Shimano Inc. v. PRB, Return Of The New Matter Issue To Its Regular Understanding?

I. Brief of Shimano Inc. v. PRB

On December 27, 2013, the Supreme People's Court of China made its Judgment on Shimano Inc. v. Patent Reexamination Board (i.e. PRB). See Supreme People's Court (2013) Administrative Certiorari Case No. 21. In the Judgment, the court upheld the Invalidation Decision No. 15307 of the PRB, which announced invalid Chinese invention patent No. 02127848.2, titled Rear Derailleur, of which Shimano Inc. is the patent owner.

This case may trace back to the invalidation requests against the above Chinese invention patent filed by Ningbo Saiguan Bicycle Co., Ltd. The PRB made said Invalidation Decision announcing all of claims 1-6 invalid as two amendments made to the claims during the prosecution of the patent go beyond the disclosure of the initial description and claims, i.e. the initial disclosure of the parent application No. 94102612.4. Shimano appealed the Invalidation Decision. Since both the first instance court and the