Using claim construction to win patent disputes – Taiwan Focus

Like in many mature patent systems of developed jurisdictions, claim construction plays a critical role in patent infringement litigation in Taiwan. A favourable court ruling on claim construction is generally a good indicator of which party will ultimately prevail in a dispute.

The Taiwan Intellectual Property Court (IP Court) was established on July 1 2008. Persistent efforts by experienced judges and technical examination officers (most of whom came from the Taiwan Intellectual Property Office, or TIPO) have allowed the IP Court to greatly enhance the quality and efficiency of IP related lawsuits. Among its recent endeavours, the IP Court has devoted itself to refining the handling of claim construction. Its publication The Procedure of Civil Cases Concerning Intellectual Property for Patent Infringement Cases indicates that an oral debate hearing to review the patent validity issue (in cases where the defendant challenges the plaintiff's asserted patent) will be conducted as the first step of the substantial trial of a patent infringement lawsuit, at which stage the Court looks into the issues of claim construction. The Court also confirmed in many judgments, such as 2013 Min Zhuan Shang No 52 rendered on April 10 2014, that claim construction is a matter of law and will be determined based on the Court's full discretion without being bound by the parties' assertions.

In practice, the IP Court usually holds a specific hearing for presentations and oral debate on claim construction. In advance of the hearing, the IP Court schedules an issue-sorting session to ascertain which terms in the patent claims are in dispute, and then designates a date by which the parties are to exchange written arguments. At the claim construction hearing, the presiding judge and/or the technical examination officer may ask the parties questions with respect to claim construction; some judges even issue a written notice several days in advance listing particular questions and requesting the parties to submit a response in writing. It is becoming more common for IP Court judges to disclose their preliminary rulings on the sorted issues of claim construction once the above procedures have been completed, thereby serving as the basis for subsequent arguments from the parties in terms of patent validity and infringement. In the final judgment, a particular section on claim construction is normally provided to explain the court's interpretations of the terms at issue.

Details on the principles of claim construction are provided in the Guidelines for Patent Infringement Assessment (Guidelines) drafted by TIPO in October 2004. The draft was conveyed by the Judicial Yuan to different instance courts for their reference the following month. Although it has given valuable guidance to litigating parties in formulating their arguments, the draft is not deemed an official regulation or rule, however, and therefore has no binding effect on the courts. In recent years, the IP Court has elaborated on the Guidelines by providing more detailed and sophisticated theories for dealing with claim construction issues.

Compromise claiming system

Paragraph 4, Article 58 of the Taiwan Patent Act provides that "The scope of protection conferred by a patent shall be determined from the claim(s), and the specification and drawing(s) may be considered when interpreting the claim(s)." In other words, the so-called compromise claiming system is adopted, which is a compromise approach for claim construction compared with the central claiming and peripheral claiming systems. The basic difference between the latter two is that the peripheral system uses claims to define the granted protection scope of the patent, while the central claim system uses claims to define the invention and leaves it to the judges or juries to decide the coverage of the patent grant by applying the doctrine of equivalents. When the doctrine of equivalents is applied, the literal scope of claims is normally extended so that the patentee can enjoy a more complete protection of his invention.

As provided in Article 58 of the Patent Act, claim construction in Taiwan, which is regarded as a compromise claiming system, should not only focus on the claim language itself, but also take the descriptions in the specification as well as the drawings into consideration. Given this, the doctrine of equivalents is also adopted, which allows prior art defence and estoppel as a bar against the extended scope. The IP Court issued a judgment on June 14 2012, 2011 Ming Zhuan Shang No 53, explaining in detail the claim construction principles and the doctrine of equivalents employed under the Taiwan patent system.

Ordinary and accustomed meaning

Under the compromise claiming system, the language itself is still the core basis for claim construction. The Guidelines provide that if the descriptions in a claim are clear and definite, they should be interpreted according to the literal meaning of the descriptions per se and the general understanding of a person with ordinary knowledge in the art. Following the above principle, the IP Court repeatedly held in different judgments, such as 2009 Min Zhuan Shang No 47, 2010 Min Zhuan Su No 11 and 2010 Min Zhuan Su No 13, that claim construction will take the viewpoint of a person skilled in the art as the standard, not the thinking of a judge, lawyer, technical examination officer or even a consumer. In these judgments, the IP Court further emphasised that except where a particular meaning is given to the term at issue in the patent specification, judges must explore the plain meaning known by people skilled in the art with respect to the term, which is normally assumed to be its ordinary and accustomed meaning.

