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Can Patent Amendments Serve as Grounds for Retrial?
In patent infringement litigation, if the court finds that a product does not fall within the scope of the patent at issue, a judgment will be rendered against the patentee. If this judgment becomes final and binding, and the scope of the patent is subsequently altered through an amendment approved by the Intellectual Property Office of the Ministry of Economic Affairs (TIPO), can the patentee invoke this amendment to request a retrial to overturn the unfavorable binding judgment?
This question was recently addressed by the Intellectual Property and Commercial Court, which rendered a decision based on the following considerations:
In this case, Plaintiff A, the licensee of the patent at issue (the "Patent"), filed a patent infringement lawsuit in 2022, alleging that Defendant B's accused product (the Product) literally infringed Claims 5 and 6 of the Patent. The trial court found that the Product did not fall within the literal scope of Claims 5 or 6 and ruled against Plaintiff A. Plaintiff A appealed, adding a claim of infringement under the doctrine of equivalents for Claims 5 and 6. However, the appellate court still held that the Product did not fall within either the literal or equivalent scope of Claims 5 and 6. Ultimately, Plaintiff A lost the case, and the judgment became final and conclusive. The final judgment was served on Plaintiff A on February 15, 2023.
Subsequently, on October 9, 2024, Plaintiff A applied to the TIPO for an amendment of the Patent and received approval for the amendment on March 17, 2025. Plaintiff A then filed two motions for retrial based on the approval of the amendment. The grounds for retrial cited included Article 496(1)(11) of the Civil Procedure Code, which provides for retrial when "a civil, criminal, or administrative judgment, or other ruling or administrative disposition forming the basis of the judgment, has been changed by a subsequent final judgment or administrative disposition," and Article 496(1)(13), which allows retrial when "the party discovers evidence not previously considered or that could have been used, provided that such evidence could lead to a more favorable judgment if considered."
1. Plaintiff A's motion for a retrial under Article 496(1)(13) of the Code of Civil Procedure was dismissed.
The Civil Judgment No. 114 (2025)-Min-Chuan-Shang-Tsai-Yi No. 1 by the IPC Court, dated October 2, 2025, stated that the condition "party discovers evidence not previously considered or that could have been used" refers to evidence that existed before the conclusion of the factual trial proceedings in the prior litigation. If the evidence did not exist before the conclusion of the factual trial proceedings in the prior litigation, it cannot be considered newly discovered or newly usable evidence. Evidence that came into existence only after the conclusion of the factual trial proceedings cannot serve as grounds for retrial.
Plaintiff A filed an application to amend the Patent on October 9, 2024, and received the TIPO's decision approving the amendment on March 17, 2025. However, the original final judgment was rendered earlier, with the oral arguments concluding on December 22, 2022. Since the amendment approval decision was not evidence existing before the conclusion of the oral arguments in the prior trial proceedings, it does not meet the requirements under Article 496(1)(13) of the Code of Civil Procedure, which pertains to "the party discovering evidence not previously considered or that could have been used."
Furthermore, Plaintiff A admitted that Claim 5 of the Patent, after amendment, added two technical features, thereby effectively narrowing the scope of Claims 5 and 6 as they existed before the amendment. Since the Product does not fall within the literal or equivalent scope of Claims 5 and 6 before the amendment, it is even less likely to fall within the more narrowly defined scope of Claims 5 and 6 after the amendment. Even when considering the amendment approval decision, there is no possibility of a more favorable judgment for Plaintiff A. Therefore, the motion for retrial was dismissed.
2. Plaintiff A's motion for a retrial under Article 496(1)(11) of the Code of Civil Procedure was also dismissed.
The IPC Court, in its Civil Judgment 114(2025)-Min-Chuan-Shang-Tsai-Yi No. 2 dated February 6, 2026, stated that this ground for retrial refers to situations where a final judgment in a case was based on an administrative disposition that has subsequently been altered, thereby undermining the foundation of the original final judgment (referencing the Supreme Court Civil Ruling 111(2022)-Tai-Kang No. 591).
As previously mentioned, the Product does not fall within the literal or equivalent scope of Claims 5 and 6 of the Patent before amendment, and it is even less likely to fall within the more narrowly construed scope of Claims 5 and 6 after amendment. Therefore, even if the scope of the Patent's claims is amended, the result does not undermine the foundation of the original final judgment. In particular, Plaintiff A did not file the retrial motion within the 30-day non-extendable period from the time the grounds for retrial became known. Hence, Plaintiff A's retrial motion was dismissed.
From the above, it is clear that change in the scope of patent rights due to amendment made after a final judgment does not necessarily constitute grounds for a retrial. Grounds for a retrial is warranted still depend on whether the result undermines the foundation of the original final judgment.