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Judging Relevance of Technical Field in Determining Motivation for Combination with Regard to Inventive Step
Whether a person having ordinary skill in the art (PHOSITA) has motivation to combine multiple prior art references has always been an important criterion for determining a patent's "inventive step." In principle, the factors considered among multiple prior art references include "relevance of technical field," "similarity of problems to be solved," "similarity of operations or functions" and "teaching or suggestion." All of these factors need to be taken into consideration as a whole.
In specific cases where differences exist between multiple prior art references in technical field and problem to be solved, it is worth observing how relevance and similarity are considered and determined under judicial practice.
Comprehensive analysis and comments on this issue are given in the administrative judgement of 2020-Pan-No. 411 rendered by the Taiwan Supreme Administrative Court on July 30, 2020. In this case, the patent at issue is titled "Fan and Its Manufacturing Method." Invalidation Evidence 1 is a patent for a spindle motor; Evidence 2 is a patent for a fan and motor; Evidence 3 is a patent for a fan; and Evidence 5 is a patent for a thin fan rotor. All of which are not exactly the same as the patent at issue. Consequently, the patentee asserted in the invalidation litigation that it is not a spindle motor manufacturer and has no relevant manufacturing experience or knowledge, and the evidential prior art references concerning spindle motor lack relevance of technical field.
Nevertheless, the Taiwan Supreme Administrative Court clearly held that, when determining the technical field of the prior art references, the court may consider factors such as the object, principle, mechanism or effect related to the relevant technology. Since both the fan and spindle motor are based on the principle of motor rotation, a PHOSITA related to a fan might refer to the technical content of the spindle motor when developing and creating fan motor structures, which justifies the relevance of technical field. The court accordingly concluded that the forgoing multiple prior art references have relevance of technical field.
In determining "similarity of problems to be solved," the problem to be solved in Evidence 1 is to provide a simple structure and assembly method for a spindle motor with excellent impact resistance and increased bearing life. The problem to be solved in Evidence 2 is to improve a motor's self-cooling function. The problem to be solved in Evidence 5 is to reduce a thin fan rotor's susceptibility to heat deformation and improve assembly accuracy. As for Evidence 3, it is a prior art of the patent at issue which only discloses a structure of a conventional impeller which improves the joint strength between the rotating shaft and wheel hub while providing no disclosure of the problem to be solved. Based on the foregoing patent specifications, the Court recognizes that Evidences 1, 2, 3, and 5 do not intend to solve an identical problem.
However, upon examining the descriptions in the patent specifications, the Taiwan Supreme Administrative Court concluded that the invention of the patent at issue intends to solve the motor structure problem of a thin fan, while Evidences 1, 2, 3, and 5 all aim at solving the structural design issue resulting from the thin design of an electronic product and its motor for the purpose of miniaturization. Hence, there is a similarity in the problems to be solved in the multiple prior art evidential references, and a PHOSITA naturally has motivation to refer to the technical contents disclosed by the multiple prior art evidentiary references and combine them accordingly.
In addition, in terms of determining the "PHOSITA," even though the patentee asserted that the original judgement established a PHOSTA's knowledge level simply based on the contents of the evidentiary patent specifications, the Taiwan Supreme Administrative Court still reiterated that during the litigation proceedings, the court may establish a "PHOSITA" and his/her technical level on the filing date of the patent at issue from the prior art contained in the patent at issue and the technical content disclosed in the evidences provided by the invalidation requester, so as to determine whether a combination of invalidation evidences is sufficient to prove that the patent at issue has an inventive step.
In summary, where differences between the invalidation evidences exist in technical content, technical field and problem to be resolved, it is still possible to judge relevance and similarity by considering factors related to the said technology, including the object, principle, mechanism or effect.