An overview of proceedings of patent infringement litigation in china
Petitions and Pleadings•General Procedures for First Instance•Procedures of litigation（For invention and utility model patent infringement cases） (The procedures of second instance, re-trial instanceshall refer to the procedures of first instance)

Proceduresof re-trial

Intellectual Property
Division ofSupreme People's
Court

Filing and acceptance oflawsuits

Pre-trial Preparation

Proceduresof second
instance

Intellectual Property
Court of Supreme
People‘s Court

Hearing

Evidence exchange
Notification and announcement ofhearing

Court investigation
Court debate

Content
shownin thismock
trial

Final opinions of the parties

Procedures
instance

Examination of litigation documents,
investigation and collection ofnecessary evidence

Verification of the parties, notificationof litigation rights and obligations

Suspension andtermination of proceedingof first

Jurisdiction objection

ThreeIntellectual
Property
CourtsIntellectual Property
Division or Court ofLocal Intermediate
People's Court

Settlement
Or Judgement and decision

Court Mediation
If part of facts is clear, the court may pass
judgment on that part first-- judgment on
infringement (judgment on damages 1pending)Provisions on the interpretation of claims in China• Patent Law(implemented in 2008)

Paragraph 1, Article 59 the scope of protection of patent rights for an invention or a utility model shall be based on
the contents of the claims; the descriptions and drawings may be used to explain the contents of the claims.
• Interpretations of the Supreme People's Court Concerning Certain Issues on the Application of Law for the Trialof Cases on Disputes over Infringement on Patent Rights (Implemented in 2010)

Article 2 The People's Court shall, according to the recordation of the claims in combination with theunderstanding of the claim by ordinary technicians in the field after reading the descriptions and drawings,
determine the content of the claims as prescribed in Paragraph 1, Article 59 of the Patent Law.
Article 3 With regard to a claim, the People's Court may make interpretations by applying the descriptions anddrawings, relevant claim in the patent claims and patent examination files. Where the language of the claim is
specially defined in the descriptions, such special definition shall prevail.
Where the meaning of the claim could not be determined with the aforesaid methods, interpretations may be madein combination with such publicly known documents as reference books and text books as well as the common
understanding of ordinary technicians in the field.

Article 6 Where a right holder includes a technical solution, which the patent applicant or patentee has abandoned
through amendments of claims, specifications or through statement of opinion in the patent granting orinvalidation procedure, in the scope of patent protection in a patent infringement case, the people's court shall notsupport it. (Principle of estopel )2

Provisions on the determination rules of patent infringement in China•

Interpretations of the Supreme People's Court Concerning Certain Issues on the Application of Law for the Trial of
Cases on Disputes over Infringement on Patent Rights (Implemented in 2010)

Article 7 When determining whether the alleged infringing technical solution falls into the scope of patent protection,
the people's court shall examine all the technical features described in the claim asserted by a right holder. (allelement rule)
Where the alleged infringing technical solution contains technical features same as or equivalent to all the technicalfeatures described in a claim, the people's court shall determine that it falls into the scope of patent protection. Where
compared with all the technical features described in a claim, the technical features of the alleged infringing technicalsolution are in lack of more than one technical feature as described in the claim or contain more than one technicalfeature which are neither same as nor equivalent to any technical feature as described in the claim, the people's court
shall determine that it does not fall into the scope of patent protection. (literal infringement, equivalent infringement)• Several Provisions of Supreme People’s Court on Issues Relating to Laws Applicable for Trial of Patent Dispute

Cases (Issued in 2001 ,Revised in 2015)

Article 17 “ The scope of protection of patent rights for an invention or a utility model shall be based on the contentsof the claims. The descriptions and drawings may be used to explain the contents of the claims " referred to in the firstparagraph of Article 59 of the Patent Law shall mean that the scope of protection of patent right shall be based on thescope determined by all the technical features set out in the claim, and shall include the scope determined by featuresequivalent to the said technical features.
Equivalent features shall mean features which use basically the same means to achieve basically the same functions
and attain basically same effects as the technical features set out, and which can be conceivable, at the time ofoccurrence of the infringement act, by ordinary technicians in the field without making creative efforts.
(Determination of equivalent features )3

