Determination of Contributory Infringement in Patent Infringement Disputes

[Key Points of the Judgment]

Where the alleged infringer sells the components of a product separately, but the simple assembly of those components sold separately by others results in a product falling within the scope of protection of the patent-in-suit, it may generally be determined that the alleged infringer knew the relevant product was a component specially adapted for implementing the patent, constituting contributory infringement.

[Keywords]

Civil, Infringement of Invention Patent Right, Contributory Infringement, Combination of Components

[Basic Facts of the Case]

Plaintiff Japanese Corporation A alleged: It is the patentee of the invention patent titled "Dental Handpiece" with patent number 20121021****.8 (hereinafter referred to as the patent-in-suit). Defendant Foshan Medical Device Company B committed acts of manufacturing, selling, and offering for sale the alleged infringing products CX235C6-22 handpiece and C-PUMA motor, infringing the patent-in-suit. These two products, the C-PUMA motor and the CX235C6-22 handpiece, constitute all the components of the alleged infringing product. The CX235C6-22 handpiece itself does not contain a motor, and the C-PUMA is an independent motor that can be used with dental handpieces of different speed ratios. Judging from the product usage method, Foshan Company B's purpose in manufacturing the CX235C6-22 handpiece and the C-PUMA motor is for them to be assembled and used together. Although the CX235C6-22 handpiece and the C-PUMA motor are packaged and sold separately, their assembly method is unique. Users merely mechanically deduce the usage method when assembling the two together; in essence, it is still Foshan Company B that has performed the acts of manufacturing and selling the alleged infringing product. Even if Foshan Company B did not sell the two products as a set, the CX235C6-22 handpiece is still a dedicated item for infringement, and its acts of manufacturing, selling, and offering for sale constitute contributory infringement. In November 2020, Japanese Corporation A purchased two CX235C6-22 handpieces and two C-PUMA motors from Shanghai Medical Device Company C, paying 10,560 yuan. The acts of Shanghai Company C also constitute patent infringement. Japanese Corporation A requested the court to order: 1. Foshan Company B to immediately cease the infringement of the patent-in-suit, including but not limited to ceasing the manufacturing, selling, and offering for sale of the infringing dental pneumatic handpieces and dental electric motors, destroying the special equipment and molds used for manufacturing said infringing products, and destroying all inventory infringing products; 2. Shanghai Company C to immediately cease the infringement of the patent-in-suit, including but not limited to ceasing the manufacturing, selling, and offering for sale of the infringing dental pneumatic handpieces and dental electric motors; 3. Foshan Company B to pay damages for infringement and reasonable expenses for rights protection amounting to 2 million yuan, and Shanghai Company C to pay damages for infringement and reasonable expenses for rights protection amounting to 100,000 yuan; 4. If the court determines that Shanghai Company C and Foshan Company B should bear joint and several liability, then Shanghai Company C shall bear joint and several liability with Foshan Company B within the scope of 100,000 yuan.

Foshan Company B argued: The alleged infringing product CX235C6-22 handpiece at least does not possess the technical features of the drive unit and the dental treatment tool in claims 1, 2, 4, and 5 of the patent-in-suit. The preset speed ratio of the CX235C6-22 handpiece does not match that of the C-PUMA motor. Foshan Company B has already required users to use the machine within the range mentioned in the manual in the form of a safety warning in the C-PUMA motor user manual, i.e., prohibiting users from pairing the two for use. Foshan Company B did not advertise that the motor could be used with the CX235C6-22 handpiece, nor did it actively inform consumers that the motor could match the handpiece. Therefore, the alleged infringing product does not fall within the scope of protection of the patent-in-suit.

Shanghai Company C argued: The alleged infringing products were purchased from Foshan Company B; Shanghai Company C was unaware that the alleged infringing products were infringing products, does not manufacture them, and previously did not sell such products; Japanese Corporation A impersonated a customer specifying the model for purchase, and Shanghai Company C should not be liable for damages in this regard.

