Feynman LIANG Patent & Trademark Attorney	Published on May 6, 2020

In the recent invalidity proceedings of Huawei v. Samsung, although Samsung and Huawei eventually reached an agreement and Huawei requested for withdrawal of the invalidity case, the Second Instance Court dismissed Huawei’s motion and upheld the first instance judgement.

Huawei filed an invalidity petition before the Patent Reexamination Board (“PRB”) against Samsung’s patent in 2016. The PRB issued a decision declaring Samsung's patent valid based on the priority claim of Samsung. Huawei was not satisfied with the decision and initiated an administrative litigation appealing the decision of the PRB. It was found by the 1st Instance Court that the element “is orthogonal code produced in different time gap” was not disclosed in the firstly filed patent application as the priority basis. Therefore, Samsung’s priority claim should not be supported. It was decided by the 1st Instance Court that the PRB’s decision should be cancelled and the PRB should make a new decision based on Huawei’s invalidity petition.

Samsung was not satisfied with the judgement of the 1st Instance Court and filed an appeal to the upper level court. During the proceedings, however, both parties reached an agreement and Huawei agreed to withdraw the case. Two motions of withdrawal were filed by Huawei but the 2nd Instance Court dismissed the motions and decided that withdrawal of the case may cause prejudice to the national interest, public interest and others’ interest. The 2nd Instance Court issued a final judgement and upheld the decision of the 1st Instance Court.

In pursuant to the Interpretation of the Supreme People's Court on the Application of the Civil Procedure Law of the People's Republic of China,

Article 338 In the second instance procedure, the plaintiff of the first trial applying to withdraw the prosecution, with the consent of the other parties, and without prejudice to the national interests, public interests of the society, or the legitimate rights and interests of others, the people's court may grant permission.

That is to say, if some claims have been declared invalid or all claims have been declared valid in the lower level proceedings, when the invalidity petitioner requests for withdrawal of the case in the 2nd instance proceedings, the court should determine whether a decision with opposit conclusion may be reached and patent validity may be substantively affected. In this case, it was determined that there is an error in determining the validity of priority claim and granting withdrawal of the case will cause prejudice to the national interests, public interests of the society, or the legitimate rights and interests of others.