How to Determine If A POSITA Would Be Motivated to Combine the Alleged Prior Arts?

 On November 18, 2025, Taiwan’s Intellectual Property and Commercial Court (“IPC Court”) rejected a patent infringement lawsuit based on TW patent M480526 (‘526 patent), finding all the asserted claims not patentable under the prior arts. (Case No. 113 Ming-Zhuan-Su-Zi No. 29)

The ‘526 patent, entitled “a waste bag frame apparatus”, is directed to an frame apparatus used to store and transport polluted clothing. More specifically, the patented apparatus used a pedal, connecting rods, and buffer rod to control the opening and closing of its upper cover. When stepping on the pedal, the upper cover of the apparatus will open, and, when releasing the pedal, the upper cover would descend slowly because of the restraint of the buffer rod. By controlling the closing of the upper cover, sudden impact, noise, or unnecessary injury may be avoided. 

Claim 1 of the ‘526 patent recites:

A waste bag frame apparatus, comprising:
a support frame (1) having a fixing rod (12) and a shaft rod (13) respectively transversely disposed at a position slightly above and at an upper end of a rear side of the support frame (1);
a bag frame (14) pivotally mounted on the shaft rod (13) ; and
an upper cover (2) having, on two rear sides thereof, ear portions (21) provided with shaft holes through which the shaft rod (13) is pivotally inserted; wherein the improvement comprises: buffer rods (3) respectively connected between positions slightly rearward of the shaft holes of the ear portions (21) on the two rear sides of the upper cover (2) and the fixing rod (12) disposed slightly above the support frame (1), such that the buffer rods (3) restrain the upper cover (2) and allow the upper cover (2) to descend slowly.

Claim 2 is a defendant claim, which further discloses a pedal that could swing upward and downward. 

The defendant argued that claim 1 and claim 2 of ‘526 patent are obvious in view of combination of prior arts, including TW Patent M451327 (‘327 patent), US 20070068942A1 patent (‘942 patent), and CN 2928727Y patent (‘’727 patent).

The IPC Court agreed, finding that although the ‘327 patent did not disclose “the buffer rods” which could “restrain the upper cover and allow the upper cover to descend slowly”, the ‘942 patent disclosed a dampening element (53) that could facilitate the smooth and controlled rotation of the lid. 

(‘327 patent)

(‘942 patent)

Similarly, the IPC Court found the ‘727 patent also disclosed a cylinder (5) that could serve as buffer to slow down the velocity when the cover (9) is closing. The Court concluded that a person of ordinary skill in the art could easily realize all the limitations of claim 1 and claim 2 of the ‘526 patent by referencing to the combination of the ‘327 and ‘942 patents, or the combination of the ‘327 and the ‘727 patents.    

                                                                        (‘727 patent)

The plaintiff contended that there was no motivation or teaching available for an ordinarily skilled artisan to combine the alleged prior arts. The IPC Court disagreed, elaborating that to evaluate whether a POSITA would be motivated to combine the alleged prior arts, the Court will look into factors such as the relatedness of the technological fields, the commonality of the problem to be solved, the commonality of function or purpose, and the teaching and suggestion. The more factors are present, the more likely a POSITA would be motivated to combine the relevant prior arts.

Here, the ‘942 patent explicitly taught that the dampening element could make the lid spin in a smooth and controlled fashion, which aims to solve the same problem as discussed in the ‘526 patent, i.e., providing a buffer rod to restrain and allow the cover to descend slowly. The garbage can disclosed in the ‘‘727 patent, like the one claimed in the ‘526 patent, also controlled the opening and closing of its cover via the mechanism of connecting rods. The ‘727 patent further revealed an air pressure buffer device to slow the closing of its cover. Hence, there is commonality of function and purpose between the ‘727 and the ‘526 patent. In sum, a POSITA would have sufficient motivation and suggestion to combine the alleged prior arts.

Given that the asserted patent was not patentable, the IPC Court rejected plaintiff’s patent infringement claims.

Source:  https://judgment.judicial.gov.tw/FILES/IPCV/113%2c%e6%b0%91%e5%b0%88%e8%a8%b4%2c29%2c20251118%2c2.pdf