All cases appealed to the Supreme Court are generally subjected to legal review only; it occurs very rarely that the Supreme Court has ruled based on findings of fact. Thus, when the Supreme Court rendered a ruling in a patent infringement lawsuit on its merits and remanded the case to the IP Court for a new trial, it is worthwhile to take a look into it.
The owner of Taiwan Utility Model Patent No. M425892 entitled "a Piling Device Capable of Drilling Holes in Rough Terrain” filed a patent infringement lawsuit with the IP Court, claiming that the defendant had used a device that infringed upon his patent characterized, inter alia, in that a fluid outlet is located near the connection between the lower end of the vertical tube and the pneumatic drill bit of the piling device. Irrespective of the contentions by the patentee and the defendant, the IP Court interpreted the "pneumatic drill bit" of the allegedly infringing device as including both a "radial drill bit" and an "upright drill tube" and the relationship between the drill bit and the drill tube was interpreted as being fixed. On that basis, the fluid outlet, a critical element, is presumably located at the end of the pneumatic drill bit, not near the connection of the drill bit to another component. Accordingly, the allegedly infringing device was considered not to read on claim 1 of the U.M. Patent and the U.M. Patent was found not to be infringed.
Not being satisfied with such outcome, the patentee filed an appeal but the IP Court maintained the Ruling in the first instance, thereby pushing the case to the Supreme Court.
The Supreme Court, upon hearing, held a divided opinion, expressing that:--
- Unless a party admission is legally withdrawn, under the Code of Civil Procedure, the court may not make a determination based upon a fact contrary to what is stated in the party admission. In the Rulings rendered by the IP Court, the IP Court uniquely interpreted the "pneumatic drill bit" of the allegedly infringing device as including "a radial drill bit” and “an upright drill tube” being connected in a fixed manner, which is contradictory to what was specified in the Counter-statement filed by the defendant. Such Rulings are apparently flawed.
- To establish a prima facie case of infringement, the main dispute in this lawsuit is whether the allegedly infringing device has a “fluid outlet” near the connection between the “drill bit” and the “drill tube” as literally defined in Claim 1 of the U. M. Patent. Apart from not launching a comparison between the allegedly infringing device and the patented subject matter based upon the features of the allegedly infringing device, as self-stated by the alleged infringer, the IP Court erred in being oblivious to the patentee’s request for performing a further investigation regarding the features of the defendant’s device.
After the case is remanded for a new trial, the focus will be on whether the defendant is allowed to withdraw the party admission and whether the patentee’s interpretation of the allegedly infringing device and his opinion regarding claim construction would be convincing to the IP Court. It merits further observation.
The above contents are intended as general discussion of the subject matter only and shall not be deemed as legal advice to any particular case or issue.