According to the Guidelines for Determining Patent Infringement adopted by the Taiwan Intellectual Property Office, the purchasing behaviour of an ordinary consumer is premised on direct visual observation and comparison of the product to be purchased with others. If ordinary consumers of a particular type of product typically rely on instruments for observation – such as in the case of diamonds or light-emitting diodes (LEDs) – then these instruments may be relied upon for comparison. In determining whether extremely small objects constitute infringement, however, no clearly defined methods or standards have been implemented in such comparisons so far.
In a recent judgment on a design patent infringement case, the Intellectual Property and Commercial Court (the IPC Court) expressed its opinion on the method of comparison to be used when assessing infringement involving objects of extremely small size.
Analysis of the case
The dispute arose from a design patent for an LED, in which the patentee alleged that the accused product sold by the defendant infringed its patent rights. During the litigation, the plaintiff submitted photographs of the accused product taken using an electron microscope with the images enlarged by about 12, 25, and 75 times for comparison with the patented design, asserting that the appearance of the accused product was identical or similar to that of the patented design.
The IPC Court observed that common sizes for LEDs include specifications such as 3030, 5050, and 2835 (where the first two digits represent the length and the last two digits the width). Taking the 5050 specification as an example, the actual dimensions are 5 mm by 5 mm. The patented design at issue, which appears square in the drawings, is approximately 100 mm by 100 mm based on physical measurement – equivalent to a 20-fold magnification. Given that comparisons should be made at the same or a similar level, the IPC Court considered it improper to evaluate a product magnified by 20 times alongside another by 75 times.
In addition, with respect to the plaintiff’s use of a 3D laser confocal profilometer to conduct observation, the IPC Court held that the comparison between the two designs at issue should rely on direct visual observation of photographs or images taken at the same magnification level. Therefore, the measurement and analytical data derived from contour maps generated using a 3D laser confocal profilometer are unlikely to be understood by an ordinary consumer possessing only a general level of knowledge. Such data is of a technical nature, accessible and understandable only to specialists or professionals, and cannot be regarded as the result of visual observation by ordinary consumers.
Implications of the IPC Court’s findings
The IPC Court’s reasoning shows that, although the use of instruments to produce magnified images is permissible when comparing designs in an infringement analysis, such comparisons must be made using images magnified to the same or a similar degree, to avoid relying on instrumentation to highlight minor differences.
Furthermore, ‘ordinary consumers’ refers to individuals who purchase or use LEDs, such as a procurement officer or staff engaged in soldering semiconductor chips on to printed circuit boards. These individuals possess only a general level of knowledge and would pay only an average degree of attention when purchasing or manufacturing. Therefore, the measurement and analytical data obtained from contour maps produced using instruments goes beyond the observational and cognitive abilities of an ordinary consumer and cannot be used as a basis for comparison.
The foregoing opinion may serve as a useful reference for comparisons involving extremely small products.
