Claim Construction and Establishment of Equivalents:
Comment on the Supreme People's Court's Draft Opinions Relating to Cases of Dispute from Patent Infringement

Wu Yuhe
 
I. Introduction
Since 1984 when the patent system was put in place, the courts in China have always been faced with the challenge from patent enforcement. Considering the special nature of, and difficult in, handling patent disputes, the Supreme People's Court provided, as early as 1985, that only the intermediate courts of the places where the governments of the Provinces, Autonomous Regions and Municipalities under the Central Government are situated and some authorised intermediate courts have the first-instance jurisdiction over cases of patent dispute to ensure the quality of adjudication of cases of the kind.
Afterwards, the Supreme People's Court introduced, in 1993 and 2001, the relevant judicial interpretations as the guidelines for the courts under it concerning the jurisdiction of cases, suspension of court hearing, evidence-related rules, infringement determination, infringement liability and calculation of damages. Generally speaking, however, these judicial interpretations are not specific enough in many aspects to address the difficult issues having been confronted or being confronted in determination of patent infringement.
To effectively address the hard judicial issues confronted in determination of patent infringement, the courts below the Supreme People's Court sometimes have to resort to the basic legal principles, and even directly refer to the practice of some foreign countries, and the provincial higher courts have tried, as much as possible, to give its judicial guidance. For example, the Beijing Municipal Higher Court introduced the Opinions on Several Issues Relating to the Establishment of Patent Infringement (tentative) in 2001 and issued to the Beijing Nos.1 and 2 Intermediate Courts, and the Opinions took effect the same year. The Opinions are the first relatively detailed local legal document regulating the judicial practice concerning patent disputes within the territory of China.
The judicial practice is likely to be different in different regions, which results in inconsistency between the actual adjudication result and the expected result of cases heard by courts of different jurisdiction. This situation is very similar to that in the U.S.A. before the establishment of the Court of Appeals of the Federal Circuit in 1980s. However, it seems that now there is not any motion raised to set up a similar court at the level of the Central Government to coordinate the judicial practice of specific cases. The Supreme People's Court is at present the sole court that guides and regulates the provincial patent-related judicial practice and addresses judicial conflicts.
On 9 July 2003, the Supreme People's Court issued, for comments, the Draft of the Resolution of Issues Relating to Handling Cases of Disputes from Patent Infringement (referred to below as the Draft), hoping to work out more rational, improved judicial guidelines on the basis of the comments on the amendment thereof from all walks of life at home and abroad to unify and regulate the patent-related judicial practice of the country. The Draft comprises 132 articles covering all aspects of the patent-related judicial practice. Some part of the Draft seems to be a summary of the practice of the courts nationwide, and other part represents the opinions of the relevant tribunals of the Supreme People's Court, and still other part has been drawn up by drawing on some foreign experience along the line. Following are an account of, and comments on, the part relating to the claim construction and establishment of equivalents.
II. Interpretation of Claims and Determination of Their Protection Scope
1. Text for Interpretation
It is suggested in Article 12 of the Draft that the scope of protection of claims of the patent be based on the text of claims as are finally published by the Patent Administrative Department under the State Council or the text of claims of patent that has taken effect as is determined in the reexamination decisions, invalidation decision or revocation decisions.
In China, the courts hearing cases of patent infringement do not have the authority to examine the validity of the claims of the patent. The matter of patent validity is under the sole jurisdiction of the Patent Reexmamination Board (PRB) of the State Intellectual Property Office, but the examination decisions made by the latter are subject only to the judicial review of the Beijing Intermediate Courts and the Higher Court. In practice, to counterclaim against an accusation of patent infringement, a defendant often initiates the invalidation proceeding at PRB within the prescribed time limit. Once PRB serves a decision declaring a patent (partially) invalid, the defendant would at once pose the decision to counterclaim against the infringement accusation regardless of whether or not said decision takes effect. Article 12 of the Draft tries to work out an express provision that in respect of a patent declared invalid by PRB, before the decision takes effect, the originally patented claims remain enforceable legitimate right.
