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The Supreme Administrative Court’s Elaboration on the Claim Construction
When it comes to the dispute of either patent validity or infringement, the most critical point is how to construct the scope of the claims. In this regard, the Supreme Administrative Court elaborated the “Doctrine of Claim Differentiation” and the doctrine of not reading the limitations into the claims from the specification in the 2020 Pan Zi No. 130 judgment made on March 12, 2020.
In the said case, the appellee requested an invalidation in the Taiwan’s Intellectual Property Office (TIPO) against the appellant’s patent in dispute. After a final and binding invalidation decision of revocation was rendered by the TIPO, the appellant subsequently filed an administrative action in the Taiwan’s Intellectual Property Court (IPC). Nevertheless, the IPC, upon its case adjudication, also held that the said patent in dispute was in lack of non-obviousness and should be revoked, against which the appellant consequently filed an appeal in the Supreme Administrative Court.
The Supreme Administrative Court, upon its case adjudication, first elaborated that, "the ‘Doctrine of Claim Differentiation’ means that each claim in a patent is different in scope and meaning from all other claims. One certain claim should not be interpreted as another claim lest they both cover the same scope. Therefore, where the technical features corresponding to the claims are recorded in different terms, it shall be presumed that the claim scope defined by the different terms is different. The above doctrine is only used to construct the scope covered by the claims and should not be used to amend the scope of patent rights determined based on the scope, the patent specification and the file wrapper of the patent application. Hence, there should be no need to apply the ‘Doctrine of Claim Differentiation’ in the patent in dispute if no two claims in the same patent are interpreted to cover the same scope.” In this case, the claim 2 further is a dependent claim to the claim 1,and therefore both claims neither have the same limitations nor have the same scope of patent right. The “Doctrine of Claim Differentiation” is therefore not applicable in the said patent in dispute, which justifies the judgment made by the Taiwan’s IPC.
The Supreme Administrative Court further stated that “the extent of the protection conferred by an invention patent shall be determined by the claim(s), and the description and drawing(s) in the interpretation of the claim(s) so that the purpose, function and effect of the invention can be understood. As the claims are generalized definitions of the ways for carrying out the invention or the embodiments specified in the specification, the limitations specified in the specification and drawings shall not be imported (read) into the claim scopes, nor should the objective aspects of the proclaimed patent scope be amended unless the specification has clearly stated that the claim scope is limited to the said embodiments and drawings.” Even though the appellant pointed out that the said “ coupling” specified in the claims only refers to the direct electrical connection and so on according to the components disclosed in the drawings of the patent at dispute, IPC held that the said “coupling” specified in the claims includes both direct and indirect electrical connection after referring to the content of the patent specification at dispute. As a result, the appellant’s foregoing argument violates the foregoing doctrine are shall not be accepted. The judgment made by the IPC shall be affirmed.