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Supreme Court Shifts From "Element by Element" to "As a Whole"



When applying the Doctrine of Equivalents in patent infringement cases, Taiwan's courts have always adopted the U.S. "element by element" approach instead of the German "as a whole" approach. In principle, it is easier to establish patent infringement using the "as a whole" approach" than the "element by element" approach." However, in a judgment handed down in September 2014, the Supreme Court adopted the "as a whole" approach. This is a significant change in the evaluation of patent infringement under the Doctrine of Equivalents and is more friendly to patent holders.
 
The Supreme Court once invited two leading law professors to write articles on the determination of patent infringement under the Doctrine of Equivalents; they were even invited to give speeches to Supreme Court judges. The professors had respectively studied in the U.S. and Germany. The professor who had studied in Germany embraced the idea of adopting the "as a whole" approach, while the other professor stated that Taiwan should continue to use the "element by element" approach. In 2010, the Supreme Court, for the first time, clearly stated in a judgment that the Doctrine of Equivalents should be applied on an "as a whole" basis. This was the first time the Supreme Court had ever made a clear stand on such an important legal issue.
 
Despite the above-mentioned Supreme Court judgment, the Intellectual Property Court, which is responsible for hearing patent infringement cases, has continued to use the "element by element" approach in numerous first- and second-instance patent infringement lawsuits.
 
For example, in a case concerning an eye massage device, the Intellectual Property Court stated as follows: "The main body of the product claimed in Claim 1 of the asserted patent comprises, in addition to an air tube, a vibrating motor and a terminal panel, an air pump, a release valve, and a buzzer, whereas the main body of the accused product comprises only an air tube, a vibrating motor, and a terminal panel; the air pump, release valve and buzzer are all installed in the controller. Thus, the body of the accused product has no air pump, release valve, or buzzer. This arrangement is different from that of Claim 1 of the patent because in the latter, the air pump, release valve and buzzer are installed in the main body of the eye massage device."
 
The Intellectual Property Court applied the "element by element" approach and ruled against the patent holder on two occurrences, saying that no equivalent infringement was found. The patent holder appealed, and the Supreme Court set aside the judgments and sent the case back to the Intellectual Property Court for retrial. It was not until the third trial of second instance that the Intellectual Property Court adopted the "as a whole" approach and ruled in favor of the patent holder. It was the first time the patent holder won the case. Although the defendant filed an appeal, the Supreme Court dismissed the appeal in September 2014 and the case was ultimately settled.
 
Because of the three rounds of back-and-forth court proceedings in the eye massage device case, it is generally believed that the "as a whole" approach should be adopted instead.  From now on, patent holders can invoke the Supreme Court judgment on the eye massage device case when asserting infringement under the Doctrine of Equivalents since it would be easier to prove infringement under the "as a whole" approach.

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