The Supreme Court rendered the 103-Tai-Shang-1424 Civil Decision on July 11, 2014 (hereinafter, the "Decision") and held that the presiding judge has an obligation to fully elucidate the litigation relationship in the matter at hand. If the presiding judge fails to properly address the litigation relationship, the litigation procedure would be deemed materially deficient.
In the Decision, Bragel Co. ("Bragel") is the owner of an utility patent titled "Adhesive Breast Shape Enhancement System and Methods Thereof" (hereinafter, the "Patent") and granted full authorization to NuBra Co. ("NuBra") to handle the relevant civil and criminal procedures and other matters relating to the preservation of its rights in connection with the NUBRA series of products in Taiwan. However, Yueh Ming International Trading Co. openly sold products known as SHOW BRA Silicon Invisible Underwear (hereinafter, the "Products at Issue"), which are counterfeits of products that practice the Patent. Bragel thus filed suit for patent infringement, tortious interference with the sales of NuBra Co. and further claimed damages, as well as demanded the cessation of the manufacture, sales and use of all [counterfeit] products that practice the Patent.
The second instance ourt held in its decision that although Yueh Ming International Trading Co. could not prove that the Patent lacked inventive step, as Bragel Co. and NuBra Co. only asserted that the Products at Issue have the same structure and materials as the "Invisible Bra" sold by co-defendant Chieh Se Teh Co. in the first instance trial, and although the outer film membrane is visible, it is not possible to discern the material of the film membrane, thus it is difficult to find that the film membrane is the "thermoplastic film material" set forth in Claim 1 of the Patent. In addition, the Preliminary Patent Infringement Analysis Opinion prepared by the Mission International Patent & Trademark Office (hereinafter, the "MIPTO Opinion") is not based on the Products at Issue. As a result, the second instance court rejected the complaint in the decision, holding that Bragel and NuBra had failed to substantiate that the Products at Issue were infringing on the Patent.
In the Decision, the Supreme Court found that the MIPTO Opinion submitted by Bragel and NuBra was helpful in determining if the Products at Issue infringed on the Patents, and the second instance decision failed to fully address its reasons for not finding it persuasive. Moreover, the Code of Civil Procedure provides that a presiding judge has the power and obligation to fully elucidate the litigation relationship in the matter at hand. Failure to fully explain such in the opinion in violation of this obligation would cause the litigation procedure to be materially deficient. Whether the coated film of the breast-shaped objects in the Products at Issue is the same as the that used in the breast-shaped objects in the Invisible Bra, and whether the aforementioned MIPTO opinion is useful in determining whether the Products at Issue are infringing, are both matters that the judge needs to fully explain to the parties and cause the parties to provide the necessary factual evidence to supplement its declarations and arguments necessary declarations. By failing to elucidate such matters to the parties, the Decision thereby reversed and remanded the second instance decision back to the Intellectual Property Court for further determination.