Claim construction arguments not raised at first instance may me barred on appeal

03/31/2025

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Since the scope of a claim is defined by its wording, claim construction in patent disputes is closely tied to key issues such as the determination of patent validity and whether infringement has occurred.  Therefore, in both administrative and civil patent litigation, claim construction often becomes a central point of contention between the parties.  However, if a party does not raise claim construction arguments during the first instance of an administrative litigation, can such arguments still be introduced on appeal?  The Supreme Administrative Court appears to take a negative position on this issue.  The Supreme Administrative Court rendered judgment 2023 Shang Zi No. 824 (Judgment Date: 6 June 2024) and clearly stated that “Pursuant to Paragraph 1, Article 254 of the Administrative Litigation Act, this Court shall base its ruling on the facts as determined by the High Administrative Court, so parties shall not introduce new lines of argument, facts, or evidence in their appeal briefs.  The appellant of this litigation did not raise any questions regarding the meaning or construction of the claim in the original instance.  It was only upon appeal that the appellant argued the original instance failed to adopt the most reasonable and broadest construction in its favor.  Such an argument constitutes a new line of attack and defense, which this Court cannot consider in accordance with the above provision and explanations."

In addition, the current Intellectual Property Case Adjudication Act (the “current IPCAA”) was amended on 12 January 2023, promulgated on 15 February 2023, and effective as of 30 August 2023.  Since the above-mentioned case had already been pending before the Intellectual Property Court in the first instance of administrative litigation prior to the effective date of the current IPCAA, according to Paragraph 3, Article 75 of the current IPCAA[1], the case shall be adjudicated pursuant to the IPCAA before the amendments (the “pre-amended IPCAA”). However, compared to the pre-amended IPCAA, Article 30 of the current IPCAA introduces a new stipulation that “If a dispute occurs over the claim construction of a patent scope in the court's adjudication of a civil action arising out of a patent right, it is advisable for the court to define at an appropriate time, upon motion or ex officio, the literal scope of patent claims and to disclose its conviction to the extent appropriate.”  Furthermore, Paragraph 1, Article 71 of the current IPCAA provides that “The provisions of Articles 29 through 40, Article 46, Articles 51 and 52 shall apply mutatis mutandis to an administrative action concerning intellectual properties.”  Accordingly, under the current IPCAA, in both civil and administrative litigations, the courts appear to have discretion in determining the literal scope of patent claims ex officio.  Whether this new provision will affect the Supreme Administrative Court’s above-mentioned position remains to be seen.