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Burden of Proving Infringement on an Article Made by Using a Patented Manufacturing Process



Article 99 (I) of the Patent Act provides that “where an article made by using a patented manufacturing process which is unknown within and/or outside of  Taiwan before the filing of the manufacturing process patent, an article identical thereto made by another person shall be presumed as having been manufactured by using said manufacturing process.”  However, the prerequisite of applying this clause is that the patentee shall prove the facts of “such article made by using a patented manufacturing process is unknown within and/or outside of Taiwan before the filing of the manufacturing process patent” and “an article identical thereto made by another person.”  The preceding clause was referred to again by the Intellectual Property Court when confirming the No. 23 Decision of 2017 Min-Zhuan-Shang-Zi on January 25, 2018.

 

In this case, the Plaintiff is the Patentee of the No. I298015 Invention Patent of Taiwan, “Low Nitrate Vegetables and its Cultivation System and Method” (hereinafter referred to as the “Patent in dispute”).  The technical characteristic of the Patent in dispute is to use a specific cultivation system and method to grow vegetables, with such vegetables reaching a low quantity of nitric nitrogen (NO3–N).  The Patentee claimed that multiple types of low nitrate vegetables have been bought from the vegetable shelves of the fresh produce supermarket ran by the Defendant.  As a result, the Plaintiff has sued the Defendant for infringing on Claim 1 (a cultivation system for low nitrate vegetables) and Claim 2 (cultivation method for low nitrate vegetables) of the Patent in dispute.  After the hearings, as for the infringement on Claim 1 of the Patent in dispute, the Court decided that the Plaintiff failed to prove that the vegetables produced by the Defendant meet all the technical characteristics of Claim 1 of the Patent in dispute.  Furthermore, the Plaintiff could not show that the Defendant used a cultivation system with all the technical characteristics recited in Claim 1 of the Patent in dispute.  As a result, the Court determined that the Defendant did not constitute an infringement under the All Element Rule.  As for Claim 2 of the Patent in dispute, the Patentee also failed to prove that the Defendant used a cultivation system with all the technical characteristics recited in Claim 2 of the Patent in dispute, and therefore the Defendant did not constitute an infringement under the All Element Rule either.

 

The Patentee argued that the low nitrate vegetables are not grown naturally and that the Patent in dispute is the only process to produce low nitrate vegetables.  According to the report from the SGS Food Lab, all the vegetables sold by the Defendant fell into the range of nitric nitrogen defined by Claim 2 of the Patent in dispute, and the packages of these vegetables were labeled with “low nitrate.”  Therefore, in accordance with Article 99 (I) of the Patent Act, it shall be presumed that the low nitrate vegetables sold by the Defendant were made by using the process of Claim 2 of the Patent in dispute.  Nevertheless, the Defendant has submitted an academic paper published before the filing date of the Patent in dispute showing that vegetables grown by using nitrogen-free water can effectively lower the nitrate level, and that the nitrate level can reach the low nitrate nitrogen standards defined by Claim 2 of the Patent in dispute.  Furthermore, the specification of the Patent in dispute also acknowledges that the standards of the residual quantity of nitrate nitrogen in vegetables in China and other countries are within the range defined by Claim 2 of the Patent in dispute.  These firmly proved that low nitrate vegetables were not unknown within and/or outside of Taiwan before the filing of the manufacturing process patent.  After considering the arguments of both parties, the Court held that the documents submitted by the Defendant show that before the filing of the Patent in dispute, there were already low nitrate vegetables.  The methods used in these documents might be different from that in Claim 2 of the Patent in dispute, but undoubtedly the identical article made using the manufacturing process in Claim 2 of the Patent in dispute was not unknown within and/or outside of Taiwan before the filing of the Patent in dispute.  Therefore the shifting of the burden of proof according to Article 99 (I) of the Patent Act shall not apply.  It is still necessary for the Plaintiff to prove that the accused article was made by the same processing method as Claim 2 of the Patent in dispute.

 

A patentee of the manufacturing process is usually unable to know the method implemented by the alleged infringer in practice.  As a result, it is difficult to enforce the patented manufacturing process.  The Patent Act, taking into account international laws, indeed provides the shifting of burden of proof.  However, the patentee of the patented manufacturing process must still pay attention to the requirement of “where an article made by using a patented manufacturing process which is unknown within and/or outside of Taiwan before the filing of the manufacturing process patent” before filing an application, or may consider changing to protecting the invention by a product patent.
 


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