Infringement Not Found If Claims Were Invalid

Toshiba Corporation owns Taiwanese Patent Certificate No. I315588 titled “semiconductor light emitting device and method of manufacturing same and semiconductor light emitting apparatus” (the ‘588 patent). Toshiba, after sending warning letters, sued Arima Optoelectric Corporation (“AOC”) for patent infringement for continuous engagement in selling and using the accused products, an array of models of LED. The ‘588 patent was amended post-grant twice in 2013 and in 2014 respectively. Whilst the 2013 Amendment was approved, the 2014 amendment was pending at the time the judgment was rendered.

AOC, the Defendant, responded to Toshiba’s asserted counts countering that the Amendments were made beyond the disclosure of the ‘588 patent, that patent claims did not read on its products, that the AOC was entitled to prior user’s right, and that the ‘588 patent is lack of novelty and inventive steps.

The Defendant first argued that the Amendments to the ‘588 patent are invalid because of the illegal expansion made beyond the disclosure of the specification. The court opined to the otherwise. Despite the 2014 Amendment was not granted during the trial, the 2014 version was only different from the 2013 counterpart by its narrowing of the claim scope and the clarification of ambiguous claim language.[1] The Amendment did not substantially enlarge the scope of claims as granted or went beyond the original disclosure of the specification as filed. The amended claims in 2014 version were therefore permitted by and admissible to the court.

Next, before claim construction, the court reasoned the scope of patent protection that the examples described in the specification only purport to illustrate the embodiments of the given invention. Examples shall not expand beyond or narrow the claims. Otherwise, it is no less than introducing the matters or limitations that are originally not included in the claims or substantially changing the scope of patent protection.

Furthermore, to interpret patent claims, one shall recite the claim wordings literally rather than reading into the specification or the abstract or removing any sections of the claim sentences, as the court emphasized. In the event where there exists any ambiguity or unclear use of languages, the descriptions and the drawings of the invention may be employed as reference to determine the definition or meaning that are understandable by a person having ordinary skills in the art. The claims shall be interpreted in an “objective and reasonable” perspective instead of the personal acknowledgement of the applicant. Unless the applicant “acts as his own lexicographer” to re-shape specifically a term in a unique and distinct definition from its commonly acknowledged meaning, the term will be identified as its conventional definition as perceived by an ordinarily skilled artisan.

After a series of claim construction and infringement analysis, the court determined that the products fall into seven (7) claims of the permitted 2014 Amendment.

The court also rejects Defendant’s prior art defense argument. Prior art defense, as explained, will be admissible when the allegedly infringing products are identical to a certain prior art or, if not identical, is the simple combination of a certain prior art and the common knowledge in the technical field. In other words, prior art defense will not be established based on the combination of a plurality of references. Since Defendant’s proposed scientific literature was concerning the morphology and growth of semiconductor materials but not substantially related with the invention of the ‘588 patent that centered at the semiconductor LED, the court held that such a single reference is inapplicable to defend the subject patent claims.

After all the foregoing, the court analyzed Defendant’s last defense challenging the validity of the claims and found that the claims in the 2014 Amendment are either not novel or lack of inventiveness under the evidenced prior art references. Namely, even though Defendant’s products infringed upon some of ‘588 patent’s claims, those claims were invalid. The patentee was not entitled to an enforceable patent right against the Defendant acts. The court ruled to dismiss the case.