July 2017
If a court fails to ascertain whether the technical features of patent claims and a product have any substantive difference and whether they can be easily thought up or easily substituted, the court decision is in contravention of the laws or regulations(Taiwan)
2017.4.24
Jane Tsai
The Supreme Court rendered the 106-Tai-Shang-585 Civil Decision of April 24, 2017 (hereinafter, the "Decision"), holding that if a court fails to ascertain whetherthe technical features of patent claims and a product have any substantive difference and whether they can be easily thought up or easily substituted, the court decision is in contravention of the laws or regulations.
In this Decision, A asserted that his invention patent titled "Normally Closed Hub and Ratchet Structure" (hereinafter, the "Patent-in-suit") was entrusted to China Productivity Center for patent infringement assessment. It turned out that the K&Y Hub products sold by Company B (hereinafter, the "Products at Issue") infringed the Patent-in-suit since they fell within Claim 1 of the Patent-in-suit. A initiated a litigation in accordance with the Patent Law to seek joint and several damages in the amount of NT$500,000 from Company B and its legal representative and stop infringing acts. The original trial court, which was the Intellectual Property Court, ruled in favor of A. Dissatisfied, B appealed and the Supreme Court rendered this Decision, which reversed and remanded the original decision to the original trial court.
According to the Decision, the doctrine of equivalents for patent infringement is applied to consider if the comparison of an accused infringing article with the patent claims at issue shows that they are substantively identical in terms of technical means, functions and results. Substantive identicalness means that the substitutive means employed by an infringing item can be easily thought up or replaced by people skilled in the art based on their general expertise and professional experience after reviewing the specification (particularly the claims and invention description).
It was further held in the Decision that the "ratchet" and "hub" in the Products at Issue basically are basically designed to be in a "constantly closed state" so that the consumers may walk their bicycles forward or backward directly without worrying about the rotation of the pedals. Conversely, if a product practices Claim 1 of the Patent-in-suit, the consumer will need to use his/her foot or hand to push the pedals backward to hold the pedals in place. This is obviously more inconvenient and cumbersome. If that is true, B's contention was critical with respect to whether the technical means, functions and results of the two were the same, and whether the one-by-one comparison between the technical means of the patent claims and the corresponding components, ingredients, steps or connection relations of the Products-at-issue will indicate there is no substantive difference. Are the differences between the two easily thought up and replaced by people skilled in the art based on their general expertise and professional experience? All of these issues should be clarified. The findings of the original trial court were questionable because it merely held that since the constituting element of both was the use of the cam theory with the same function performed in substantively identical manner and substantively identical results, the two should be deemed identical in terms of functions and actuation methodology and could be easily thought up by people skilled in the art. Based on the above conclusion, the appeal was well-grounded, and, therefore, the original decision was reversed and remanded.
Jane Tsai
The Supreme Court rendered the 106-Tai-Shang-585 Civil Decision of April 24, 2017 (hereinafter, the "Decision"), holding that if a court fails to ascertain whetherthe technical features of patent claims and a product have any substantive difference and whether they can be easily thought up or easily substituted, the court decision is in contravention of the laws or regulations.
In this Decision, A asserted that his invention patent titled "Normally Closed Hub and Ratchet Structure" (hereinafter, the "Patent-in-suit") was entrusted to China Productivity Center for patent infringement assessment. It turned out that the K&Y Hub products sold by Company B (hereinafter, the "Products at Issue") infringed the Patent-in-suit since they fell within Claim 1 of the Patent-in-suit. A initiated a litigation in accordance with the Patent Law to seek joint and several damages in the amount of NT$500,000 from Company B and its legal representative and stop infringing acts. The original trial court, which was the Intellectual Property Court, ruled in favor of A. Dissatisfied, B appealed and the Supreme Court rendered this Decision, which reversed and remanded the original decision to the original trial court.
According to the Decision, the doctrine of equivalents for patent infringement is applied to consider if the comparison of an accused infringing article with the patent claims at issue shows that they are substantively identical in terms of technical means, functions and results. Substantive identicalness means that the substitutive means employed by an infringing item can be easily thought up or replaced by people skilled in the art based on their general expertise and professional experience after reviewing the specification (particularly the claims and invention description).
It was further held in the Decision that the "ratchet" and "hub" in the Products at Issue basically are basically designed to be in a "constantly closed state" so that the consumers may walk their bicycles forward or backward directly without worrying about the rotation of the pedals. Conversely, if a product practices Claim 1 of the Patent-in-suit, the consumer will need to use his/her foot or hand to push the pedals backward to hold the pedals in place. This is obviously more inconvenient and cumbersome. If that is true, B's contention was critical with respect to whether the technical means, functions and results of the two were the same, and whether the one-by-one comparison between the technical means of the patent claims and the corresponding components, ingredients, steps or connection relations of the Products-at-issue will indicate there is no substantive difference. Are the differences between the two easily thought up and replaced by people skilled in the art based on their general expertise and professional experience? All of these issues should be clarified. The findings of the original trial court were questionable because it merely held that since the constituting element of both was the use of the cam theory with the same function performed in substantively identical manner and substantively identical results, the two should be deemed identical in terms of functions and actuation methodology and could be easily thought up by people skilled in the art. Based on the above conclusion, the appeal was well-grounded, and, therefore, the original decision was reversed and remanded.
