In patent dispute cases, determination of the technical field of the patent plays a crucial role, determining as it can whether multiple prior art references can be reasonably combined as grounds to challenge validity of the patent. The following discusses two judgments involving determination of technical field.

 

Prior art references in the first judgment involve two different products that, while structurally similar, were determined by the Intellectual Property and Commercial Court to belong to different technical fields, after detailed consideration of the functionalities disclosed therein. In the second judgment, while four prior art references pertain to four different products, all utilize rail technology to enable horizontal reciprocating motion of a load. The Intellectual Property and Commercial Court concluded accordingly that the prior art references belong to the same technical field.

 

The first judgment is from the Intellectual Property and Commercial Court, Administrative Patent Litigation No. 6 of 2024. The patent in dispute is TWM600970, entitled "Reinforcement structure of solar panel support column." The plaintiff (i.e., the invalidation petitioner) argues that the solar panel support column reinforcement structure described in Claim 1 of the disputed patent lacks inventiveness based on two prior art references. The first prior art reference presented by the plaintiff pertains to the technical field of solar panel support, and the second an aluminum extrusion window frame. The Intellectual Property and Commercial Court reviewed prior art references submitted by the plaintiff. Although the plaintiff contended that combining the disclosures of the first and second prior art references fully reveals all the technical features of claim 1 of the disputed patent, the Intellectual Property and Commercial Court determined that the first and second prior art references do not belong to the same technical field.

 

In detail, the Intellectual Property and Commercial Court pointed out that the issues to be resolved by the first prior art reference and the second prior art reference differ, contending that the aluminum extrusion window frame revealed in the second prior art reference, despite similarity in external shape of the "wing-shaped stop piece" thereof to the "reinforcing rib" of Claim 1 of the disputed patent, serves to prevent ingress of rainwater, a distinctly different function from the intention to enhance the support column of the "reinforcing rib" in the disputed patent. Accordingly, the Intellectual Property and Commercial Court determined that combination of the first and second prior art references is insufficient to demonstrate that Claim 1 of the disputed patent lacks inventiveness.

 

In the second judgment, from the Intellectual Property and Commercial Court, Civil Patent Appeal No. 14 of 2023, regarding TWI273372 entitled "Sliding Flat Panel Display and Keyboard Module," the appellee claims that the patent is invalid based on four prior art references, while the appellant (i.e., patent holder) argues that the references belong to technical fields other than that of the patent in question. Specifically, the appellant asserts that the respective technical fields of the four prior art references constitute locking systems applicable to the bottom of drawers, pull-out structures for dishwashers, handle structures for steel frames carrying heavy loads in conjunction with overhead cranes, and cabinet structures for carrying batteries, all differing significantly from the sliding flat panel displays and keyboard modules for rack-mounted computer switchers of the patent in question.

 

After reviewing the noted references, the Intellectual Property and Commercial Court concluded that "Appellee's Exhibits 1 to 4 all relate to the application of sliding rail technology and the technical field, and share functionality and purpose in enabling the load to move along a horizontal axis." Therefore, the Court concluded, "Appellee's Exhibits 1 to 4 pertain to the same principles and mechanisms of sliding rail technology and related technical fields, to which one of ordinary skill would have reasonable motivation to refer, and thus could be considered eligible as prior art references to the patent in question."

 

From the two judgments discussed, it can be seen that the Intellectual Property and Commercial Court can determine technical field of a patent by considering the nature, principles, mechanism, and/or function of relevant technology, and establishes the same based on the specific technical field to which the patent belongs.