China: Alteration Of Patent Claims Asserted In Infringement Dispute

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.

Footnotes

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.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
Similar Articles
Relevancy Powered by MondaqAI
 
Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Related Topics
 
Similar Articles
Relevancy Powered by MondaqAI
Related Articles
 
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions