Date:7 February 2023

【Volume 103】

In a recent patent infringement case involving a patent titled "Temperature- and corrosion-stable surface reflector," the Taiwan Intellectual Property and Commercial Court (IPCC) clarified that if the description of “examples and effects” is sufficient for a PHOSITA to carry out the invention and obtain the effects, the invention would be deemed to be definite and in accordance with the description requirement. The opinion was also recognized by both the Court of Second Instance and the Supreme Court¹.

1. Case Fact

The plaintiff, ALMECO GMBH, is the owner of the Taiwanese Invention Patent No. I589448 titled “Temperature- and corrosion-stable surface reflector” (the ‘448 patent). ALMECO claims that MIROⓇ98AX17 (M98AX17) manufactured and sold by the defendants, Alanod-Xxentria Technology Materials Co., Ltd. and FU LU TRADING CO., LTD., infringed at least claims 1 to 3, 8 to 16, and 30 of its patent. ALMECO’s appeal was dismissed by the Court of Second Instance and the Supreme Court.

The issue in the case was whether the ‘448 patent violated Paragraphs 1 and 2 of Article 26 of the Taiwan Patent Act.

2. The Technical Means and Application of the ‘448 patent

The ‘448 patent relates to a temperature-resistant layer system having a high reflectivity in the wavelength range between 300 and 2700 nm, which is arranged on a metallic substrate, and the application thereof as a temperature resistant and corrosion resistant surface reflector.

Claim 1 of the ‘448 patent recites: "A layer system, comprising:

a metallic substrate (1) having the following layers applied on a side (A) thereof from inside to outside in the specified order:

a layer (4) composed of a material of substoichiometric oxides or oxynitrides of titanium and zirconium or metals of titanium, zirconium, molybdenum, platinum, and chromium or an alloy using one of these metals or of at least two of these metals,

a layer (5) composed of a nickel alloy having chromium, aluminum, vanadium, molybdenum, cobalt, iron, titanium, and/or copper as an alloying partner, or composed of a metal of copper, aluminum, chromium, molybdenum, tungsten, tantalum, titanium, platinum, ruthenium, rhodium, or alloys using one of these metals, or of at least two of these metals, or composed of iron, steel or stainless steel,

an optically dense, high-purity metal reflector layer (6),

a layer (7) selected from among substoichiometric oxides of titanium, zirconium, hafnium, vanadium, tantalum, niobium or chromium and from among metals of chromium, titanium, zirconium, hafnium, vanadium, niobium, tantalum, tungsten, molybdenum, rhodium, or platinum or alloys using one of these metals or at least two of these metals,

a LI layer (9) having a lower refractive index than that of a directly adjoining HI layer (10), and

the HI layer (10) directly adjoining said LI layer (9), and said HI layer (10) having a higher refractive index than that of the LI layer (9)."

Claim 30 of the ‘448 patent recites: "The use of the layer system according to any one of claims 1 to 29 as a surface reflector, as a solar reflector, or as a laser mirror."

3. Highlights of the IPCC Decision

Paragraphs [0003] and [0005] of the ‘448 patent recites: “This layer must have a thickness that makes the layer optically dense, thereby preventing incident radiation from penetrating through the layer and reaching the underlying layers and thus potentially causing interference effects in the aluminum oxide layer. This would reduce the efficiency of the mirror and cause undesirable interference colors.” Paragraph [0032] of the ‘448 patent recites: “[T]he thickness is selected so that it is optically dense, i.e. no or essentially no (preferably less than 1%) electromagnetic radiation in the range of 300-2700 nm and particularly in the range of visible light is allowed to pass into underlying layers....” Also, paragraphs [0045]-[0067] and the examples explicitly illustrate multiple layer systems that adopt an optically active reflector layer made of high-purity silver and the manufacturing method thereof. The layer systems can achieve the expected effects of good total reflection or good solar reflection. Therefore, with reference to the aforementioned technical content of the ‘448 patent, a PHOSITA should be able to understand the technical meaning of the term “optically dense,” which refers to “(due to the high reflection) no or essentially no (preferably less than 1%) electromagnetic radiation in the range of 300-2700 nm and particularly in the range of visible light is allowed to pass into underlying layers,” and carry out the invention of the ‘448 patent accordingly.

The term “optically dense” has been well defined by the ‘448 patent, with specific illustrations of materials, purities, thicknesses, deposition processes, etc. of multiple different optically dense reflector layers, and the effect of reflection is verified in the examples. As a result, a PHOSITA can understand and carry out the invention, solve the technical problem and have an expected effect without undue experimentation based on the description, claims, drawing, and common knowledge at the time of filing. As such, the invention is definite and in accordance with Paragraph 1 of Article 26 of the Patent Act. Additionally, the technical term “optically dense” in claims 1-3, 8-16, and 30 is definite and can be supported by the description of the ‘448 patent for the same reason. Therefore, the claims are in accordance with Paragraph 2 of Article 26 of the Patent Act.