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A Judgment that Finds Liability for Damages Without Explaining the Intent or Negligence Involved in Patent Infringement May Be Overturned by the Supreme Court
In patent infringement litigation, disputes between the parties often center on issues such as whether the product in question falls within the scope of the relevant patent, whether the patent is subject to cancellation, and how damages should be calculated. If the court determines, after investigation, that the product constitutes infringement and that the patent is valid, but the judgment does not address the subjective requirements of intent or negligence and simply concludes that the defendant should be liable for patent infringement damages, does this judgment violate the law? In this regard, the Supreme Court's civil judgment 112(2023)-Tai-Shang No. 2702, issued on November 14, 2024, adopts an affirmative stance.
In this case, the original judgment by the Intellectual Property and Commercial Court (111(2022)-Min-Chuan-Shang No. 30) determined that the defendant's product falls within the equivalent scope of the patent at issue, and the combinations of prior art references presented by the defendant failed to prove that the patent lacks an inventive step; therefore, the patentee's claims for damages and exclusion of infringement are justified.
However, after the defendant appealed to the Supreme Court, the aforementioned second-instance judgment was overturned and remanded by the Supreme Court in its civil judgment 112(2023)-Tai-Shang No. 2702. The Supreme Court not only recognized that the original judgment failed to consider the defendant's prior use defense, which constituted a violation of law, but also emphasized that: According to Article 96(2) of the Patent Act, for a patentee to claim damages for infringement, it is necessary for the infringer to have acted with intent or negligence. However, the original court did not clarify the intent or negligence of the appellant in infringing the patent and simply stated that the appellant should be liable for damages. This also constitutes a legal violation and an error in the application of the aforementioned provision.
Based on the content recorded in the Supreme Court judgment, it appears that the two parties did not engage in a debate regarding the subjective requirements of intent and negligence during the original trial. It also seems that the appellant (i.e., the defendant) did not use the omission of intent and negligence as a ground for appeal. Whether the Supreme Court believes that, under such circumstances, the trial court should still address the subjective requirements of tortious conduct—namely, intent and negligence—in its judgment on damages remains to be seen.