One Case a Day | China: The Limiting Effect of Subject Names + Determination of Commercial Success - (2021) Supreme People's Court IP Administrative Final No. 847

Case Introduction

Happy New Year, everyone. Wishing you all great success in the new year.

I got back quite late today and only sat down at 10:30 PM. I hope I can share today's case with you all by midnight. Today's case involves two distinctive knowledge points: the limiting effect of the subject name on the scope of patent protection and the determination of commercial success under patent law. Under what circumstances does the subject name not have a limiting effect? Does high sales volume necessarily mean commercial success?

Let's step into today's case and welcome the arrival of the new year.

Case Information

• Application Number: 201620056618.4
• Invention Title: Mobile Phone Step Counter
• Filing Date: January 20, 2016
• Invalidation Decision Information: No. 36621
• First Instance Information: (2018) Beijing 73 Administrative Initial No. 11074
• Second Instance Judgment Date: December 14, 2023
• Second Instance Judgment: (2021) Supreme People's Court IP Administrative Final No. 847

Controversial Focus

The involved patent is a utility model patent, which protects a mobile phone step counter. It includes a base 1, a swing frame 2 with a mobile phone fixing and placement space 220, and an electromagnetic drive device that drives the swing frame to swing. Through the interaction between the magnetic force generated by the electromagnetic drive device and the gravity of the swing frame itself, the mobile phone placed on the swing frame automatically shakes, simulating the action of a pedestrian walking, enabling the software in the mobile phone to count steps.

The core controversial points of this case are: ① Whether the subject name "Mobile Phone Step Counter" has a limiting effect; ② Whether a huge sales volume equals commercial success?

Views of the Parties

The patentee believes that "Mobile Phone Step Counter" has a limiting effect on Claim 1. The overall structural features of Claim 1 of this patent reflect the purpose of "mobile phone step counting" and solve the technical problem of "assisting the mobile phone in automatic step counting." That is to say, the purpose of "mobile phone step counting" has a limiting effect on the overall technical solution of Claim 1 of this patent. The patentee also pointed out that the evidence on file can prove that the sales volume of this patented product is huge, achieving commercial success.

The invalidated decision and the first-instance judgment both held that "Mobile Phone Step Counter" does not have a limiting effect on Claim 1. Among them, the first-instance court held that: First, it is well known that when mobile phone users walk or exercise, mobile phone step-counting apps and built-in step-counting hardware in mobile phones, such as gyroscopes, vibration sensors, gravity sensors, etc., work in synergy to achieve the step-counting function of the mobile phone. With the advent of step-counting apps, mobile phone users have begun to explore or implement methods to simulate human walking or exercise by manually or mechanically shaking the mobile phone to meet the entertainment needs of mobile phone step counting, such as tying the mobile phone to the swinging arm of a pet or a fortune cat, placing the mobile phone on a vibrator, or manually shaking the mobile phone. To solve the practical need for mobile phone shaking, this patent merely provides one technical solution among many to solve this technical problem. Bao's claim that this patent proposes a new technical problem lacks factual basis. Second, this patent clearly states that during use, the mobile phone is fixed on the swing frame. Under the interaction of magnetic force and the gravity of the swing frame itself, the swing frame continuously swings, thereby continuously shaking the mobile phone, achieving the purpose of counting steps by the app inside the mobile phone. It can be seen that the app inside the mobile phone is the software that actually achieves mobile phone step counting. Although the subject name of Claim 1 of this patent is "Mobile Phone Step Counter," its technical solution is essentially an automatic swinging mechanical device that can hold a mobile phone. Its function is to drive the mobile phone to swing automatically. Only when a mobile phone with a step-counting app is placed in the mobile phone fixing and placement space of this device and automatically swung can the mobile phone step-counting function be realized, relying on the mobile phone step-counting app. Third, this patent is a utility model patent. Its subject name "Mobile Phone Step Counter" does not have any impact on the structure of the automatic swinging mechanical device itself claimed in Claim 1 of this patent. Regardless of whether the mobile phone has a step-counting app or whether the mobile phone is placed on this mechanical device, the automatic swinging mechanical device described in Claim 1 of this patent can achieve automatic continuous swinging function when powered on. It can be seen that "Mobile Phone Step Counter" is merely a description of the purpose: when a mobile phone with a step-counting app is placed on this mechanical device and automatically swung, the app inside the mobile phone can automatically count steps. This purpose limitation does not play a role in judging whether the technical solution described in Claim 1 of this patent possesses novelty or inventiveness.

Second Instance Court's View

1. Regarding the Limiting Effect of the Subject Name

① When determining the scope of protection of an invention or utility model patent right, normally, all features recorded in the claims, including the subject name, should be considered.

② However, whether the subject name has an actual limiting effect on the scope of protection of the claims should be determined by considering the relationship between the subject name and the technical content of the claims, whether the subject name has a substantive impact on the claimed subject matter itself, etc., in conjunction with the type of patent right.

