19 February 2016Jurisdiction reportsVictor Lee and Jesse Peng

Case report: Toshiba loses semiconductor patent

After sending warning letters to Arima Optoelectronics Corporation (AOC), Toshiba sued the company at the IP Court for patent infringement based on the alleged continuous sale and use of similar LED models. The ‘588 patent was twice amended after being granted, in 2013 and 2014. While the 2013 amendment was approved by the Taiwan Intellectual Property Office (TIPO), the 2014 amendment was pending before the TIPO when the IP Court ruled on the case on September 22, 2015.

AOC, the defendant, responded to Toshiba’s allegations by countering that the amendments went beyond the disclosed subject matter of the ‘588 patent; that the patent claims did not read on its products; that AOC was entitled to prior user rights; and that the ‘588 patent lacked novelty and an inventive step.

AOC first argued that the amendments to the ‘588 patent were invalid because of the illegal expansion beyond the disclosure of the specification. The court ruled otherwise. Although the 2014 amendment was not granted by the TIPO during the trial, it was different to the 2013 counterpart only in its narrowing of the claim scope and clarification of ambiguous claim language. The amendments did not substantially enlarge the scope of claims as granted or go beyond the original disclosure of the specification as filed. The amended claims in the 2014 version were therefore permitted by the court.

Next, before claim construction, the court reasoned that the scope of patent protection described by the examples in the specification only purported to illustrate the embodiments of the given invention. The examples should not be relied on to expand or narrow the scope of the claims as granted; otherwise it is the same as introducing changes or limitations that were originally not included in the claims or would substantially change the scope of patent protection.

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