The Intellectual Property Court rendered the 103-Min-Zhuan-Su-7 Decision on November 7, 2014 (hereinafter, the "Decision"), which held that in determining whether a patent is infringing, the doctrine of equivalents would not apply if substantively different functions and outcome are achieved by substantively different technical means.
In the case, the Plaintiff obtained a patent for a "tourist suspension bridge" (hereinafter, the "Patent"). The Plaintiff asserted that although the Defendant's "sky glass suspension bridge" in Nantou County ("Bridge") did not change the original structure of the original suspension bridge, the upgraded features and unique characteristics of the Bridge were derived from the "reinforced glass transparent bridge surface" of the Patent and thus fell within the scope of the Patent's claims. As a result, Defendant is liable for damages under Article 96 of the Patent Act and should be enjoined from further infringing the Patent.
In the Decision, it was explained that the doctrine of equivalents is for protecting the patentee's interests and prevent others from evading patent infringement liabilities by making only slight non-substantive changes or replacements of the technical features claimed in the patent. Since it is inherently difficult use words to accurately and completely characterize what is being claimed in a patent, patent claims may be expanded to also cover equivalents of the technical features being claimed and should not be limited solely to words of the claims. If, in comparison with a set of patent claims being compared against, the corresponding components, ingredients, steps and other synergies under review generated substantively identical results by achieving substantively identical functions in substantively identical technical ways so that there is no substantive difference from the technical features being claimed, the doctrine of equivalents would apply. Conversely, if any item is substantively different, the doctrine of equivalents would not apply.
The Decision then pointed out that even though the holder of the Patent believed that changing the wooden surface of the Bridge into reinforced glass falls within the tourist suspension bridged claimed in the utility model Patent, and that the tourist suspension bridge and the Bridge have the same purpose, the former uses a snake-shaped or a curved surface for stylistic differences and aesthetic quality, whereas the latter simply uses a conventional straight bridge. The two therefore employed substantively different technical means to achieve substantively different functions to accomplish substantively different results. As a result, the doctrine of equivalents does not apply, and the Bridge does not fall within the scope of equivalents of the claims in the tourist suspension bridge Patent.
The Decision therefore rejected the Plaintiff's complaint for the foregoing reasons.