③ The subject matter protected by a utility model patent right is a technical solution proposed for the shape, structure, or combination thereof of a product. Utility model patent rights only protect products, not methods. Using a product for a specific purpose does not fall within the scope of protection of a utility model patent right. Therefore, when judging whether a subject name limited by purpose has an actual limiting effect on the scope of protection of a utility model patent right, the relationship between the limited purpose and the technical content of the claims, and whether it implies that the product claimed for protection has a specific shape or structure, should be considered. If the purpose limited by the subject name does not correspond to the technical content of the claims or does not have a substantive impact on the shape or structure of the product claimed for protection, then it does not have an actual limiting effect on the scope of protection of the utility model patent right, cannot constitute a distinguishing feature between the technical solution claimed for protection and the closest prior art, and thus cannot affect the judgment of novelty and inventiveness.

In this case, although the subject name of this patent is "Mobile Phone Step Counter," first, from the records of the claims and the description, the technical solution claimed for protection by this patent is merely a swingable mechanical device with a mobile phone placement space. Through the interaction between the magnetic force generated by the electromagnetic drive device and the gravity of the swing frame itself, the mobile phone placed on the swing frame automatically shakes. It does not itself have the function and effect of counting steps. Step counting is achieved by the synergistic action of hardware such as gyroscopes, vibration sensors, gravity sensors, etc., built into the mobile phone and software with step-counting functions. That is to say, whether the step-counting function can be achieved is not determined by the technical solution claimed for protection by this patent, but by the software and hardware configured on the mobile phone placed on the product of this patent. Placing a mobile phone without a step-counting function on the product of this patent cannot count steps. Therefore, the technical content of the claims of this patent is essentially "a device for automatically shaking a mobile phone," not a mobile phone "step counter." The "step counter" in the subject name does not correspond to the technical content of the claims.

Second, this patent is a utility model patent. As mentioned earlier, the purpose limitation in the subject name of a utility model patent usually only has an actual limiting effect on the scope of protection of the claims when it implies that the product claimed for protection has a specific shape or structure. The technical solution of this patent itself has no direct relationship with mobile phone step-counting software and corresponding hardware. It is merely a device that can hold a mobile phone and make it shake automatically. By automatically shaking the mobile phone, it can make the mobile phone software and hardware mistakenly believe that the mobile phone user is in a state of motion, thereby recording steps. The so-called "step counting" merely describes a purpose of the product of this patent and does not have any impact on the shape or structure of the product itself. Regardless of whether a mobile phone is placed on the product of this patent or whether the placed mobile phone has a step-counting function, this patent can achieve automatic continuous swinging function when powered on. In summary, the "step counter" in the subject name of this patent does not have an actual limiting effect on the scope of patent protection and does not constitute a distinguishing feature between this patent and Evidence 3 or Evidence 4.

2. The Impact of the Huge Market Sales Volume of This Patent Product on the Determination of Inventiveness

Whether an invention possesses inventiveness should normally be judged using the "three-step method." The "three-step method" evaluates from the perspective of technical contribution whether the invention makes a substantive contribution to the prior art, requiring the invention to be different from the prior art and that the difference reaches a degree of "non-obviousness" to a person skilled in the art. Commercial success evaluates the invention from the perspective of economic incentives and is an auxiliary consideration in inventiveness judgment. When the "three-step method" is sufficient to make a clear evaluation of inventiveness, the importance of auxiliary consideration of commercial success has already been reduced. To determine that the claimed technical solution possesses inventiveness based on commercial success, the following two conditions must be simultaneously met: First, the implementation of the technical solution can create high socio-economic value; second, the commercial success is directly caused by the technical solution itself. Specifically:

First, the implementation of the technical solution can create high socio-economic value. The rational basis for granting a patent right to an invention based on commercial success is the economic value of the technical solution to society. Therefore, the key to determining commercial success lies in whether the implementation of the technical solution can create high socio-economic value and promote social and economic development. High market sales volume does not necessarily mean obtaining commercial success in the sense of patent law. In this case, the purpose of mobile phone step counting is to record the exercise steps of mobile phone users. Some companies, schools, and merchants rank users' mobile phone steps and reward users who complete certain mobile phone step tasks or provide discounts, all to encourage users to improve their physical fitness through exercise and develop a healthy lifestyle. This patent uses a mechanical device to automatically shake the mobile phone, fabricating steps. Its essence is to help mobile phone users obtain improper benefits through deceptive means. The implementation of the technical solution of this patent causes the mobile phone step-counting software to lose its original positive functions and effects, which does not conform to mainstream social norms and expectations. Its achievement of relatively large market sales volume is insufficient to determine that it has achieved commercial success.

Second, commercial success is directly caused by the technical solution itself. As mentioned earlier, the technical solution of this patent merely achieves automatic continuous swinging of the mobile phone, while the step-counting function is achieved by the software and hardware of the mobile phone itself. Consumers purchase the product of this patent or products implementing this patent without permission mainly to fabricate walking steps to obtain rewards, complete tasks, etc. The product sales volume is not directly caused by the technical solution of this patent itself but is related to the improper benefits brought by fabricating mobile phone steps.