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When handling a patent infringement suit in which the accused party asserts patent invalidity or an administrative suit which is a subsequent procedure of a cancellation (invalidation) action, the court needs to determine whether the patent is valid. If a technical feature of a patent in dispute is not clearly disclosed in the textual description of a cited document and thus the drawings of the cited document need to be carefully referred to, according to the Patent Examination Guidelines, only those "clearly" disclosed in the drawings can be deemed a portion of disclosure of that cited document. Recently, two IP Court judgments were issued. In the two court cases, the patentees argue that the opponent parties "speculate" that the drawings of the cited documents disclose the features of the patents in dispute; the IP Court considers the drawing disclosure capable of complement the insufficient disclosure of the textual description of the prior art references.
In Judgment No. 102-Min-Chuan-Shan-43, one important disputed issue is as follows: The main technical feature of the patent in dispute is that in an interdental brush, a fixation portion formed by twisted metal wires has an enlarged portion so that the fixation portion does not easily slip off from the handle after it is inserted into the handle. Although the textual description of the cited document mentions that the fixation portion is formed as spiral structure, it does not disclose forming an enlarged portion thereon. Can the technical feature of the patent in dispute be reasonably inferred by referring not only to the description but also the drawings? The court's opinion is as follows: Although the cited document does not clearly disclose the relation between the outer diameter of the twisted metal wire portion and the dimension of the metal wire, the textual description has disclosed that the twisted metal wire portion adopts the manner of "irregular spiral twist" and "need not specify the shape of the twisted portion," and thus the cited document achieves the same effect of not easily slipping off from the handle; in addition, the drawings disclose that due to the clamping of the twisted wires, the bristles extend laterally outward. Given the above, the court considers that persons with ordinary skill and common knowledge in the art can "directly and unambiguously" know the technical features of the patent in dispute from the disclosure of the cited document and concludes that the patent lacks novelty.
In the case of IP Court Judgment No. 102-Shing-Chuan-Suit-48, the most important cited document does not mention the concrete shape of the axle such as the shapes of splines and a "flange" on the axle, which are the main features of the patent in dispute. Both parties dispute whether the disclosure of the drawings of the cited document meets the requirement of "clearly disclosing." The court granted both parties' request to subpoena expert witnesses to state their opinions on the disclosure of the drawings. However, the IP Court judgment does not provide a concrete criterion regarding which level of disclosure of a drawing meets the requirement of "clearly disclosing." Instead, the court states that the drawing discloses that "a hollow axle is a stepped cylindrical shape with several different diameters" and that "persons familiar with the skill in the art can understand the features from the drawing," and thus the court considers that the patent lacks an inventive step.
According to the Patent Act and relevant regulations, the drawings of a prior art reference should be interpreted based on the technical level "at the time when the patent was filed" or "on the priority date." Under the circumstances that the textual description of a prior art reference does not disclose the main technical features of a patent and that many years have passed when a cancellation/invalidation action is filed with the patent office or when a court starts to review a patent infringement case, it is worth observing how the patent office and the courts determine an appropriate steps and/or standard to interpret the content of such drawings based on a correct technical level.
