In decision (2023)最高法知民终1295号 released on July 3, 2025, China’s Supreme People’s Court (SPC) held that failure to notify a People’s Court (trial court) of a claim amendment made during an invalidation proceeding is subject to a fine. The SPC also reversed the People’s Court’s judgement of infringement based on the amendments made during the invalidation proceeding. Accordingly, a 100,000 RMB win at the first instance turned into a 150,000 RMB loss at the second instance.
The patentee (redacted but presumed to be Shenzhen Diepin Technology Co Ltd) applied to the China National Intellectual Property Administration (CNIPA) for an invention patent entitled “A folding device with telescopic and storage functions and a folding fan thereof” (application number redacted but presumed to be CN201910759811.2), which was authorized on November 24, 2020. Diepin claimed that the alleged infringing product manufactured by Guan XX Company contained all the technical features of claims 1 and 2 at the time of the patent authorization announcement in question, and fell within the scope of protection of the patent in question, so it filed a lawsuit with the first instance court, requesting that Guan XX Company and the seller of the alleged infringing product, XXdong Company, stop manufacturing, selling, and promising to sell the alleged infringing products, and compensate for the losses. The first instance court determined that the alleged infringing technical solution contained all the technical features of claim 1 at the time of the patent authorization announcement in question, fell within the scope of protection of the patent in question, and constituted infringement. On January 4, 2023, the first instance judgment was made: Guan XX Company must stop the infringement and compensate Diepin for economic losses and reasonable rights protection expenses totaling 100,000 RMB.
Guan XX Company appealed to the Supreme People’s Court, claiming that the patent claims in question had been amended during the first instance case in a corresponding invalidation proceeding at CNIPA and that the alleged infringing technical solution did not fall within the protection scope of the modified claims.
The Supreme People’s Court found in the second instance that after the trial of the first instance court, two unrelated parties filed a request for invalidation against the patent in question with the CNIPA. Diepin submitted a arguments and claim amendments to the CNIPA on July 25 and September 26, 2022, respectively, adding the additional technical features of claim 6 of the granted claim 1 to form a new claim 1, deleting claim 6, and adaptively modifying the numbering and dependency of other claims. On October 14, 2022, the CNIPA held an oral hearing and announced in court that it accepted the revised claims of Diepin. On October 25 and November 4, 2022, the two petitioners for invalidation withdrew their request for invalidation on the basis of the aforementioned modifications to the claims made by Diepin . On November 14, 2022, the CNIPA issued a decision, maintaining the validity of the patent in question on the basis of the revised claims of the patentee. However, the first instance court conducted an infringement analysis based on the original granted claims and made a judgment on January 4, 2023, determining that Guan XX Company infringed and ordered it to bear civil liability.
The SPC held that, after comparison, the alleged infringing product did not have the additional technical features of the original claim 6 and did not fall within the protection scope of the amended claim 1, and Guan XX Company did not infringe. During the first instance trial of this case, Diepin modified the patent claims involved in the administrative procedure for patent invalidation, and the CNIPA accepted the amended claims in court during the oral trial on October 14, 2022. Diepin was obviously aware of the fact that it had modified the claims in the administrative procedure for invalidation and had been accepted by the CNIPA. The protection scope of the amended claims had undergone substantial changes, which had a significant impact on the patent infringement lawsuit filed by Diepin. However, until the first instance court made a judgment on January 4, 2023, Diepin did not inform the first instance court of the basic facts, resulting in the first instance court mistakenly making a judgment based on the original granted claims before the amendment during the invalidation proceedings. In this case, when the CNIPA announced its acceptance of the amended claims, the amended claims had taken effect, and the protection scope of the patent right involved should be based on the amended claims. Diepin should inform the court of first instance of the relevant facts within a reasonable period after the CNIPA announced the acceptance of the amended claims it submitted. There was no reasonable cause that would have prevented Diepin from notifying the Court during the first instance. During the second instance, Diepin also failed to make a reasonable explanation for this. Diepin’s behavior obviously violates the principle of good faith, and it is a case of concealing the basic facts of the case, which constitutes “intentionally making false statements to hinder the trial of the People’s Court”, and directly leads to the revocation of the first instance judgment. Accordingly, the SPC fined Diepin 150,000 RMB.
The SPC stated,
The judgment in this case made it clear that after the patentee amends the claims, he should follow the principle of good faith, promptly and proactively inform the people’s court that is hearing the patent infringement lawsuit of the relevant situation, and assist the court in ascertaining the basic facts according to law. If the patentee conceals the facts without a legitimate reason and constitutes “intentionally making false statements to hinder the trial of the people’s court,” the people’s court may impose penalties according to law.
The redacted text of the decision is available here (Chinese only).