On April 12, 2017, Shanghai IP court published 20 Typical Cases in 2016. The patent infringement case “Suzhou Hailu Biotech Co., Ltd VS Jiangxi JinHuan Medical Instrument Co., Ltd, etc.” handled by Uni-intel was selected as one of the typical cases.

Background of Case

Suzhou Hailu Biotech Co., Ltd owns the patent right on a utility model “A Modified Multi-functional Specimen Box”. Hailu Biotech found that the faeces and eggs collection specimen box produced, sold or used by JinHuan Medical Instrument Co., Ltd fell into the protection scope of its patent, i.e., the technical feature of the specimen box is identical to that of claim 8 of the patent. Therefore, Suzhou Hailu requested the court to make a judgment that JinHuan shall stop infringing patent right of Suzhou Hailu, destroy all infringement products and relative equipment, molds and brochures, compensate for economic loss of Suzhou Hailu and pay legal fees.

Results of Judgment

According to Shanghai IP court, the key dispute of the present case is whether the alleged infringement product falls into the protection scope of the involved patent. As compared with claim 8, the alleged infringement product has distinguishing technical features as follows:

1. As for analysis on technical feature of “an insulation plate is connected below the screen strainer” of the involved patent, according to Fig. 3 of the patent, the screen strainer is above the cavity and the insulation plate is below the cavity, which is same with the conclusion of specific operation procedure based on specification of the patent. Regarding the technical effect of providing an insulation plate under the screen strainer, it is clearly recorded in the specification that tangible components such as cell and egg of worms can be uniformly distributed in the suction cavity and the liquid adding cavity by adding liquid twice, so that density of suction cavity can be kept from being too low. However, as for the alleged infringement product, its insulation plate penetrates through the cavity and is attached with a screen strainer below the middle portion of the insulation plate. Therefore, location relationship between the insulation plate and the screen strainer is obviously not an upper-lower relationship mentioned in the involved patent. Although the insulation plate of the alleged infringement product is not hollowed at a position close to the bottom, the insulation plate cannot play a role in adding liquid twice as described in the specification because the insulation plate is too close to the bottom of the box. Therefore, in terms of the arrangement of the screen strainer and the insulation plate, both technical solution and technical effect of the alleged infringement product are different from those of the patent.

2．According to the description of “the box is divided into suction cavity and liquid adding cavity by the screen strainer and the insulation plate”, both cavities of the box have differences and limitations on use, namely, suction and liquid adding shall work separately in two cavities. The technical feature is same with the conclusion of specification and drawings. Furthermore, the technical solution, i.e., adding liquid twice by “an insulation plate connected below the screen strainer”, shall be on the premise that suction and liquid adding work separately in two cavities. If suction and liquid adding were conducted in one cavity, it would become meaningless to arrange an insulation plate below the screen strainer. As for the determination of use of two cavities of the alleged infringement product, as the alleged infringement product is a supporting supply of faeces analysis machine produced by JinHuan, the use of two cavities can be determined by using the alleged infringement product and faeces analysis machine together. By testing on site, although the alleged infringement product is also divided into two cavities, suction and liquid adding are conducted in a single cavity while the other cavity is only used to hold and mix specimen. Therefore, the cavity is not a suction cavity or a liquid adding cavity mentioned in the involved patent. According to specification and drawings of the patent, the suction cavity and liquid adding cavity work by using liquid adding needle or aspiration probe. However, liquid adding needle or aspiration probe is not provided in or cannot be inserted in the specimen cavity of the infringement product, which can also prove that the cavity is not a suction cavity or a liquid adding cavity mentioned in the patent. Considering there is essential difference on two cavities between the alleged infringement product and the patent product, the alleged infringement product is different from the patent product. In summary, the alleged infringement product does not fall into the protection scope of the patent. The court rejects the litigation request from Hailu.

Typical Significance

The present case relates to determination on protection scope of patent right, namely, interpretation of claims. During claim interpretation, specification, drawings and relations among relative technical features in claims can be taken into consideration. Technical solution mentioned in claims should adapt to technical problems and expected effects recorded in specification of the involved patent.

In the present case, JinHuan Medical Instrument Co., Ltd requested invalidation of Hailu Biotech’s patent “A Modified Multi-functional Specimen Box”. During the process of handling the infringement case, Uni-intel was also authorized by JinHuan to handle an invalidation case and finally determined solutions by analyzing claims of the involved patent. On September 8, 2015, reexamination committee of SIPO issued a Decision of Request for Invalidation No. 27053, announcing invalidity of claims from 1 to 7 and validity of the patent based on claim 8. The Decision of Request for Invalidation laid the foundation for JinHuan’s success in the infringement case.