Docket number of the case in the first instance: No. 3675, first instance (初), civil case (民), (2019) Shenzhen Intermediate People’s Court (粤03)
Where the product claim involves the claim of the preparation method in its subject name, according to the corresponding relation between the two, when the people’s court determines the scope of protection of patent rights, the patented preparation method referred to and the structure, composition and performance of the product all play the same limiting role.
Plaintiff: Solvay Special Polymers USA, LLC (Hereinafter, “Solvay”)
Defendant: Jilin Joinature Polymer Co.,Ltd. (Hereinafter, “Jilin Joinature Polymer”)
The plaintiff Solvay, an enterprise mainly engaged in high-tech materials and specialty chemicals, alleges that the defendant, by using the patented method involved and promising to sell series of polyether-ether-ketone (PEEK) products directly obtained according to the patented method involved without its permission, infringed upon its invention patent named “an improved process for preparing poly (aryl ether ketones) with high-purity 4,4’-Difluorobenzophenone”.
The plaintiff requests the court: to order the defendant to immediately stop manufacturing, promising to sell and selling series of PEEK products with types including ZYPEEK_330G (pellet), ZYPEEK_770G (pellet), ZYPEEK_330UPF, ZYPEEK_770PF, ZYPEEK_330P and ZYPEEK_770P; immediately stop using the plaintiff’s patented process involved, promising to sell or selling products directly obtained according to the patented method involved; indemnify the plaintiff for the reasonable cost of RMB 300,000 to stop tort; and to agree that the plaintiff reserves the right to claim damages against the defendant for tort on the basis of evidence obtained in subsequent proceedings and for losses arising from the continuation of infringement acts; and that the defendant shall bear the court fee of this case.
The defendant Jilin Joinature Polymer defended: The technical scheme used by the defendant in the production and preparation of PEEK products didn’t fall within the protection scope of the plaintiff’s patent rights involved. Since the production of PEEK products, the 4,4’-Difluorobenzophenone Jilin Joinature Polymer purchased all have a purity of 99.9% or above and directly been put it into use, and the product inspection report provided by the manufacturer of raw materials indicated that it adopted gas chromatographic analysis; the defendant has relied solely on its intellectual property rights to manufacture PEEK products so far, without any relation to the plaintiff’s patent involved. To sum up, the technical scheme used by the defendant in the production and preparation of PEEK products didn’t fall within the protection scope of the plaintiff’s patent rights involved, and the defendant has relied solely on its intellectual property rights to manufacture and prepare PEEK products so far. The plaintiff’s claim lacks factual and legal basis and shall be rejected.
The first instance of the Intermediate People’s Court of Shenzhen, Guangdong Province ascertained: On October 23, 2009, Solvay Advanced Polymer Co., Ltd. applied to the China National Intellectual Property Administration (CNIPA) for an invention patent named “An Improved Process for Preparing Poly (Aryl Ether Ketones) with High-purity 4,4’-Difluorobenzophenone”, and obtained the patent licensing on August 13, 2014. The patent number is 200980142463.9 and the priority date is October 24, 2008. On January 29, 2019, the patentee was changed from Solvay Advanced Polymer Co., Ltd. to the plaintiff Solvay. On August 6, 2020, CNIPA made a decision on the review of the request for invalidation of No. 45636. In response to the above request for invalidation, the patentee submitted a statement of views on May 7, 2020, and modified the claims for the patent involved by limiting Claim 8 to Claim 1 and deleting Claims 7 and 8.
The plaintiff’s claims for protection in this case include Claims 1-8 and 10-12 modified, of which Claims 1 and 12 are independent claims, while Claims 2-8, 10 and 11 are dependent claims, further defining the characteristics of the process method. As a high-tech enterprise with an annual output of PEEK products of over 1,000 tons, the defendant Jilin Joinature Polymer is the largest PEEK manufacturer in China at present. It mainly prepares PEEK raw materials with the preparation method of nucleophilic high-temperature replacement reaction, and finally prepares high-performance PEEK resin through high-temperature polycondensation reaction after adding self-developed catalyst formula in inert solvent with a high boiling point using hydroquinone and 4,4’-Difluorobenzophenone as the basic raw materials. These basic raw materials 4,4’-Difluorobenzophenone were purchased by the defendant from a party not involved in the case, with the amount of purchases over the years up to 10.21 million tons. Quality reports were provided for each batch of 4,4’-Difluorobenzophenone, indicating that the content (purity) of 4,4’-Difluorobenzophenone purchased from a party not involved in the case all reached ≥99.9%.
