One Case a Day | China: Determination of Contributory Infringement - "Dental Handpiece" Case (2022) Supreme People's Court Zhi Min Zhong No. 1673

Case Introduction

Article 21 of the "Interpretation (II)" stipulates: "Where it is known that a product is specifically intended for materials, equipment, components, intermediates, etc., used to implement a patent, and without the permission of the patentee, the product is provided to others for the purpose of production and business operations, resulting in an act of patent infringement, and the right holder claims that the provider's act constitutes contributory infringement as stipulated in Article 1169 of the Civil Code, the people's court shall support it." It can be seen that determining whether the alleged infringer had "knowledge" is the key and difficult point in judging whether contributory infringement is established.

In today's shared case, the main unit and the universal drive motor are sold separately. The Supreme People's Court pointed out that when the alleged infringer sells a certain component of the product (the main unit in this case) separately, consumers who purchase this component will inevitably think of matching it with other components (the motor). After simply combining these components, they fall within the protection scope of the relevant patent. In such cases, it can generally be determined that the alleged infringer knew that the relevant product (the main unit) was a component specifically intended for implementing the patent, and their act constitutes contributory infringement.

Case Information

• First-Instance Information: (2021) Hu 73 Zhi Min Chu No. 433
• Second-Instance Judgment Date: March 15, 2024
• Second-Instance Judgment: (2022) Supreme People's Court Zhi Min Zhong No. 1673

Basic Facts

The involved patent is an invention patent with patent number 201210218452.8, titled "Dental Handpiece." Claim 1 is as follows:

1. A dental handpiece, said handpiece having a head [53], a substantially cylindrical neck [2], a substantially cylindrical handle portion [3], and a drive unit [4], wherein a dental treatment tool is to be attached to said head [53], said neck [2] extends proximally from said head [53], said handle portion [3] is detachably connected at its distal end to the proximal end of the neck [2] via a connecting device, and said drive unit [4] is detachably connectable to the proximal end of the handle portion [3], said handpiece comprising a locking device for preventing relative rotation between the neck [2] and the handle portion [3], said locking device comprising:
   • a locking pin [61] arranged in the handle portion [3], which is slidable in the axial direction of the handle portion [3],
   • a spring device for biasing said locking pin [61] proximally, such that in a rest position the distal end of the locking pin [61] is arranged within said handle portion [3], and
   • a blocking device formed at the proximal end of the neck [2], for receiving the distal end of the locking pin [61] to achieve engagement,
     wherein said locking device is arranged such that the connection of said drive unit [4] to the proximal end of the handle portion [3] causes said drive unit [4] to press the locking pin [61] distally against the proximal biasing of said spring device, thereby compressing said spring device and causing the distal end of said locking pin [61] to protrude from the distal end face of the handle portion [3] to engage with the blocking device, the engagement of the distal end of said locking pin [61] with said blocking device preventing relative rotation between the neck [2] and the handle portion [3], whereas the separation of said drive unit [4] from the proximal end of said handle portion [3] causes said locking pin [61] to be released from the pressure applied by said drive unit [4], allowing said locking pin [61] to slide proximally under the proximal biasing of said spring device, and said locking pin [61] to disengage from the blocking device.

Evidence in the case shows that on November 5, 2020, the alleged infringer sold two sets each of dental handpieces and motors. The motor product manual states: "The machine must be used within the scope mentioned in the manual. If the user does not operate according to the requirements of the manual or uses this machine for other purposes, the manufacturer will not bear any responsibility."

The dental handpiece product manual states: "Before using the dental pneumatic motor handpiece, please ensure that the handpiece and motor are firmly connected before use." Page 7, under "Connection and Separation of Handpiece and Motor," states: "Handpieces with positioning pins should be aligned with the positioning pins on the motor for connection."

The first-instance court found that when the dental handpiece and motor are used in combination, the combination falls within the protection scope of Claim 1.

