On March 30, 2023, the Supreme People's Court (hereinafter referred to as the “SPC”) released the Annual Report of the Intellectual Property Tribunal of the Supreme People's Court (2022), the Exemplary Cases of the Intellectual Property Tribunal of the Supreme People's Court (2022) and the Judgment Highlights of the Intellectual Property Tribunal of the Supreme People's Court (2022).
 
Among them, the Judgment Highlights of the Intellectual Property Tribunal of the Supreme People's Court (2022) is a collection of 61 exemplary cases and 75 key points of judgment from the 3,468 cases concluded in 2022 by the SPC in order to highlight the judicial philosophy, thinking of trial and judgment methods of its IP Tribunal in IP and monopoly cases involving technology, which is of great reference significance and research value.
 
An administrative litigation case concerning an invention patent of sharkfin antenna represented by our firm, namely (2021) SPC IP administrative Final No. 987, is selected into the Judgment Highlights.
 
This case also involved patent infringement litigation, and our firm handled the entire process of the evidence collection of patent infringement and infringement litigation as well as the related invalidation and subsequent administrative litigation.
 
In this case, the alleged infringer filed an invalidation request with the CNIPA in response to the infringement lawsuit. The grounds for invalidation included lacking essential technical features, clarity, and supportiveness, new matter issues, and lacking inventiveness. Based on thorough discussion with the client, we responded effectively and saved the patent with the CNIPA maintaining the validity of the patent right based on the amended claims in its Invalidation Decision made on November 21, 2018.
 
The invalidation petitioner then appealed to Beijing IP Court against the Decision with the ground of lacking essential technical features and inventiveness. Beijing IP Court determined that the independent claim of the subject patent lacked the essential technical features, though the claim 1 possessed the inventive step, and made the judgment to revoke the sued Decision.


The patentee and the CNIPA were not satisfied with the judgment of the first instance and both appealed to the SPC.
 
During the preparation period of the second instance, we had meetings with the patentee several times to discuss the grounds for rebuttal, and we refuted from multiple perspectives in the second instance proceeding.

Eventually, the IP Tribunal of the SPC supported our claims by withdrawing the first instance judgment. The SPC stated the following opinions with regard to the determination of lacking essential technical features in the second instance judgment, which is instructive to the future examination and judgment:

In the determination of whether or not an independent claim lacks essential technical features, the object of invention and other disclosure of the specification should also be taken into consideration; and the conclusion should be drawn based on reasonable construction of the claims. The independent claim can be determined to lack essential technical features only when those skilled in the art does not consider the technical solution can solve the technical problem to be solved by the invention even based on reasonable construction of the independent claim with reference to the claims, the specification and the figures.
 
Moreover, this case is also referred to as the exemplary case of equal protection to foreign right holders in the Annual Report of the Intellectual Property Tribunal of the Supreme People's Court (2022).