Guangdong Dongtai Metal Products Co., Ltd v. Zhongshan Shengtai Metal Products Co., Ltd（Civil Ruling (2013) Min Shen Zi No. 722 by the Supreme Peoples's Court on October 14, 2013）
One key step in patent trials is to determine if an accused infringing party's product (or method, and so on) falls within one or more of the claims of the granted patent. The scope of the patented invention or the extent of protection is based on the claims asserted by the patent holder. The patent holder has the right to enforce, at his discretion, his patent right against infringement based on any claim of the patent, and will be permitted to alter the asserted claims within the prescribed period that may vary case by case. To adequately choose the asserted claims, the patent owner shall consider both the claim coverage of the accused infringing product or process and the validity of the claimed invention when being challenged.
Guangdong Dongtai Metal Products Co., Ltd (hereinafter "Dongtai") owns a patent for utility model No. ZL200520053374.6 ("the '374 patent" hereinafter) titled "Hidden Hinge for Furniture Door with 3D Directional Adjustability", which comprises one independent Claim 1 and three dependent Claims 2-4. Dongtai sued Zhongshan Shengtai Metal Products Co., Ltd ("Shengtai" hereinafter) for Shengtai's products infringing Claim 1 of the '374 patent.
Shengtai requested the Patent Reexamination Board ("PRB" hereinafter) of SIPO to invalidate the '374 patent. During the second instance of the infringement lawsuit, the PRB made a Decision No. 14841 on Request for Invalidation ("Decision No. 14841" hereinafter), declaring full invalidation of Claims 1-4 of the '374 patent. By virtue of this, the second instance court rejected Dongtai's pleading in the patent infringement lawsuit.
In the invalidation proceedings with respect to the'374 patent, Beijing High Court made an Administrative Judgment (2011) Gao Xing Zhong Zi No. 460 ("the Judgment No. 460" hereinafter), revoking the Decision No. 14841. Afterward, in a new Decision No. 19004 on Request for Invalidation ("Decision No. 19004" hereinafter) made by the PRB, Claims 1 and 4 of the '374 patent were declared invalid while Claims 2 and 3 were maintained.
Based on the new development, Dongtai requested the Supreme People's Court for retrial of the patent infringement lawsuit, reasoning that "the legal writs based on which the original judgment or written order was made were revoked or modified"1 , and asserting that the accused infringing product of Shengtai falls within the scopes of Claims 2 and 3 of the '374 patent.
The Supreme People's Court found that the Dongtai's complaint in the first instance of the patent infringement lawsuit only asserted Claim 1, having failed to indefinitely identify Shengtai's accused infringing product infringes Claim 2 or 3 of the '374 patent. On this ground, the Supreme People's Court affirmed that the initial pleading of the plaintiff, Dongtai, is based only on Claim 1. In view of the Claim 1 being declared invalid by the new Decision No. 19004, the Supreme People's Court held that the judgment of the second instance is appropriate and rejected Dongtai's pleading based on Claim 1.
Interpretation and Analysis
A two-tier system is adopted for trial of patent cases in China. The ruling of the second instance court regarding each pleading filed by a plaintiff against a defendant shall be treated as final decision on the case. During the procedure of first instance of civil cases, the plaintiff may add or alter his initial pleadings2 within the prescribed period. Usually, during the appeal process, the second instance court only reviews the relevant facts and the application of the law in relation to the same pleading filed and tried during the first instance. In the procedure of second instance, if the plaintiff of original instance adds any independent pleading or the defendant of original instance files a counterclaim, the second instance court may conduct mediation regarding the newly added pleadings or counterclaim along the principle of free will of the parties concerned; if the parties concerned cannot reach an agreement through mediation, the court shall notify the party concerned to file a new lawsuit3.
In patent infringement lawsuits, pleadings of the plaintiff (a patent holder, for example) would base on the asserted claims of his patent. Normally, a patent may include several granted claims, and each of them indicates a complete technical solution. To initiate a lawsuit against an infringer, the patent holder may choose any one or more of the claims of the asserted patent, and will be permitted to alter the asserted claims before the end of court debate of the first instance4. It is not clearly provided for in existing laws as to whether an alternation of asserted claims is equivalent to an alternation of pleading of the plaintiff. The plaintiff is normally not permitted to alter the asserted claims after expiration of the specified time period, but who can initiate a new lawsuit by asserting other claims.
In this case, Dongtai only identified in the initial complaint that the Shengtai's product infringes Claim 1 of the '374 patent and failed to explicitly assert Claims 2 and 3 during the court trial of the first instance. Consequently, it is affirmed that Dongtai only asserted Claim 1 in this case, and that the pleading of Dongtai can only be based on Claim 1. The Supreme People's Court did not accept Dongtai's allegation that Claim 2 and 3 are omitted in the initial complaint due to limited contexts available. It is totally different for a court to try "whether an accused infringing product falls within the scope of Claim 1 of an asserted patent" and to try "whether the accused infringing product falls within the scope of Claim 2 or 3 of the asserted patent". In view that Dongtai fails to assert Claim 2 or 3 during the trial of first instance, the courts of first and second instance has looked at "whether an accused infringing product falls within the scope of Claim 1 of an asserted patent", rather than "whether the accused infringing product falls within the scope of Claim 2 or 3 of the asserted patent".