In the case disputed in judgment 2009 Min Zhuan Shang No 47 dated April 29 2010, the plaintiff (patentee) argued that the term “symmetry” only requires the corresponding arrangement of the heat dissipation fins, regardless of its size and form. The IP Court overruled the allegation, holding that the ordinary and accustomed meaning of the term “symmetry” under a skilled person's knowledge should include the correspondence between not only the arrangement, but also the size, form and shape.

Intrinsic and extrinsic evidence

Sources of evidence for claim construction in Taiwan include both intrinsic and extrinsic evidence, between which the former is given priority. If intrinsic evidence is found sufficient, there is no need to consider any extrinsic evidence, and if any contradiction is found between the intrinsic and extrinsic evidence, the former will prevail.

Intrinsic evidence refers to the patent itself as well as its entire file history of the prosecution, maintenance and litigation procedures. Attention must be paid to what is meant by the patent itself. According to Paragraph 4 of Article 58 of the Patent Act, in addition to the claim language, the specification and drawing(s) may be considered in claim construction; but Paragraph 5 of the same Article also points out that "the abstract shall not be used for claim interpretation".

Extrinsic evidence covers documents other than intrinsic evidence, such as related patents, articles, prior art, expert opinions, viewpoints of people who have an ordinary knowledge of the art, dictionaries and textbooks.

Specification

A judgment dated December 18 2014, judgment 2014 Min Zhuan Shang No 13, provides an example using the descriptions in the patent specification as intrinsic evidence in claim construction. The parties argued against the language "inorganic salt with a multivalent cation" in Claim 1. In its judgment, the IP Court first identified the literal meaning of the term “multivalent cation” as a "cation having a positive charge equal to or greater than bivalent," and then referred to the description of the specification that the multivalent cation may be selected from calcium, magnesium, zinc, aluminium and their combinations and the preferred multivalent cation is aluminium, magnesium or their mixture. Moreover, the Court also checked the specification and found it illustrated that the corresponding anion in the inorganic salt can be selected from phosphate ion, carbonate ion, oxygen ion or silicate ion. The Court thus concluded that the disputed term "inorganic salt with a multivalent cation" should be interpreted as "a compound formed by a cation having a positive charge equal to or greater than bivalent and an inorganic anion".

In another judgment dated November 20 2014, judgment 2013 Min Zhuan Shang No 63, the IP Court stressed the importance of the purpose of invention in claim construction. The concerned parties to this litigation had different opinions regarding the term "electrically connected" recited in Claim 1; in particular, the plaintiff contended that this term should cover not only "directly connected," but also "indirectly connected". The Court disagreed with the plaintiff's interpretation; it first identified the purpose of invention of the plaintiff's patent as "reliably and precisely detects the flashover", explained why it thought "indirectly connected" could not achieve this purpose, and then concluded that the term "electrically connected" should be limited to "directly connected".

As for how much weight should be given to examples set forth in the specification, the Supreme Administrative Court gave a clear rule in its judgment 2014 Pan No 533 dated September 29 2014, that examples are merely provided to illustrate the embodiments of the claimed invention and should not be utilised to expand or restrict the protection scope of the patent; otherwise, the published patent scope would be altered by those elements/restrictions not expressly recited in claims.

File history

File history is also an important basis for claim construction. It covers the documents submitted by the patent holder from the filing of patent applications to the maintenance of patent rights, for example, the amendments, responses, supplementary data and other documents presented during prosecutions, cancellations and administrative remedies. Considering the communications between the patent holder and the government authorities may reveal the actually-intended meaning of a term in the context of a patent according to the inventor, it has become nearly routine practice for the IP Court to take the initiative of borrowing the entire file wrapper of the patent at issue from the TIPO for review.

