Judicial Application Of Prosecution History Estoppel In Patent Infringement Litigation

Prosecution history estoppel is one of the important principles in patent in fringement litigation and is often used against the application of the doctrine o f equivalents.Relatively speaking,China's patent law appears late.Correspondin gly,the theoretical research on prosecution history estoppel can be further deep ened.The judicial application of this doctrine in patent infringement litigation l acks complete and specific operational standards.There are still many problems to be clarified.Courts have adopted different approaches in practice,which ha s led to differences in the application of the principle in judicial application.I n practice,the court did not reason about or reason less about the approach ta ken in disputes.The discussion of this issue in the relevant literature mostly f ocuses on the practice of judging a single controversial dispute in judicial prac tice.On the basis of summarizing and collecting relevant cases and literatures in recent years,this paper summarizes the links between various controversial disputes and finds out the change of theoretical understanding of the legal stat us and fundamental role of the principle.By re-clarifying the legal status and fundamental role of the principle,it provides a more sufficient theoretical basis for the court's practice in judicial practice,and expecting to providing a refer ence for judicial application of this principle in China.Chapter one collects and analyzes the cases and literature related to the ap plication of this doctrine in recent years.Through the analysis of cases and lit eratures,the judicial status and the use of the disputes of this principle in Chi na are summarized,that is,the subject,scope,conditions and criteria of aband onment.Through the analysis of the above applicable disputes,it is found that there are similarities between them.In history,prosecution history estoppel ha s always been a vassal of the doctrine of equivalents,and its role is to preven t the owners from “double-edged gains”.The gradual emergence of judicial pra ctice shows that people's understanding of the prosecution history estoppel is c hanging.The essence of the principle is that it is the method of interpretation of claims.Its fundamental role is to clarify the scope of protection of claims a nd maintain the exoteric effectiveness of patent documents.Chapter two analyzes the legal status and role of prosecution history estop pel in theory.For the legal status of this principle,first of all,the history of t he development of this principle shows that the emergence of this principle do es not depend on the doctrine of equivalents.Then,the temporal disjunction be tween prosecution history estoppel and doctrine of equivalents explains the diff erence in logical structure,and further clarifies the relationship between them.Finally,shows that prosecution history estoppel is independent of the doctrine of equivalents by explaining the relationship between relevance and causality,a nd on this basis,the essence of prosecution history estoppel is a method of cl aim interpretation is clarified.For the fundamental role of this principle,the re lationship between limit the application of doctrine of equivalents and defining the scope of claims is analyzed,and the latter's position plays the fundamental role.Chapter three analyzes the disputes in judicial application one by one,and draws corresponding conclusions according to the reorientation of the doctrine of prosecution history estoppel in chapter two.The first section analyzes the subject of the application of the principle an d believes that the court can actively apply it.First of all,the legitimacy of the court's active application is proved by the nature of the principle.Prosecutio n history estoppel is not a restriction on the doctrine of equivalents,but a met hod of interpretation of claims,which can play a role in determining the scope of claims.Court needs to determining the scope of claims first during the tria l of the case,so this principle can be applied actively.Secondly,the analysis of the civil law rights system strengthened this conclusion.It is clear that pros ecution history estoppel belongs to the defense of rights obstacles in broad de fense.Unlike the temporary or permanent defense right,the basis of claim righ t does not exist from the beginning,and the court can actively find out this.Even if the parties in the lawsuit have not filed,the court should take the init iative to find out the facts.The court's initiative to apply this principle can no t only reduce the information cost of the defendant,but also help to maintain the uniformity of the court's judgment.At the same time,it refuted that the vi ew of concern that the court's active application will lead to the court's deviat ion from neutrality.In the second section,the scope of application of this principle is analyze d and it is considered that it can be applied to the literal infringement situatio n.First of all,the fundamental role of prosecution history estoppel is theoretic ally to help clarify the scope of claims,and should not be limited by the doct rine of equivalents.Taking the reissue in US patent system as an example,the independence of prosecution history estoppel is further explained.Then it is t heoretically stated that the principle of equivalence cannot cover all the situatio ns in which the prosecution history estoppel is applicable,and through the def ormation of the infringed products in a case,the situation in which prosecution history estoppel is applied in literal infringement is constructed.In the third section,it analyzes whether the reasons of abandonment shoul d be considered in the application of the principle,and draws the conclusion t hat it only needs to consider whether there is a result of the abandonment of t he technical solution.It firstly clarify the difference between the subjective rea son of abandonment and the objective reason of abandonment and the expanding scope of the reasons of abandonment in China and the US judicial practice:from “novelty,creative relevance” to “substantially relevant conditions” with re buttable presumption.This change reflects the change in the perspective of judi cial practice from the full consideration of the owner's will to the information received by the public.Finally,the two reasons for considering the reasons of abandonment are respectively reversed by the two aspects of the independence of prosecution history estoppel and the different between considering the reason of abandonment and not in practice,and the change of viewpoint in judicial application of the Supreme Court of China is demonstrated.At last,the conclu sion that do not consider the reason of abandonment is strengthened by two as pects of the unification of the special institutional framework conducive to the separation of patent authorizer and infringement judge and the reduction of soc ial cost.The fourth section analyzes the criteria of abandonment,and it is consider ed that it should be guided by objective results when considering whether to c onstitute an abandonment.Specifically,three controversial modifications are ana lyzed: the original independent claim is deleted,the original dependent claim is changed as the new independent claim,the case of passive abandonment,and the case of adding new technical features.Through the analysis of the Supre me Court's "Zhongyu case" judgment documents,the two controversial interpret ations of the case are clarified.The case conveys two viewpoints: First,the cl aims are independent of each other,so the first dispute does not constitute an active modification;Secondly,prosecution history estoppel can be applied in pa ssive abandonment situation,so the first and second disputes can both apply th is principle.Therefore,the understanding of “abandonment” should be unders tand from the public perspective,either as an express act of the owner or as a behavior that the public can read from the change of the scope of claims.Fo r the third controversial situation,China and the US have different judicial pra ctices.China adopts the “covered or not” to distinguish the situation,and the US applies the principle in all situations.The analysis of the relationship between technical features,technical solutions,claims and the scope of claims expla ined the reasons for the differences in judicial practice between the two countri es.Finally,the relationship between Article 13 of the Patent Interpretation of P atent Infringement(?)and Article 6 of the Judicial Interpretation of Patent In fringement(?)is clarified: the former is the emphasis on the latter.