SKYJET Company v. Hanze Company Case of Invention Patent Infringement Dispute

——Procedures after the right holder’s claim is declared invalid when the patent infringement case is heard

First trial case number: (2018) Lu 01 Minchu No. 2077

Second trial case number: (2019) Supreme People’s Court Zhiminzhong No. 161

【The main takeaway of the trial】

In the first-instance procedure of a patent infringement dispute case, the right holder’s claim on which the patent right is claimed is declared invalid, however, if the patent right involved is maintained on the basis of other original claims or new claims formed through amendments, the right holder shall be allowed to redefine the claims on which the patent right is claimed. If the right holder chooses a currently valid claim to claim a patent right, the court of first instance shall continue the trial;  it is clarified that if the right holder still insists on claiming rights based on the invalidated claim, the court of first instance may rule to dismiss the prosecution.

【Case Introduction】

Appellant (plaintiff in the original trial): Shenyang SKYJET Digital Printing Equipment Co.,Ltd.  (referred to as SKYJET Company)

Appellee (Defendant in the original trial): Qingdao Hanze Electric Co., Ltd. (referred to as Hanze Company)

The patent in question is an invention patent named "A synchronous single/double-sided digital inkjet printer and its winding method" (hereinafter referred to as the patent in question). The SKYJET Company is the patentee and filed a patent infringement lawsuit in the court of first instance. In the process of patent infringement litigation, Hanze Company filed a request for invalidation of the patent in question to the China National Intellectual Property Administration. On May 16, 2019, the China National Intellectual Property Administration made a decision on the examination of invalidation request No. 16225 (Decision 16225 for short), announcing the invalidity of the patent rights involved in the case, and the patent in question continued to be valid on the basis of claims 1-9 filed by the patent owner on January 9, 2019. Among them, the claim 1, which is maintained in force, is modified after the patent owner adds the technical features in the original claim 2, "the two driving rollers are the first driving roller (5) and the second driving roller (20)", and the original claim 6 technical features that "the front and back sides of the canvas (24) are in contact with the first and second driving rollers (5, 20) in sequence, and the first and second driving rollers (5, 20) are composed of two independent "to the original claim 1.

The original trial of the Intermediate People's Court of Jinan City, Shandong Province held that if the right holder's claim in the patent infringement lawsuit was declared invalid by the Patent Reexamination Board, the people's court hearing the patent infringement dispute case may rule to dismiss the right holder's prosecution based on the invalid claim. Before the invalidation of the patent in question, the SKYJET Company made it clear that the original claim 1 before the amendment was the protection scope claimed by the court, and after the Decision 16225 was made, the content of patent claim 1 in the case has been changed, the SKYJET Company’s right to file a lawsuit in this case was lost and it should be dismissed, so it directly ruled against the SKYJET Company's prosecution. The SKYJET Company refused to accept it and appealed to the Supreme People's Court.

The second instance of the Supreme People's Court held that the original trial court did not give the right holder the procedural right to re-clarify the claims, and directly ruled that the prosecution of the SKYJET Company was dismissed without explanation. It is an error of the applicable law and the decision is as follows: (1 ) Revoke the civil ruling of the Intermediate People's Court of Jinan City, Shandong Province (2018) Lu 01 Minchu No. 2077; (2) The case instructs the Intermediate People's Court of Jinan City, Shandong Province to try.

【Typical meaning】

Patent claims often have more than two claims. When the right owner filed a patent infringement lawsuit, some of the indictments contained the claims on which the accused infringer was infringed on their patent rights, while others were undocumented or unclear. For unrecorded or unclear circumstances, the people's court shall require the right owner to clarify.

In patent infringement lawsuits, defendants often file invalidation requests with the China National Intellectual Property Administration for the patents involved. After the review of the invalidation procedure, the China National Intellectual Property Administration will make a review decision on the invalidation request. The original claims may be declared to be fully valid or completely invalid or partially valid or partially invalid, or after modification, all valid, partially valid or invalid. This makes the patent owner's original claim in the patent infringement lawsuit against the alleged infringer infringing his patent right may be declared invalid or partially valid and partially invalid.

If the patent right involved is maintained on the basis of other original claims or new claims formed through amendments, how should the people's court handling infringement disputes handle them? Article 1 of the Interpretation (II) of the Supreme People's Court on Several Issues concerning the Application of Law in the Trial of Patent Infringement Dispute Cases stipulates that right holders should specify their claims for protection in the indictment, and further stipulates that even if the right holder does not specify in the complaint, the people's court should also clarify by asking the right holder. Only if the right holder is still unclear, can the people's court rule to dismiss the prosecution. Regarding the case where the patent right in question remains valid on the basis of other original claims or new claims formed by amendments, the court of second instance in this case, referring to the above-mentioned regulations, held that the right holder should be given the procedural right to clarify the claims on which the scope of protection is based, and continue the trial based on the rights holder's re-clarified claims. This approach can not only effectively protect the legitimate interests of patentees, but also make full use of the judicial procedures that have been carried out, thereby saving judicial resources.