2. Claims for Interpretation
Articles 13 and 14 of the Draft empower the patentees to select claims. That is, a patentee may selectively enforce independent and/or dependent claims according to the specific circumstances, and even change the claims he has based his litigant claims on before the expiration of the time limit for adducing evidence. When a rightholder claims his right on the basis of dependent claims, which are not supported in the effective judgement instrument of the court, he may bring another action on the basis of the claims on which the court hearings have not based.
The preceding provision, which seems to have been drawn on the US judicial practice, is likely to change, in China, the current practice of basing the interpretation and determination of the scope of protection of the patent on the independent claims of the patent only. This undoubtedly makes things convenient for the rightholders and facilitates the court hearing. For example, when a rightholder intends to enforce his patent right for utility model, if an official search report shows that some claims may lack patentability, he may request for enforce only the dependent claims deemed patentable to avoid the possible suspension of the patent infringement proceedings caused by the matter of patentability of the claims and avoid delay in said proceedings.
3. Principles for Interpretation
Article 15 of the Draft has set forth the overall determination principle for the interpretation of claims. It is required that the technical information as stated with each and every technical feature of the claims be treated as a complete technical solution and that the common technical features in the preamble portion and the distinctive technical features in the characterizing portion of the claims have the same role in defining the scope of protection of the patent. This provision is essentially consistent with the current practice.
It is recommended in Article 16 that a moderate principle for the interpretation of the claims be adopted, which is a specific manifestation of the provision on the scope of protection of the claims of the patent right under Article 56 (1) of the Patent Law. When an interpretation is made according to this principle, the scope of protection of the claims should not be interpreted as being defined by the strictly literal meaning of the claims, and the description and drawings are used only to explain what is confusing or unclear in the claims, nor should the scope of protection of the claims be interpreted as determining a general core of invention, as having a role of guidance. The scope of protection is one as the ordinary artisans in the art can possibly understand and the patentee expects upon reading the description and the drawings. The court should take a stance between the two extreme interpretations so that the interpretation of the claims can both confer fair protection to the patentee and ensure legal stability. It is thus shown that this provision is basically consistent with the provision of Article 69 of the European Patent Convention.
4. Evidence for Interpretation
In Articles 17-20 and 23 of the Draft has been mentioned evidence widely used to interpret claims in the US patent-related judicial practice: intrinsic evidence including the patent documents (claims, description and drawings) and the prosecution history; and extrinsic evidence such as treatises, dictionaries, technical references and expert testimony. As for the general effect or weight of the evidence, the former is preferred over the latter.
4.1 Claims
First of all, the claims of the patent are the basis of interpretation and priority for consideration. Therein, the dependent claims may also be used to clarify the confusion of the technical features of the independent claims. The additional technical features of said dependent claims, however, should not be used to define the scope of protection of the patent. This seems to have embodied the so-called doctrine of claim differentiation as is summarized in the US case Fromson v. Advance Offset Plate, Inc..1
When the technical information recorded in the claims is not the same, or not exactly the same, as that depicted or shown in the description, what is recited in the claims should prevail. This seems to have embodied what is known to the Patent Community in China as the doctrine of validity presumption. Since the courts having the jurisdiction over cases of patent infringement in China do not have the power to deal with the matter of patentability, it is still suggested that claims that are not consistent with, and hence not supported by, the description be deduced as valid or enforceable.
4.2. Description
However, under the premise of deduced validity of the patent right, the Draft seems to have empowered the court to be concerned with the matter of support of the claims. Under the Draft, if the generic concept recited in the claims is supported by certain specific concepts in the description, then the generic concept should be interpreted on the basis of the specific concepts mentioned in the description and the related specific concepts the ordinary artisans in the art can contemplate through reading the claims, the description and the drawings without any inventive efforts. This, perhaps, is how the Chinese courts are trying to follow a current international practice. That is,  the claims should not be interpreted as broader than the supporting disclosures in the description.2
In the Draft is stated the role of the description as evidence in interpreting the claims, say, for clarifying the confusion of the technical features as recited in the claims, such as the technical concept the applicant has developed himself; for determining the equivalents of the essential technical features of the claims, putting within the scope of protection of patent the features equivalent to the essential technical features through interpretation; for excluding the prior art from the scope of protection of the patent ; and for prohibiting estoppel of the patentee.
4.3 Prosecution History
In the Draft has been specifically mentioned the patent prosecution history documentation, namely all the documents and records forming in the patent grant and maintenance procedures can serve as reference for the interpretation of the claims. Such role of the prosecution history in interpreting the claims is, however, not enumerated. Relevant provisions can be found in the various parts of the Draft, and the evidential role of the prosecution history may be generalised for defining the technical terms and concepts of the claims, determining the scope of protection of the claims and for prohibiting patentee's estoppel when the equivalent doctrine applies to define the equivalents so as to limit the equivalents. In effect, the Beijing courts have played a positive part in the practice along the line. In a case of dispute from patent infringement closed thereby, the patentee's observations made in the patent invalidation proceeding are used to limit the scope of protection of his claims in the infringement proceedings3.
4.4 Extrinsic Evidence
As regards the extrinsic evidence, it is suggested in the Draft that when the technical terms and concepts cannot be interpreted directly with the description and the drawings, they should be interpreted on the basis of the normal meaning as understood by those skilled in the art. Where the relevant technical terms and concepts have two or more interpretations, the explanation thereof in dictionaries, encyclopaedia, technical references and treatises are deemed to be the normal meaning as understood by those skilled in the art; where there are several normal meanings, all these meanings of the subject matter of the patented invention-creation are adopted in combination with the patent prosecution history. Where the technical terms and concepts cannot be interpreted in all the above manners, the experts' testimonies are referred to in the interpretation.
4.5 Special Provisions for the Interpretation of Special Claims
Articles 21 and 22 of the Draft have respectively provided for the method of open claim interpretation and the one of interpretation of means-plus-function claims .
Under the Draft, where the claims for composition are expressed in an open or semi-open manner, and the components other than those recited in the claims are not described in the description, the court should treat them as if they are claims of closed expression, requiring interpretation of the claimed composition as comprising the components recited in the claims only, without any other component, but having impurities in a normal amount.
As for the interpretation of mean-plus-function claims, the Draft provides that the court should reasonably determine the scope of protection on the basis of the specific statement of the features in the description within the mode of exploitation the artisans in the art can clearly know about through reading the claims and the description, and contemplate without any inventive efforts. To be specific, when the description states only one mode for exploiting the technical solution, the mean-plus-function feature should be interpreted as covering this specific mode and its equivalent substituting mode. When the description states a plurality of modes for exploiting the technical solution and the mean-plus-function feature is due generalisation of the function or effect common to the mode of exploitation, the mean-plus-function feature should be interpreted as covering all the modes of exploitation capable of achieving the claimed function or producing the effect. Compared with the provision of 35 U.S.C. § 112(6) that mean-plus-function claim shall be construed to "cover the corresponding structure, material or acts described in the specification and equivalents thereof", this provision of the Draft seems a bit lax.
III. Establishment of Equivalents
Establishment of patent infringement under doctrine of equivalents is one of the major difficulties in the patent-related judicial adjudication in China. The legal basis on which equivalents is established on in China as a statutory law country has its origin only in the provision of the Patent Law relating to the scope of protection of the patent, that is, the scope of protection of the patent shall be determined by the terms of the claims. Starting from this, the court interprets the claims as containing literal and equivalent information. In the judicial practice, however, the court has long been applying the doctrine of equivalents to the establishment of patent infringement. However, for lack of uniform standard and establishment method, the result of the equivalent establishment is hard to predict, which is likely to result in increased investment risk and unstable economic order. While almost each application of the doctrine of equivalents to the establishment of patent infringement would arouse public attention and controversy, it does not shaken the resolve of Supreme People's Court to apply the doctrine of equivalents to protect the legitimate rights and interests of the patentees.4
The provisions on equivalent establishment are mainly found in Articles 25 to 31 of the Draft, and can also be found elsewhere in the Draft, for example, the redundant designation doctrine in Articles 32 to 34 and defense based on known technology in Article 86.
