Toshiba Won at the Second Instance of the Patent Lawsuit against Infodisc

Toshiba Corporation sued a Taiwan-based optical disk manufacturer, Infodisc Technology Co., Ltd. (hereinafter “Infodisc”) over alleged infringement upon its patent right for optical disk and sought Infodisc’s payment in damages.  The Taiwan IP Court decided against Infodisc and awarded Toshiba TWD5,894,772 and interest thereof in damages to be paid severally and jointly by Infodisc and its legal representative CHEN Bi-Hua.  Both parties appealed this decision, and the IP Court passed a judgment at the second instance to the effect that Infodisc and CHEN Bi-Hua should pay to Toshiba in damages in the amount of TWD66,559,362 and interest thereof.  The case is appealable. 

According to the IP Court judgment, Toshiba owns and holds the Taiwanese invention patent No. 098207 with the title “optical disk having an evaluation pattern for evaluating the optical disk”, and the patent term thereof starts from November 1, 1998 and expires on April 11, 2016 (hereinafter the “subject patent”).  Toshiba (the authorized licensor of DVD 6C Licensing Group) and Infodisc entered into a patent licensing agreement on March 27, 2002, by which Infodisc had access to the DVD-ROM manufacturing technology.  With the termination of the said agreement on April 15, 2010, Infodisc did not stop, but instead continued, manufacturing DVD-ROM.  Toshiba filed a lawsuit of patent infringement against Infodisc, alleging that the DVD-ROM of original soundtrack of a famous TV drama made by Infodisc fell into the scope of claim 1, 3, 6, and 7 of the subject patent.  The Taiwan IP Court later confirmed the allegation and therefore established occurrence of Infodisc’s patent infringement upon Toshiba’s patent right for the subject patent. 

The IP Court calculated and assessed the damages to be TWD36,227,067 in accordance with subparagraph 2 of the first paragraph of Article 85 of the pre-amendment Patent Act.  Besides, Infodisc’s infringement does not fall into the circumstances where the maximum triple punitive damages should be imposed.  After looking into every aspect of this case, the IP Court decided that the damages claimable by Toshiba should be in an amount two times as much as the assessed damages of TWD36,227,067, which is TWD72,454,134. 

In addition, Infodisc and CHEN Bi-Hua shall severally and jointly pay in damages in the amount of TWD66,559,362 (TWD72,454,134 - TWD5,894,772) and the interest thereof accrued at the rate of 5% per annum from June 4, 2011 to the day when Infodisc makes the full payment.  The IP Court held that Toshiba’s above request was well-grounded and therefore granted the request, while Toshiba’s other additional claims were dismissed.  Infodisc and CHEN Bi-Hua’s appeal was also dismissed.  (March 2014)
/CCS