INSIGHTS According to the recent publication on China Judgements Online, a platform offering the largest collection of judgments and decisions from Chinese courts, the Supreme People's Court upheld the invalidity of InterDigital's patent in favor of Huawei. This result reflects Huawei's remarkable capability of challenging InterDigital's patents. In addition to the final judgment result of this case, a minor issue in the adjudication has captured our attention.
From the administrative judgment by the Supreme People's Court, it can be seen that one of the focuses of dispute between the parties pertained to a translation discrepancy introduced upon entry of the InterDigital's PCT application into the Chinese national phase. More specifically, the translation discrepancy is about the translation of the word "or" from English to Chinese.
The original claim 13 of the InterDigital's PCT application in English (see International Publication No. WO 2011/149920 A2) reads as follows:
"13. The method according to claim 12, wherein the determined retuning gap is applied on a condition that all activated component carriers are no longer within DRX Active Time or within the required retuning gap period in advance of a next DRX On Duration period or a next DRX cycle."
Upon entry of the international application into the Chinese national phase, the patent agency representing InterDigital before the China National Intellectual Property Administration (CNIPA) filed the Chinese translation of the international application, where the Chinese translation of the original claim 13 reads as follows (see Chinese Application Publication No. CN102907060A):
"13. 根据权利要求12所述的方法，其中在下一DRX开启持续时间周期或下一DRX循环之前、所有激活的分量载波都不再在DRX活动时间内或不再在需要的重调谐间隙周期内的情况下，应用所确定的重调谐间隙。"
In this translation, the phrase "no longer within ... or within ..." was translated as "不再在...内或不再在...内," where the word "or" was translated as "或".
After examination, the CNIPA allowed the national phase application as Chinese Patent No. 201180025946.8, without making any modifications to the additional technical features of claim 13, which was renumbered as claim 11 in the allowed patent (see Chinese Patent Publication No. CN102907060B):
"11. 根据权利要求10所述的方法，其中在下一DRX开启持续时间周期或下一DRX循环之前、所有激活的分量载波都不再在DRX活动时间内或不再在需要的重调谐间隙周期内的情况下，应用所确定的重调谐间隙。"
In 2019, Huawei requested the CNIPA to invalidate all the allowed claims of the above patent. In response, InterDigital submitted remarks, and requested to change the Chinese translation of the word “or” from “或” to “以及”, as correction of an obvious translation error:
"11. 根据权利要求10所述的方法，其中在下一DRX开启持续时间周期或下一DRX循环之前、所有激活的分量载波都不再在DRX活动时间内或以及不再在需要的重调谐间隙周期内的情况下，应用所确定的重调谐间隙。"
After review, the CNIPA made a decision to declare all the allowed claims of the above patent invalid. Regarding the translation issue, the CNIPA deemed that InterDigital's arguments regarding the discrepancy in translation between the original claim 13 of the PCT application and the allowed claim 11 of the Chinese national phase patent failed to establish that the translation of "or" as "或" constituted an obvious translation error. As a result, the proposed modification was rejected in accordance with the applicable provisions outlined in the Patent Examination Guidelines.
InterDigital was dissatisfied with the CNIPA's decision and proceeded to file a lawsuit with the Beijing Intellectual Property Court. After a trial, the court made the first-instance judgment upholding CNIPA’s decision and rejecting InterDigital’s claims. Regarding the translation issue, the court deemed:
Subsequent to the first-instance judgment, InterDigital filed an appeal with the Supreme People's Court. After a trial, the Supreme People's Court made the final judgment rejecting InterDigital's appeal and upholding the original judgment. With regard to the translation issue of the allowed claim 11, the Supreme People's Court deemed: the recitation of the allowed claim 11 is definite without any contradiction to the specification and claims as a whole, and the word "或" therein could be directly and unambiguously understood from the context and the sentence itself, so there is no obvious error or ambiguity existing in the allowed claim 11; as a result, the requested change to the allowed claim 11 is unacceptable.
The significance of precise translation in patent documents
The English word "or" is usually translated as "或" in Chinese. Nevertheless, it should be noted that the word "or" in a negative expression often conveys parallel relationship between multiple examples and thus has the meaning of "and".
For example, "Either M or N" means "或者M或者N", "Neither M or N" means "既不M也不N都不", and "Not M or N" means "既不M也不N".
Accordingly, if the negative phrase "no longer within ... or within ..." in the original claim 13 of the PCT application had been translated as "既不再在...内也不再在...内" (neither within ... nor within ...) upon entry into the Chinese national phase, the dispute regarding the translation of the allowed claim 11 during subsequent patent confirmation procedures could have been averted.
Moreover, it is stipulated in the Rules for the Implementation of the Patent Law that, for a patent based on an international application, where an error in the translation results in a claimed scope that exceeds the scope expressed in the original text of the international application, the claimed scope shall be limited to the scope expressed in the original text (see Article 135 of the Rules revised in 2023, or Article 117 of the Rules revised in 2010). If InterDigital had requested, in response to the request for invalidation of the patent, that the additional technical features of the allowed claim 11 be interpreted, according to the above provisions of the Rules, as below:
“在下一DRX开启持续时间周期或下一DRX循环之前所有激活的分量载波都既不再在DRX活动时间内也不再在需要的重调谐间隙周期内的情况下，应用所确定的重调谐间隙,” the scope of the interpreted claim 11 may be accepted by the CNIPA.
In conclusion, patent document translation is essential and critical, whether it involves a Chinese application based on a foreign application or a foreign application based on a Chinese application. Compared to general translation, patent document translation may require a high level of expertise in relevant technical fields. Translators must not only possess strong proficiency in foreign languages but also demonstrate a comprehensive understanding of the technical solutions.
Furthermore, unlike general translation, patent document translation strictly avoids liberal translation. Even the conjunction, preposition, adverb, or quantifier within the patent document may hold significant importance in determining and interpreting the claimed scope of the patent once it is transformed into legal language.
Although various Artificial Intelligence (AI) translation tools are prevalent, none currently reaches the professional level necessary for patent document translation. Accordingly, it is necessary for patent agents to translate patent documents with utmost care, ensuring the utmost accuracy and precision, so as to provide better legal basis for subsequent patent enforcement activities and proceedings.
Author: Zhiyong ZHU
Boasting a decade in the IP industry, Zhiyong specializes in foreign patent applications, particularly in electronics, circuits, semiconductors, and internet technology. Having worked at LiFang & Partners Law Firm, Bosijia Intellectual Property Company, and Beijing Forestsong Patent Agency as department head and quality control, Zhiyong has served major clients including SenseTime Technology, Xiaomi, New H3C, Hikvision, Sony, Canon, Toshiba, Samsung, Apple, etc. Zhiyong can be reached at zhiyong.zhu@purplevineip.com.
