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Broadest Reasonable Interpretation, Presumption of Validity and Doctrine of Claim Differentiation
The scope of a patent is defined by the languages of the claims. Due to the polysemy of the language, a term may have different meanings to different people. Divergent interpretations of a term have influence in the scope of a claim, and also affect the determinations of infringement and/or patent validity. Therefore, disagreements and debates always exist between both parties regarding the claim constructions in patent litigations.
Paragraph 4 of Article 58 of the Patent Act currently in force stipulates the principle of claim construction: “The scope of the protection conferred by an invention patent is determined by the claim(s), and the description and drawing(s) may be considered as a reference in the interpretation of the claim(s).”
Nevertheless, different principles are adopted in patent examination and patent litigation. According to the patent examination guidelines currently in force, the “broadest reasonable interpretation” principle should be adopted in claim construction. That is, “the interpretation of the claims shall, in principle, give the terms of the claims a most extensive and reasonable meaning, and be consistent with the disclosure of the specification.” As a comparison, in the Patent Infringement Assessment guidelines, the “presumption of validity” is a principle that should be adopted in claim construction. That is, in patent litigation, if a term in a claim has multiple interpretations, that term should not be interpreted in the broadest reasonable manner. Instead, such term should be interpreted under the presumption that the claim is valid, without adopting an interpretation that may invalidate the claim.
So, what kind of principles should be adopted in a patent invalidation proceeding (including its subsequent administrative litigation)? The supreme administrative court expressed its opinion in the 108 Pan-Zhi no. 486 administrative ruling made on October 7, 2019.
This case is an administrative litigation regarding a patent invalidation proceeding. In this case, the supreme administrative court does not adopt the “presumption of validity” principle in claim construction. Rather, the supreme administrative court made a decision unfavorable to the patentee based on the “broadest reasonable interpretation” principle. The patent in dispute pertains to an electronic payment system. The patentee asserts that the feature “execute the client transaction program based on the transaction account information” of Claim 1 should be interpreted as “the client transaction program cannot be executed without the transaction account information,” and the patentee argues that the prior art documents do not disclose this feature and thus they fail to prove that Claim 1 lacks novelty.
However, the supreme administrative court states in the judgement: “claim construction based on the embodiments of the specification and the drawings should be conducted in the broadest reasonable manner; the claims shall not be limited to the embodiments in the specification and the drawings, except in the case that the specification has clearly stated that the claimed scope is limited to the embodiments and the drawings; the parties concerned should not alter the scope of the patent which is objectively manifested through publication.”
The specification or the claims of the patent in dispute do not discuss whether the client transaction program can be executed without the transaction account information, and as a result, the supreme administrative court opines that there is no room for different interpretations of the feature “execute the client transaction program based on the transaction account information.”
Additionally, based on the doctrine of claim differentiation, the patentee asserts that the feature “execute the client transaction program based on the transaction account information” of Claim 1 is different from the feature “execute the sale transaction program” of Claim 2. According to the patentee, the feature “execute the… program based on the transaction account information” is different from the feature “execute the… program” and thus these two features should be interpreted differently. The supreme administrative court does not accept the patentee’s above assertion and states: 'Claim 2 directly depends from Claim 1 and includes all the features of Claim 1… there is no room for the feature “execute the client transaction program based on the transaction account information” of Claim 1 to be interpreted as “the client transaction program cannot be executed without the transaction account information,” as a result of the language in Claim 2.'