1. " Tripartite-Test" of Equivalents
In the Draft have been reiterated the opinions of Supreme People's Court on the judicial interpretation made in 2001: the scope of protection of claims of patent covers those as determined by the expressly recited essential technical features and the equivalents thereof; the equivalent features, also known as equivalents, refer to features performing substantially the same function in substantially the same way to achieve substantially the same result as compared with the recited essential technical features of the patent and contemplatable by the ordinary artisans through reading the claims, the description and the drawings but without exercising of any inventive labors. What is not specified therein is the time for establishing equivalents (the time of infringement, date of filing an application for patent or date of patent issuance). The answer of, and reason underlying, the same problem can be drawn from the case Warner Jenkinson Co., Inc. v. Hunter Douglas Chemical Co., heard by the US Supreme Court.
Obviously, the basic line of reasoning in the above equivalent establishment is consistent with the tripartite ("function-way-result") test as established by the US Supreme Court in the case Graver Tank & Mfg. Co. v. Linde Air Products C.5
2. Evaluation of Function-Way-Result
An non-exhaustive enumeration is made of the "substantially the same way" in the Draft, including, among other things, simple dislocation of components of a product, simple change in the order of steps in a process and simple replacement, disintegration and combination of the essential technical features of a patent.
In the Draft, "substantially the same function" is not further explained or defined, except that "function" and "result" are sometimes mentioned side by side.
Discussions on "substantially the same result" are presented in several places in the Draft, which provides that "substantially the same resultt" covers result inferior or superior to the patent result, but does not include unexpected technical effect. The "unexpectedness" is obviously relative to the patent, which causes a new problem, namely how to determine "unexpectedness"?
To establish equivalents, it is necessary to consider the factor that the equivalents are the features contemplatable by the ordinary artisans in the art through reading the claims, the description and the drawings without exercising of any inventive labors. Here has been expressly mentioned the concept of "inventiveness", of which the relevant interpretation cannot be found in the Draft.
As indicated in the Draft, for the terms that are not defined in the Draft, but related to in the hearings of cases of patent infringement, one may refer to the pertinent definition made in the Guidelines for Patent Examination issued by the Patent Administrative Department under the State Council. That is, said "unexpectedness" and "inventiveness" have the meaning in the SIPO patent grant proceeding; hence, in establishing equivalents, it is necessary to evaluate the "inventiveness" and "unexpectedness" of the equivalents (the accused device) with reference to the patented technology. Regardless of whether the Draft implies this line of reasoning, it seems that the Draft should have offered more specific guide for the courts at lower level to apply the equivalent doctrine in a specific manner.
3. Removal of Overall Equivalent and Possible Introduction of Redundant Designation Doctrine
It is recommended in the Draft that the application of the equivalent doctrine be based on the teh all elements rule and that the equivalent doctrine must be applied to individual elements rather than to the invention as a whole. This is consistent with the equivalent establishment standard as established by the US Court of Appeals of the Federal Circuit in the case Pennwalt Corp. v. Durand-Wayland, Inc.
However, the removal of overall equivalent might be watered down by the so-called "redundant designation doctrine". In China, the redundant designation doctrine roughly means that when interpreting an independent claim of a patent and determining the scope of protection thereof, the court may ignore the non-essential technical feature, namely redundant features recited in the independent claims obviously out of negligence of the patent applicant, and establish the scope of protection of the patent on the basis of the essential technical features of the independent claim.
Looking into the judgement made by the US Court of Appeals of the Federal Circuit in 1983 in the case Hughes Aircraft Company v. United States, one may note that when the court considered the claim as a whole and judged that the accused device performed substantially the same function in substantially the same way and achieved substantially the same result as a patented invention as a whole, and constituted an infringement, it had in effect ignored a feature of the claim (the neglected feature may be deemed in China the redundantly designated feature). The concept of "redundant designation doctrine" seems to be non-existent in the US patent-related judicial practice. This Chinese doctrine is likely to have been contained in the overall equivalent doctrine abrogated in the U.S.A.
The US Supreme Court confirmed in addressing the issue of non-applicability of the overall equivalent in the case Warner-Jenkinson that the equivalent doctrine must be applied to individual elements of the patent claim rather than to the invention as a whole. The Supreme Court held that "each element contained in a patent claim is deemed material to defining the scope of the patented invention. It is important to ensure that the application of the doctrine, even as to an individual element, is not allowed such broad play as to effectively eliminate that element in its entirety".