Common defense by the alleged infringer in China
1.Non-infringement defense
2.Defense based on not being deemed as infringement
3. Prior art defense
4.Defense based on legitimate source
5. Defense of not stopping the infringement

Article 62 of Patent Law In a patent infringement
dispute where the accused infringer shows proof toprove that his/her technology or design implemented
falls under the prior art or prior designs, it shall bedeemed not to have infringed patent rights.
Article 14 of Interpretations of the Supreme People's
Court Concerning Certain Issues on the Application of
Law for the Trial of Cases on Disputes overInfringement on Patent Rights (Implemented in 2010)
Where all the technical features which are alleged tofall into the scope of protection of a patent are same asor are not substantively different from thecorresponding technical features of a technicalsolution in prior art, the people's court shalldetermine the technology implemented by the alleged
infringer as an Prior art as provided in Article
62 of Patent Law.

4

Comparison between Invention and D method
Patented Invention

Ａ

Control method for car navigation system that displays a map on adisplay screen, the method comprising steps of:D methodａA control method for car navigation system comprising a server
and a terminal that displays a map on a screen of D terminalＢreading, from first memory means in which facility data comprising
display data indicative of a plurality of service facilities andcoordinate data indicative of existing positions of the service
facilities have previously been stored, the display data to display
the plurality of service facilities on the display screen;ｂholding D spot data including D name data indicative of a pluralityof spots and D position data indicative of existing positions of the
spots in memory area A of D server of the car navigation system
in order to display the plurality of spots corresponding to the Dname data on the screen;Ｃ

designating one of the plurality of service facilities displayed on
the display screen in accordance with an operation;ｃreceiving an instruction to register one of the plurality of spots
displayed on the screen as a "memo position";D

reading coordinate data corresponding to the designated one
service facility from the first memory means;ｄobtaining D position data corresponding to the designated spotfrom memory area A of D server to be registered according to
the instruction;

Ｅstoring the read coordinate data as user registered data in second
memory means;Ｆdisplaying a position indicated by the coordinate data read fromthe second memory means by superimposing a predeterminedpattern on to the map when the map is displayed on the display
screen.

ｅｆstoring the D position data as D memo data in memory area B of
D server;superimposing an icon on the map indicated by the D position
data of D memo data read from memory area B of D server whenthe map is displayed on the screen.
5No dispute regarding the division of technical features and comparison
Plaintiff： Allegation of literal infringement, at least constitute infringement under DOE
Defendant : Allegation of non-infringement . No allegation of Prior art defense.

The court and the parties confirm the issues in dispute.
• Whether D method satisfies "first memory means"• Whether D method satisfies "second memory means“• Whether all the features of the "car navigation system" are installed in the vehicle• The influence of the prosecution history on the determination of infringement

