How To Define The Scope Of A Claim That Is Formally Dependent But Substantively Independent

The Supreme People's Court has issued a final judgment in a dispute over infringement of an invention patent, providing important guidance on how to determine the scope of protection for claims that are formally dependent but substantively independent. The Court held that when a dependent claim, upon examination, is found not to be a further limitation on the independent claim from which it depends, it should be treated as an independent claim. When determining the scope of protection, courts must distinguish between such a claim and the claim to which it formally refers to. Moreover, the claim and its corresponding embodiments cannot automatically be used to interpret the scope of the claim to which it formally refers to.

In this case, Company A is the patentee of the disputed patent. The patent includes one independent claim, Claim 1, and several dependent claims, including Claims 7 through 9. During the patent invalidation proceedings, Claims 7 through 9 were declared invalid by the CNIPA, and that decision became effective.

Company A later filed a patent infringement lawsuit against Company B and Company C. The first instance court found that the accused technical solution did not fall within the scope of protection of the patent and dismissed Company A's claims. Company A appealed to the Supreme People's Court.

In its second instance ruling, the Supreme Court identified the core dispute as follows: how should the scope of protection of Claim 1 be defined, and in particular, whether the already invalidated Claims 7 through 9 and their corresponding embodiments can be used to interpret the scope of Claim 1.

The Supreme Court made the following determinations.

First, although Claims 7 to 9, which have been declared invalid, are formally dependent on Claim 1, the two are in essence relatively independent and distinct technical solutions. Claims 7 to 9 are not further limitations imposed on Claim 1.

Second, the embodiments in the patent specification corresponding to Claims 7 through 9 should not be included into the protection scope of Claim 1. The technical solution of those embodiments corresponds to Claims 7 through 9, not to Claim 1. In particular, since Claims 7 through 9 have already been declared invalid, the embodiments corresponding solely to those claims should no longer be protected.

The Supreme Court judgement took a careful consideration of the logical relationships among the different claims and the correspondence between each claim and the embodiments described in the specification. The ruling accurately defines the scope of protection for claims that are formally dependent but substantively independent. It maintains consistency with the scope of protection as determined in the patent invalidation proceedings, while also clarifying the rules for patent infringement determinations. This decision provides a useful reference for accurately defining the scope of patent protection in future cases.

 (2023) Zui Gao Fa Zhi Min Zhong No. 1476

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