Recently, the Intellectual Property Court of the Supreme People’s Court concluded an infringement case of dispute over invention patent right of edible mushrooms culture, specifying the infringement decision rules for the claims limited only by microbial preservation number.

Shanghai Finc Bio Tech Inc. (hereinafter referred to as Finc Inc.) is the patentee of invention patent named “pure white hypsizygus marmoreus strains” with patent number of 201310030601.2.

The claim of the patent involved in the case is that “one kind of pure white hypsizygus marmoreus strains Finc-W-247, in which the preservation number is CCTCC NO：M2012378.”

Finc Inc. believed that the fungus products sold in Beijing Xinfadi Agricultural Wholesale Market by Tianjin Lvsheng Pengyuan Agricultural Technology Development Co., Ltd.(hereinafter referred to as Lvsheng Pengyuan Corporation), Tianjin Hongbin Hesheng Agricultural Technology Development Co., Ltd.( hereinafter referred to as Hongbin Hesheng Corporation) has infringed its aforementioned patent rights, therefore it filed a infringement lawsuit to Beijing Intellectual Property Court.

The court of original trial held that as the protection object of the said patent claims is a kind of microorganism, judgments of both morphological features and molecular biology features are indispensable to tell whether the sued infringement product is involved in the protection range of patent right involved in the case, but it is necessary for judging molecular biology features with related methods, reagents and apparatus in the laboratory.

After commissioned authentication, the expert opinion issued by the accreditation body showed that based on the characteristics of pure white hypsizygus marmoreus, ITS gene sequence and the features of the peculiar 975bp DNA fragment, in accordance with the comparison results, it can be judged that the white beech mushroom of Hongbin brand and the pure white hypsizygus marmoreus required for protection by the involved patent belong to the same strain.

Based on the above mentioned, the court of first instance determined that the alleged infringing product fell within the protection scope of the patent right involved, and judged that Lvsheng Pengyuan Corporation and Hongbin Hesheng Corporation should stop the infringement and each compensate Finc Inc. for economic losses of 1 million yuan.

Lvsheng Pengyuan Corporation and Hongbin Hesheng Corporation refused to accept the judgment of the first instance and filed an appeal, in which the main grounds of appeal was that the detection of molecular biological characteristics in the identification in this case shall use the complete gene sequence detection method instead of gene specificity fragment detection method documented in the patent specification involved, or else it will expand the protection scope of the patent rights involved in the case.

The Supreme People’s Court held that while the patent claims involved did not clearly limit the structure, physiological and biochemical characteristics of the strains involved, the microorganism field can be restricted by the way of preservation number, and it just need to guarantee obtaining the DNA instructions of the strains with the collection number.

As there’re other molecular marker patents protecting the identification method, it is unnecessary to make the identification method described in the patent specification included in the claims.

Therefore, to identify whether the alleged infringing product falls within the protection scope of the patent right involved with the identification method described in the patent specification in the case did not exceed the protection scope of the microbial species claimed by the patent rights in the case.

It is well known in the art that the SCAR molecular marker technology has developed based on RAPD, and its results are not affected by external environmental factors and growth stages, directly reflecting the genetic nature of the identified strains. SCAR molecular markers can be used to identify strains by obtaining the "strain-specific" markers of a certain strain.

In this case, the patent specification clearly documented that the said deposited strain has a specific SCAR molecular marker 975bp fragment. It is reasonable and credible to identify the alleged infringing strain with the method of using the SCAR molecular marker as a detection indicator and combing morphology and ITS sequence analysis, which didn’t expand the protection scope of the patent right involved. Accordingly, the Supreme People's Court in the final judgment rejected the appeal and upheld the original judgment.

This case is the first case involving dispute over microorganism invention patents infringement. In this case, the Supreme People’s Court gave full play to the role of intellectual property adjudication and clarified the determination of the protection scope of the claims limited by the microbial deposit number and the infringement decision rules, which demonstrates the judicial orientation of strictly protecting intellectual property rights according to the law and properly safeguarding the legal rights and interests of right holders, providing useful exploration and significant reference for the trial of such type of cases.

From The Intellectual Property Court of the Supreme People’s Court

October 12th, 2021