Parties Dispute over Entitlement to “Ab Glider” Patent Application
The American sports equipment company, Icon Health & Fitness (hereinafter “ICON”), won a declaratory judgment on entitlement to the utility model patent application for a multiple-function body training apparatus at the second instance of the IP Court; the decision was made final in June of 2013.
The dispute involves “Ab Glider,” a best-selling fitness apparatus advertised on TV and Internet shopping channels. Back on December 21, 2009, ICON sent an initial basic drawing of Ab Glider, the fitness apparatus at issue, by email to their original equipment manufacturer (OEM) in Taiwan, requesting a quotation and a sample apparatus. The drawing and details of ICON’s requests were subsequently sent to a downstream manufacturer associated with the OEM for further handling. Communications thereafter between ICON and the OEM, and the OEM and their downstream manufacturer, in which the communications included transmissions of drawings and pictures of samples, were all conducted through email. On April 27, 2010, a marketing assistant of the downstream manufacturer filed a utility model patent application for a multiple-function sports apparatus that was suspiciously similar to Ab Glider. The patent was granted by TIPO four months after the application was filed.
Pursuant to Article 119 (then Article 107) of the Patent Act, a utility model patent may be invalidated if the utility model patentee is not entitled to file the utility model patent application. Invalidation of patent rights is an administrative proceeding, which is governed by TIPO as the administrative authority, while an ownership of right should be decided at a court forum. Since the governing authorities differ, ICON firstly sought a civil remedy from the IP Court in 2011, with a complaint that ICON is the true owner of the right to patent application, and requesting that a transfer of the patent right at issue be ordered. As soon as litigation proceedings were filed, ICON filed invalidation against the patent at issue with a request of examination suspension until the outcome of the court judgment becomes available. Since TIPO is not entitled to make a judgment on whether a utility model patentee has the right to file a utility model patent application, TIPO must await a court judgment before making a decision of invalidation.
On the first instance of the civil tribunal, the IP Court refused to hear the case on the ground that the Court lacks jurisdiction over the matter of ordering a transfer of patent right as it is the administrative body that has the authority to conduct a transfer of IP right.
ICON appealed to the second instance by modifying its claim to request for a declaratory judgment confirming that the appellant ICON is the owner of the application right for the patent at issue. The second instance of the IP Court vacated the first-instance judgment, and confirmed and declared that the entitlement to application for the utility model patent at issue belongs to ICON. Thereare three distinctive opinions in the Court’s judgment as follows:
1. According to Article 5 of the Patent Act, the owner of the right to apply for a patent can be an inventor, utility model creator, designer or his/her assignee or successor. The Court confirmed that an entitlement to patent application is a dispute involving private law relations. Since a declaratory judgment is a legal means used to confirm the existence or nonexistence of the facts from which a legal relation arises, the court has jurisdiction over who is the owner of the right to apply for the patent at issue.
2. The Court introduced three levels of standard of proof from the U.S. litigation system. The Court sets preponderance of evidence as the lowest evidentiary standard for civil disputes, whereas clear and convincing evidence must be attained to prove patent invalidity. In criminal cases, the standard of proof is the highest, requiring proof “beyond reasonable doubt” to convince a court. Since only indirect evidence was available in this case, the lowered evidentiary bar allowed the admission of evidence provided by ICON.
3. The Court borrowed the two-prong test for copyright infringement to resolve the accused plagiarism of inventive design drawings that was filed for patent, namely: (1) whether the patentee had “access” to the Ab Glider design drawings, and (2) whether “substantial similarity” is established between the technical features of the patent at issue and those of the Ab Glider drawings.
With respect to the above three opinions, it is very interesting that the Court borrowed the test for copyright infringement to determine whether the patentee in this case is not entitled to apply for the patent at issue. In other words, the Court quoted “access” and “substantial similarity” to confirm that the indirect evidence presented in this case was sufficient to prove the patentee’s plagiarism on the inventive idea of Ab Glider. In the general situation of adjudicating patent infringement, a court must conduct claim construction and determine whether an accused article literally infringes using the “all elements rule” or infringes under the “doctrine of equivalents.” Such rules are improper in resolving the present matter in which the patentee may not be the true owner of an invention that has been patented. By borrowing the two-prong test from copyright infringement practice, the patentee was found to have access to Ab Glider design drawings, and a substantial similarity of the patented claims and the technical features shown in the Ab Glider drawings was established. As long as plagiarism is found, the true owner of invention should be entitled to patent application. Hence, on the basis of Article 5 of the Patent Act, ICON is determined to be the true owner of the right to file the patent at issue.
The decision has been filed with TIPO for a continued examination on invalidation of the utility model patent at issue. On receipt of the invalidation decision revoking the patent at issue, ICON will have 2 months to file for the same utility model application, according to Article 35 (then Article 34) of the Patent Act. The re-filed application date will be the filing date of the invalidated patent.
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