A reversal of patent lawsuit between Mercedes-Benz and DEPO Auto Parts

　In the patent lawsuit filed by Mercedes-Benz Group AG (hereinafter “Mercedes Benz”) against DEPO Auto Parts Ind. Co., Ltd. (hereinafter “Depo”), the Taiwan Supreme Court recently found that the second instance judgment on this case was indeed erroneous and should be vacated, and further remanded this case back to the Taiwan Intellectual Property and Commercial Court for trial after Depo’s successive defeats in the first and second instance proceedings.  The Supreme Court’s decision provides an opportunity for Depo to reverse the situation.  

　Depo’s director, XU Xu-Ming said that the housing and base of the product in dispute are the result of design-around.  According to the Supreme Court’s holding, although the High Court indicated that an inspection had been conducted on the appearance of Depo’s product in dispute, the relevant required procedures were not fully carried out and the High Court did not provide Depo with an opportunity to engage in a debate for itself, which means that there were procedural defects existing in the proceedings.  Also, XU Xu-Ming added that according to the second-instance judgment, the reasons for determining if the product in dispute has the “double-eye” visual effects should correspond to the evidence produced by Depo for proving its product in dispute having “double-eye” effect.  This issue requires further investigation.  

　Moreover, Depo stated that they will continue presenting more evidence to challenge the validity of Mercedes Benz’s patent at issue and to prove no infringement and no Fair Trade Act violation caused by its product in dispute.  In addition to standing up for its own rights and interest, Depo simultaneously sustains its efforts to speak up for the automotive parts industry (After Market), raising the competent authority’s attention to this industry that attains an annual output value as more as TWD220 billion.  

　Mercedes Benz initiated this civil action against Depo in 2017, alleging that Depo infringed its Taiwan design patent No. D128047, titled “Headlights for Vehicles”.  With this case proceeding through 2019, a first-instance judgment was rendered against Depo to order Depo to destroy the production mould of the product in dispute, which triggered disturbance in the automotive parts industry of Taiwan.  The case moved to the second-instance proceedings at the Taiwan Intellectual Property and Commercial Court, which handed down a second-instance judgment on July 14, 2022 that affirmed the existence of infringement but reduced the award to Mercedes Benz from TWD30 million to TWD18.12 million.  Both Depo and Mercedes Benz filed appeals against the judgment.  With both sides’ appeal, this case was brought to the Supreme Court to see a turnaround situation because the Supreme Court vacated the second-instance judgment and remanded the case back to the Intellectual Property and Commercial Court for retrial on October 4, 2023.  (Released 2023.10.25)  
/CCS