motor powering the hairstyling accessory. A person skilled in the art could clearly determine the embodiment of the coupling element by reading claim 1, therefore the term "coupling element" is not a functional feature. The claim does not limit the specific approach as to how the coupling element and the hairstyling accessory interconnects. The notch engagement is only a specific embodiment of the patent at issue. The accused infringing product adopts a hexagonal prism connection rather than the notch-engagement connection, but it still falls within the protection scope of the subject patent.