The IP Court's judgment 2011 Ming Zhuan Shang No 14 dated February 29 2011 provides an example of how the Court employs file history in claim construction. The defendant's product comprised of a collapsible arm connected to a camera via a switching body. The patent claim asserted by the plaintiff merely indicated "a collapsible arm connected to a camera" The plaintiff argued that the term "connected" should cover both the "direct connection" and the "indirect connection," and hence the defendant's product should fall within the claimed scope. However, the IP Court indicated that during the cancellation procedures, the plaintiff had contended his patent distinguishes from the prior art citations in the absence of a specific component between the collapsible arm and the camera, which existed in the citations. Accordingly, the Court held that the term "connected" was limited to "indirectly connected" to comply with the principle of good faith.

The IP Court's judgment 2011 Ming Zhuan Shang No 43 dated December 27 2012 also explained the use of file history in claim construction. The defendant alleged that since the plaintiff limited the "injection composition" to a "two-component injection composition" during the prosecution proceedings, and according to Webster's Dictionary, a "component" refers to a substance stored in a unit with independent space, the two components of the injection composition have to be stored separately. However, the IP Court considered that the plaintiff's amendment to add the term "two-component" during the prosecution was to make the literal meaning more definite, and this amendment was not the main reason for the TIPO to grant the patent. Accordingly, the Court held that the term "two-component" merely denoted the presence of two components in the composition, without limiting them to being separately stored.

Dictionaries and textbooks as extrinsic evidence

When necessary, the IP Court may rely on extrinsic evidence, such as dictionaries, textbooks or similar sources, to proceed with claim construction.

In its judgment 2009 Ming Zhuan Shang No 57 dated March 3 2011, the IP Court cited the suggestion in the United States Pharmacopeia about the precision range of the 2 q values obtained from X-ray powder diffraction (XRPD) analysis to interpret the term "about" in the plaintiff's patent claims. The claim uses seven d values (nλ=2dsinθ) to define the invented crystalline form with a word "about" preceding such values. Based on the suggested precision range (0 ±0.10 degrees), the IP Court gave a range to each of the d values set forth in the claim and agreed that the results of the XRPD analysis on the defendant's product, even though not precisely identical to the specific numbers of the seven d values, still could prove the infringement.

In another judgment, 2011 Ming Zhuan Shang No 21 dated July 5 2012, the language "on an alendronic acid active basis by weight" in Claim 1 was in dispute. The IP Court quoted the definition of "active ingredient" provided in the Guidelines on Drug Inspection and Registration as an active substance or component having a pharmacological effect that is produced through a physical and chemical or a biotechnical process and is customarily used in the production of a drug, biological drug or a biological product. The Court concluded that the term "alendronic acid active basis" denoted the alendronic acid per se rather than alendronate salt, because in the patent concerned it was alendronic acid that was used as the active ingredient.

Onwards and upwards

The concerted efforts of the IP Court to refine its practice with regard to claim construction have yielded clearer principles and rules that coincide with common international standards. Given the effectiveness thus far, the patent protection environment in Taiwan will improve even further in years to come.


Hsiu-Ru Chien and Kate Shu-Yin Chu, Lee and Li, Taiwan

Hsiu-Ru Chien

As an attorney-at-law and also a certified patent attorney, Hsiu-Ru Chien started her career as a patent engineer in the chemical group of the patent and technology department at Lee and Li. She has extensive experience in patent prosecution, patent infringement litigation, patent invalidation actions and administrative remedy procedures. She also heads the patent enforcement, trade secret protection and dispute resolution practice group of Lee and Li. She passed the Chinese patent bar exam in 2013.

Hsiu-Ru graduated from the zoology department (now reorganised as the life science department) of the Science College of National Taiwan University, and obtained two masters degrees respectively from National Chiao-Tung University (masters of management science) and National Cheng-Chi University, department of law (LLM).

Hsiu-Ru serves as the vice chair of the International Affairs Committee of the Taiwan Patent Attorneys Association. She lectures as a specialist assistant professor at Shih Hsin University, and was a specialist assistant professor at the National Taiwan University of Science and Technology.


Kate Chu

Kate Chu received BS and MS degrees from National Chung Hsing University and National Taiwan University respectively. She received her LLB degree from National Taiwan University and passed the Taiwan patent bar exam.

Kate Chu's professional fields include Taiwan and international patent filing and prosecution, drafting, cancellation and validation actions, infringement assessments, term extension, global patenting strategy and issues involving drug regulatory reviews.