Supreme Administrative Court finds “same problem” is key to combining prior art evidence
On 1 November 2018, Taiwan’s Supreme Administrative Court rendered a judgment on appeal (Pan Zi, 647) in which it found that “the substantive same problem to be solved” is the key to combining multiple prior art evidence.
As with most patent invalidation debates, reviewing the requirement of an inventive step usually involves combining technical content from multiple citations. One of the crucial issues to determine is whether the patent is disclosed by multiple sources of prior art.
The Supreme Administrative Court first explained that in order to avoid a situation where different pieces of evidence are arbitrarily pieced together with the benefit of hindsight, it must first consider whether a person having ordinary skill in the art would be motivated to combine evidence from multiple pieces of prior art. Such motivation can be determined by considering whether there is relevance or commonality among the multiple pieces of prior art.
The court further explained that even if the technical contents of the multiple pieces of prior art are related, it is difficult to directly determine whether a person having ordinary skill in the art would be sufficiently motivated to combine the technology thus revealed. Therefore, it is necessary to further consider whether:
- the problem(s) to be solved in the multiple prior pieces of art are substantively similar;
- such pieces of prior art have substantially the same function or effect; or
- such prior arts clearly or implicitly teach or suggest the combination of technology.
According to the judgment, the object of Evidence 1 (revealed in Prior Art 1) is to provide a spindle motor and a method of assembling the same. The structure of this motor is simple and it can be easily assembled to achieve excellent impact resistance and bearing life. However, the main objective of Evidence 5 (revealed in Prior Art 5) is to solve the problem of the fan rotor being easily deformed due to miniaturisation, which affects durability, assembly precision and efficiency. Thus, there is the issue of whether the question to be solved described in Evidences 1 and 5 are substantively the same.
The appellant (the patentee) had insisted during the original court proceedings – which were heard by the Taiwan IP Court – that Evidences 1 and 5 presented different questions. The IP Court failed to review this issue and gave no reasons for this, which constituted a violation of law.
The appellant also took issue when the IP Court combined Evidences 1 (revealed in Prior Art 1) and 2 (revealed in Prior Art 2). It insisted that there was no motivation for a person with ordinary skill in the art to combine these two pieces of evidences because the problem to be solved was unrelated to these. They were also different to one another.
Further, the appellant argued that the invention disclosed in Evidence 2 seeks to solve the self-heating problem of the motor. The invention disclosed in Evidence 1, on the other hand, provides a simple structure and assembly method for a spindle motor with excellent impact resistance and improved bearing life.
The Supreme Administrative Court stated that the IP Court’s judgment violated the law because it neither accepted nor refused the appellant’s argument, which might have influenced its determination regarding the inventive steps.
Due to this – and other issues within the original judgment – the Supreme Administrative Court dismissed the IP Court’s judgment and remanded the case back to it to be reheard.
After drawing the baseline of proof with regard to the standard of a person having ordinary skill in the art, the Supreme Administrative Court directed the IP Court and the Taiwan IP Office (TIPO) to provide detailed reasons when reviewing inventive step issues. In Judgments 2015 Pan Zi 326 and 2016 Pan Zi 503, the Supreme Administrative Court demanded that the skill standard of a person having ordinary skill in the art should be determined before deciding on the inventive step requirement. However, even if a court identifies and determines who a person having ordinary skill in the art is, this still leaves the issue of what the prior art reveals. In the case at hand, the Supreme Administrative Court further indicated that evidence from multiple prior arts cannot be combined arbitrarily as before this can happen there must be substantively the same problem to be solved.
The Supreme Administrative Court is still working to establish clear guidance on the issue of inventive steps, and this diligence will drive the IP Court and the TIPO in reviewing patent invalidation proceedings to improve the quality of Taiwan’s patent examination system.
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