Controversial Focus

Whether the alleged infringer's separate sale of dental handpieces and motors constitutes contributory infringement.

Second-Instance Court

Article 7 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" stipulates: "When determining whether the alleged infringing technical solution falls within the protection scope of the patent right, the people's court shall examine all the technical features recorded in the claim asserted by the right holder. If the alleged infringing technical solution contains technical features identical or equivalent to all the technical features recorded in the claim, the people's court shall determine that it falls within the protection scope of the patent right; if the alleged infringing technical solution lacks one or more technical features recorded in the claim, or has one or more technical features that are neither identical nor equivalent, the people's court shall determine that it does not fall within the protection scope of the patent right."

Article 21 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)" stipulates: "Where it is known that a product is specifically intended for materials, equipment, components, intermediates, etc., used to implement a patent, and without the permission of the patentee, the product is provided to others for the purpose of production and business operations, resulting in an act of patent infringement, and the right holder claims that the provider's act constitutes contributory infringement as stipulated in Article 1169 of the Civil Code, the people's court shall support it. Where it is known that a product or method is patented, and without the permission of the patentee, the product or method is actively induced for others to implement for the purpose of production and business operations, resulting in an act of patent infringement, and the right holder claims that the inducer's act constitutes abetment to infringe a patent as stipulated in Article 1169 of the Civil Code, the people's court shall support it."

The alleged infringer argued that they did not sell dental handpieces and motors as a set, and that the two have different rotational speeds and cannot be used together. Therefore, they did not fall within the protection scope of the involved patent right. In this regard, the court holds that both the dental handpiece and the motor are produced and sold by the alleged infringer. Objectively, the two can be connected and used, and after connection, they possess all the technical features of Claim 1 of the involved patent. Therefore, the first-instance court's determination that the alleged infringing technical solution formed by connecting the dental handpiece and motor falls within the protection scope of the involved patent right is not improper.

However, according to the evidence in the case, the involved dental handpiece and motor were not sold as a set by the alleged infringer. Therefore, the alleged infringer's manufacture and sale of the dental handpiece is an independent act, which did not directly cause the infringement of the involved patent right.

The patentee also pointed out that even if the alleged infringer did not sell the dental handpiece and motor as a set in this case, the dental handpiece still constitutes a product specifically for infringement. In this regard, the second-instance court holds:

The alleged infringer posted pictures of dental handpieces on their website but did not include any special instructions about which model of motor this model of dental handpiece should be paired with. Existing evidence proves that the alleged infringer has manufactured the dental handpiece product, offered it for sale on their website, and relevant parties have actually purchased this product. According to the content recorded in Claim 1 of the involved patent, it can be seen that the involved patent does not limit the specific structure of the drive unit, only limiting that the drive unit needs to play the role of pressing the locking pin. That is, in the technical solution of Claim 1 of the involved patent, the dental handpiece belongs to a specific component, and the drive unit belongs to a universal component. According to facts acknowledged by both parties, the dental handpiece must be matched with a suitable motor as the drive unit to be used normally. The alleged infringer did not provide a reasonable explanation for why they sell dental handpieces separately on their website but do not sell matching motors. In other words, after users purchase the dental handpiece, they will inevitably seek a motor with matching rotational speed to use, thereby achieving the same technical means, function, and effect as the technical solution of the involved patent.

Therefore, even according to the alleged infringer's claim that the motor and dental handpiece cannot be matched for use, their act of manufacturing and selling the dental handpiece, in accordance with Article 21, Paragraph 1 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)," as a specialized medical device enterprise, constitutes knowingly providing a product specifically intended for implementing the patent (materials, equipment, components, intermediates, etc.) to others for the purpose of production and business operations without the permission of the patentee, resulting in an act of patent infringement, and constitutes contributory infringement. The alleged infringer should also bear the corresponding infringement liability.

...

In the subsequent determination of infringement liability, the calculation is based solely on the contributory infringement act of the dental handpiece.

Feng Shangjie (Gasoll Feng)