6Issue 1: Whether D method satisfies "first memory means“?
Plaintiff’s Allegations
D method satisfies "first memory means"・ Claim 1: first memory means in which facility data comprising display data indicative of a plurality ofservice facilities and coordinate data indicative of existing positions of the service facilities have previously
been stored.
・ First memory means in the patent is not limited to a CD-ROM in the embodiment. It refers to any
suitable memory area for storing facility data. The type or location of the memory area is not important.
・ In the D method, there is a memory area A for storing spot data. The spot data corresponds to the facility
data of claim 1. Thus the D method comprises technical feature that is identical to the first memory means ofclaim 1.
・Even if the first memory means in the patent is interpreted as portable memory medium such as CD-ROM,
the D method still comprises equivalent feature of the first memory means of claim 1.
・Substantially the same means: portable memory medium such as CD-ROM of the patent and a storage used in D
server.
・ Substantially the same function: function of storing data for navigation.
・ Substantially the same effect: effect of storing data for navigation. The fact that the storage used in D server
achieves other technical effects, such as larger capacity and enhanced reliability, should not be considered.
・ A person with ordinary skills in the art can easily envisage that the storage used in D server and the portable
memory medium of the patent are mutually replaceable. The storage used in D server is very conventional one in theart.
7Defendant's allegations
D method doesn’t satisfy “first memory means”
・The claim： Description by an abstract word “memory means”
・Detailed description ：・The only example of “first memory means” disclosed in the specification is CD-ROM connected to otherelements by bus lines [Fig. 1] [0010]
・”By storing the facility data in a CD-ROM, which is an inexpensive memory medium, and by storing user
position registering data in a rewritable RAM, improved convenience and cost reduction can both beachieved.” [0015]=> According to Article 2, Interpretations of the Supreme People's Court Concerning Certain Issues on the Application of
Law for the Trial of Cases on Disputes over Infringement on Patent Rights (Implemented in 2010), the claim shall beinterpreted in combination with the specification.
Portable memory medium as CD-ROM is convenient and inexpensive. In contrast, other memories like thoseused in a server are known by person skilled in the art as expensive, due to its requirement on large scale andreliability.
Thus, non-portable memory medium cannot achieve the technical effect described in the present specification.
[0015]➡“first memory means“ refers to a portable memory medium such as CD-ROM.
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Defendant's Allegations
The storage in D server is not equivalent to portable memory medium such as CD-ROM (“firstmemory means”).
・Different means: portable storage such as CD-ROM is significantly different fromstorage used in D server
・Different effect: the storage in D server has much larger capacity and enhanced
reliability, which is not substantially the same as the effect of portable storage
such as CD-ROM.
・ Can’t be envisaged without inventive effort: in the year 2013, CD-ROM had been
replaced widely with USB disks as portable storage; however, remote anddistributed computation center including D server was not common in 2013 andyears thereafter.

9Issue 2: Whether D method satisfies "second memory means“?
Plaintiff’s Allegations
D method satisfies "second memory means“・ Claim 1: storing the read coordinate data as user registered data in second memory means.
・ second memory means in the patent is not limited to a RAM in the embodiment. It refers to any suitable
memory area for storing user registered data. The type or location of the memory area is not important.
・ “first memory means” and “second memory means” in the patent only need to be mediums each of which
fulfills the functions defined by the claims. The first memory means and the second memory means may
belong to one single physical storage device, or locate in different physical storage devices. Both of these twodifferent configurations fall within the protection scope of claim 1.
・ In the D method, there is a memory area B for storing memo data. The memo data corresponds to the user
registered data of claim 1. Thus, the D method comprises technical feature that is identical to the second
memory means of claim 1.
・ Even if the second memory means in the patent is interpreted as memory medium distinguished from thememory medium as “first memory means”, the D method still comprises equivalent feature of the second
memory means of claim 1.
・the storage for storing memo data in D method achieves substantially the same function (of storing user registereddata) and generate substantially the same effect (of storing user registered data) by the means substantially the sameas the second memory means of the patent and can be envisaged, in the year 2013 and thereafter, by a person withordinary skills in the art without making inventive effort.
10Defendant's allegations:
D method doesn’t satisfy “second memory means”
・Wording of the claim：
・The claim language distinguishes two memory mediums, each storing different type of data.

