Case Background
Company A held a utility model patent titled "An Automatic Lock-Pin Assembly Mechanism." Claim 1 defined components including a lock-pin pushing device, a lock-pin positioning and alignment device, and a lock-pin pressing device. The term "same centerline" appeared twice in the claim.
In December 2020, Company B requested the CNIPA to invalidate the patent. Among the grounds, Company B argued that the technical solution of Claim 1 was unclear and incomplete, was not supported by the specification, and therefore did not comply with Article 26(4) of the Patent Law. On the basis of their dependency, Claims 2 to 7 had the same defect.
In June 2021, the CNIPA issued an invalidation decision, finding that the two uses of "same centerline" in Claim 1 were contradictory and inconsistent, and that a person skilled in the art could not clearly determine the scope of protection of that term. The CNIPA held that the overall technical solution of Claim 1 was unclear, and that Claims 2 to 7 were likewise unclear. The patent was invalidated in its entirety.
Company A sued, seeking to revoke the decision and requesting that the CNIPA re-examine the case. The first-instance court dismissed the claim in 2023. Company A appealed, and in December 2024, the SPC issued its second-instance judgment, revoking both the first-instance judgment and the CNIPA's decision, and ordering the CNIPA to conduct a new examination.
The SPC's Decision
The court held that: Whether a claim clearly defines the scope of protection must be assessed from the perspective of a person skilled in the art, taking into account the purpose of the invention, the full disclosure of the specification, and the technical solution as a whole, on the basis of a reasonable interpretation of the claim.
As a general rule, where the same expression or term is used to define features in the same claim, it carries the same meaning. However, where a person skilled in the art, based on the claim and the specification and in light of the context, can reasonably determine that the term has different meanings in different contexts, and the scope of protection is clear under that interpretation, the term should be interpreted as having different meanings. It should not be rigidly assumed that interpreting the same term as having different meanings causes the scope of protection unclear.
In this case, although "same centerline" appeared twice in Claim 1, the former term referred to the centerline shared by the lock-pin mounting hole on the lock body and the positioning hole, while the latter referred to the centerline shared by the lock-pin pushing device and the positioning hole. Because the objects being defined and the contexts differed, the two uses did not necessarily carry the same meaning.
Reading the claims together with the relevant paragraphs of the specification and the drawings, the court found that the patent's main technical solution worked as follows: the lock-pin pushing device moves horizontally to deliver the lock pin above the positioning hole, and the lock-pin pressing device then moves vertically to press the lock pin through the positioning hole into the lock body. On that basis, a person skilled in the art could determine that the first "same centerline" meant that the lock-pin mounting hole and the positioning hole coincide along a longitudinal centerline, facilitating the pressing and assembly step, while the second "same centerline" meant that the transverse centerline of the lock-pin pushing device passes through the center of the positioning hole, allowing the lock pin to be delivered above the positioning hole. Under this interpretation, the scope of protection of Claim 1 was clear.
As for the fact that countless transverse centerlines pass through the center of the positioning hole on the support plate, so long as the transverse centerline of the pushing device passes through that center and no other component obstructs the movement, the pushing function can be achieved. Different angular choices therefore belong to the same technical solution rather than different technical solutions. The invalidation decision's finding that different positions of the relevant components would produce different technical solutions fell outside the scope of a reasonable interpretation by a person skilled in the art.
Accordingly, the invalidation decision's conclusion that the overall technical solution of Claim 1 was unclear and did not comply with Article 26, Paragraph 4 of the Patent Law was improper.
(2023) Zui Gao Fa Zhi Xing Zhong No. 485
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