Source: 110-CivilPatTrial-No.32

  L’Air Liquide Societe Anonyme pour l’Etude et l’Exploitation des Procedes Georges Claude SA, formerly Air Liquide SA, is a France-based gas company (hereinafter “Air Liquide”) which accused Nippon Sanso Taiwan, Inc. of infringing its patent no. TW I525210 (the patent at issue), which is an invention regarding the method of forming dielectric films and new precursors. Nippon Sanso Taiwan raised an affirmative defense that the patent right at issue should not be granted and should be revoked due to its lack of novelty based on legal fiction. On February 15, 2022, the IP Court ruled in favor of Nippon Sanso Taiwan and indicated an alternative view regarding the legislative purpose of fictitious novelty which has not previously been put forward by the IP Court.

  In this case, the parties entered into a debate on the question of whether the accused product falls within the literal scope of Claim 29 and Claim 30 of the patent at issue. In addition, the defendant argued that Claim 29 and Claim 30 should be revoked on the grounds of lacking fictitious novelty. According to Article 23 of the Taiwan Patent Act, “[w]here an invention claimed in a patent application for invention is identical to an invention or utility model disclosed in the description, claim(s) or drawing(s) of an earlier-filed patent application for invention or utility model which is laid open or published after the filing of the later-filed patent application, an invention patent shall not be granted.” With regard to the definition of identical invention, the Examination Guidelines for Patents, published by the Taiwan Intellectual Property Office (TIPO), provide the following criteria for determination: (1) the invention claimed and the technical contents disclosed in a citation are completely identical, (2) the difference only lies in the literal descriptions or in the technical features which can be directly or unambiguously deduced, (3) the difference between the corresponding technical features resides in the generic concepts and specific concepts, or (4) the difference lies only in the technical features which can be directly substituted based on common general knowledge. If any of the above scenarios apply, the two inventions are deemed identical as stipulated in Article 23 of the Patent Act.

  Nippon Sanso Taiwan provided a cited reference which was filed on November 30, 2006 and published on August 1, 2007. In contrast, the patent at issue was filed on June 1, 2007, later than the filing date of the citation. Also, the priority date of the cited reference, December 6, 2005, is earlier than the priority date of the patent at issue, June 2, 2006. Therefore, the cited reference could be determined as admissible evidence.

  Next, the court pointed out that the difference between the cited reference and Claims 29 and 30 of the patent at issue lies only in the metal element contained in the compound. In comparison to Hafnium (Hf) as claimed by the cited reference, Air Liquid specified Zirconium (Zr) as the element recited in Claims 29 and 30. The court found that the two elements are both in group 4 of the periodic table of elements; they have similar characteristics in chemical reactions. Therefore, Hafnium (Hf) and Zirconium (Zr) are interchangeable and people possessing ordinary skill in the art are able to directly replace Hafnium (Hf) with Zirconium. That is, Hafnium and Zirconium are deemed identical according to the Examination Guidelines.

  In response to the IP Court’s opinion, Air Liquide argued that the two elements have different electron densities because of the numbers of electron shells. Furthermore, based on common knowledge, the two elements are not completely identical in function, means and purpose in the context of chemical reactions. Unfortunately, the court did not support this argument. The court emphasized that being completely identical in means and purpose is not a requisite for determination of novelty. Neither is it required for fictitious novelty.

  The original purpose of fictitious novelty is to avoid the situation in which the invention filed earlier and published after the filing date of the later application may not be the prior art of the later application. As an exception, the invention filed earlier can be used as the prior art of the later application when the two inventions are identical. In addition to consideration of novelty, the spirit of patent laws does not allow two patent rights to the identical invention to be granted.

  It is worth noting that the court provides an alternative consideration regarding the legislative purpose of fictitious novelty from the perspective of bona fide third parties, whereby “[i]f two patent rights are granted to two inventions with identical or directly replaceable technical features, the bona fide third party who intends to obtain a patent license may not know whom he or she must consult with. Moreover, granting two patent rights on the same invention will lead to their mutual exclusion from exploitation, which obviously contradicts the purpose of promoting industrial development as proclaimed in Article 1 of the Patent Act.”

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