Newsletter
Taiwan Intellectual Property Court’s Determination on Whether There Is a Motivation to Combine “Multiple References”
In patent invalidation disputes, whether persons having ordinarily skill in the art will be motivated to combine multiple references is always a focal point in the determination of whether an inventive step is exhibited in the subject patent, for both the patentee and the petitioner of the cancellation. The Taiwan Intellectual Property Office (TIPO) clearly stipulates the principles for such disputes in its Patent Examination Guidelines (hereinafter “the Guidelines”). Observing the amendments of the Guidelines of recent years, however, it can be seen that TIPO has made certain adjustments to the Guidelines in the determination of "motivation." The Guidelines (2013), originally stipulated that
"When determining whether there is a motivation to obviously combine the relevant prior art, principally, the following items, exemplified here, should be taken into consideration among the relevant prior arts and the subject invention, and considered as a whole; lacking any of the following items should not be a sole reason for determining the lack of motivation to combine the relevant prior art: (a) relevance to the technical field between the relevant prior art and the subject invention; (b) relevance to the issues to be resolved between the relevant prior art and the subject invention; (c) relevance to any corresponding function or effect between the relevant prior art and the subject invention; and (d) prior art instructions or suggestions relevant to the subject invention."
In the amendment to the Guidelines of July 2017, however, the stipulation itself has been amended to
"When determining whether there is motivation to combine the technical content of multiple references, the relevance or commonality among the technical content of multiple references should be taken into consideration, rather than the relevance or commonality between the technical content of the individual prior art and the subject application."
The amendment is intended to avoid impermissible hindsight when referring to the content of the subject patent; such amendment remains effective until now. On 8 July 2020, a 2020 Xing Zhuan Su Zi No. 3 judgment rendered by the Taiwan Intellectual Property Court (hereinafter “IPC”) adopted the said amendment (i.e. the stipulation of the existing Guidelines), discussing the relevance and commonality among multiple references.
The plaintiff (the patentee) of the judgment argued that, in the multiple references provided by the petitioner of the cancellation action, the technical problems to be resolved and the desired effects to be achieved are not the same as those of the technical feature, “grid-line grooves,” of the subject patent. Accordingly, persons having ordinary skill in the art of the subject invention would neither have the motivation to combine the references, nor be able to achieve the invention of the subject patent based on the references. The IPC, however, contrary to the plaintiff’s arguments, held the opinion in the judgment that:
"When determining whether there is a motivation to combine the technical content of multiple references, the relevance or commonality among the technical content of multiple references should be taken into consideration."
Citing the Guidelines published in July 2017, the IPC asserted that factors such as “relevance to the technical field,“ “relevance to the problem to be resolved,“ “relevance to the functions or effects” and “prior art teachings or suggestions” should be taken into consideration as a whole in determining the motivation to combine the relevant prior art. Moreover, the judgment stated that, in general, the more instances of said factors appear, the more likely that persons having ordinary skill in the art would have the motivation to combine the technical content of multiple references; only under certain circumstances, it is possible to conclude that there is motivation to combine the technical content thereof, merely based on one powerful factor. Finally, the IPC concluded that the subject patent lacks an inventive step on the grounds that
"Exhibits 2, 3, and 6 to 8 pertain to the relevant technical field of scribing wheels, having commonality of function and effect for scribing and cutting. Accordingly, persons having ordinary skill in the art, when considering solution of the poor scribing problem, would be reasonably motivated to refer to the prior art of Exhibits 2, 3, 6, and 7, applying and combining the teachings and suggestions thereof.”