The Supreme People’s Court concluded a dispute over infringement of an invention patent, dismissed all litigation claims of the patentee, and issued a penalty decision against the patentee for “intentionally making false statements and obstructing the court’s trial.” In this case, the patentee amended the claims during the administrative patent invalidation proceedings, and such amendments were accepted by the CNIPA. However, the patentee failed to promptly inform the court of first instance of amendments to the claims, which led the court of first instance to mistakenly render its ruling based on the claims prior to amendment. This ultimately resulted in the ruling of first instance being overturned and revoked by the court of second instance. Accordingly, the court of second instance rejected the patentee’s request to withdraw the lawsuit and imposed a fine of RMB 150,000.
The basic facts of the case are as follows: Company A, the patentee, filed an application for an invention patent (hereinafter referred to as the patent) with the CNIPA, which was granted on November 24, 2020. Company A claimed that the accused infringing product manufactured by Company B contained all the technical features of Claims 1 and 2 as published in the grant announcement of the patent, and therefore fell within the scope of protection of the patent. Consequently, Company A filed a lawsuit with the court of first instance, requesting that Company B and Company C (the distributor of the accused infringing product) be ordered to cease manufacturing, selling, and offering for sale the accused infringing product, and to compensate for losses. The court of first instance, using Claims 1 and 2 as published in the grant announcement of the patent as the basis for comparison, found that the accused infringing technical solution contained all the technical features of Claim 1 as published in the grant announcement and therefore fell within the scope of protection of the patent, constituting infringement. On January 4, 2023, the court of first instance rendered its ruling, ordering Company B to cease infringement and to compensate Company A for economic losses and reasonable expenses for rights protection totaling RMB 100,000.
Following the first-instance ruling, Company B, dissatisfied, filed an appeal with the Supreme People’s Court, arguing that the claims of the patent at issue had been amended during the first-instance proceedings and that the accused infringing technical solution did not fall within the scope of protection of the amended claims.
The Supreme People’s Court, in the second instance, found that after the first-instance court held the trial, two third parties filed invalidation requests against the patent at issue with the CNIPA. On July 25, 2022, and September 26, 2022, respectively, Company A submitted observations and amended claims to the CNIPA, incorporating the additional technical feature of Claim 6 (as published in the grant announcement) into Claim 1 of the grant announcement to form a new Claim 1, deleting Claim 6 of the grant announcement, and making corresponding adaptations to the numbering and references of other claims. On October 14, 2022, the CNIPA held an oral hearing and announced on the spot that it accepted the amended claims submitted by Company A. The two third parties then withdrew their requests for invalidation, respectively, on October 25 and November 4, 2022, based on Company A’s aforementioned amendments to the claims of the patent. On November 14, 2022, the CNIPA issued its decision on the invalidation requests, maintaining the validity of the patent at issue on the basis of the patentee’s amended claims; this decision has then become effective. The first-instance court, however, conducted its infringement comparison based on the claims as published in the grant announcement and rendered its ruling on January 4, 2023, finding that Company B had committed patent infringement and ordering it to bear civil liability.
The Supreme People’s Court held that, upon comparison, the accused infringing product did not possess the additional technical feature of the original Claim 6 and therefore did not fall within the protection scope of the amended Claim 1, meaning that Company B did not constitute infringement. During the first-instance proceedings of this case, Company A amended the claims of the patent during the administrative patent invalidation proceedings, and the CNIPA accepted the amended claims on the spot at the oral hearing held on October 14, 2022. Company A was clearly aware of the fact that it had amended the claims in the invalidation proceedings and that such amendments had been accepted by the CNIPA. The scope of protection of the amended claims had undergone a substantive change, which had a significant impact on the infringement lawsuit filed by Company A based on the patent. However, up until the first-instance court rendered its ruling on January 4, 2023, Company A did not inform the first-instance court of this basic fact, resulting in the first-instance court erroneously adjudicating the case based on the relevant claims prior to amendment (i.e., the claims as published in the grant announcement). In this case, once the CNIPA announced its acceptance of the amended claims, the amendments took effect, and the scope of protection of the patent should be based on the amended claims. Company A should have informed the first-instance court of this fact within a reasonable period after the CNIPA announced its acceptance of the amended claims. There was no such issue as Company A’s so-called difficulty in submitting the amended claims that had come into effect. During the second-instance proceedings, Company A also did not provide any reasonable explanation in this regard. Company A’s conduct clearly violated the principle of good faith, constituting concealment of basic facts of the case, which amounted to “intentionally making false statements and obstructing the trial by the People’s Court.” This directly led to the first-instance ruling being overturned and revoked, and the circumstances were relatively serious. Therefore, the second-instance court imposed a penalty on Company A, the patentee, in accordance with the law.
This judgment clarifies that, after amending claims, a patentee shall adhere to the principle of good faith, promptly and proactively inform the People’s Court hearing the patent infringement case of the relevant situation, and assist the court in ascertaining the basic facts according to law. If the patentee conceals such facts without justifiable reasons, thereby constituting “intentionally making false statements and obstructing the trial by the People’s Court,” the People’s Court may impose a penalty in accordance with the law.
(2023) Zui Gao Fa Zhi Min Zhong No. 1295
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