・Detailed description in the specification：・All that are described are two different memory mediums, i.e. CD-ROM (“first memorymeans”) and RAM ( “second memory means” ) [0009]
・“By storing ・・・ facility data in a CD-ROM, which is an inexpensive memory medium,and storing user position data in rewritable RAM, improved convenience and cost reduction
can both be achieved. [0015]➡ “second memory means” refers to a memory medium distinguished from thememory medium as “first memory means”.
The storage feature in D method is not same or equivalent to the second memorymeans.
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Issue 3: Whether all the features of the "car navigation system" are installed in the vehicle?
Plaintiff’s Allegations
Not all the features of the system are installed in the vehicle.
・Patent claims are generally a reasonable generalization made on the basis of embodiments disclosed in thedescription or drawings.
Embodiments are merely examples of the technical solution within the protection of the claims and are
preferred modes for achieving the invention or utility model as deemed by the patent applicant.
The protection scope of a patent shall not be restricted by the particular embodiments disclosed in thedescription.
・The objective of the invention：to provide a car navigation system control method which allows the user toregister a user registration without performing complicated operations for displaying service facilities on themap.
・ According to Claim 1, compared to the conventional car navigation system, it is easier for the user to registera user registration. Thus, claim 1 is a reasonable generalization made on the basis of embodiments disclosed in
the description and drawings. The protection scope of the patent shall not be restricted by the particularembodiments disclosed in the description.

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Plaintiff’s Allegations
Even if all the features of the "car navigation system" of the patent are installed in thevehicle, the car navigation System of D method is equivalent to that of the Patent.
・Substantially the same means: there is no essentially difference between a central system with allelements being installed together and a distributed system with elements being connected using
communication network.
・ Substantially the same function: the distributed system of D method and central system of the patent has
the same function of navigation.
・ Substantially the same effect: the distributed system of D method and the central system of the patentachieve substantially the same effect of allowing the user to register a user registration without performing
complicated operations for displaying service facilities on the map, which just is the objective of the invention
and the key point. The fact that distributed system of D method achieves other technical effects, such as
power saving, high efficiency, endurance, and reliability, should not be considered.
・ A person with ordinary skills in the art can easily envisage that the distributed system of D method andthe central system of the patent are mutually replaceable. In the year 2013 and thereafter, a distributed
system can be seen everywhere. Relevant publications before Defendant uses D method can prove that
person with ordinary skills in the art of automobile navigation can very easily envisage the use of mobile
communication system in replacement of corresponding technical features in the present patent.

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Defendant's Allegations
All the features of the car navigation system are installed in the vehicle.
・Specification
・The car navigation system is a single equipment comprising plural elements (GPS sensor, system
controller, memories and the like), the elements being connected by bus lines. (Fig. 1)・Large volume data such as map data and service facilities data are previously stored in a CD-ROM.
[0010]
・Upon selection/designation by a user of a facility, the position coordinate (a pair of longitude andlatitude data) and the display pattern data for the selected facility are read out from CD-ROM and are
written in RAM, in the position registration data table. [0015, 0016]
・Opinion submitted during prosecution：“By providing the second memory means using RAM backed up
by power supply from a large capacity car-battery, the registration data can be continuously stored,
resulting in improved convenience for users. Such an effect can only be obtained because the navigation
system is installed in a vehicle with a large-capacity car battery.”➡ “Car navigation System" of the Patent is a single equipment that can be installed
in a car. As such, the “control method” comprises features unique to such a single
appliance.
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Defendant's Allegations
The distributed navigation system in D method is not equivalent to the single navigation equipment of “carnavigation system” in the patent
・Different means: a single navigation equipment is significantly different from the distributed “mobile terminal +server” system
・Same function: same navigation function
・ Different effect: The “effect” element is separate from the “function” element. Function refers to what thesystem does, while effects refer to how well the system does the function.
The distributed system has significant difference in the effect of the navigation system, such as computation
power, efficiency, endurance, reliability compared with the single equipment of the present patent.
・ Can’t be envisaged at the time of the allegedly infringing action (in 2013):
In the year 2013 when D method has been conducted, a single equipment to be installed in the car as car
navigation system was prevalent. Person skilled in the art couldn’t have envisaged the distributed “mobile terminal+ server” car navigation system without inventive effort.
The Plaintiff holds that after 2013 the distributed system can be seen everywhere, but provides no specificevidence to support the timing when the switch happened.
The dominance of single navigation equipment has continued since 2013. The fact that nowadays in 2019 a
distributed navigation system is prevalent can not be dated back to 2013. At least when the Defendant started
conducting the D method and for many years thereafter, it would require inventive effort to envisage the
distributed system.
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Issue 4: The influence of the prosecution history on the determination of infringement
Plaintiff’s Allegations
The prosecution history has no impact on the determination of infringement
About written opinion A・ Written opinion A: “However, Cited Invention 1 relates to a portable navigation apparatus forpedestrians and does not disclose a control method for car navigation system as in the case of the inventionof the application. Cited Invention 1 is directed to solve the problem unique to the navigation apparatus forpedestrians and such a problem would not have been solved by the navigation apparatus for automobiles.”・ A control method of a navigation system for pedestrians is abandoned by the patentee.
・However, the D method is used in car navigation system, not a navigation system for pedestrians. The
written opinion A have no impact on the determination of infringement.

