I. Introduction
In recent years, Taiwan Intellectual Property and Commercial Court (IPCC hereinafter) has progressively refined the analytical threshold for inventive step in utility model patents. Among these developments, the 2023 Xing Juan Hsu Zi No. 42 administrative judgment (rendered on May 4, 2023) on Utility Model Patent No. M499418 title “Continuous Synchronous Coating Device” stands as a seminal precedent.
The case addressed whether the challenged Utility Model Patent No. M499418 possessed inventive step over a prior “double-sided coating apparatus” disclosed in Evidence item 6 submitted by the petitioner, and whether the patentee’s earlier disclosure in another invention patent (Invention Patent No. I513840 “Multi-Layer Film Mass-Production Method”) could be used as corroborative proof of “common knowledge.”
The IPCC revoked both the decisions rendered by the Taiwan Intellectual Property Office (TIPO) and the Board of Appeal of Ministry of Economic Affair (MOEA), holding that the claimed subject matter represented only a “simple modification” of commonly known technology and does not involve an inventive step under Article 22.II of the Patent Act which mutatis mutandis applied under Article 120 of the Patent Act.
 
In this case, how “common knowledge” may fill gaps in prior art and how a patentee’s own prior statements can be probative evidence is clarified. This judgment synthesizes the related jurisprudence to evaluate the evolving contours of the assessment of inventive-step in Taiwan practices.
 
II. Procedural and Factual Background
1. Case Overview

• Patent at issue: Utility Model Patent No. M499418
• Title: Continuous Synchronous Coating Device
• Applicant/Patentee: Ling Jia Technology
• Petitioner: Uwell Technology
• Filing Date: January 21, 2015
• Grant Date: February 24, 2015
• Decision rendered by the TIPO on March 3, 2022: Invalidation dismissed — inventive step affirmed
• Administrative Appeal (July 13, 2022): Appeal dismissed
• IPCC Decision (May 4, 2023): Both prior decisions shall be revoked; patent to be invalidated

The IPCC accepted new documentary evidence (new Evidence item 3) introduced during litigation stage, based on Article 33.I of the Intellectual Property Case Adjudication Act, which allows supplementary evidence relating to the same legal ground (lack of inventive step).
 
2. The Claimed Invention
The patented device comprising:

• A vacuum chamber with n coating zones and (n+1) buffer zones arranged alternately in series;
• Cathode sputtering targets corresponding to each coating zone;
• Multiple carriers, each holding one workpiece, capable of moving between coating and buffer zones; and
• A continuous transport mechanism enabling synchronized coating processes.

The feature alleged to be novel was that each carrier could move reciprocally between adjacent coating and buffer zones while performing coating operations, i.e., the so-called “synchronous back-and-forth transport.”
 
III. Issues in Dispute
The litigation revolved around two principal questions:

1. Whether Evidence item 6, alone or in combination with other references, sufficiently disclosed or rendered obvious the claimed structure and movement of the carriers; and
2. Whether the feature of reciprocal motion between coating and buffer zones provided a technical advance or merely represented a predictable adjustment by a person having ordinary skill in the art.

 
IV. Parties’ Positions
1. Plaintiff (Uwell Technology)
Uwell argued that Evidence item 6 already disclosed a double-sided coating apparatus having multiple sequential buffer and deposition zones, cathode targets, and a transport system moving multiple substrates.
The only difference is that the ability of each carrier to reciprocate between zones. However, in Uwell’s view, an obvious optimization for improving coating uniformity. The plaintiff further cited Evidence item 7 (a substrate sputtering device) and Evidence item 2 (a multi-chamber system), along with new evidence 3, to demonstrate that such reciprocal or repeated motion was known in the art.
 
The plaintiff emphasized that even the patentee’s own prior invention, I513840, admitted in its “Background Art” section of the specification that it was common to move substrates repeatedly beneath sputtering targets for multilayer film uniformity. Thus, the claimed structure does not involve and inventive step.
2. Defendant (TIPO) and Intervenor (Ling Jia Technology)
The TIPO and Ling Jia maintained the following opinions:

• Evidence item 6 showed only a unidirectional sequence of chambers and did not disclose reciprocal movement.
• The apparatus in Evidence item 6 was designed for double-sided coating, making the introduction of carriers impractical since carriers would obstruct deposition on the contact surface.
• No motivation existed for a person having ordinary skill in the art to modify a double-sided coating device to operate with carriers moving back and forth.
• Therefore, the claimed feature was non-obvious and contributed to a technical improvement.

They further cited a separate Court ruling (2022 Xing Juan Hsu Zi No. 49 administrative judgment) concerning the patentee’s Invention Patent No. I513840, which had assessed the inventive step of the invention. The defendant argued that the same reasoning should apply here. V. The Court’s Analysis
1. Applicable Law
Because the patent at issue was filed in 2015, the applicable patent law shall be the version of the Patent Act announced on 2013 (effective on March 24, 2014). Based on Article 22.II of the Patent Act which mutatis mutandis applied under Article 120 of the Patent Act, a utility model is unpatentable if it “can be easily accomplished by a person having ordinary skill in the art based on prior art.”
2. Evaluation of Evidence item 6
The IPCC described Evidence item 6 has disclosed:

• A process chamber (4) containing multiple spaces: first buffer (41), first deposition (42), third buffer (45), second deposition (43), and second buffer (44).
• Sputtering targets (423, 433) in each deposition space.
• Transport system (7) conveying multiple workpieces through these zones.
• The use of deposition jigs to hold workpieces.

