Summary of Patent Infringement Assessment Report
With respect to whether Everlight's No. 99-115UWC/XXX/TR8 light-emitting diode (LED) product (hereinafter referred to as the "Accused Product") infringes Taiwan New Design Patent No. 089,036 (hereinafter referred to as the "036 Patent") owned by our company, we entrusted an expert in the field of design patent infringement assessment to conduct an assessment and draft a report. The results of the assessment show that Everlight's No. 99-115UWC/XXX/TR8 LED infringes the 036 Patent. In the process of conducting the assessment, the primary tasks were to judge "whether the Accused Product is the identical or similar category of article disclosed in 036 Patent," "whether the overall visual design is identical or similar between the Accused Product and 036 Patent" and "whether the Accused Product includes the points of novelty of 036 Patent." A summary of the report of the assessment follows:
1.Whether the Accused Product is in the identical or similar category of article disclosed in the 036 Patent:
Both the Accused Product and 036 Patent are directed to LEDs; thus, there is no doubt that they belong to the same category of article.
2.Whether the overall visual design of the Accused Product and 036 Patent is identical or similar:
After an overall comparison between the Accused Product and 036 Patent, it is found that the main bodies (1) and (1') are similar, and the left and right sides are symmetrical. Each of the main bodies can be divided into a front and a rear part, and the front parts (11) and (11') are generally flat and straight, whereas the rear parts (12) and (12') are in a trapezoidal shape. The front sides of the main bodies are provided with a window (4) and (4') respectively, the width of which is about two thirds of that of the front parts (11) and (11'), and form a trapezoidal shape (2) and (2') respectively on the bottom side in the central section. The mid-section of the rear part also includes an indentation recessed from both sides of the mid-section in an oblique way and forms a straight section. Both sides of the main body include L-shaped plates (3) and (3'), which are identical with regard to their proportion and orientation. Therefore, it is considered that the Accused Product and 036 Patent are extremely similar in overall configuration. The differences between the Accused Product and 036 Patent appear negligible with respect to the overall design, and do not cause any significant visual disparity and any variation in profile. Therefore, all these partial modifications cannot change the conclusion that their overall appearances are similar in visual effect.
3.Whether the Accused Product includes the points of novelty of the 036 Patent:
Similarity in the overall configuration is not sufficient to conclude that an accused product falls into the scope defined in the claim of a patent. It should be further considered whether all of the similar parts appropriate the points of novelty of the new design patent, that is, whether the Accused Product includes all the points of novelty of the 036 Patent. The so-called points of novelty must not be: (1) purely functional designs and (2) those features found in the prior art. Although the creative features of the 036 Patent are described in the specification of the 036 Patent, they should be further verified through the prior art search.
(1)Purely functional design in the 036 Patent
Through checking Japanese prior art materials provided by the patentee and Taiwanese prior art materials identified by the expert, it is found that the components forming the LED, i.e., the main body (1) and L-shaped plate (3), may have diverse designs. Accordingly, each of the components in the 036 Patent can be freely designed with creative ideas. Thus, there is no component in the 036 Patent which is directed to purely functional design. The only component which may barely be considered as having a purely functional design is the light-emitting dice (or chip) embedded and sealed in the window (4). However, since the chip is hidden in the interior of the main body (1) and does not affect the appearance or profile of the LED article, it is an invisible part which is of no concern in the design patent infringement assessment.
(2)Prior art design in the 036 Patent
After the prior art search, the design of the window (4) located in the front side of the main body (4) is considered as a prior art. For example, Japanese Design Patent Publication No. 1,077,515, published on 4 July 2000, has shown a similar window. Therefore, the window alone should be excluded from the points of novelty of the design. As to the trapezoidal shape of the rear part (12) of the main body and the trapezoidal indentation (5) recessed inwardly from the rear part, there are also similar features found in the prior art. For example, the aforesaid Japanese Design Patent Publication No. 1,077,515, Japanese Design Patent Publication No. 984,224 published on 11 July 1997, and Japanese Associated Design Patent Publication No. 984,224-1 published on 15 October 1997 have shown such features. Therefore, the configuration of this section alone should be excluded from the points of novelty of the design.
(3)Points of novelty of the 036 Patent
Concerning the main body (1) in combination with the L-shaped plate (3) extending rearwards from both sides of the main body, no identical or similar configuration is found in the prior art. Therefore, in an overall view, the aspect constituted by the configurational elements, the proportion, and the orientation is one of the points of novelty. After comparing the 036 Patent with the Accused Product, it was found that the L-shaped plates (3) and (3') of both designs alone are very similar in configurational elements, proportion, and orientation, and are identical in the way they are connected to both sides of the main body (1) and (1'). A barely different feature is the arced-shape (10') modification on the outside of the vertical plate of the L-shaped plate (3'). Such arced-shape (10') modification on the L-shaped plate (3') is too tiny, and cannot be identified by naked eyes, and thus is of no concern in the assessment. Even though it is considered as a recognizable part, such minor arced modification will not render the entire L-shaped plate (3') dissimilar to its counterpart in the 036 Patent in regard to the visual effect, namely, it will not depart from the scope of similarity to the L-shaped plate (3) of the 036 Patent.
In conclusion, the overall appearance of the Accused Product is similar to the shape of the 036 Patent, and the part which contributes to this similarity, that is, the L-shaped plate (3'), also appropriates the point of novelty of the 036 Patent. Therefore, the Accused Product has fallen into the scope of the claim of the 036 Patent.
Public Relations, Nichia Corporation