To draw on the US experience, if all elements rule is promulgated in the Draft with removal of consideration of a claim as a whole, the "redundant designation doctrine" should be abandoned as well.
4. Limitation by Known Technology on the Application of Equivalent Doctrine
In the Draft, the known technology (i.e., prior art) means that, before the filing date of patent for an invention or utility model, it has been publicly disclosed in publications in the country or abroad, or has been publicly used or made known to the public by any other means in the country. Conflicting disclosed patent applications are known technologies under the provision.
The limitation by the known technology on application of equivalent doctrine is realised in the form of defense against patent infringement accusation on the basis of the known technology. To be specific, under the Draft, defense against accusation of patent infringement by equivalents is allowed by limiting the equivalents with a separate known technology or with its combination by those skilled in the art of the common technical knowledge before the date of patent application. If those skilled in the art believe that the technology used in an alleged infringing article is obviously a simple combination of one or more known technologies, without any new technical effect, the court may establish that the alleged infringing article does not constitute patent infringement.
The concrete application method is to compare the known technology with the patented technology and the alleged infringing article for identicalness or similarity. If the alleged infringing article is identical with the known technology, it should be established that it does not constitute a patent infringement; if the alleged infringing article is not identical with the known technology, but with the patented technology, it should be established that it constitutes a patent infringement; if the alleged infringing article is different from both the known knowledge and patented technology, but closer to the known technology, it should be established that it does not constitute a patent infringement; and if it is closer to the patented technology and the corresponding technology is identical or equivalent, it should be established that it constitutes a patent infringement.
In effect, the above establishment method is a summary of the practice of some jurisdictions in China. It seems to be similar to the now widely applied test method "hypothetical claim" developed by the US Court of Appeals of the Federal Circuit in the case Wilson Sporting Goods Co. V. David Geoffrey & Assocs.6 However, the former does not specifically provide for how to establish that a technology is "closer", and the latter offers a specific method of comparison. According to the "hypothetical claim" test method, if a patentee accuses one of an infringement by equivalents, he may be requested to draft a "hypothetical claim" literally covering the alleged infringing article, and prove that said "hypothetical claim" is patentable compared with the cited prior art. Thus, the alleged infringer may deny on the basis of the known technology the patentability of the "hypothetical claim" so as to limit the application of the equivalent doctrine and defend against the accusation of patent infringement. The line of reasoning in the test method of "hypothetical claim" is in keeping with the stated policy of CAFC that claims should be construed, if possible, so as to sustain validity. Therefore, the claims cannot be expanded to encompass subject matter that would not be patentable over the prior art. According to this interpretation method, when the scope of protection of claims are interpreted according to the equivalent doctrine as containing any equivalent information extending beyond the literal scope thereof, the extended information also needs to be determined to see whether it causes patentability problem over the prior art and, hence, it should not be protected. This interpretation method can duly limit the extension of the scope of equivalents, and render the equivalents substantially equivalent to the literal elements of the claims so much as possible, and substantially distinctive from the known technology as well.
According to the "hypothetical claim" test method, the claims of the patent right for a pioneering invention would obviously be afforded a broader range of equivalents, while those for the combination invention, selective invention, and (second) use invention would afforded narrower range of equivalents. In this case, unlike the Draft, it is not necessary to provide in special terms of clause that different types of patent for invention should enjoy different range of equivalents: provisions of the nature are difficult to apply.
5. "Complete Bar" and "Flexible Bar" of Estoppel
Article 30 of the Draft provides that the patent applicants and patentees, who made in writing statements and amendment in the patent prosecution history to meet the requirements of the Patent Law with respect to any abandonment of, limitation on, amendment to and commitment to the scope of protection of the claims of the patent for invention or utility model, are estopped from recapturing those surrenders in the patent infringement proceedings, and the court should not so interpret the claims that would otherwise encompass those surrenders within the scope of protection of the patent.
Article 31 of the Draft provides that where a patent applicant or patentee made amendments or narrawing observations in respect of the relevant technical features in the patent prosecution history in order to establish the novelty and inventiveness over the prior art, interpretation with equivalent features is generally not made of said technical feature [another scheme: in respect of technical features amended in the patent prosecution history, after the application of the estoppel doctrine, the rightholder remains entitled to claim that the equivalent doctrine applies to the amended technical features]. Where the amendments to the claims are not made to overcome the prior art to establish the novelty and inventiveness of the patent, after the application of the estoppel doctrine, the rightholder may still request to apply the equivalent doctrine to interpret the claims within a reasonable scope.
