Patent

Claim Construction at Taiwan IP Court

Statistics show that among all IP Court decisions made in patent infringement lawsuits, around 30% were ruled as non-infringing, nearly 27% declared the patent rights at issue invalid, almost 27% were settled during litigation proceedings, while only 11% favored patentees. Analysis indicates that the most prominent reason affecting patentees’ chances of success may be attributed to IP Court’s current practice regarding claim construction.

Before the establishment of IP Court, judges at different levels of general courts handled patent infringement lawsuits. It was common for judges to omit patent claim construction or fail to be aware of the importance of claim construction during the adjudication of an alleged patent infringement case. Under general courts’ practice, judgments on whether an infringement actually occurred relied heavily on the technical assessment of infringing articles and the patent at issue; furthermore, courts usually outsourced such assessment.

This deficiency, however, has been remedied by the operations of IP Court. The IP Court carries out claim construction as a strict prerequisite to its infringement analysis in a patent litigation proceeding. Such a change in practice leads IP Court’s patent litigation proceedings closer to the pretrial hearings at the U.S. district courts, so-called “Markman Hearings.” After IP Court’s initial interpretation of claims, parties at issue can anticipate whether the scope of that patent’s claims is broad enough to cover the alleged infringing article or method and a settlement before judgment may be furthered. As a consequence of the Court’s interpretation of claims, most patents experienced a limit of the scope of patent rights, and therefore many infringement lawsuits were found not infringing before the Court actually gave its opinion on patent infringement.

With regard to patent claim construction, Article 56 (3) of the Patent Act prescribes that “The scope of an invention patent right shall be determined based on the claim(s) set forth in the specification of the invention. The descriptions and drawings of the invention may be used as reference when interpreting the scope of the claims in the patent application.”

The above stipulation makes it clear that descriptions and drawings of the invention can play a significant role in the construction of the claim. This suggests that, in addition to the language of the claims themselves, the description and drawings of the invention may be referenced during the interpretation of a claim and could influence the outcome of infringement judgments. Recent cases show that IP Court did read the technical features stated in the description for the claim construction; and the outcome of referenced technical features presented in the description has typically led to a narrower scope of rights on the patentee’s behalf. Thus it explains the low chance of success in patentees’ infringement lawsuits, no matter if the Court’s opinion is given under the “all-elements rule” or the “doctrine of equivalence.”

The Court’s claim construction practice strongly implies that in the future patentees will be requested to adhere to standards in the construction of their patent claims. It is common in an invalidation proceeding that a patentee tends to restrict the scope of claims to avoid a claim being invalidated; while using the same patent in an infringement action, the patentee as a plaintiff may try to broaden its patent scope to trap the defendant. However, such a “two-sided blade” may not work in the future owing to IP Court’s claim construction. To enjoy the broadest possible patent scope and sustain the claim construction during patent litigation, a good drafting of both patent claims and description is crucial.