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An infringement claim based on a patent subsequently invalidated does not inevitably constitute patent misuse(19/5/2014)
The theory of patent misuse is one of the important issues discussed in US law and many legal opinions have been made and accumulated to date on patent misuse cases. In general practice, patent misuse refers to: refusal to license, initiation of malicious litigation, etc. Initiation of malicious litigation includes: misuse of patent application strategy, initiation of a suit at random and utilization of pre-litigation procedure from rashness, such as filing a request for provisional seizure/injunction procedures.

As patentees nowadays pay more attention to maintenance and protection of their intellectual property rights, defendants of patent infringement actions also adopt various kinds of defensive measures in response, such as filing an invalidation action, raising a defense of patent invalidity, bringing a new claim in a separate lawsuit or a counterclaim in the same lawsuit for patent misuse or impediment to fair competition, etc. In Taiwan practice, a defendant of the patent infringement lawsuit often alleges that the patentees filing a request with the court for preliminary injunction or provisional seizure with the knowledge that the patent in dispute is void or the patent infringement analysis report is incorrect has constituted patent misuse, and shall be liable for damages according to Article 184 of the Taiwan Civil Code (torts) and Fair Trade Act (unfair competition).

If the defendant of the patent infringement lawsuit wants to establish the patent misuse of the patentee, an issue arises in to what extent the defendant shall bear the burden of proof. In the Judgment 100 Ming Gong Su Tzu No. 3 rendered by the Taiwan Intellectual Property Court (TIPC) on September 21 of 2013, TIPC elaborated that the defendant shall prove the patentee has the knowledge that his/her right is limited or he/she does not have a ground to claim for patent infringement against the alleged infringer when filing the request for provisional seizure. In the same Judgment, TIPC further stated that although the judgment finds that the patent in dispute lacks an inventive step, we may not infer that the patentee has the knowledge that the said patent is revocable when requesting for provisional seizure, therefore the aforementioned finding is not sufficient to prove that the patentee has exercised his/her rights under the tortious intention or negligence. In addition, such Judgment is supported by the appellate court.