In 2018, ALMECO GMBH (“ALMECO”), the
German-based world leader in the production of aluminum components and
laminates for the architectural, lighting, solar and decorative applications,
sued Alanod-Xxentria Technology Materials Co. Ltd. (“Alanod-Xxentria”) and its
local distributor in Taiwan’s IP Court, alleging infringement of ALMECO’s
I589448 patent, titled “Temperature And Corrosion Stable Surface Reflector” (hereafter
‘448 patent).
ALMECO’s ‘448 patent mainly relates to a
layer system comprising:
“a metal
substrate on the face of which the following layers are applied in the
specified sequence from the inside to the outside:
4)
a layer made of a material selected from substoichiometric oxides and oxide nitrates
of titanium and zirconium or from metals selected from titanium, zirconium,
molybdenum, platinum, and chromium or an alloy using one of said metals or at
least two of said metals,
5a)
a layer made of a nickel alloy with chromium, aluminum, vanadium, molybdenum,
cobalt, iron, titanium, and/or copper as the alloy partner or a metal selected
from copper, aluminum, chromium, molybdenum, tungsten, tantalum, titanium,
platinum, ruthenium, rhodium, and alloys using one said metals or at least two
of said metals, or iron, steel, or stainless steel with the proviso that the
layer can only consists of aluminum if the reflector layer 6) is made of
aluminum and that in this case, the aluminum of the layer 5a) is sputtered,
6)
an optically dense reflector layer made of a highly pure metal,
7)
a layer selected from substoichiometric oxides of titanium, zirconium, hafnium,
vanadium, tantalum, niobium, or chromium and from metals selected from
chromium, titanium, zirconium, hafnium, vanadium, niobium, tantalum, tungsten,
molybdenum, rhodium, and platinum and alloys using one of said metals or at
least two of said metals,
9)
a layer which has a lower refractive index (LI layer) than the directly
adjoining layer 10) (HI layer), and
10)
a layer which directly adjoins layer 9) and has a higher refractive index (HI
layer) than layer 9) (LI layer).”
According to ALMECO, such a patented layer
system can be used for example as a surface reflector, preferably in
applications using LEDs, in particular MCCOB for LEDs, as a solar reflector, or
as a laser mirror, in particular for color wheels in DLP laser projectors.
The IP Court ruled against ALMECO in the
first instance, finding the asserted patent claims of ‘448 patent were obvious
in view of the cited prior arts. ALMECO appealed, and the appellate panel of IP
Court affirmed the finding of the lower court on May 21, 2020, rejecting
ALMECO’s appeal. One of the key issues, which is also an issue that has rarely
been touched upon in Taiwan’s patent litigation, is whether Alanod-Xxentria may
assert prior use defense per Patent Law.
Article 59.1.3 of Patent Law provides that
“The
effects of an invention patent right shall not extend to the following
circumstances:….3. acts done by a person who has been exploiting the invention
or making all the necessary preparations for doing such act in this country
before the filing date of the invention”. According to Alanod-Xxentria,
before the priority date of ALMECO’s ‘448 patent, Alanod- Xxentria has already
manufactured product that embodied ALMECO’s ‘448 patent. Based on its internal
product document, Alanod- Xxentria alleged that a product with layered
structure of TiO2, SiO2, CrOx, Ag, Cu, TiOx, and anodized aluminum, together
with its manufacture process, has been disclosed. Thus, Alanod- Xxentria argued
that it has been exploiting the same invention or making the necessary
preparations for doing such act by manufacturing product that embodies the
asserted patent.
However, the IP Court disagreed, finding
that in the asserted patent, a single Ag-based reflector layer is adopted, but
in its internal document, Alanod-Xxentria adopted double reflector layers made
of Ag and Cu. In addition, according to its internal document, a Cr-based layer
is adopted for the manufacturing process, while in the asserted patent, ALMECO
adopted CrOx. Such differences disproved Alanod-Xxentria’s contention that it
has been manufacturing product that embodies the asserted patent.
Although Alanod-Xxentria further argued
that based on the relevant prior art references, a person of ordinary skills in
the art would easily adjust the ratio of Cu and Ag and accomplish the patented Ag-based
layer. However, the IP Court held that “being capable of manufacturing the
patented product” does not equal to “practicing the patented invention” or “making
necessary preparations for doing so.” For example, although a person is capable
of manufacturing a patented product, such a person may still choose not to do
so in view of the potential risk of patent infringement. Thus, the appellate panel
of IP Court found Alanod-Xxentria’s submitted evidence insufficient to support
its prior use defense.
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