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Can a Patentee Claim Infringement under the Doctrine of Equivalents for the First time at the Second Instance?
In Taiwan, civil procedure adopts a "strict continuance system." According to Paragraph 1, Article 447 of the Taiwan Code of Civil Procedure, parties are not allowed to introduce new attacks or defenses in the second instance to avoid prolonging litigation and ambushing the opposing party. However, the same paragraph still provides exceptions under any of the following six circumstances: ① inability to present such new attacks or defenses due to the first instance court violating laws; ② the new attacks or defenses are related to facts that occurred after the conclusion of the oral debate in the first instance; ③ simply supplements to attacks or defenses already presented in the first instance; ④ the new attacks or defenses are related to facts that are significantly known to the court by virtue of its duties or that should have been investigated by the court; ⑤ other reasons not attributable to the parties that prevented presentation such new attacks or defenses in the first instance; and ⑥ cases where rejecting the introduction of new attacks or defenses would be manifestly unfair. Furthermore, according to Paragraph 2 of the same article, parties are required to fully fulfill their duty to preliminarily show how their arguments correspond to the aforementioned exceptions. In patent infringement litigation, if a patentee claims only literal infringement in the first instance and loses, can they claim infringement under the doctrine of equivalents in the second instance after appeal? It appears that the courts in Taiwan often adopt an affirmative stance.
For example, the 2017 Min Zhuan Shang Zi No. 39 civil judgment rendered by the Intellectual Property and Commercial Court (hereinafter referred to as IPC) on 8 November 2018 and the 2016 Min Zhuan Shang Zi No. 12 civil judgment rendered by the IPC on 27 October 2016 both considered the following:
The patentee has already contested in the first instance that the disputed products produced by the infringer infringed upon the disputed patent. Although the patentee claimed for the first time in the second instance that "the disputed products, even if not constituting literal infringement upon the disputed patent, do constitute infringement under the doctrine of equivalents," these arguments should be considered a supplement to the attacks and defenses presented in the first instance. Therefore, they are allowable under the provisions of Item 3, Paragraph 1, Article 447 of the Taiwan Code of Civil Procedure.
Furthermore, the 2022 Min Zhuan Shang Zi No. 26 civil judgment rendered by the IPC on 21 December 2023 also allowed the patentee to claim equivalent infringement for the first time at the second instance. However, it seems that the IPC did not mention the reason the above-mentioned judgments cited - "a supplement to the attacks and defenses of the first instance." Instead, the IPC took into account the specifics of the case and even incorporates the principle of good faith. The IPC considered that if the court has not clarified and has included the new attacks and defenses as disputed issues with the consent of both parties, then the patentee should not be unduly criticized for not fully fulfilling their duty in making the preliminary showing. The rationales are as follows.
- When a party presents new attacks or defenses, he or she indeed has an obligation to make a preliminary showing as per Paragraph 2, Article 447 of the Taiwan Code of Civil Procedure. However, if the presiding judge or the designated judge has already listed these new attacks or defenses as disputed issues, and the parties have made declarations or statements thereon, leading to the belief that the presiding or designated judge has permitted the presentation, then the presiding or designated judge cannot dismiss the presentation on the grounds of a lack of the preliminary showing before exercising their duty to elucidate and order the party to fulfill the obligation as per the same article’s Paragraph 2. This ensures compliance with the principle of good faith in procedural law (refer to the 2020 Tai Shang Zi No. 2029 judgment rendered by the Supreme Court).
- Although in the first instance the appellant only claimed that the disputed products constituted literal infringement of the disputed patent, after examining the disputed product in court, the judge of the first instance did not clarify to the parties how the examination results of the disputed product differed from or were similar to the literal meaning of the disputed patent. The appellant, who was unable to foresee any differences between the disputed products and the disputed patent through the court's clarification or inquiry in advance, and thus could not promptly present new attacks or defenses, cannot be criticized. When initiating this appeal and stating the reasons for the appeal, the appellant declared the addition of a claim for equivalent infringement, which essentially constitutes the introduction of new attacks or defenses. However, the appellant has preliminarily shown how it is not attributable to himself/herself as per the proviso of Paragraph 1, Article 447 of the Code of Civil Procedure, and how denying its submission would be manifestly unfair. In addition, the facts to be proven related to the aforementioned attacks and defenses have been agreed upon by both parties to be listed as disputed issues, and the parties have presented their opinions both orally and in writing. Therefore, it cannot be said that the appellant did not preliminarily show how he or she follows the proviso of Paragraph 1, Article 447 of the Code of Civil Procedure. Since the facts to be proven regarding the new attacks and defenses have already been agreed upon by both parties as disputed issues, and both have fully argued these disputed issues, there is no delay in litigation. Since the new attacks and defenses involve core issues such as whether the patentee can claim his/her rights, denying the appellant the opportunity to introduce them would also constitute a manifestly unfair situation.