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Plaintiff’s Allegations
About written opinion B
・ Written opinion B: The Invention of the present application involves “second memory means for storing
the read coordinate data as user registered data” as specified in Claim 1. By providing this second memorymeans using RAM that is backed up by being supplied with power from a battery even when the powersource of the system is shut down so as not to extinguish the data such as a user registration flag
(specification, [0009]), user registration data can be continuously stored and held even when the powersource is turned off, thus exhibiting an effect of improving convenience for users. Such an effect can beobtained only because the system according to the invention of the application is installed in the vehicle andconstant power supply from a vehicle battery with a large capacity to RAM is possible.
・ The statements indicate that RAM can be used to provide the second memory means, and do not indicatethat the second memory means has to be RAM. The second memory means can be any suitable storage
device. And if RAM that is backed up by being supplied with power from a battery is used as the second
memory means, a further technical effect can be achieved. However, this technical effect is unnecessary forthe objective of the invention.

17

Plaintiff’s Allegations
・ The word “only” does not cause the content of claim 1 to be restricted to that the system of claim 1 isinstalled in the vehicle, and the second memory means is RAM. The “effect” mentioned here is not the effectnecessary for the invention, and is not the effect achieved by the technical solution of claim 1. It is apreferred effect that is achieved if the invention adopts additional features.
・ Patentee has clearly emphasized that the further effect is based on a structure of providing the second
memory means using RAM that is backed up by being supplied with power from a battery. Claim 1 does notrecite this structure. It can be sure that the examiner had noticed patentee’s emphasis and the lack of theabove structure in claim 1. That is to say, the written opinion B has nothing to do with the allowance of thepatent. The patentee does not abandoned anything through the written opinion B. The written opinion B
have no impact on the determination of infringement.

The technical content of D method which is different from the embodiments of thepresent patent is not excluded by the Patentee, and in fact cannot be excluded.
Conducting D method constitutes literal infringement or infringement under the doctrineof equivalence.

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Defendant's allegations
Estoppel: the distributed car navigation system and the memory means outside of the car
have been abandoned by the Applicant by making the opinion statement in the prosecution
history.
The Applicant’s statement includes two points in response to the examiner’s rejection on inventiveness: A) cited Invention 1 uniquely concerns withthe pedestrian navigation, the problem therein wouldn’t have been solved by automobile navigation apparatus; and B) the effect of data notbeing extinguished and improved convenience for users can be obtained only because of the single car navigation system and the RAM being
powered by the vehicle battery.
・Each statement of two points A and B shall be considered essential to overcome the inventiveness rejection. Otherwise, theApplicant has no need to state point B. The applicant states point B only because he doesn’t believe point A by itself is insufficient for
inventiveness. The statement of effect is not merely supplementing to the opinion A (pedestrian vs. car); if the Applicant considers it
merely supplemental, it is unusual to use as strong restrictive tone as “such an effect can be obtained only because …”. The strong
restrictive tone reflects the Applicant’s (Plaintiff’s) belief in the importance of the effect.
・Chinese Patent Law (A22.3) requires both prominent substantive characteristics and significant progress for inventiveness. Thus,
the statement of “the effect of data not being extinguished and improved convenience” is essential to support the inventiveness.
◇ Thus, the statement of effects is essential to the recognition of inventiveness and thus to the allowance of the patent.
◇ Plus, the “single equipment” as “car navigation system” and another memory which can be installed in the car to be powered by thevehicle battery as “second memory means” are essential to achieve the stated effect (=> “can … only because …”)

