經通國際智慧產權事務所

On August 31, 2009, the Taiwan HsinChu District Court ruled against Microchip Technology Inc. (Microchip) on patent infringement lawsuit filed against Elan Microelectronics Corporation (Elan). In the said decision, the Court noted that Microchip filed the said patent infringement lawsuit based on its granted patent with the title of “Microcontroller Having An N-bit Data Bus Width with Less than N I/O Pins and A Method Therefore” filed on April 28, 1997; however, as the said patent was deemed invalid based on the reason of lack of inventive step by the Court, Microchip’s claims against Elan were rejected by the Court.

Microchip claimed that prior to the filing of the said patent, the total number of pins of the microcontroller had to be greater than the bus width so that the Input/Output (I/O) pins with the same width as the bus width, the power supply pin and the ground pin could be all included. As the products with the serial number of EM78P152 manufactured by Elan were microcontrollers having an 8-bit data bus width with 5 I/O pins, the said products infringed Microchip’s patent rights by being microcontrollers having an N-bit data bus width with less than N I/O pins.

On the other hand, Elan submitted the prior arts of two Japanese patents published prior to the priority date of Microchip’s patent. Based on the prior arts indicated in the disputed patent, the technologies disclosed in the two said prior arts and the combinations thereof, the Court concluded that claim 1~18 of Microchip’s patent did not achieve unexpected effect and lacked the inventive step. Therefore, Microchip’s patent breached Article 20-2 of Patent Act and should be invalidated according to Article 71-1 of Patent Act. Furthermore, as set forth in Article 16-2 of the Examination Act of Intellectual Property Litigation, Microchip could not claim the regarded patent rights against Elan.

Based on the reasons above, the Court rejected Microchip’s claims. The Court’s decision is subject to further appeal.

Organized and translated by Jeffery Chien

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