In principle, in order to prove patent infringement, a patentee must establish that all limitations of the asserted patent claim have been fulfilled by the alleged infringer. In Taiwan, it has not been clear if the Patent Law recognizes the type of liability for “indirect infringement,” which aims to regulate liability arising out of one’s aiding, or abetting others to infringe a patent. Recently though, in Case No. (106) MIN-JHUAN-SU-No. 50, the IP Court has shed some light in this regard.
In said case, the plaintiff is the patentee of the Invention Patent No. I329733 entitled “Environmental-Friendly Canon Salute” (hereinafter “’733 patent”). The defendant, Lian Yeh Industry Co., Ltd. (hereinafter “the defendant”), without the plaintiff’s authorization, manufactured a firecracker product (hereinafter “Product”) and sold them through internet. The plaintiff claimed that the Product infringes claims 1-4 of the ‘733 patent. The IP Court analyzed the limitations of claim 1 as follows: (A) an environmental-friendly Canon Salute comprising, at least, one barrel, having a fixed extension pipe that has an opening, and an ignition chamber at the bottom of the pipe opening; (B) an ignition unit, having an ignition element in the ignition chamber, and a power supply mechanism that ignite the ignition element; (C) a gas inlet unit, having a gas source, and the end of gas inlet connecting to the gas source that is connected to the ignition chamber; (D) a control unit, having a switch, and a gas timer which is electronically connected to the switch and controls the time when the gas inlet unit feeds gas to the ignition chamber, and an ignition timer that controls the ignition timing of the ignition unit.
The defendant refuted that the Product it sold to consumers only met the structural features of the aforesaid element (A), i.e., barrel, pipe, pipe opening, and that there was no power supply mechanism, gas source, or timer. Therefore, based on the principle of all-element rule, the Product did not constitute infringement. In this regard, the IP Court reasoned that:
- According to the Product’s “Methods and Precautions for Operating the Environmental-friendly Canon Salute” (hereafter “Manual”) provided by the plaintiff, the product description includes the following items: (1) two connection gas – one is a green oxygen meter, and the other is an orange gas meter; (2) connected to a 12v DC power supply; (3) buttons of remote control for choice of continuous fireworks, three-gun salute, long intermittent fireworks, or short-interval fireworks.
- From Item (3) of the product description above, even if the defendant’s Product did not have a timer, it should have been equipped with similar timing apparatus to serve such purpose through similar means and function. Otherwise, it is impossible to accomplish the touted different discharge time/modes of fireworks under the description of item (3) for “long intermittent fireworks,” “short-interval fireworks,” “continuous fireworks.” Therefore, although the Product may not fall into the literal scope of the aforesaid element (D) of Claim 1, the patentee may still prevail under doctrine of equivalent.
- Although the defendant argued that the Product it sold did not have a power supply and a gas source, so that it did not meet the all-element rule, the defendant, through its aforesaid Manual, had guided user on how to connect to the gas source and DC power supply. Therefore, when the consumer followed the teachings in the Manual to connect to gas source and DC power supply, the consumer will fulfill all the limitations of claim 1of the ’733 patent. If there is no other defense available, the defendant may be held liable for abetting and assisting others to fulfill all the limitations of Claim 1 of ‘733 patent, and subject to Paragraphs 1 and 2, Article 185 of the Civil Code (which the court considers as equivalent to “induced infringement”). Therefore, although the defendant argued that the Product did not meet the all-element rule, it is not enough to exempt the defendant from tort liability.
Although, in the end, the IP Court ruled that the defendant’s Product does not constitute infringement after claim construction, this case is noteworthy in that the IP Court specifically explained that the defendant’s teaching and assistance through its Manual to guide user to fulfill all the elements of a patent claim may constitute induced infringement under the Civil Code. The IP Court seemed to suggest that the accused infringer can no longer shift liability to third party based on all-element rule. It remains to be seen whether the IP Court will further explore this area of law and recognize the theory of indirect infringement, which, if in the affirmative, will undoubtedly better protect patentee’s right and interest in Taiwan.