Home >> News & Publications >> Newsletter

Newsletter

搜尋

  • 年度搜尋:
  • 專業領域:
  • 時間區間:
    ~
  • 關鍵字:

Determining Equivalents and the Prior Art Defense



According to the current Patent Infringement Assessment Guidelines, in order to determine whether an allegedly infringing product or method (the "concerned product or method") infringes on a patent, it shall first be determined whether the concerned product or method "literally reads on" the claim(s).  If so, the next step is to determine whether the Doctrine of Equivalents applies to the concerned product or method. The restrictions to the applicability of the Doctrine of Equivalents include the all-elements rule, prosecution history estoppel, prior art defense, and disclosure-dedication. If any of the restrictions are met, then it shall be determined that the concerned product or method does not constitute infringement.

 

In the Intellectual Property Court decision of No. 2019-Min-Zhuan-Su-74 on February 10, 2020, the rule of "prior art defense" was applied to deny infringement under the Doctrine of Equivalents. In the grounds of the decision, the court expressed the legal principle that the prior art defense restriction must be applied to the Doctrine of Equivalents because such principle aims to "balance the interests of the patent holder and the public." If the patent holder uses the Doctrine of Equivalents to expand the scope of the disputed patent's claim to such an extent as to cover a single prior art or a simple combination of a single prior art and general knowledge in the technical field of the invention at the time of filing, then the expanded scope not only infringes on the interests of the public but also can lead to invalidity of the patent.

 

In the cited decision, the plaintiff asserted that the purpose of the disputed patent's invention was to provide a single-button remote controller.  A user needs only press a single search button once, and an electronic appliance's code is identified without necessity to identify the appliance's brand or other criteria. Accordingly, a simplified operation of the single-button remote controller results in saved time. According to the patent specifications, since there are a variety of electronics brands, each with many models, there exist numerous command code groups. Therefore, search functions on conventional universal remote controllers might require multiple executions. Only after repeating many such search procedures will the corresponding command codes be found. However, the claims of the disputed patent solve this problem.

 

In contrast to the disputed patent, the defendant's concerned product requires a setup button to be pressed when configuring settings. Subsequently, corresponding buttons for each brand have to be pressed to search for corresponding command codes. Finally, the setup button must be pressed again to store the setting and finish setup. As a result, from start to complete finish, at least three button presses are required. The defendant believed that the concerned product does not "literally read on" the  claims of disputed patent.

 

The plaintiff then claimed that the concerned product simply changed the disputed patent's "single-button" disclosure to "multiple buttons".  Persons having ordinary skill in the art can easily arrive at the simple change. Furthermore, the concerned product's implementation of its features and the effects of its implementation were essentially identical to the technical features of the disputed patent.  Therefore, the concerned product falls within the scope of the claims of the disputed patent under the Doctrine of Equivalents.

 

After the hearing, the Intellectual Property Court ruled against the plaintiff's claim of the Doctrine of Equivalents, stating that if the concerned products for which identifying a brand of the electronic appliance is required is a simple change to the "single-button" remote controller of the disputed patent, the complex and time-consuming operation of the concerned product can be easily arrived at by persons having ordinary skill in the art.  Accordingly, the concerned product should be considered to be a simple combination of known art described in the disputed patent's specification as a known universal remote controller that uses a batch search based on electronic appliance brands and general knowledge of the art's technical field.  Therefore, the prior art defense should be applied to the disputed patent, and the concerned product does not infringe on the disputed patent under the Doctrine of Equivalents.
 

回上一頁