Based on the foregoing disclosures, the IPCC concluded that the only differences between the patent at issue and Evidence item 6 were:

1. The chamber was not explicitly described as “vacuum,” and
2. Reciprocal motion of carriers between coating and buffer zones was not explicitly disclosed.

Both, however, were found to be hinted by the prior art or be obvious to a person having ordinary skill in the art.
3. “Vacuum Chamber” as Disclosed
The IPCC observed that deposition and sputtering are inherently conducted under vacuum, a matter of routine-work knowledge. The omission of the word “vacuum” did not distinguish the claimed invention from the prior art.
 
4. Reciprocal Motion as Common Knowledge
The IPCC held that repeated or oscillating movement of substrates to achieve uniform film thickness was widely known in the coating industry prior to 2015.
Importantly, the IPCC relied on the patentee’s Invention Patent No. I513840 patent, which expressly stated:
“…for uniform multilayer coating, the workpiece must pass beneath the sputtering targets multiple times during mass production.”
This self-admission demonstrated that such motion was ordinary practice.
Thus, adapting the disclosures in Evidence item 6 to allow back-and-forth carrier movement represented nothing more than a predictable optimization within the capability of a person having ordinary skill in the art.
5. Rejection of the “Double-Sided Coating” Argument
The IPCC disagreed that introducing carriers would defeat the function of a double-sided coating device. Evidence item 6 already mentioned the fixtures, which could be designed to flip or expose both sides of a substrate. Therefore, the alleged incompatibility was not persuasive.
 
6. Distinction from Invention Patent No. I513840
Although the earlier Invention Patent No. I513840 had been upheld as inventive, the IPCC emphasized that the present case concerned a different claim type (apparatus, not process) and different claim scope. The prior decision thus shall not be applied.
 
7. Conclusion on Inventive Step
Because all the technical features as claimed could be derived from Evidence item 6 and common knowledge, and because the claimed creation does not have an unexpected technical effect, the IPCC deemed that claims 1–10 of the patent at issue shall be obvious.
 
Accordingly, the IPCC has the following opinions:

• The decisions rendered by the TIPO and the Board of Appeal of the MOEA shall be revoked.
• TIPO was ordered to issue a new decision declaring the invalidation of the patent at issue.

VI. Insights from the judgment
The IPCC’s internal commentary provides several clarifying insights beyond the text of the judgment.
1. “Simple Modification” as the Core Analytical Tool
To define simple modification as occurring when a skilled person, using ordinary knowledge on or before the filing date, can modify a single prior art reference by routine design changes—adjusting, replacing, omitting, or re-arranging elements—to achieve the claimed invention.
The IPCC thus views “simple modification” as a subset of obviousness, not requiring explicit motivation to combine multiple references. This doctrinal stance effectively lowers the inventive-step threshold for utility models, emphasizing functionality over formality.
 
2. The Role of the Patentee’s Own Prior Art
Although Invention Patent No. I513840 was published after the filing date of the patent at issue, it was admissible as evidence of common knowledge because the patentee had drafted it before the filing date. It should be noted that a patentee’s own prior statements in patent applications may serve as proof of the general state of technology existing at the time of filing.
This approach introduces a quasi-“admission doctrine” in patent analysis: once a patentee has acknowledged certain techniques as conventional, such acknowledgments can be used against them in later cases.
 
If the difference between the claimed invention and a single prior art reference can be eliminated through a simple, routine modification aimed at improving performance (e.g., thickness or uniformity), inventive step should be denied.
It also encourages TIPO and litigants to consider the technical purpose and expected results when assessing the inventive step of the claimed invention or creation.
 
VII. Doctrinal and Practical Implications
1. Reinforcement of the “Common Knowledge” Doctrine
This case reinforces the view that common known technology can bridge gaps in explicit disclosure. The Court no longer requires that every claim element be expressly taught in a reference; it suffices if a person having ordinary skill in the art could fill the gap through ordinary understanding.
This harmonizes Taiwan’s approach with post-KSR jurisprudence in the United States, which treats predictability as the touchstone of obviousness.
 
2. Expansion of Functional Interpretation
By equating “deposition fixture” with “carrier,” the IPCC adopted a functional-equivalence approach to claim interpretation. This approach broadens the reach of prior art and signals that terminological differences will not shield a patent from invalidation if the underlying function is identical.
 
3. Evidentiary Innovation: Admissions as Common Knowledge
Using the patentee’s own earlier disclosure as evidence of common knowledge represents a doctrinal innovation. It mitigates the difficulty of proving what constitutes “ordinary knowledge” by relying on the patentee’s own technical admissions. This practice may shape future invalidation cases where formal documentation of common practice is scarce.
 
4. Tightening the Utility Model Threshold
The Court’s reasoning suggests that the inventive-step bar for utility models continues to converge toward that for invention patents, at least in mechanical and electromechanical fields. The applicant of utility model patent application shall now demonstrate not only structural novelty but also non-obvious functional advancement beyond mere rearrangements or expected optimizations.
 
5. Alignment with Recent Jurisprudence
This case echoes reasoning found in previous Supreme Administrative Court, emphasizing that when the modification of prior art would be easily conceived by a person having ordinary skill in the art to achieve an expected technical effect, inventive step shall be denied.
Together, these cases depict a coherent doctrinal trend:
The focus has shifted from whether prior art literally discloses each element to whether a skilled person would find the claimed modification technically predictable.