During the trial, both parties confirmed that the content of impurities in the alleged infringing technical scheme was detected with the gas chromatographic analysis method. However, the technical characteristics of Claim 1 for the patent involved specified that the content of impurities is determined using “liquid chromatographic analysis”. In comparison with the alleged infringing technical scheme, it’s not only necessary to compare whether the composition of raw materials, impurities and the content of each component are the same or equivalent, but also to compare whether the detection methods used are the same or equivalent. However, gas chromatographic analysis and liquid chromatographic analysis have different technical effects, and can’t be replaced equally. Therefore, the court ruled that the technical scheme involved is neither the same nor equivalent to at least one of the technical characteristics in Claim 1.
Another focus of the technical dispute is about the GC purity of 4,4’-Difluorobenzophenone used in the patented technical scheme involved. First, the defendant used 4,4’-Difluorobenzophenone with a GC purity ≥99. 90％ as its raw materials. However, according to the record in Claim 1, “4,4’ -Difluorobenzophenone with a GC purity <99.9%” should be used. Given that both parties have confirmed that all 4,4’-Difluorobenzophenone purchased by the defendant after 2015 had a GC purity ≥99.90％ upon detection with the GC method, and this GC purity was obtained with the internal standard method boasting higher accuracy than the normalization method; moreover, in light of the invention aspiration of the patent involved that “technicians in this area usually require 4,4’- Difluorobenzophenone with a higher purity as raw materials to improve the crystallization and performance of poly (aryl ether ketone), 4,4’-Difluorobenzophenone of 99.9 % or higher purity is usually chosen as the reaction material. This patent is based on the discovery of the effect of the use of [2,4’-Difluorobenzophenone] and [4-Fluorophenone] in the impurities on polymer crystallinity, thereby easing the limit of total impurity content in 4,4’-Difluorobenzophenone and reducing the manufacturing cost of poly (aryl ether ketone). On this ground, the court ruled that the GC purity of 4,4’-Difluorobenzophenone used in the alleged technical scheme didn’t fall within the concentration range of the patent involved that is specified in Claim 1.
The independent patent claim 12 of the patent involved is a product-by-process claim. Seen from the subject name, this type of claim requests to protect products. However, in terms of the composition of technical scheme, it also adopts the claim by process. Regarding product-by-process claims for product patents, characteristics of the process also have a limiting effect on the protection scope of patent rights. Claim 12 for the patent involved is a product claim obtained by referring to the preparation method specified in Claim 1, and is an independent claim. When determining the scope of protection in Claim 12, the characteristics of Claim 1 referred to shall also be taken into account. As mentioned above, the technical scheme for production of the alleged infringing product didn’t fall within the protection scope of Claim 1 for the patent involved, neither within the protection scope of Claim 12.
Based on the above information, the court ruled that: As the production of PEEK products and the technical scheme used by the defendant Jilin Joinature Polymer are neither the same nor equivalent to the technical characteristics of the claims for the patent involved which the plaintiff Solvay seeks to protect nor fall within the protection scope of Solvay’s claims for the patent involved, the court ruled: Dismiss the claim of the plaintiff Solvay. As neither of the parties appealed after the judgment, the first-instance judgment has gone into effect.
To apply the requirements of the List of the First-batch Authorized Items for the Comprehensive Reform Pilot of the Construction of a Pilot Demonstration Zone of Socialism with Chinese Characteristics in Shenzhen and the Regulations on the Protection of Intellectual Property Rights in the Shenzhen Special Economic Zone on assigning technical investigators, the Intellectual Property Court of Shenzhen has, since the setting of full-time technical investigators this year, adopted the mode of “technical investigator + expert database + patent examination cooperation center of the intellectual property office” in the trial of cases of inventions, trade secrets, etc. with technical complexity, to provide professional technical support, encourage both parties to submit “expert’s opinions”, introduce multiple technology identification mechanisms and quickly solve the focus of technical disputes, which helps address the long trial period due to the long judicial expertise duration.
The plaintiff, in this case, is an American company, while the defendant is a company in Jilin Province with a Peek resin synthesis capacity of more than 1,000 tons, which is facing an initial public offering (IPO) on the science and technology innovation board. Albeit early litigation delays due to the pandemic, the Intellectual Property Court of Shenzhen has relied on multiple technology identification mechanisms to improve the efficiency of intellectual property adjudication, and determined in time that the production and preparation of PEEK products by the defendant didn’t fall within the protection scope of the plaintiff’s patent, guaranteeing the development of the upstream industry of high polymer materials in China and fully demonstrating that the Intellectual Property Court of Shenzhen has become a “preferred place” for intellectual property litigation.
This case was selected as one of the “Top10 Typical Intellectual Property Cases Tried by Shenzhen Courts in 2020”.