The preceding first paragraph is similar to the "complete bar" of the US estoppel theory, and in the preceding second paragraph can be found the traces of the "flexible bar", which seems to show that the court remains hesitant in between the "complete bar" and the "flexible bar". In fact, heated debate has also been going on in the US patent community. In particular, the US Supreme Court and CAFC were not of exactly the same opinion on the matter. The put in place the latest case law spirit in the cases Warner-Jenkinson and Festo that (1) prosecution history estoppel is not limited to amendments or arguments presented to avoid prior art,and instead extends to any amendments related to the statutory requirements for the patentability (e.g. clarity of and support for the claims); and (2) any amendments to the claim are rebuttably presumpted to have limited the equivalents. That is, the patentee is under the burden of rebutting the presumption by showing that his amendments are not relevant to the statutory requirements for patentability, and at the time of the amendment one skilled in the art could not reasonably be expected to have drafted a claim that would have literally encompassed the alleged equivalent. Otherwise, these amendments are regarded as relevant to the patentability, and the equivalents as surrendered by the patentee when the amendments were made; the patentee is therefore estopped from recapturing of, on the basis of the equivalent doctrine, the equivalents deemed to have been surrendered.
It is believed that the case law spirit shown in the cases Warner-Jenkinson and Festo is the enhancement of the certainty of the scope of protection claimed when the inventor/patentee are duly protected, to which reference may be made in respect of the choice between the "complete bar" and the "flexible bar" in the revision of the Draft.
6. Limitation by Non-claimed Features on Equivalents
It is provided in the Draft that where replacements of essential technical features of the patent are obvious to those skilled in the art on the date of filing and the applicant does not recite them in the claims, and the rightholder claims in the infringement lawsuit that the replacements are equivalents to those essential technical features under equivalent doctrine, the people's court shall not support the claim.
While the specific circumstances of the "obviousness" are not specified in the above provision of the Draft, it is perceivable to cover the circumstances established by the US Court of Appeals of the Federal Circuit in the Johnson & Johnson case 7: an unclaimed embodiment, although disclosed in the description, is regarded as "dedication to the public", and it should not be reclaimed for protection as the equivalents to the literal content of the claims in the legal proceedings.
Besides, the Draft seems to have drawn on the spirit as embodied in the Festo case, but it has set forth stricter provisions because the Draft is intended to prohibit the patentee from claiming in the patent proceedings for the equivalents that are obviously predictable but not recited in the claims when he files the application for patent. This would pose higher requirements on the drafting of the description and claims, and is worth the attention from the patent applicants.
7. Effect of Alleged Infringer's Subjective Factors on the Establishment of Equivalents
It is suggested in the Draft that when establishing infringement by equivalents and determining infringement liability for damages, one should take account of the subjective factor of whether the alleged infringer knows about the patented information. In respect of an act of infringement by exploiting a technology independently developed after the date of filing a patent application and before the date of disclosure thereof or the date of publication of grant of the patent for utility model, the court may interpret the equivalent features of the essential technical features of the patent in a duly strict manner and duly lessen the infringer's liability for damages. The court may also take the degree of similarity of the technology used in the alleged infringing article to the patented technology as a factor to be referred to determine the liability for damages.
The Draft does not expressly provide for whether or not establishment of equivalent is a factual issue. If it is, then the establishment should not be affected by the subjective factor of the alleged infringer. Of course, the subjective factor of the interested party may be taken into account in determining the liability for damages.
8. Experts' Role on Establishment of Equivalents
To date, the courts in China sometimes indiscriminately entrust experts with "technical appraisal" in respect of both legal and factual issues, and even with the establishment of equivalents, without interpretation of the claims,in their handling patent infringement dispute cases. This would result in the shift of the judges' judicial authority to someone else.
It is provided in the Draft that an interested party may apply to the court for an expert's presence before court to give testimony on technical matters at issue. If necessary, the court may require an interested party to invite experts to appear before court. The court may also invite experts to participate in court hearings as expert juror. Unlike the members in a jury in the U.S.A., the expert jurors enjoy the same power and obligations as the judges.
