經通國際智慧產權事務所

Since the establishment of the Taiwan Intellectual Property Court on July 1, 2008, there has been 8 transnational litigations filed in Taiwan. For the patent infringement lawsuit filed against Advanced Micro-Fabrication Equipment Inc. (AMEC) of Singapore by Lam Research Corporation (Lam) of U.S.A., on September 8, 2009, the Taiwan Intellectual Property Court ruled in favor of AMEC based on the reason of that Lam’s regarded patent with the title of “Perforated Plasma Confinement Ring in Plasma Reactors” was deemed to lack of inventive step. In the said decision, the Court noted that 15 claims of the said patent were found to lack of inventive step or novelty, and therefore, the patent infringement claimed by Lam could not be duly established.

The Court first affirmed its jurisdiction by noting that as set forth in Article15-1 of Civil Litigation Act, “In matters relating to torts, an action may be initiated in the court for the location where the tortious act occurred." Thus, because the claimant claimed that at least two equipments employing the patented technology of the said patent were sold by the defendant in Taiwan, the said lawsuit is within the Court’s jurisdiction.

The Court further examined the evidence and concluded that based on the submitted prior arts, claim 1, 2, 3, 4, 6, 7, 8, 9, 11, 12, 14, 19, 20, 21, 23 of the said patent were demonstrated to lack of either inventive step or novelty, and breached Article 98-1(1) and 98-2 of the Patent Act. Thus, as the Court has recognized the grounds for revocation of the said patent, according to Article 16-2 of Intellectual Property Case Adjudication Act,

the claimant as the holder of the said patent shall not claim any rights against the defendant.

Based on the reasons above, the Court accepted the argument provided by the defendant and rejected the claims by the claimant.

The said decision is subject to further appeal.

Organized and translated by Tony Chen

International Affairs