19

Defendant‘s allegations• Therefore, since the Applicant explicitly exclude other implementations (the distributed

navigation system, and another memory that isn’t powered by the vehicle battery) as notachieving the above effect, the Applicant abandons such other implementations by thestatement.

• The Applicant himself is the one who is the most clear of what features he claims. Even

though his claim doesn’t limit RAM or vehicle battery, the Applicant still chose toemphasize the effect which can only be achieved with the existence of RAM andvehicle battery – this reflects his explicit wish and desire establish the inventiveness withthe existence such features.

• Therefore, the implementation with distributed navigation system the storage in D serveris intentionally abandoned by the Applicant.

➡Estoppel applies to “car navigation system” and “second memory means“ thatthe scope of protection shall not extend to the distributed navigation systemand the storage in D server.
No literal infringement or that under Doctrine of Equivalence is constituted.

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THE SUMMARY OF
THE JUDGMENT

CHINA
2019.09

THE KEY ISSUE DISPUTED

whether the alleged infringement method
falls within the scope of protection of thepatent?
—1. Whether the memory area A and B of the D server in
the alleged infringement method satisfy “the first memorymeans” and “the second memory means” in the patent claim.
—2. Whether the scope of protection of the patent involved
should be limited to all technical features of the carnavigation system are installed in the vehicle.

WHETHER THE MEMORY AREA A AND B OF THE D SERVER IN THE
ALLEGED INFRINGEMENT METHOD SATISFY “THE FIRST MEMORY MEANS”
AND “THE SECOND MEMORY MEANS” IN THE PATENT CLAIM.
The patent
According to the literaldescription of the patent claim,
the purpose of the
distinguishing “the firstmemory means” and “thesecond memory means” is toprocess two types of data, andis not to limit the physicalmedium in which the two typesof data are stored.

The D method
The two types of data arerespectively stored in different
memory areas on the D server,
namely memory area A andmemory area B. That is to say,there are corresponding “thefirst memory means” and “thesecond memory means” on the
D server.

THE COURT DOESN’T AGREE WITH THE DEFENDANT’SOPINION
The understanding of “thefirst memory means” and“the second memory means”
by ordinary technicians in
the field after reading thespecification and drawings is
not limited to the CD-ROM
and the RAM, and the scopeof protection of the patentclaims can not be only
limited by the embodiment.

Even if “ the first memorymeans” is limited to the
CD-ROM and “ the second
memory means” is limited
to the RAM as thedefendant argued, the D
method is equivalent tothe corresponding patentclaims.

WHETHER THE SCOPE OF PROTECTION OF THE PATENT INVOLVEDSHOULD BE LIMITED TO ALL TECHNICAL FEATURES OF THE CAR
NAVIGATION SYSTEM ARE INSTALLED IN THE VEHICLE.

No, here are the reasons.
1. After comprehensively considering the invention purpose of displaying
the location of a specific service facility with a simple operation, as wellas the plaintiff’s written opinion, it cannot be determined that the patent
was granted based on the technical feature that all the components ofthe car navigation system are installed in the vehicle.
2. The alternative technical means in the alleged infringement method
did not appear at the date of the patent application, and the plaintiff
could not intentionally abandon the unknown technical means at thetime of applying for the patent.