Specific technical issues, say, of whether the various technologies involved in a case of patent infringement are substantially the same in technical way, function or result or whether it needs to exercise any inventive labors for those skilled in the art to contemplate the equivalent technology, need to be addressed by technical professionals with their professional expertise and experience. If the judge (and the expert juror, if any) cannot come up with a solution themselves, the court may, at the request by an interested party or ex officio, entrust a special appraisal organisation with technical appraisal. If the court invites a relevant organisation or experts for consultation on the technical information and matters involved in a case, it should make the appraisal conclusion known to the interested parties and ask for their comments.
Except the expert jurors, the experts entrusted by the court only evaluate the matters of technical character, such as the points of identicalness or dissimilarity of the technical features of the technical solution at issue, the function or effect of the technical features and the technical solution, and the significance of the relevant technical variation, but not make any evaluation or "technical appraisal" regarding the legal matters of whether an alleged infringing article has fallen within the scope of protection of the patent.
The provisions of the Draft are positively meaningful in that they facilitate the court in its judgement on patent-related dispute and help avoid the shift of the judges authority. In fact, in hearing disputes from patent infringement, the U.S.A. has encountered the problem of distribution of function and power between the judges and the jury. The US Supreme Court worked out an answer in the case Markman v. Westview Instrument that claim construction is a matter of law to be decided by the trial judge; the claim construction ultimately established is later given to the factfinder in order to determine if an accused device falls into claim coverage and to determine infringement. Jury, if any, may participate the proceedings once the claim construction has been established.
By comparison, the expert jurors in China enjoy more power in hearing a case than the jury in the U.S.A.. However, unlike the US jury, the expert appraisal organization in China do not participate in the establishment of the patent infringement; the finding of infringement is deemed a matter of law in China, a matter to be decided by the judges. For that matter, the judges in China are faced with more legal and technical challenges.
VI. Conclusion
Establishment of patent infringement, especially that of patent infringement by equivalents is a hard nut to crack in the patent-related judicial practice. Through careful and prudent revision, the Draft issued by the Supreme People's Court will serve as guidelines based on the statutory law and unify the judicial practice in the years to come in China.
How to unify and improve the patent-related judicial practice is truly a matter worth our probing into. The establishment of the protection scope of patent claims and equivalents should be made in a more objective and predictable manner. Since the patent system has been in place only for a very short period of time in China, it is urgent to draw on the developed foreign experience and to, under the present legal system, work out a comprehensive, practical and operational judicial practice.
However, it is obviously difficult for the statutory law to pre-provide for the way to address the various legal and technical issues being encountered and to be encountered in the patent-related judicial practice. Besides, the final adjudication on cases of patent dispute generally rest with all the local higher courts, which has rendered it seemingly difficult to unify the standard of the court judgement in patent-related cases. Therefore, in a long run, a fundamental solution to this problem might be to establish a central court devoted to finally review all the patent-related cases.
The author: Attorney-at-law and Patent Attorney for the China Patent Agent (H.K.) Ltd.
 
1. See 219U.S.P.Q.1137Fed.Cir.1983.
2. See Gentry Gallery, Inc. v. Berkline, 134F. 3d 1473, 1479-80, 45 U. S. P. Q. 2d 1498, 1504
Fed.Cir.1998.
3. See Luo Dongchuan, Shenzhen Chuangge Science and Technology Industrial Co., Ltd. and Ma Xiguang v.
Compaq, China Patents & Trademarks, 2003, no.3. Pp53-62.
4. For the relevant information, see the judgement by the Supreme People's Court on 6 March 2002, in Linpo City Oriental
机芯厂 v. Jiangyin Jinglin Hardware Manufacturing Company.
5. See the judgement by the Supreme People's Court on 6 March 2002, in Linpo City Oriental
机芯厂 v. Jiangyin Jinglin Hardware Manufacturing Company.
6. See 14 U. S. P. Q. 2d 1942, 1948
Fed. Cir. 1990.
7. See 62 U. S. P. Q. 2d 1225
Fed. Cir. 2002.