In the past, a litigant often invoked Article 77-12 of the Code of Civil Procedure, which provides: "When a claim's value cannot be determined, the value shall be deemed as the minimum amount under which an appeal may be taken to the court of third instance as provided in Article 466, plus one tenth of such minimum amount."  At present the minimum amount cannot be less than NTD 1.5 million, and therefore the litigant usually claimed NTD 1.65 million as the value for "permanent injunction claim."  In such cases, although the defendant might argue that the value for "permanent injunction claim" was not impossible to determine, it still was difficult for the parties to provide concrete evidence for the court to calculate and decide said value.  In order to avoid the dragging on of the patent-infringement litigation as a result of meaningless procedure, the Intellectual Property Court (IP Court) would often set the value for "permanent injunction claim" at NTD 1.65 million based on Article 77-12 of the Code of Civil Procedure.

 

In this regard, attention should be drawn to the ruling of the Supreme Court on April 24, 2013 under the Ruling No. 2013 Tai-Kang-317, where it pointed out that the IP Court should not rule that the litigation value could not be determined solely on the ground of the litigants being unable to provide the basis for their arguments.

 

After the Supreme Court had sent the aforesaid case for re-investigation, the IP Court said on September 12, 2013 under Ruling No. 2013 Min-Kang-Geng-(1)-1 that the value for the permanent injunction claim should be based on the profit that could be obtained by the plaintiff as a result of the defendant's cessation of patent infringement. It also specifically required the litigants to provide evidence for the court to estimate such profit.  The Court did not cite Article 77-12 of the Code of Civil Procedure and set the value at NTD 1.65 million on the ground of inability to quantify the value of the permanent injunction claim.

 

In its aforementioned ruling, the IP Court raised several factors as the basis for determining the value for a permanent injunction claim. They include: the market competition between the patented item and infringing item; business dealings or relationship between the litigants; the average quantity of patented items sold by the patentee annually before institution of litigation; the profit margin obtained by the patentee at the time of institution of litigation; the remaining years for the patent in question and the potential duration of adjudication for the case in question; and the market share of other available non-infringing products. The IP Court ultimately ruled the value for the permanent injunction claim in that case at over NTD 20 million. This was vastly higher than the amount of compensation claimed in the same case (NTD 2 million).

 

Although the IP Court had, in the aforementioned case, changed its mode of operation by adopting a pragmatic approach through substantive investigation of the value for "permanent injunction claim", a cursory observation of relevant rulings by the IP Court during the same period would indicate that the Court did not completely discard the convenient measures offered by Article 77-12 of the Code of Civil Procedure. For example, in its decisions under Ruling Nos. 2013 Min-Zhuan-Kang-11 and 2013 Min-Zhuan-Kang-14, the IP Court continued to set NTD 1.65 million as the value for "permanent injunction claim".