Upon trial, the court found: Foshan Company B sells various models of contra-angle handpieces, including the C-PUMA brushless micro electric motor and the CX235C6 "dental pneumatic handpiece." On Foshan Company B's webpage, under the "Product Display" page, within the "Dental Handpiece" category, there exists a product display page for "C235C6 Implant Contra-angle Handpiece." Under the "Electric Motor" category, there exists a product display page titled "A Must-have Marvel for Minimally Invasive Tooth Extraction, Freshly Released!" The product description below states: The "Minimally Invasive Tooth Extraction Marvel Set" consists of "Brushless Micro Electric Motor C-Puma + 45-degree Angled Extraction Handpiece (1:4.2)." The introduction for "C-PUMA Brushless Micro Electric Motor" states it has "extensive speed adjustment function" and "can adjust speed within the range of 100-200,000 rpm according to different uses and when paired with different dental handpieces."

The first-instance court rendered a civil judgment: 1. Foshan Company B and Shanghai Company C shall immediately cease the acts of infringing the invention patent titled "Dental Handpiece" with patent number 20121021****.8 owned by Japanese Corporation A from the effective date of the judgment; 2. Foshan Company B shall pay Japanese Corporation A damages for economic losses of 500,000 yuan; 3. Foshan Company B shall compensate Japanese Corporation A for reasonable expenses incurred in safeguarding its rights amounting to 100,000 yuan, and Shanghai Company C shall bear joint and several liability for 30,000 yuan thereof; 4. All other claims of Japanese Corporation A are dismissed. Foshan Company B refused to accept the judgment and appealed. The Supreme People's Court rendered the (2022) Supreme People's Court Intellectual Civil Final No. 1673 civil judgment on March 15, 2024: The appeal is dismissed, and the original judgment is affirmed.

[Opinions of the Court]

The court's effective judgment held: During the first-instance proceedings, Foshan Company B acknowledged that the C-PUMA motor and C235C6-22 handpiece purchased by Japanese Corporation A through Shanghai Company C were manufactured by it. Shanghai Company C had no objection to its sales act. Foshan Company B posted pictures of the CX235C6-22 handpiece on its website but included no special instructions regarding what model of motor this handpiece model should be paired with. Existing evidence proves that Foshan Company B has manufactured the CX235C6-22 handpiece and offered it for sale on its website, and Japanese Corporation A actually purchased this product. Claim 1 of the patent-in-suit states: "...said drive unit is connected to the proximal end of the handle portion causing said drive unit to press the stop pin distally against the proximal bias of the spring device thereby compressing said spring device and causing the distal end of said stop pin to protrude from the distal end face of the handle portion to engage with a prevention means, the engagement of the distal end of said stop pin with said prevention means preventing relative rotation between the neck portion and the handle portion, while the separation of said drive unit from the proximal end of said handle portion causes said stop pin to be released from the pressure applied by said drive unit, allowing said stop pin to slide proximally under the proximal bias of said spring device, and said stop pin to disengage from said prevention means." It can be seen that the patent-in-suit does not limit the specific structure of the drive unit, only limiting that the drive unit needs to serve the function of pressing the stop pin. That is, in the technical solution of claim 1 of the patent-in-suit, the handpiece is a specific component, while the drive unit is a general component. According to facts acknowledged by both parties, a dental handpiece must be paired with a matching motor as a drive unit to function normally. Foshan Company B provided no reasonable explanation for why it sells the CX235C6-22 handpiece separately on its website but does not sell a matching motor. In other words, after purchasing the CX235C6-22 handpiece, users will inevitably seek a motor with a matching speed for use, thereby achieving a result with the same technical means, function, and effect as the technical solution of the patent-in-suit. Therefore, even according to Foshan Company B's assertion that the C-PUMA motor cannot be matched with the CX235C6-22 handpiece for use, its acts of manufacturing and selling the CX235C6-22 handpiece, pursuant to 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), constitute, as a specialized medical device enterprise, knowing that the relevant product is a material, equipment, component, intermediate, etc. specially adapted for implementing a patent, providing this product to others for the purpose of production and business operations without the authorization of the patentee, thereby enabling others to commit an act of patent infringement, constituting contributory infringement. Foshan Company B should also bear liability for infringement.

[Related Legal Provisions Index]

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; 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)

[Original judgment]

(2022) Supreme People's Court Intellectual Civil Final No. 1673