2017.7.27
Jane Tsai
The Supreme Administrative Court rendered the 106-Pan-401 Decision of July 27, 2017 (hereinafter, the “Decision”), holding that when a patent claim is examined, the overall context of the claim should still be observed to understand its complete literal meaning.
According to the facts underlying this Decision, the Plaintiff filed invalidation against the patent-in-suit on the ground that it did not meet the criteria for an invention patent. After the Intervenor, i.e., the patentee, corrected the filed claims, the Defendant approved the claims and rendered a disposition against the invalidation based on the corrected claims. Dissatisfied, the Plaintiff brought an administrative action pursuant to applicable procedures.
According to the Decision, although the word “or” in Claim 6 of the patent-in-suit, which indicates “synchronous ‘or’ asynchronous,” means optional or enumerative when it is used as a conjunction in the sentence, still the overall context of the claim should be observed to understand its entire literal meaning. In case of any doubt, the specification and figures of the invention may also be referenced in addition to the wording of the claim itself. According to the contents in the specification of the patent-in-suit, the purposes of the patent-in-suit and the complete functionalities of the switcher claimed in the patent-in-suit show that modes such as uninterrupted data flows at the time of synchronous switching and uninterrupted data flows during asynchronous switching should also be covered. Therefore, the expression “synchronous ‘or’ asynchronous” should be construed as “the peripheral data flows will not be cut off during either synchronous or asynchronous switching of one keyboard-video-mouse (KVM) channel and another peripheral channel to one shared computer or different computers.” Therefore, the patent-in-suit can avoid the issue of interrupted data flows during synchronous switching. Conversely, since UH-800 is operated in a manner where a KVM channel and another peripheral channel cannot be synchronously switched, it cannot achieve the efficacy of uninterrupted peripheral data flows during synchronous switching. Therefore, Claim 6 of the patent-in-suit cannot be easily accomplished by a person not skilled in the art based on the technical information of UH-800. Since UH-800 could not adequately prove that Claim 6 of the patent-in-suit was not inventive, the Plaintiff’s appeal was rejected, and the decision against the Plaintiff was upheld.