In a dispute involving the infringement of an invention patent, the Supreme People’s Court imposed a fine on the patentee for failing to timely inform the court of first instance of amendments to the claims, which led the court to erroneously render a judgment based on the claims before amendment. A brief summary of the case is as follows:
Company A is the patentee of a certain invention patent (hereinafter referred to as the “patent in suit”). It initiated a lawsuit with the court of first instance, alleging that the accused product manufactured by Company B fell within the protection scope of the patent in suit. The court of first instance used the claims as in the announcement of patent grant as the basis for comparison, and determined that the accused technical scheme fell within the protection scope of the patent in suit and constituted infringement. On January 4, 2023, after Company A had amended the claims, the court rendered a first-instance judgment ordering Company B to cease infringement and compensate Company A for economic losses and reasonable enforcement costs totaling RMB 100,000.
Dissatisfied with the first-instance judgment, Company B appealed to the Supreme People’s Court, asserting that the claims of the patent in suit had been amended during the first-instance proceedings, and the accused technical scheme did not fall within the amended protection scope.
The Supreme People’s Court ascertained at second instance that: 1) after the first-instance court hearing, two non-parties filed requests respectively for invalidation against the patent in suit with the China National Intellectual Property Administration (CNIPA). On July 25, 2022 and September 26, 2022, prior to the first-instance judgment, Company A submitted observations and amended text of claims to CNIPA. On the basis of the above amendments to the claims of the patent in suit made by Company A, the two non-parties withdrew their invalidation requests. On November 14, 2022, prior to the first-instance judgment, CNIPA issued the Examination Decision on Request for Invalidation maintaining the validity of the patent in suit on the basis of the amended claims, and the decision had become effective; 2) from the time CNIPA notified Company A of the acceptance of the amended claims until the court of first instance rendered the first-instance judgment, Company A failed to inform the court of first instance of the relevant facts regarding the amendment of the claims of the patent in suit. During the second instance, the court required Company A to provide an explanation in this regard, however, Company A was unable to provide a reasonable justification.
The Supreme People’s Court held that: 1) the protection scope of the patent in suit shall be determined based on the amended claims. The accused product does not possess technical features identical or equivalent to the disputed technical feature, and does not fall within the protection scope of the amended claims 1 and 2. The accused product does not constitute an infringement; 2) Company A amended the claims of the patent in suit during the patent invalidation administrative proceedings and such amendments were accepted by CNIPA, however, Company A failed to timely and truthfully report such fundamental change in the facts underlying its rights assertions to the first-instance court, which led the first-instance court to erroneously render a judgment according to the claims before amendment, and the Supreme People’s Court to revoke the first-instance judgment. Company A failed to provide a reasonable justification, its conduct should be deemed to constitute dishonest litigation conduct, and constitute “intentionally making false statements to obstruct the trial of the People’s Court”, the court will impose separate penalty in accordance with the law; 3) the lawful trial and judgment of this case involve the lawful determination of the protection scope of the patent in suit, and concern social public interest, not merely limited to the parties' disposition of their own civil and procedural rights. Thus the Supreme People’s Court, in accordance with the law, denies both Company A’s application to withdraw the action and Company B’s application to withdraw the appeal.
Through the above ruling, the Supreme People’s Court clarified that the litigation parties shall follow the principle of good faith, and promptly and proactively inform the court presiding over the infringement dispute of amendments made to the patent claims. Where a party’s conduct constitutes “intentionally making false statements to obstruct the trial of the People’s Court”, the court may impose penalty in accordance with the law. Moreover, as the matter concerns social public interest, the parties are not allowed to eliminate the impact by withdrawal of the action.
(2023) Zui Gao Fa Zhi Min Zhong No. 1295
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