Understanding Means-Plus-Function Claims for Patent Protection in China

When considering patent protection overseas, it is important to work with a patent attorney who understands the potential obstacles of foreign jurisdictions. What may be a non-issue in your jurisdiction may present challenges elsewhere, such as the challenge described in the “means-plus-function” case study below.

Founders Legal’s retained foreign associates, IP Chofn recently published a case study and analysis in regards to “means-plus-function” claims and their interpretation in China. Ultimately, they found that “means-plus-function claims are interpreted differently at the time of Chinese patent prosecution and Chinese patent litigation.”

For those unfamiliar with “means-plus-function” claims, these claims support the patent by describing how the invention functions as opposed to how the invention is structured.The particular case study below discusses an infringement case involving a patented computer program that utilized “means-plus-function” claims.

Case Study: Contradictory Interpretations of Means-plus-function Claims in China

Written by Xiao HAN (Ms.) and Haoyu ZHOU (Elliot)

Case Study

In the case of Nokia Corporation v.s. Shanghai Huaqin Telecom Technology Co., Ltd., The key issue is the interpretation of claims relating to computer program, including the determination of functional features.

The patentee Nokia accused Shanghai Huaqin for patent infringement, and Shanghai Huaqin subsequently filed a Request for Invalidation against Nokia’s patent.

The dispute focused on the interpretation of claims 6 and 7 of the patent in question:

Claim 6. A terminal device configured to determine a message to be transmitted based on input received from a user.

The terminal device is further configured to: check …; and

the terminal device is configured to: in order to transmit the message, select … , characterized in that:

the characteristic information is one of the following information:…

Claim 7. The terminal device of claim 6, characterized in that: the terminal device is configured to: select the data transmission method to be applied to a message editor for inputting a message; the terminal device is configured to: based on the selection of the data transmission method performed in the message editor, transmit the message to a data transmission application that supports the selected data transmission method; and the terminal device is configured to: transmit the message to the telecommunications network according to the data transmission protocol used by the data transmission application.

In the invalidation proceeding, the Reexamination board of the CNIPA held that, as the terminal device cannot be clearly described by structural features, the use of method features to characterize the product is allowable and claim 6 is definite. The Reexamination board also held that based on the contents of the specification and common general knowledge in the field, those skilled in the art can understand the composition and working mode of the terminal device as recited in claims 6-10. Therefore, the claims are supported by the disclosure in the specification.

In the infringement litigation proceeding, the court of the first instance held that embodiments in claim 7 is disclosed in the specification, but the description involves merely methods, steps or functions without the description of the device. Further, specific implementations on how the device is “configured to” cannot be found in the specification. Therefore, the claim scope of Nokia’s patent cannot be definitely determined in conjunction with the specification. Consequently, the court of first instance held that it was impossible to determine whether Huaqin had implemented Nokia’s patents, and Huaqin constituted no infringement. The court of the second instance upheld the decision subsequently.

Summary

Regarding claim 7, Nokia submitted that a skilled artisan can understand how each technical feature is “configured to” and how its structure is improved. In the invalidation decision, the Reexamination board of the CNIPA has confirmed that the claims are clear, that the claims are fully disclosed in the specification, and that the claims are supported by the specification.

However, the claims which remained valid after the invalidity challenge were not supported in the infringement litigation. Specifically, the court held that the device claim is unclear because the specific implementation of the device was not specifically disclosed in the specification. In other words, the judicial decision in the infringement litigation essentially ruled that the patent was not enforceable, which does not have much difference as being “invalid”.

One major takeaway from this particular case in China is that if and when pursuing patent protection in China with means-plus-function claims, an applicant should also utilize structural claims to mitigate any issues during patent prosecution and patent litigation.

If you have questions regarding patent protection or patent protection in foreign jurisdictions, it is advised to speak with an experienced Intellectual Property attorney.

At Founders Legal®, we work closely with our clients and inventors to protect innovations across a wide spectrum of industries, including computer software, electrical, biotechnology, chemical, pharmaceutical, medical, mechanical, consumer products, and more. In addition to patent prosecution, we provide comprehensive patent services ranging from patentability searches and assessments to advice on validity and infringement.

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