On November 4, 2025, Taiwan’s IP Court ruled in the favor of Sanyang Motor (“SYM”), rejecting patent infringement claim based on Taiwan invention patent I401180. (113 Ming-Zhuan-Su-Zi No. 49).
The I401180 patent (‘180 patent) was directed to an enhanced warning function that aims to provide extra way to turn on motorcycle’s headlight assembly when in some situations, such as collision accident, the start switch could not be used to turn on the motorcycle’s light assembly.
The language of claim 1 of the ‘180 patent recites that:
“ A vehicle with three wheels or less and enhanced warning function includes a vehicle body, a power supply (32) housed within the vehicle body, a headlight assembly (33) mounted on the vehicle body, a controller (34) that controls the headlight assembly (33) to illuminate and is powered by the power supply (32), and a start switch (35) disposed between the controller (34) and the power supply (32); characterized in that: the vehicle body is further provided with an emergency switch (36), the emergency switch (36) having a connecting wire (361) electrically connected to the power supply (32) and the controller (34) respectively, and an opening and closing element (362) disposed on the connecting wire (361); furthermore, the start switch has a keyhole (351), and the keyhole (351) is interconnected with the connecting wire (361), so as to additionally utilize the emergency switch (36) to connect the power supply (32) and the controller (34) to control the headlight assembly to illuminate (33).”
A representative figure of the ‘180 patent is as follows:
The parties stipulated that the MMBCU model met the requirements “A vehicle with three wheels or less and enhanced warning function includes a vehicle body, a power supply (32) housed within the vehicle body, a headlight assembly (33) mounted on the vehicle body, a controller (34) that controls the headlight assembly (33) to illuminate and is powered by the power supply (32), and a start switch (35) disposed between the controller (34) and the power supply (32)”. However, SYM argued that its product did not possess the limitation: “the vehicle body is further provided with an emergency switch (36), the emergency switch (36) having a connecting wire (361) electrically connected to the power supply (32) and the controller (34) respectively, and an opening and closing element (362) disposed on the connecting wire (361); furthermore, the start switch has a keyhole (351), and the keyhole (351) is interconnected with the connecting wire (361) , so as to additionally utilize the emergency switch (36) to connect the power supply (32) and the controller (34) to control the headlight assembly to illuminate (33)”.
More specifically, SYM contended that its emergency switch is connected to the controller and the light assembly, not the controller and the power supply; and that the keyhole of its start switch was not connected to the same wire as the opening and closing element. The Plaintiff, on the other hand, argued that SYM infringed under doctrine of equivalents.
The Court held that:
1. During prosecution, any modification, amendment, or response that resulted in narrowing the claimed scope would subject the patentee to estoppel, that is, the patentee will not be able to reclaim what was narrowed or disclaimed during prosecution.
2. In this case, the Court sided with SYM, finding the plaintiff should be subject to prosecution estoppel when, during prosecution of the ‘180 patent, it added the element “the start switch has a keyhole (351), and the keyhole (351) is interconnected with the connecting wire (361)”, and emphasized in its response to Patent Office’s office action that the keyhole was located on said connecting wire that also connected with the opening and closing element of the emergency switch.
3. As such, the Plaintiff shall be prohibited from expanding its claimed scope to capture arrangement that “the keyhole and the opening and closing element each located on different connecting wire”, which is the approach taken by SYM when arranging the wire connection for its light assembly module of MMBCU.
In view of the above, the Court rejected that patentee’s infringement claim against SYM accordingly.
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