The Intellectual Property Court in Taiwan rendered the 102-Min-Zhuan-Su-13 Civil Decision of June 30, 2014 (hereinafter, the "Decision"), pointing out that Intent or negligence in a patent infringement should be decided upon both parties' the business items and scale in relation to the infringement comprehensively.

According to the facts underlying the Decision, Patentee A owns the patent tilted "A Heat Dissipation Device for Heat Sources" (hereinafter, the "Invention Patent at Issue") and the utility model patent titled "A Device for Reducing Temperature Impact on LED Parts" (hereinafter, the "Utility Model Patent at Issue") and licensed the patent rights under the two patents at issue to Company B for producing and selling products such as LED lighting tubes and accessories. The chairman of Company B used to describe the efficacy and performance of the two patents at issue to Defendant Company C and sold LED circuit board products that practice the two patents at issue to the Defendant. Patentee A subsequently found that Company C counterfeited the above products and installed them in the LED lighting tubes sold by Company C and filed the suit to seek recovery on the ground that his patents were infringed.

The Decision affirmed that Company C illegally infringed A's Invention Patent at issue by manufacturing and selling the 2-feet lighting tubes and provided the criteria regarding the negligence in this infringement:

  1. Patent infringement constitutes an act of tort under the Civil Code, needs to satisfy the criteria of tort under the Civil Code.

Although the Patent Law before amendment did not expressly stipulate the subjective criteria for damages claims when a patent right is infringed, still the Decision pointed out that since patent infringement is a type of tort under the Civil Code, the criteria for tort under the Civil Code should be met if infringers are held liable for their offence on patent infringement. Therefore, an infringement still requires the proof of intent or negligence.

  1. Violation of the duty of care should be decided upon circumstances of individual cases.

The subjective criteria to establish intent or negligence was pointed out in the Decision that the tortfeasor's duty of care varies. Although there are no specific criteria provided for patent tort, still the standard of care of manufacturers, competitors, common retailers or occasional sellers to foresee or prevent damage are different. Therefore, whether tortfeasor violates their duty of care should be determined according to the facts in individual cases, depending on the business items, business and capital scale, operating conditions, business structure and the infringing acts itself.

According to the Decision, Company C was the manufacturer and seller of the 2-inch lighting tubes at issue, which fall within the scope of Claim 2 of the Invention Patent at Issue. The Court inferred that the Company C is familiar with the technical details of the 2-feet lighting tubes at issue, and decided that Company C is indeed negligent for violation of its duty of care since it obviously could have foreseen that the 2-inch lighting tubes might potentially infringe the Invention Patent at Issue but failed to avoid the infringement.

Based on the foregoing reasons, The Court held that Company C did illegally and negligently infringe Individual A's Invention Patent at Issue for producing and selling the 2-feet lighting tubes.