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Taiwan: Claim language can jeopardise patent lawsuit

In the past, end-users might use a remote control to store and manage relevant channel and TV programme information. The process, however, has become more burdensome due to the increasing number of TV channels and service providers. The information that end-users will have to manage by themselves has become voluminous and complicated.

Hometouch Co Ltd's Taiwan patent I415456, directed to an information management method for a multimedia remote control, aims to solve this problem by providing an information management platform to manage and process all the relevant programmes and channel information. More specifically, the patented method touted that said "information management platform" will establish, arrange and update the channel information table, and generate channel information for the end-user. In this way, the end-user may easily access well-arranged channel information and locate the programme he would like to watch by having his multimedia remote control download the channel information from said information management platform. End-users no longer need to manage the relevant channel and programme information by themselves.

In 2014-Ming-Zhuan-Su-Zi No 97, Hometouch accused KBRO Surf Co Ltd, a company focused on digital TV service, of infringing the '456 patent by providing HomePlay, a smartphone application available on iTunes and Google Play that may enable a smartphone to become a remote control, and to access and download an arranged channel and programme information allegedly prepared by KBRO. The court cleared KBRO of infringement by ruling that the claim term "multimedia remote control" should be construed not to include "smartphone", an electronic device that was still burgeoning when Hometouch filed its application for the '489 patent.

In rejecting Hometouch's argument that "multimedia remote control" should include smartphone, the court reasoned that, at the time when the application of the '486 patent was filed in April 2009, the function of smartphones and their relevant technology had not been fully developed, so an ordinarily skilled person at that point would not view "smartphone" as "multimedia remote control". Second, the court found that during prosecution, in order to overcome a piece of prior art directed to a multifunction remote control that may store and manage channel information, HOMETOUCH distinguished its patented "multimedia remote control" by arguing its "multimedia remote control" is a more "simplified" and "less costly" device, because an information management platform, not the "remote control" itself, is used to manage and store channel information.

The court held that since Hometouch already defined its "multimedia remote control" as a device more "simplified" than the alleged "multifunction remote control", Hometouch had disclaimed its claimed scope which would cover a device "more complicated" than the "multifunction remote control" cited by the prior art. The court opined that as a smartphone is a device "more complicated" than the "multifunction remote control" cited by the prior art, Hometouch should be estopped from recapturing "smartphone". Accordingly, the IP Court ruled in KBRO's favour, because KBRO's software is an application dedicated to a smartphone, which is outside the claimed scope of the '486 patent.

This case reminds us of the potential risk when trying to differentiate a patent from alleged prior art in the process of prosecution. By asserting that its patented device is "less complicated", HOMETOUCH is simultaneously waiving its claimed scope that could have covered a "more complicated" device like smartphone.


Steven C C Liao

Saint Island International Patent & Law Offices7th Floor, No. 248, Section 3Nanking East RoadTaipei 105-45, Taiwan, ROCTel: +886 2 2775 1823Fax: +886 2 2731

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