The Patent Practice Development of Joint Liability for Divided Infringements in Taiwan
By Mr. Yu-Li Tsai
Posted: 6th November 2017 12:15Joint liability is an important worldwide issue in patent infringement cases because the software application technology is becoming more and more popular nowadays and the method under the software application technology has a nature that it can usually be easily implemented by several entities in the absence that a single entity implements all steps of the method. For example, in the U.S., Akamai Technologies, Inc. v. Limelight Networks, Inc., 797 F.3d 1020 (Fed.Cir.2015)(en banc) and Mankes v. Vivid Seats Ltd., 822 F.3d 1302 (Fed.Cir.2016) both dealt with the joint liability of divided infringements of software method patents. In these two cases, the courts held that “when an alleged infringer conditions participation in an activity or receipt of a benefit upon performance of a step or steps of a patented method and establishes the manner or timing of that performance”, the alleged infringer would constitute “control or direction” to the performance of a step or steps of a patented method which were not performed by itself. Therefore, when those directed and controlled performance is combined with the alleged infringer’s own performance, the alleged infringer virtually performed all the steps of the patented method and should be liable for direct infringement under 35 U.S.C. §271(a).
Needless to say, the trend in the U.S. is to enhance the protection to the patentee through broadening the meaning for the direct infringement under 35 U.S.C. §271(a) to cover divided infringement.
In view of this trend, one may be interested in knowing the patent practice development of joint liability for divided infringements in Taiwan.
Law and Law Explanations:
In Taiwan, the Patent Act does not specifically provide joint liability either, so the application of joint liability should be supplemented by Civil Code and judicial precedents.
Paragraph 1 of Article 185 of Taiwan Civil Code stipulates “[i]f several persons have wrongfully damaged the rights of another jointly, they are jointly liable for the damages arising therefrom.” In addition, one of the most common acts of joint infringement is joint tort act and there are basically three requirements to establish the joint tort:
(1) there are multiple actors while the actor needs not personally implement the tort act. For example, if several persons collude together and implement the tort act by a part of them, the person who takes the others’ acts as his/her own act is also an actor;
(2) every actor needs to meet the requirements of general infringement acts;
(3) intent’s connection among the actors is not required and only jointly associated acts are required. Jointly associated acts include that the actors’ negligent acts are common cause of the damages.
In a Supreme Court case of 1989 in Taiwan, the court held that within the purpose of joint infringement, the tort implementers sharing in a part of the infringement act and mutually taking advantages of the others’ acts to achieve the purpose are also joint infringement actors and are jointly liable for the damages arising therefrom.
Therefore, it seems that divided infringement where each tort implementer performs a portion of steps to complete an infringement act can be applied in general civil law regime in this country.
Recent Joint Liability Practices for Divided Infringement in the Intellectual Property Court
In a case of the Intellectual Property Court (IPC) decided in 2014 “103年度民專訴字第66號判決”, the Plaintiff FormFactor, Inc. is the patentee of Taiwan Patent No. I425218 (‘218), “Probe Card Assembly with an Interchangeable Probe Insert”. The ‘218 Patent relates to a probe card apparatus including two essential parts “tester interface” and “probe”. The Plaintiff claimed that the Defendant STAr Technologies manufactured the “probes” which can be installed onto the Plaintiff’s originally manufactured tester interface, sold the probes to a Taiwan famous semiconductor manufacturer, and assigned employees to help the semiconductor manufacturer to install the probes onto the Plaintiff’s originally manufactured tester interface. In addition, there were some foolproof devices and Erasable Programmable Read Only Memory (EPROM) components on the Plaintiff’s originally manufactured tester interface, and the Defendant’s probes at issue clearly had corresponding foolproof holes and EPROM components to be coupled to the tester interface.
Regarding the objective elements, the IPC stated that the probe products at issue which were manufactured by the Defendant and sold to the semiconductor manufacturer at issue clearly had corresponding foolproof holes and EPROM components to be coupled to the tester interface include foolproof devices and EPROM slots, so the purpose of the probe products should be to be installed on the tester interface of the probe card device without other non-infringement use. The IPC further stated that when the semiconductor manufacturer bought the probes from the Defendant rather than the Plaintiff and combined the Defendant’s probes to the tester interface, the Defendant and the semiconductor manufacturer had already jointly infringed the Plaintiff’s patent rights.
Regarding the subjective elements, the IPC stated that the Defendant was a direct competitor of the Plaintiff in the same industrial field, and in view of the Defendant’s company size and organisation, the Defendant should have foreseen that its acts would have likelihood to infringe the Patent at issue when it provided the probe product to the semiconductor manufacturer and assisted in installing the probes onto the test interface. The IPC further stated that however, the Defendant did not curb the occurrence of the infringement, so the court believed that Defendant had violated duty of care and had negligence. In addition, the IPC held that the Defendant did not intentionally infringe the Patent at issue.
The IPC finally decided that the Defendant was jointly liable with the semiconductor manufacturer for negligently infringing the Patent at issue under Paragraph 1 of Article 185 of Taiwan Civil Code.
The importance of this case is that although the facts of providing essential elements “probes” from the Defendant in this case ostensibly are similar to the indirect infringement of contributory infringement under 35 U.S.C. §271(c) or Paragraph 2 of Article 185 of Taiwan Civil Code “[i]nstigators and accomplices are deemed to be joint tortfeasors”, the issue is that the IPC held that the Defendant did not intentionally but only negligently infringe the Patent at issue. Therefore, it seems problematic to apply the theory of indirect infringement, where “knowledge” or “intent” is required.
However, in this case, the IPC applied Paragraph 1 of Article 185 of Taiwan Civil Code on the Defendant to account for the joint liability even though the Defendant did not directly infringe the Patent at issue. This situation is comparatively parallel to the 35 U.S.C. §271(a) for dealing with divided infringement where “knowledge” or “intent” is not required but only “direct and control” is required. We believe, in the present case, the fact that the Defendant provided the probe product to the semiconductor manufacturer and assisted in installing the probes onto the test interface should be sufficient to constitute “direct and control” element.
We believe that after this case, we might find some supports that the divided infringement theory can be applied in Taiwan through Paragraph 1 of Article 185 of Taiwan Civil Code.
Mr. Tsai, a patent attorney graduated from Department of Electrical Engineering of National Taiwan University (NTUEE), which is the best engineering school in Taiwan. Out of the interest of communication system, he immediately had attended in the Graduate Institute of Communication Engineering (GICE) of NTU since his graduation from NTUEE and has received his master's degree after 2-year’s research. During his research life in GICE, he also started to get involved in knowledge and skills of patent-related matters for taking the bar examination for Patent Attorneys. He has passed the exam having a pass rate lower than 4%, and received the qualification of patent attorney.
Mr. Tsai also attended and gained an IP master degree from Law School of University of New Hampshire, also known as Franklin Pierce Center for Intellectual Property. Right after the graduation, he had an opportunity to work for InterDigital, Inc. in Delaware for a short period, and then passed the U.S. Patent Registration Examination. He also passed China Patent Agent Examination recently.
Currently, Mr. Tsai is working for Deep & Far Attorneys-at-Law as a patent attorney and concurrently majoring a law master in National Chiao Tong University.
Yu-Li Tsai, Partner and Patent Attorney - Deep & Far Attorneys-at-Law