AUO Beats TIPO in a Patent Lawsuit.

By citing US patent, TIPO determined that AU Optronics’ LCD-related application for an invention patent titled “the contact pad that can prevent oxidation on the surface and the manufacturing process thereof” lacks inventive steps and thus disapproved its application.  The Taiwan IP Court (hereinafter “IP Court”), however, decided in favor of AUO by reasoning that the US patent cited by TIPO failed to prove the lack of inventive steps of the patent claims of AUO’s present invention and requested TIPO to make an approval decision on AUO’s application.

AUO filed an application for the subject invention on July 19, 2002, and then made an amendment on July 10, 2009 with TIPO’s approval; the application includes 12 patent claims in total. 

It is noticeable that TIPO in the examination process did not find nor provide unpatentable grounds with respect to claim 1~3 and claim 7~12 of AUO’s subject application, and simply negated the inventive steps of the present invention on the ground that claim 4~6 of AUO’s subject application violated the fourth paragraph of Article 22 of the Taiwan Patent Act with a “Prior Art 1” as supporting evidence.

Claim 4 of AUO’s subject application indicated that “a manufacturing process of an organic light-emitting diodes LCD that is able to prevent metal pads from oxidation”.

The “Prior Art 1” cited by the TIPO is a US patent No. US5757058 laid open on May 26, 2008.  According to the drawing of the “Prior Art 1”, the contact pad comprises a metal layer and an indium tin oxide (ITO) layer and the ITO layer on the surface of the metal layer can avoid oxidation of the metal layer.

Based on the detailed elucidation provided by AUO’s retained patent attorney, the court conducted investigation on this case, finding that the technical features of AUO’s subject application are relating to a pad for preventing oxidation on the surface and the process thereof.  First, metal pad defined on the upper surface of transparent substrate provides paths of electrical connection for each part on the transparent substrate. 

Then, tin indium oxide pixel electrodes are defined on the surface of part of the transparent substrate as well as the tin indium oxide protective layer is defined on the surface of the metal pad.  The tin indium oxide protective layer prevents the metal pad from oxidation so as to lower conduction effect.

With respect to the TIPO’s disapproval ground that AUO’s present invention lacks inventive steps, the IP Court negates such a ground and states in the written judgment that the Prior Art 1 does not prove the lack of inventive steps in regard to claim 4 of the present invention, and the TIPO had once confirmed and recognized the inventive steps of claim 7 of AUO’s present invention in an office action, which points out that the TIPO’s disapproval decision is inappropriate by providing inconsistent opinions.  (2010.09)

Docket Number:  IP Court (99) Xing-Zhuan-Su-Zi No. 54
/CCS