Guiding Case No. 115: Valeo Cleaning System Co. v. Xiamen Lucas Automotive Parts Co., Ltd. et al.
(dispute over infringement of an invention patent)

Key words: Civil Proceedings; Invention Patent; Functional Feature; Preliminary Judgment; Interim Injunction

Key points of Judgment

1. Where a technical feature in a patent claim has already delimited – or implicitly defined – specific structure, composition, steps, conditions or the inter-relationship thereof, the feature does not constitute a “functional feature” within the meaning of Article 8 of the Interpretation of the Supreme People’s Court on Several Issues concerning the Application of Law in the Trial of Patent Infringement Dispute Cases (II), even if it simultaneously defines the function or effect achieved.

2. In patent infringement proceedings, an interim injunction restraining the alleged infringing acts has independent value. Where a party applies both for an interim injunction and for a preliminary judgment ordering the cessation of infringement, and the court holds that a preliminary judgment on cessation is warranted, the court must, at the same time, examine the application for interim injunction. And if the conditions for interim relief are satisfied, an order must be issued promptly.

Basic Facts

Valeo Cleaning System Co. (hereinafter referred to as “Valeo”) is the proprietor of the Chinese invention patent entitled “Connector for a windscreen-wiper arm of a motor vehicle and associated connecting device”, which remains in force. In 2016 Valeo brought an action in the Shanghai Intellectual Property Court, claiming that Xiamen Lucas Automotive Parts Co., Ltd. (hereinafter referred to as “Lucas”) and Xiamen Fuk Automotive Parts Co., Ltd. (hereinafter referred to as “Fuk”) had, without authorisation, manufactured, sold and offered for sale, and that Chen Shaoqiang had manufactured and sold, the windscreen-wiper products falling within the scope of the patent. Valeo sought orders that Lucas, Fuk and Chen cease infringement, pay damages and reasonable expenses provisionally quantified at RMB 6 million, and additionally requested the court to grant a preliminary judgment ordering Lucas, Fuk and Chen forthwith to cease acts infringing the patent. Valeo also filed an application for an interim injunction seeking an order that Lucas, Fuk and Chen immediately cease the infringing acts.

Judgment

On 22 January 2019, Shanghai Intellectual Property Court granted a preliminary judgment ordering Lucas and Fuk to cease infringement of the invention patent from the date on which the judgment became binding. Lucas and Fuk appealed to the Supreme People’s Court. On 27 March 2019, the Supreme People’s Court held a public hearing in Case No. (2019) Zui Gao Fa Zhi Min Zhong No. 2, delivered judgment immediately and dismissed the appeal, upholding the first-instance decision.

Judgment’s Reasons

1. Whether the technical feature that “in the closed position, the safety catch extends opposite the locking element so as to prevent elastic deformation of the locking element and to lock the connector” is a functional feature, and whether the accused products possess this feature

(1) Whether the feature is a functional feature

A functional feature is one which does not directly delimit structure, composition, steps, conditions or their inter-relationship, but instead defines these indirectly by reference to the function or effect achieved in the invention. If a technical feature already delimits or implicitly defines specific structure, composition, steps, conditions or their inter-relationship, the feature is not, in principle, a functional feature within the meaning of Article 8 of the aforesaid Interpretation (II), even if it also states the function or effect achieved.

The impugned feature delimits the positional relationship between the safety catch and the locking element and implicitly defines a specific structure—namely, that “the safety catch extends opposite the locking element”. The positional relationship and structure serve to “prevent elastic deformation of the locking element and to lock the connector”. In the light of this positional and structural relationship, along with the description and drawings of the patent—especially paragraph [0056], stating that “the locking of the connector is ensured by the inner surface of the vertical side wall of the catch extending along the outer surface of the claw, thereby preventing the claw from deforming laterally outward, so that the connector cannot be released from the hook end”—a person skilled in the art would understand that when the safety catch extends opposite the locking element and the distance between the extended portion and the outer surface of the locking element is sufficiently small, the locking element is prevented from elastic deformation and the connector is locked. The feature therefore combines both a positional/structural limitation and a functional description; only by considering the two together can the precise content of the positional/structural limitation be ascertained. Such a “position or structure + functional description” feature, although it refers to function, is in essence a positional or structural feature and is not a functional feature within the meaning of Article 8 of the Interpretation (II).

(2) Whether the accused products possess the feature

The impugned feature delimits both the positional/structural relationship between the safety catch and the locking element and the function thereby achieved. The functional aspect is instrumental in defining the positional/structural relationship. The feature is not a functional feature, and both the positional/structural limitation and the functional limitation must be taken into account in assessing infringement.

In the accused products, the inner surfaces of the two side walls of the safety catch are provided with a pair of projections perpendicular to the side walls. When the safety catch is in the closed position, these projections face the outer surface of the elastic element, thereby restricting outward elastic deformation of the elastic element, locking it and preventing the wiper arm from being released. This arrangement is one form of “the safety catch extends opposite the locking element” as set out in claim 1 and achieves the same function of preventing elastic deformation of the locking element and locking the connector. Consequently, the accused products embody the impugned technical feature and fall within the scope of claim 1. Although the court of first instance treated the feature as a functional one and analysed the accused products as having an equivalent feature—an approach which is open to criticism—the error did not affect the conclusion on infringement.

2. Treatment of the application for an interim injunction

The particular circumstances here are that, although the court of first instance had rendered a preliminary judgment ordering cessation of infringement, that judgment was not yet binding, and the patentee maintained its application for an interim injunction. In such circumstances, the second-instance court may proceed as follows: (a) If the situation is urgent or other harm may result, the patentee’s application may be dealt with separately and an order issued promptly if the statutory conditions are met; guarantee need not necessarily be ordered given that the first-instance court has already found infringement. (b) If the second-instance court can deliver a final judgment within the timeframe for dealing with the interim injunction application, it may instead deliver judgment and dismiss the injunction application.

In the present case, Valeo maintained its application for an interim injunction against Lucas and Fuk. The evidence adduced did not, however, demonstrate any urgency causing harm to Valeo. Moreover, the Supreme People’s Court delivered judgment in open court on the day of the hearing, and the judgment took immediate effect; a separate interim injunction would therefore have been superfluous. Accordingly, the application for an interim injunction was refused.

Relevant Provisions

1. Article 59, Patent Law of the People’s Republic of China 

2. Article 153, Civil Procedure Law of the People’s Republic of China