In order to preserve evidence for civil patent infringement lawsuits, a Taiwanese patentee may file a motion with the court for preservation of such evidence by indicating the opposing party, the evidence to be preserved, the fact to be proved by such evidence, and the reasons why the evidence must be preserved, as well as making a preliminary showing of possible patent infringement. The Taiwan Intellectual Property and Commercial Court (hereinafter referred to as the “IPC Court") generally conducts an ex parte proceeding for such motion, examining whether the accused product potentially infringes the patent and whether the requirements and necessity for evidence preservation are met. Typically, the movant will not face any challenges from the opposing party, such as the patent invalidity challenge. However, it doesn’t mean that the IPC Court completely disregard the examination on the patent validity issue in evidence preservation cases. In a civil ruling made in April of 2024 (2024 Min Sheng Zi No. 3), the IPC Court used the lack of novelty of the movant’s patent as one of the major reasons for rejecting the evidence preservation motion.
The patent involved in above evidence preservation proceeding relates to a purge flow distribution system for a wafer cassette for semiconductor process. To preserve evidence of infringement related to the opposing party’s accused product, what the movant mainly relied upon to give a preliminary showing of the opposing party’s infringement is a Taiwan laid-open patent application filed by the opposing party. The movant asserted that the opposing party has practiced the laid-open application to make the accused product, and that the patent infringement could be established by comparing the movant’s patent with the opposing party’s patent application disclosure. In response, the IPC Court first stated that the analysis of patent infringement should be based on a comparison between the accused product and the movant’s patent, rather than a comparison between both parties’ patents, and thus the movant failed to make a preliminary showing of the possibility of patent infringement. Further, the IPC Court indicated that the priority date of the movant’s patent is October 27, 2021, which is later than that of the opposing party's patent application on August 17, 2021, and held that the opposing party’s patent application can be used as a prior art reference to invalidate the movant’s patent for lack of novelty. The IPC Court also relied on the movant’s analysis of literal infringement to infer that opposing party’s patent application had disclosed all the technical features of the asserted claims of the movant’s patent, and held that the opposing party’s patent application could prove that the movant's patent should be deemed lacking in novelty, and therefore dismissed the motion for no need to preserve evidence in said case.
Regarding the movant’s citation of the opposing party’s patent disclosures to make a preliminary showing of patent infringement in evidence preservation proceedings, the IPC Court’s previous rulings were not entirely negative. In cases where the IPC Court grants evidence preservation, the movant often uses catalogs, web pages, and photos of the opposing party’s accused product to explain the connection between the accused product and the opposing party’s patent, arguing that such product-related materials have disclosed a part of technical elements of both the movant’s and the opposing party's patents, and concluding that the accused product may infringe the movant’s patent because the opposing party’s patent has disclosed the remaining elements of the movant’s patent (see 2019 Min Zhuan Kang Zi No. 16). However, if the movant, like the one in this case, only relies on the opposing party’s patent for infringement analysis without further explanations regarding the accused product, the Court tends to conclude that the movant failed to sufficiently make a preliminary showing of the possibility of infringement. In practice, there are cases where the Court ruled that the movant failed to make a preliminary showing of patent infringement by directly determining that the opposing party’s patent does not disclose all the elements of the movant’s claims (see 2023 Min Zhuan Kang Zi No. 4 and 2023 Min Sheng Zi No. 24).
In addition, although the movant usually will not face the opposing party’s patent validity challenges because of the nature of ex parte evidence preservation proceeding, it should be noted that the IPC Court will still conduct a formality examination on the validity of the movant’s patent, according to the reporting cases. In other words, as for the formality examination of the validity of the movant’s patent, it is a matter of court’s ex officio investigation, which does not need the opposing party’s request to trigger. If the movant’s patent is defective in its validity in form, the Court tends to hold that the movant cannot assert opposing party’s infringement, and to determine that there is no necessity for evidence preservation. For example, the IPC Court has rejected the motion for evidence preservation based on the movant’s patent being revoked by the Taiwan Intellectual Property Office (see 2004 Min Sheng Shang Zi No. 5), or that the movant’s patent has been determined invalid in other civil lawsuits (see 2004 Min Sheng Zi No. 28). Moreover, the IPC Court has also rejected the motion for evidence preservation on the grounds that the movant failed to make a preliminary showing of the validity of movant’s utility model patent because the movant did not obtain the technical evaluation report of such utility model patent (see 2003 Min Sheng Zi No. 30).
Based on the above IPC Court’s views on evidence preservation, the movant should be mindful that the Court will conduct a formality examination on the patent validity in the evidence preservation motion. Therefore, when the movant claims that the opposing party’s accused product implements the opposing party’s own patented technology and uses the same patent for infringement analysis, the movant should first pay attention to the filing dates, laid-open dates and issue dates of the relevant patents; otherwise, as in this case, not only was the motion for evidence preservation rejected, but the movant would be in trouble when the Court did identify the relevant dates and find the movant’s patent invalid.