Phison Electronics’ Success in Patent Lawsuit against Puu Jiuh

Taiwan IP Court entered into a judgment in favor of Phison Electronics Corp. in the action initiated between Phison Electronics Corp. (hereinafter “Phison”) and Puu Jiuh Co., Ltd. (hereinafter “Puu Jiuh”) due to patent right ownership dispute.  This case is appellable. 

According to the IP Court judgment, Puu Jiuh commissioned Phison to develop the iController product in 2010 and also issued a new project declaration to Phison on December 13, 2010.  Article 7 of the said declaration indicated that “Phison Electronics Corp. holds and owns the intellectual property right ownership in and to the copyright, trademark right, and patent right resulted from this project”.  Phison also agreed to provide Puu Jiuh with the exclusive right of selling the relevant products. 

Unexpectedly, Puu Jiuh, on December 29, 2010, filed a request with Taiwan IPO and then successfully obtained a utility model patent No. M406889 titled “remote control transmitter attached to portable touch-controlled communication device”, which is however the R&D result belonging to Phison.  Therefore, Phison initiated an action with Taiwan IP Court seeking a court order that the said patent be transferred to Phison and also an award of damages of TWD5 million be paid by Puu Jiuh to Phison according to the Taiwan Trade Secret Act. 

The IP Court granted Phison’s demand for patent right transfer and ordered Puu Jiuh to transfer the said patent right to Phison by the reasoning that Phison has tenable reason and sufficient basis to act upon the contract signed between the two companies to assert non-performance of contractual obligations, infringement, and unjustified enrichment against Puu Jiuh which held the said patent that is supposed to belong to Phison. 

However, IP Court did not grant the award of damages payment on the ground that Phison failed to produce evidence to prove that the said patent falls into the scope of and meets requirements of “trade secret” as defined by Article 2 of Taiwan Trade Secret Act.  (December 2013)
/CCS