Appellee failed to apply the assertion related to the doctrine of equivalents after this Court explained and revealed our mind:

1. The judgment of the court includes the determination of facts and the application of law, which is based on the framework of the three-step legal methodology. First, determine what laws or regulations should be applicable (major prerequisite). Then, consider all argument highlights and the result of evidentiary investigation to freely conclude the facts in a case (minor prerequisite). Moreover, apply the laws and regulations to the facts in the case and finally give a legal effect (conclusion). The current Code of Civil Procedure recognizes the principle of a party’s right to control. That is, except for other provisions otherwise, the court may not make a judgment on what was not claimed by the parties. That is clearly drawn from Article 388 of the Code of Civil Procedure. As a result, when filing a complaint, according to Article 244, Paragraph 1, Subparagraphs 2 and 3 of the same Code, Plaintiff should declare and specify the subject matters in the litigation as his causes of action, causes and facts, and statements that a judgment should concern. A court’s decision may not go beyond what the parties have requested for a judgment to prevent the occurrence of a surprising decision that will harm the procedural interests of the parties and to protect the parties’ litigation right and property right vested in the Constitution. When the court is making a decision, it should leave the parties to present the factual allegations and statements of evidence. The court may not initiate its duty and consider the facts that were not alleged or not presented by the parties. This is the debate principle in civil litigation. Applying law is a judge’s duty without any restraints arising from legal opinions asserted by the parties. The scope of the debate principle is only applied to the facts grounded in the decision and evidence relied upon, and it does not extend to the application of law. (See Supreme Court Civil Decision 100 Tai Shang Zi Nos. 1031, 1088, 1671 (2011).)

2. The interpretation of a patent scope involves the determination of the scope of a patent right, which is a question of the application of law. If both parties dispute the interpretation, the court should interpret the claim on its own. Comparing the interpreted patent scope of the patent-in-suit and the product-in-suit and determining whether the product-in-suit falls within the scope of the patent right at dispute are question of factual determination. And, Article 56, Paragraph 3 of the Patent Act provides that the scope of an invention patent right is defined by the patent scope disclosed in the specification and that, when the patent scope is being interpreted, the specification and drawings of the invention may be considered. That is, for the interpretation of the scope of a patent right, our national patent law theoretically adopts the principle of balanced limitation (something between the principle of central limitation and the principle of peripheral limitation). In principle, the extension of the protection of a patent right is defined by the patent scope, and the specification and drawings may be considered as a reference to the interpretation of that patent scope. It is not limited to the literal meaning. The principle of peripheral limitation which is a principle of strict literal interpretation is not adopted. To well protect the scope of a patentee’s right to prevent others from taking an infringing act in an indirect way that smartly, cheatingly avoids the literal scope of the patent right, if the technical content of the product-in-suit is substantially equivalent to the patent-in-suit, the infringement of the patent right is then established. On the other hand, to prevent a patentee from using the doctrine of equivalents to extend the technical content of his patent to prior technology that existed before the application date of the patent-in-suit and improperly claim the prior technology as what is protected by the patent right such that the scope of the patent right is arbitrarily extended and, consequently, the technology innovation and industrial advancement will be retarded, an allegation of prior technology defense to limit the doctrine of equivalents is applicable. Therefore, when whether a product-in-suit falls within the scope of the patent right of the patent-in-suit is being determined, the determination of whether the product-in-suit meets “literal reading” and determination of whether the product-in-suit is subject to “the doctrine of equivalents” are the concepts in two different levels. Further, the doctrine of equivalents is the extension of the literal meaning of a patent scope. If a patentee wants to further assert that the product-in-suit substantially meets the equivalent scope of the patent-in-suit which falls out of the literal scope of the patent right, according to the debate principle, he should provide in terms of litigation substantial allegations related to the application of the doctrine of equivalents and state the technical measures, functions, and results of the product-in-suit and the patent-in-suit, respectively. And, after the actor defended, the court then relies on that to determine whether the product-in-suit and the patent-in-suit is substantially the same such that the doctrine of equivalents should be applied.

3. Since the complaint was filed, Appellee has only asserted that the product-in-suit falls within the literal scope of the patent right-in-suit. On April 25, 2011, in the preparation proceeding, this Court once told Appellee “Assume that the product-in-suit does not constitute literal infringement. Any comments?” (See This Court’s Document at page 105.) On August 9 of the same year, Appellee filed a document stating that “the product-in-suit constitutes literal reading with respect to the patent-in-suit and that Appellant should prove whether prior technology exists. (See This Court’s Document at pages 151-152.) In addition, on August 15 of the same year, this Court in the preparation proceeding stated again that “in the present case, in addition to whether to fall within literal meaning, is the doctrine of equivalents, reverse doctrine of equivalents, estoppel, or prior technology applicable?” The litigation representative of Appellant answered that “because Appellee does not provide the application of the doctrine of equivalents, Appellant does not provide the application of estoppels and prior technology.” The litigation representative of Appellee answered that “regarding the allegation of the application of prior technology, Appellant should provide evidence.” (See This Court’s Document at pages 170-171.) Later on October 7 of the same year, this Court followed what is required under Article 8, Paragraph 2 of the Intellectual Property Case Adjudication Act to reveal the initial mind of this Court which thinks that the label c element of the technical content of the product-in-suit may be read from claim 1 of the patent scope of the patent-in-suit and the label b element cannot be read completely so as not to meet literal infringement. Also, Appellee was ordered to confirm whether further to assert the doctrine of equivalents, while Appellant was ordered to confirm whether further to assert estoppel and prior technology defense. (See This Court’s Document at page 202.) But, on November 1 of the same year, Appellee filed a document still stating that the product-in-suit has constituted literal reading with respect the patent-in-suit. (See This Court’s Document at pages 231-233.) On December 1 of the year, the oral argument date, the allegation of literal reading was the same. (See This Court’s Document at page 242.) No assertion and fact related to equivalent infringement were proposed. Therefore, this Court has fulfilled a duty to explain well. According to the principle of a right to control and the debate principle, this Court definitely cannot determine what is not alleged by Appellee regarding the facts of equivalency and consider it as a basis of the decision. As a result, after the scope of the literal reading stated by Appellee was debated by both parties, it is determined that the product-in-suit does not fall within the scope of the right of claim 1 of the patent scope of the patent-in-suit. And, there is no need to explore whether the doctrine of equivalents is applicable in this case.

Factual determination, legal application, principle of a right to control, debate principle, interpretation of the scope of a patent right, literal scope, scope of equivalency, literal reading, doctrine of equivalents, public disclosure of mind, duty to explain