In practice, it is not common for the Intellectual Property and Commercial Court (IPC Court) in the second instance to overturn a patent infringement opinion rendered by the Technical Examiner of the IPC Court in the first instance. It is also of rare occurrence that the Supreme Court rescinds a Judgment rendered by the IPC Court in the second instance. Nevertheless, both of the above scenarios are seen in a recent Judgment that the Supreme Court rendered in April of 2021.
The patent at issue is related to a large LED display installed on the body of a stage truck, in which a top rod and a bottom rod are fixed at the top and bottom ends of the main display and the side displays, respectively. The top rod and bottom rod are paired with corresponding sleeves through which pins are extended, thereby mounting the side displays to the main display to form a large screen. At the first instance trial of the Tainan District Court, the court entrusted a technical examiner of the IPC Court to investigate on the spot and provide an infringement analysis report. Although the bolts included in the accused design are referred to by court as “pin bolts”, based on aid report, Tainan District Court held that the accused device literally infringed the patent at issue, since the bolts included in the accused device fall within the definition of the pins” recited in the claims of the patent at issue,”
After the case was appealed to the second instance of the IPC Court, the IPC Court rescinded the Judgment, finding that the accused device did not read on the Claims of the patent at issue. The judges of the second instance of the IPC Court found, among others, that when performance is yet to begin or has ended, the pins locked between the two side display and the main display, respectively, can be withdrawn so that the two side displays can be removed while achieving the function of easy assembly and disassembly. On the other hand, the bolts included in the accused device are secured in the sleeves to serve the function of a stable connection that is not easy to loosen. Thus, the “bolts” included in the accused device cannot be construed as the variant of the “pins” in the patented device under the “doctrine of equivalents.”
Not being satisfied with the outcome, the patentee filed a further appeal with the Supreme Court. The Supreme Court, however, remanded the case for the following reasons:
While it is recited in the Claims of the patent at issue that “…the pins are extended through the sleeves, thereby mounting the side displays to the main display…,” the pins included in the patent at issue also serve the function of a connecting element. As “bolts” and “pins” seemingly both serve the purpose of “connection”, the case shall be remanded to the second instance of the IP Court to reconsider whether or not “bolts” is the variant of “pins” under the “doctrine of equivalents.”
The case was thus remanded to the IPC Court for reconsideration. It is worth observing any further development thereof. Incidentally, in the second instance judgment of the IPC Court, the Judges also indicated that pins are used throughout the Specification (including embodiments and drawings) with no reference to any other connecting elements. It merits the attention of practitioners when drafting the Specification.