In a recent patent infringement case involving a patent titled "Temperature- and corrosion-stable surface reflector," the Taiwan Intellectual Property and Commercial Court (IPCC) offered an insight into the determination of inventive step. That is, whether the prior art has satisfied the clients’ demand or whether the cost of improvements is too high that leads to a PHOSITA’s lack of motivation for improvement, is not the main factor in determining inventive step. The opinion was also recognized by both the Court of Second Instance and the Supreme Court1
1. Case Fact
The plaintiff, ALMECO GMBH, is the owner of the Taiwanese Invention Patent No. I589448 titled “Temperature- and corrosion-stable surface reflector” (the ‘448 patent). ALMECO claims that MIROⓇ98AX17 (M98AX17) manufactured and sold by the defendants, Alanod-Xxentria Technology Materials Co., Ltd. and FU LU TRADING CO., LTD., infringed at least claims 1 to 3, 8 to 16, and 30 of its patent. ALMECO’s appeal was dismissed by the Court of Second Instance and the Supreme Court.
2. The Technical Means and Application of the ‘448 patent
The ‘448 patent relates to a temperature-resistant layer system having a high reflectivity in the wavelength range between 300 and 2700 nm, which is arranged on a metallic substrate, and the application thereof as a temperature resistant and corrosion resistant surface reflector.
Claim 1 of the ‘448 patent recites: "A layer system, comprising:
a metallic substrate (1) having the following layers applied on a side (A) thereof from inside to outside in the specified order:
a layer (4) composed of a material of substoichiometric oxides or oxynitrides of titanium and zirconium or metals of titanium, zirconium, molybdenum, platinum, and chromium or an alloy using one of these metals or of at least two of these metals,
a layer (5) composed of a nickel alloy having chromium, aluminum, vanadium, molybdenum, cobalt, iron, titanium, and/or copper as an alloying partner, or composed of a metal of copper, aluminum, chromium, molybdenum, tungsten, tantalum, titanium, platinum, ruthenium, rhodium, or alloys using one of these metals, or of at least two of these metals, or composed of iron, steel or stainless steel,
an optically dense, high-purity metal reflector layer (6),
a layer (7) selected from among substoichiometric oxides of titanium, zirconium, hafnium, vanadium, tantalum, niobium or chromium and from among metals of chromium, titanium, zirconium, hafnium, vanadium, niobium, tantalum, tungsten, molybdenum, rhodium, or platinum or alloys using one of these metals or at least two of these metals,
a LI layer (9) having a lower refractive index than that of a directly adjoining HI layer (10), and
the HI layer (10) directly adjoining said LI layer (9), and said HI layer (10) having a higher refractive index than that of the LI layer (9)."
Claim 30 of the ‘448 patent recites: "The use of the layer system according to claim 1 to 29 as a surface reflector, as a solar reflector, or as a laser mirror."
3. Highlights of the IPCC Decision
(1) The main factor in determining inventive step is not whether the prior art is satisfactory or whether the cost of improvements is high:
ALMECO (i.e., the patentee) claimed that a PHOSITA had no motivation to modify the cited Vega98110 product because the product had satisfied the needs of the clients. In addition, the use of thicker silver would lead to increased production costs and limited performance improvement. Therefore, a skilled person or a production plant would not have any motivation to increase the thickness of the silver and thus obtain the invention of the ‘448 patent.
However, the IPCC did not accept ALMECO’s claim for the following reasons:
The main factor in determining inventive step is not whether the existing product, such as Vega98110, has satisfied the clients' needs or whether the cost of thicker silver is higher that leads to a PHOSITA's lack of motivation for improvement.
The main factor should be whether the invention can be easily obtained by a PHOSITA based on the prior art and common knowledge at the time of the filing of the application. Moreover, to obtain business opportunities in time when the market matures or to apply for patents to gain an upper hand is the key motivation to continuously improve products in the relevant technical field. Therefore, one cannot say that there is no motivation for further improvements simply because an existing product has met specific needs or a new product is slightly more costly and has limited improvement.
(2) Given that the ‘448 patent has not been proven to be more effective by means of examples and comparative examples, it cannot be established that the invention of the ‘448 patent has achieved advantageous effects in relation to the prior art:
The IPCC held that, based on the technical contents disclosed in the prior art, a PHOSITA can expect that the layer system of the plural refractive/reflective layers (e.g., of Exhibit 7, etc.) has inherently good temperature stability. And given that the ‘448 patent has not been proven to be more effective by means of examples and comparative examples, it cannot be established that the invention of the ‘448 patent has achieved advantageous effects in relation to the prior art, nor can it be deemed that the advantageous effects are unexpected to a PHOSITA. Therefore, despite omitting the argument that excessive incident light affects stability, it is still difficult to say that the invention of the ‘448 patent has achieved unexpected effects, let alone considering that it involves an inventive step.
Wisdom Suggested Strategies
In this case, the IPCC recognized that a PHOSITA's lack of motivation to make improvements because the prior art had satisfied the clients’ needs or because the cost of improvement was high, was not the main factor when determining inventive step. Rather, whether a patent at issue can be easily obtained by a PHOSITA based on the prior art and common knowledge at the time of the filing of the application should be taken into account. Furthermore, if the combination of cited references discloses the patent at issue, it is still possible to contend that the invention involves an inventive step if the patent at issue contains examples and comparative examples as proof of unexpected effect in relation to the prior art. Therefore, when drafting the patent specification, the technical means of the examples and comparative examples and the technical effects should be detailed and compared with the prior art without significantly affecting the applicant's interests, so as to serve as an attack and defense strategy to claim inventive step when defending the patent in the future.