SPC Ruled on Use of Specification in Claim Construction

安杰世泽律师事务所

2017-07-04

导读：According to Article 59 of Chinese Patent Law, the specification and drawings may be used in claim c

Author: Steve Song, Eleanor Zou

“

According to Article 59 of Chinese Patent Law, the specification and drawings may be used in claim construction. However, it has long been a question as to whether claims are to be construed based on claim language alone without referring to the specification and drawings, or whether the content of the specification and drawings shall be read to limit or otherwise be used to illustrate the scope of claims. In a recently decided case (No. 2016-XingZai-70), the Supreme People’s Court (SPC) of China held that the content of the specification and drawings is not allowed to be read into the claims such that claims are construed in a narrow sense.

Facts

The case arises from a patent invalidation proceeding, ending up in three rounds of judicial reviews - courts of first and second instances and the SPC for retrial. Claim 1 of the patent in suit recites that an oil feed pump (3) provides pressure oil to a pump wheel (6) and a turbo (7) via a pipeline. Throughout the proceedings, the parties differed heavily on the positional relationship between the oil feed pump and a hydraulic coupler, because Claim 1 never specifies whether the oil feed pump is located inside or outside the hydraulic coupler.

The Beijing High Court held that as it is hard to understand the connection relationship between the components by solely reading the claims, the specification and drawings must be relied on to determine the claimed solution accurately. According to the two drawings of the patent, the oil feed pump is clearly disposed outside the hydraulic coupler system. Additionally, paragraph [0008] of the patent specification states that the hydraulic coupler is changed from a speed adjustment mode to a fixed speed output mode by making local improvements to the interior of the hydraulic coupler, that is, the conventional main oil feed pump into which the hydraulic coupler inputs shaft drive is removed, and in place of the function of the conventional main oil feed pump, a main oil feed pump driven directly by a separate motor is installed outside the hydraulic coupler and it is connected to the outlet duct of the conventional main oil feed pump. It is stressed that the main oil feed pump is specially designed to work with the hydraulic coupler. Relying on these information, the Beijing High Court ruled that persons having ordinary skills in the art would undoubtedly determine that the oil feed pump in Claim 1 is located outside the hydraulic coupler, the feature of which is not disclosed by the prior art reference cited. In this case, the Beijing High Court used the specification to limit the meaning of the claims.

The SPC disagreed. The judges held that Claim 1 may cover two scenarios: the oil feed pump is located outside OR inside the hydraulic coupler. They found that it cannot be determined from the claim language that the oil feed pump must be located outside the hydraulic coupler. Although the oil feed pump is located outside the hydraulic coupler in the specification and drawings, the content in the specification and drawings cannot be construed as a technical feature of the claimed invention. The judges of the SPC pointed out that the Beijing High Court erred in reading the relevant content of the specification and drawings into Claim 1 and thus substantially changed the claims during claim construction. This, according to the SPC, is against the relevant laws and regulations. It seems that the SPC judges believe that the specification is merely illustrative of the scope of claims, instead of setting out additional claim elements.

Implications

This recent case has provoked some controversy and discussion about how to use the specification for construction of a patent claim. Some professionals believe that the ruling of the SPC judges in this case is inconsistent with the mainstream claim construction theory and the precedents of the SPC. Others think that the scope of claims, as determined solely based on the claim language, will become overly broad and unreasonable, against some of the international norms, say the Broadest Reasonable Interpretation (BRI) of the USPTO. The consequences are obvious: a patentee in an infringement case might obtain a scope unduly broader than what he or she is entitled to get; on the other hand, the patentee in the invalidation procedure may face more risks due to broader claim construction.

A particular concern about this SPC ruling is its impact on invalidation. Where the claim language is found to be indefinite and may cover several scenarios, even if one of the scenarios is emphasized as the inventive point of the patent or some of the scenarios are implied as undesired, it is not allowed to construe the claims in a narrow sense to avoid the attack by prior art. Considering that patentees have limited opportunities of claim amendments during the invalidation procedure and there is no patent reissue mechanism in China so far, a patent now faces a higher possibility of being invalidated due to overly broad claim construction. These concerns are something the patent owners have to watch closely and take into consideration when drafting their claims.