Judgment Number: Intellectual Property Court Civil Judgment No. 47 of the Year 100
Judgment Date: April 26, 101 (2011)
Contested Patent: Utility Model Patent No. M333949 “Automatic Brush Sweeper Device”
Relevant Legal Provisions: Taiwan Patent Law Article 57, Article 84, and Article 85; Intellectual Property Case Adjudication Rules Article 33, Paragraph 2; Civil Procedure Code Article 447, Paragraph 1, Subparagraph 6
Summary of the Judgment: The exclusion of infringement (of patent rights) is a type of non-action claim. Therefore, the objective presence of factual infringement or the likelihood of infringement is sufficient, and there is no need to further discuss the subjective elements of the infringer. In terms of the complete realization of the rights, when facing interference or the likelihood of interference due to certain circumstances, the right holder naturally has the right to request the exclusion of such interference to preserve the integrity of the rights. In such situations, the subjective elements of the infringer are irrelevant.
In this regard, the same applies to intangible property rights. The exclusive rights enjoyed by the patentee may be compromised or face a potential threat to their integrity due to the infringing actions of another party. In such cases, the patentee has the right to request the exclusion of infringement or prevention of potential infringement, without the need to consider whether there is subjective intent or negligence on the part of the infringer.
Furthermore, concerning the liability for damages arising from tortious acts, which aims to compensate the rights holder for property or non-property damages resulting from tortious actions, the principle of negligence liability is adopted. This means that the establishment of liability requires the infringing party to have intent or negligence in unlawfully infringing upon the rights of others. If the infringing party’s actions lack intent or negligence, there is no basis for compensation.
The primary function of the contested patented product is the automatic brush sweeper device, which distinguishes it from other products based on its unique technological features. This functionality serves as a crucial factor for consumers when making purchasing decisions. Without this feature, consumers would likely opt for conventional manually operated products. Therefore, the appellant’s gains from the infringing activity should naturally be calculated based on the entire machine rather than solely using the proportion of the components related to the patented technology.
FACTS
The appellee is the patent owner of Utility Model Patent No. M333949, and the contested patent has been recognized for its patentability through the issuance of a new technology report by the Intellectual Property Office of the Ministry of Economic Affairs (referred to as the IPO). However, without the consent or authorization of the appellee, Chang Ze Industrial Co., Ltd. (hereinafter referred to as Chang Ze Company) has utilized the patented technology to produce, manufacture, and sell vacuum cleaner products (referred to as the contested products).
The appellant‘s application date for Utility Model Patent No. M333944 (evidence in the original trial, Exhibit 5) is October 18, 2007, which precedes the application date of the contested patent. It has already disclosed the design of the longitudinal shaft and the longitudinal shaft being driven by the motor. Both the contested patent and Exhibit 5 utilize a coupling device, serving as the connection for the top motor of the dust-collecting filter and the internal sweeping mechanism. The structures and interlocking relationships between the two are identical.
Chang Ze Company, the appellant, has previously raised objections against the contested patent, and the Intellectual Property Office has determined that claims 1 to 4 of the contested patent lack inventiveness, thus upholding the objections and suggesting the revocation of the contested patent. Furthermore, the appellant has openly sold contested products before the application of the contested patent, using the same structure as the contested patent. Therefore, it is not subject to the effects of the contested patent.
The appellant‘s production and sale of the contested products have indeed infringed upon the patent rights claimed in the second claim of the appellee’s contested patent application. Furthermore, considering that the appellant and the appellee are engaged in the same business, it can be reasonably anticipated that there is a risk of recurrent infringement. Therefore, it is necessary to take preventive measures in advance.
Hence, the appellee’s request for the appellant to refrain from manufacturing, selling, using, or importing, for manufacturing or selling, the contested products (vacuum cleaners) or any other products that infringe upon the Republic of China Utility Model Patent No. M333949 is justified.
The calculation of damages is based on the purpose of the contested patent, which is to provide an automatic brushing device applied to cleaning and removing debris inside the dust-collecting filter. Through the rotation of the motor, the automatic linkage of the coupling device allows the brushing component to rotate automatically, sweeping away the dust adhered to the inner wall of the dust-collecting filter. The key distinction from prior art lies in the fact that the contested patent’s brushing device operates automatically, as opposed to the manual rotation of a handle to achieve dust collection.
Therefore, the primary function of the contested patent product is the automatic brushing device, which is different from other products in terms of technological features. This functionality is a crucial factor for consumers when making purchasing decisions. Without this feature, consumers would likely opt for conventional manually operated products. Hence, the gains from the appellant’s infringing activities should be calculated based on the entire machine rather than solely using the proportion of the components related to the patented technology.
Source: TIPO
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Author
吳靜芸 Gena Wu
商標專員