Parametric or numerical claims are common in inventions in the semiconductor, chemical, elements, mechanical, bio/pharma fields, and so on. In order to get hold of broader ranges in the declare, values these as composition ratios, dimension, temperature, frequency, parameters, and so on. are seldom recited as solitary values and are usually offered as a variety of values. When the numerical array in a assert partially overlaps with that disclosed by prior art, the patent applicant need to display that the numerical restrictions in the claim generates unforeseen effects more than the prior artwork for it to meet up with inventive action necessities in accordance with the Taiwan Patent Assessment Tips.
Lately, the Taiwan Mental Assets Court docket (IP Courtroom) held that a numerical patent directed to a semiconductor process equipment owned by Taiwan Semiconductor Producing Company (“TSMC”) lacked an creative stage and identified it invalid. (TSMC v. Lee Chia-Ying, Taiwan Mental Residence Court docket (IP Court)2021 XingZhuanSuZi No. 15 judgment). In the choice, the IP Courtroom provided a specific analysis of the consideration for the creative step in a numerical claim, the determination of teaching absent, and the recognition of commercial achievements.
An nameless petitioner1 filed an invalidation motion from TSMC’s patent no. I503920 “Process gear and O-ring thereof” (the ‘920 patent). The Taiwan Mental Home Office environment (TIPO) determined the patent was invalid, and the Appeals Committee and the IP Court docket each upheld the final decision and dismissed TSMC’s appeals.
Key Technological Features of the ‘920 Patent and Disclosure of Proof
The principal difficulty in the ‘920 patent was regardless of whether the mixture of Exhibits 1 to 7 can confirm that claims 1 to 11, 13 to 21, 23 to 30 and 32 deficiency an creative stage. The pursuing only focuses on illustrating the perseverance of an ingenious step of claim 1 and numerical statements 3, 4, 7, 8 and 13.
Declare 1 of ‘920 patent reads: “A semiconductor course of action gear for carrying a wafer, comprising: a wafer susceptor human body, a fluid provide unit and a provider factor, whereby the provider element is organized on the wafer susceptor physique and features an higher floor for carrying the wafer and just one aspect, the fluid supply unit is arranged in the susceptor overall body to source a fluid to the wafer on the higher area of the provider ingredient, a groove forms the side surface of the provider element and is situated at the issue wherever the susceptor human body is connected to the provider element and a replaceable O-ring arranged in the groove, and the fluid supplied by the fluid source device is sealed by the O-ring, whereby the cross segment of the O-ring is rectangular.”
Declare 3 even further restrictions “the ratio of the width of the O-ring to the width of the groove is amongst 1.00 and 1.20” and claim 4 further restrictions “the ratio of the centre diameter of the O-ring to the centre diameter of the groove is amongst .95 and 1.00”. Declare 7 further boundaries “the ratio of the radial width of the base area of the O-ring to the radial width of the O-ring is in between .70 and .90”. Claim 8 additional boundaries “the ratio of the radial width of the major floor of the O-ring to the radial width of the O-ring is among .70 and .90”. Declare 13 more boundaries “the ratio of the radial width to the vertical thickness is in between 1:.8 and 1:4”.
Exhibit 1 is the prior art of the ‘920 patent which only lacks the technical characteristics of the “O-ring” as opposed to the ‘920 patent.
Show 3 (China Patent publication no. 101286469 “Structure for avoiding gap development and plasma processing apparatus”) has disclosed that replaceable parts this kind of as O-rings can be employed for the sealing part.
The Viewpoint of the IP Court docket and TIPO
1. Numerical promises in the ‘920 patent lack ingenious steps
Promises 3, 4, 7, 8 and 13 in the ‘920 patent have further more confined the array of ratio values which are not disclosed by the displays. Nevertheless, TIPO and the IP Court docket considered that TSMC did not demonstrate that the assortment of ratio values would create unexpected benefits as opposed to other ratio values, and the array of ratios minimal in claims 3, 4, 7 and 8 of the ‘920 patent could be conveniently achieved by a particular person with regular information in the artwork by very simple variations in plan do the job underneath the true configuration of grooves and O-rings. Hence, claims 3, 4, 7, 8 and 13 in the ‘920 patent deficiency an creative step.
2. The ‘920 patent is not commercially productive
TSMC claimed that the ‘920 patent was commercially prosperous and shall be non-evident.
However, the IP court docket held that the applicant should really not only demonstrate that its income figures of the patented products were better than those people of identical products or that it had exceptional market place-share or replaced competitors’ solutions, but shall also bear the burden of proof that the professional good results of the patented merchandise was thanks to the complex attributes of the patent. The IP court eventually rejected TSMC’s argument as it failed to confirm the causal partnership among the commercial results and the complex characteristics of the ‘920 patent.
3. Exhibit 2 does not “teach away” from the ‘920 patent
TSMC argued that protecting factor 105 in Exhibit 2 is rigid, which is conceptually and physically the opposite to the flexible “O-ring” applied in the ‘920 patent, and “teaches away” from the reported patent.
Nevertheless, the Court considered that an exhibit only “teaches away” if it expressly states or substantively indicates instruction or recommendation on the exclusion of the claimed invention. The use of Teflon resin or ceramic product for the protecting element in Exhibit 2 was based on the corrosion resistance of these products, not on the hardness or elasticity of the Teflon resin or ceramic materials. Show 2 did not disclose that alternative materials other than rigid products may perhaps not be employed for the protecting element, nor did it disclose that the protecting element utilized in Show 2 must exclude elements with elasticity. Therefore, there is no specialized problem or incompatibility in replacing the protective ingredient organized in the groove of Exhibit 2 with a adaptable O-ring disclosed in Exhibits 3 and 5, and Show 2 does not “teach away” from the ‘920 patent.
Wisdom Wisdom Recommended Approaches
Despite the fact that TSMC launched numerical options in quite a few claims in the ‘920 patent, it did not supply embodiments or comparative examples in the specification to exhibit that the numerical attributes without a doubt deliver surprising final results more than the prior art.
In conditions of approach during litigation, TSMC concentrated only on arguing the enthusiasm to merge the displays and failed to supply even more convincing experimental knowledge on the numerical claims to confirm their unanticipated efficacy, which eventually led to defeat.
In reality, in accordance to the Taiwan Patent Examination Recommendations and past courtroom decisions, the patent applicant is allowed to give experimental facts immediately after the submitting date as supplementary information to demonstrate its inventive phase, furnished that the effect to be proved by the experimental info is recited in the authentic specification or drawings, or the impact is immediately and unambiguously derivable2 . As a result, if TSMC could dietary supplement experimental knowledge in the course of the litigation, it would be achievable to make certain the inventive phase of the numerical statements.
Candidates wishing to assert numerical ranges are recommended to incorporate enough experimental data in the specification to help its efficacy, or at the very least explain the result that can be generated from the numerical aspect to safe a prospect at arguing for the ingenious phase with supplementary experimental info.