On the ground that Claim 1 is declared invalid by the former Decision No. 14841, the second instance court rejected Dongtai's Claim 1-based pleading. Later, the prior Decision No. 14841 is revoked by a court judgment and is replaced by the Decision No. 19004 re-made by the PRB, both having declared Claim 1 invalid. Therefore, the revoking of the Decision No. 14841 based on which the judgment of the court of the second instance was made does not change the fact that "Claim 1 is declared invalid". Accordingly, it is appropriate for the second instance court to have rejected Dongtai's pleading based on Claim 1.
Apparently, Dongtai may file a new lawsuit by asserting Claim 2 or 3 of the '374 patent, which would not be considered as a duplicative litigation, since there is no court that has looked at the question "whether the accused infringing product falls within the scope of Claim 2 or 3 of the '374 patent". Further lawsuit would of course inevitably waste time and cost for the respective parties and the court. Supposing that Dongtai has explicitly asserted Claim 2 or 3 in the initial complaint or before the end of court debate of the first instance, it is very likely that the Supreme People's Court would accept the Dongtai's request to retry this case, considering the fact that Claims 2 and 3 of the '374 patent are finally maintained meets the condition of "the legal writs based on which the original judgment or written order was made were revoked or modified".
In practice, alternation of pleading beyond time limit may be still accepted under certain conditions. According to Rule 184 of the Opinions of the Supreme People's Court on Some Issues Concerning Application of Civil Procedure Law of the People's Republic of China, if the plaintiff adds new pleadings during the second instance, the court of second instance should first conduct mediation regarding the new elements, and then shall notify the plaintiff to file a new lawsuit if the parties concerned cannot reach unanimity through mediation. This means that addition of new pleading during the second instance may be permitted upon approval of the court and the counterparty, which will help to reduce litigation cost and improve trial efficiency.
In the draft of Interpretation of the Supreme People's Court on Several Issues concerning the Application of Law in the Trial of Patent Infringement Dispute Cases II (For Public Comments) posted by the Supreme People's Court on July 31, 2014, it is stipulated that a patentee shall state clearly in its complain which claim is infringed by the accused infringer; otherwise the court shall require the patentee to clarify on the asserted claims; in case that the patentee refuses to do as required, the court may presume that the patentee chooses to assert all independent claims. In the above draft, it is also provided that where a claim asserted by a patentee in a patent infringement lawsuit is declared invalid by the PRB, the court may dismiss the lawsuit brought by the patentee based on the invalidated claim, regardless of whether the Decision on Request for Invalidation will be subject to appeal or not. The above mentioned draft is yet to be made into law, but may indicate to some extent a tendency of juridical practice regarding patent cases. When preparing for steps to enforce a patent, it is advisable that the patentee pay more attention to the stability of the asserted claims, and to avoid relying on just one claim. For example, it may be preferable to choose one independent claim that fully covers the accused infringing product or process and several dependent claims that are assessed to be quite stable.
When being accused of infringement, the defendant should be sensitive to the alternation or addition of asserted claims, and it is better not to voluntarily mention claims that have not been asserted by the plaintiff. If an alternation of asserted claims during the second instance really happens, the defendant should raise an objection in the court immediately and refuse to discuss the newly asserted claims, unless otherwise agreed.
Before filing a lawsuit of patent infringement, the patentee or his attorney shall compare respective claims with the accused infringing product or process, in order to identify the specific claims to be asserted. To correctly choose the asserted claims, the patent owner should consider both the claim coverage of the accused infringing product or process and the stability of the claimed invention. The complaint shall set forth the number of asserted claims and elaborate the facts and legal reasons that the plaintiff believes are sufficient to support his pleading based on the asserted claims against the accused infringer. If necessary, it should be ensured that the request for altering the asserted claims be filed before the end of court debate of the first instance.
1 Article 200 of the Civil Procedure Law of the People's Republic provides that if an application made by a party meets any of the following circumstances, the people's court shall retry the case: ...; (12) the legal writs based on which the original judgment or written order was made were revoked or modified; ....
2 Article 51 of the Civil Procedure Law of the People's Republic.
3 Rule 184 of the Opinions of the Supreme People's Court on Some Issues Concerning the Application of the Civil Procedure Law of the People's Republic of China.
4 Rule 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 provides that: the people's court shall, based on the claim asserted by the right holder, determine the scope of protection of a patent in accordance with paragraph 1 of Article 59 of the Patent Law. Where the right holder alters the claim asserted by him before the end of court debate of the first instance, the people's court shall permit such alteration.
Where the right holder asserts that the scope of protection of a patent should be determined according to a dependent claim, the people's court shall determine the scope of protection of the patent according to the additional technical features described in the dependant claim and the technical features described in the claim referred to by it.