The SPC’s Precedent Shows that the Amendment to Patent Claims during Invalidation Proceedings by Adding Technical Features of other Claims May Reduce the Damages Awarded in Infringement Proceedings

Authors: Jing Xu, Intellectual Property group, King & Wood Mallesons

The Supreme People’s Court published a final decision in April, in which the court holds that the court may reduce the damages awarded in the infringement proceeding for the infringing acts taking place before the amendment made to the asserted patent claim, provided that the claim is amended by adding technical features from other claims during the invalidation proceedings, considering the balancing between the public interests and protection for patents. Therefore, it is recommended that the patentee shall be prudent when considering to amend a patent claim by adding features from other claims during the invalidation proceedings.

Case Overview

 The plaintiff Company A filed a patent infringement lawsuit against the defendant Company B before Ningbo Intermediate People’s Court of Zhejiang Province. Company A alleged that the infringing products from Company B fall within the protection scope of the granted Claims 1, 2 and 7 of the patent-in-suit (Claims 2 and 7 are dependent from independent Claim 1), which was supported by the first instance court and the court awarded the damages in the amount of RMB 280,000 (including enforcement costs of RMB 50,000).

Company B appealed to the Supreme People’s Court. During the second instance infringement proceedings, in response to an invalidation petition from a third party, Company A amended Claim 1 of the patent-in-suit, by adding some technical features of the granted Claim 7 and all technical features of the granted Claim 9, which was upheld by the China National Intellectual Property Administration.

In the second instance infringement proceedings, the Supreme People’s Court found the accused product still infringes Claims 1, 2 and 7 (after amendment). However, for the damages amount, the Supreme People’s Court held that, on the one hand, due to the difficulties and limitations in patent drafting and prosecutions, it is necessary to allow such way of amendment, i.e., by adding technical features of other claims into the claim to be amended. On the other hand, during the granted date and the amendment date of the patent-in-suit, the public would have a reasonable expectation that the protection scope of the patent-in-suit shall be determined by the granted claims of the patent-in-suit, based on which the public would avoid the infringement upon the patent. The amended Claim 1 which incorporates some features of the granted Claim 7 and all features of the granted Claim 9 was not directly claimed in the granted set of patent claims. Thus, the amendment way may go beyond the public’s expectation on the protection scope of the patent and is to some extent adverse to the public interests. Therefore, considering the balancing between the protection of patent rights and the public interests, the Supreme People’s Court holds that the damages for the infringement taking place before the amendment may be reduced, and lowered the damages awarded in this case to RMB 50,000 (including enforcement costs).

Comments and Recommendations

The Guidelines for Patent Examination of China introduced a new way of amending patent claims in 2017 called “further limiting a claim”, in which the patentee may amend the independent claim by adding some technical feature(s) from other claim(s). This may result in a claim that is not the same with any of the granted claims.

As seen from the above case, although the SPC holds the accused product infringes provided that it still falls into the scope of the amended claim(s), the court opines the damages for the infringement before the amendment may be reduced, taking the balancing of the public interests and the patent protection into consideration. Since the SPC is now the uniform appellate court for all invention and utility model patent cases in China, the opinions of the SPC expressed in the above case which is now still effective will be likely to influence the damages awarded by the Chinese courts when the patentee amend the patent claims by adding some feature(s) from other claims. Therefore, we recommend the patentee be more prudent when deciding to amend claims by adding features from other claims during the invalidation proceeding, especially when there is a parallel infringement proceeding.