[2] Method of determining the scope of protection of a patented invention

[3] In a case where Gap corporation sought a patent infringement prohibition against Eul corporation based on the patent right of a patented invention named "a tool forming joints on the bones of sea-shaped shape", the case holding that the court below erred by misapprehending legal principles in holding that the above claim does not constitute an abuse of right

1. Even before a final and conclusive trial decision on invalidation of a patented invention becomes final and conclusive, where the non-obviousness of the patented invention is denied and it is evident that the patent will be invalidated by a trial on invalidation of the patent, a claim for prohibition of infringement or compensation for damages based on the patent right shall not be allowed as it constitutes an abuse of right unless there are special circumstances. In a case where a patent holder’s claim constitutes an abuse of right, a court in charge of patent infringement lawsuit may examine and determine whether the patent invention is inventive (see Supreme Court en banc Decision 2010Da95390, Jan. 19, 2012) on the premise that the patent holder’s claim constitutes an abuse of right (see Supreme Court Decision 2010Da95390, Jan. 19, 201). Meanwhile, the scope of protection of the patented invention is determined by the matters described in the claim(s). However, in principle, if the technical composition of the patented invention is not known or it is difficult to determine the technical scope, it is not permitted to expand the scope of claims based on another description(s).

2. In light of the above legal principles, it is apparent that the nonobviousness of the claim(1) through (5) and (7) of the patented invention(patent No. 79305) of this case (patent registration number No. 79305) of the patent invention of this case is denied and the patent will be invalidated, and it is obvious that the patent will be invalidated. Accordingly, it is examined in light of the record as to whether the plaintiff’s successor’s prohibition of patent infringement and the claim for the disposal of the patent infringement products and their production facilities based on the patent right of this invention constituted abuse of rights.

A. It is interpreted that the “tamper inserted in a way that can be deducted from the 2nd mentor of the Pib” as part of the original adjudication of the instant Claim No. 1 refers to the search of metal style that supports the cromen by inserting the cromen in a way that can be deducted from the 2nd mentor of the cromen in the cromen. In addition, in light of the fact that the cromene is indicated as the 1st mentor of the cromen’s cromen in the cromen’s veromen’s veromen’s veromen’s veromen’s veromen’s veromen’s veromen’s veromen’s veromen’s veromen’s veromen’s veromen’s veromen’s veromen’s veromen’s veromen’s veromen’s veromen’s veromen’s vemen’s vemen’s ve.

Then, if a person having ordinary knowledge in the technical field to which the patented invention in this case pertains (hereinafter “ordinary technician”), the composition of the composition is clearly recognizable only by the description itself based on the technical formula as at the time of the priority claim. Thus, it cannot be deemed that it is limited to the form of extension by the end part of the search inquiry, one of the constituent parts of the detailed description, such as the drawing, etc., of a wide range of structure, or to the degree that it can overcome the resistance from the bones of the shape, or to the operation of the procedure division by integrating with an expanded structure.

B. On the premise of the aforementioned determination, in comparison with the cited invention 1 invention and the cited invention 2 in the original judgment, the instant Claim 1 invention differs on the part of the person who jointly forms the bones, and the comparable invention 2 differs on the part of the subject of the application in that comparable invention 2 is about the tool to expand the body of the bloodline, etc., but the carter equipped with the expansion equipment can be applied on the various parts of the body. However, in the specification of the comparable invention 4 related to the “outstanding device related to the treatment of the bones which is aggravated or ill,” the “outboard art” column of the “outboard invention” is indicated as a prior art and it seems that there is no particular difficulty in its technical composition. Accordingly, the comparable invention 2 can be deemed as prior art for the determination of inventive step of the instant Claim 1 invention.

However, the composition of the Claim No. 1 invention of this case (1) (1), (4) the same composition as the comparable invention No. 2, and (2) the composition of the structure that is flicked Invention No. 2, should be made of materials to the extent that they can withstanding in the math or in the heat, etc. caused by contact with the bones of the shape on the surface of the sea, as seen earlier. However, the structure that is flicked Invention No. 2, which is the response structure of comparable inventions 2, the same structure and form and function, are in contact with the blood inner wall, and there is no difference in the material aspect, such as the structure that is flickable structure, and the thickness of the flicked Invention No. 2, but such difference is merely a degree that a person with ordinary skills can easily change the body above the body where the aforementioned tool is applied without any technical difficulty.

Furthermore, the composition of the instant Claim No. 1 invention also differs in terms of the composition, form, and function of the “dyer (42) inserted into the 2ndmen (12)” of comparable inventions 2 corresponding thereto. However, there is a difference in the materials arising from the difference in the structure, form, and function of the “dyer (42)” as well as the material quality of the syptive structure and wind sypt (4) and the point of the body part developed therefrom. However, in the foregoing purport, the composition of the instant Claim No. 1 invention is merely a part that can be easily derived from the corresponding composition of

Thus, since the invention of the instant Claim No. 1 can easily be made by a person with ordinary skills from comparable inventions 2, it is evident that the patent will be invalidated due to the denial of inventive step, and thus, the claim for prohibition of patent infringement based on the patent right is not allowed as it constitutes an abuse of rights. Meanwhile, insofar as it is evident that the patent will be invalidated due to the denial of inventive step of the instant Claim No. 1 invention, the inventive step of the instant Claim No. 2 through 5 and the instant Claim No. 7, which add and limit some elements, cannot be viewed as a matter of course, since the inventive step of the instant Claim No. 1 invention, including the added and limited elements, is denied, and it is evident that the patent will be invalidated due to the denial of inventive step

C. Nevertheless, the court below interpreted that the composition of Paragraph (1) invention of this case (3) invention of this case is abstract, and it is difficult to specifically determine the search structure solely with the description of the claim(s) of this case. It limited that "the plaintiff's claim based on the patent right of this case was inserted in the specification of the patent invention(s) of this case so that it can be deducted in the second garment of Kameb, its end is extended to the top of a remote structure, and its end is strong enough to overcome the resistance from the bones of the shape(s) and is combined with the influent structure(86) so that it can overcome the resistance of the claim(s) invention of this case." On this premise, the inventive step of Paragraph (1) invention of this case is not denied by the cited invention(s) of this case(s) through (5) and (7) invention of this case. Thus, the plaintiff's claim for prohibition of patent infringement based on the patent right of this case does not constitute an abuse of rights. The court below erred in the misapprehension of legal principles as to the judgment.

3. Therefore, without examining the remaining grounds of appeal, the judgment of the court below is reversed, and the case is remanded to the court below for a new trial and determination. It is so decided as per Disposition by the assent of all participating Justices on the bench

Justices Jeon Soo-ahn (Presiding Justice)