[등록무효(특)][공2009상,171]
[1] In a case where a request for correction is made in a patent invalidation trial, whether the time when the correction becomes final and conclusive and whether the correction is permitted should be determined collectively (affirmative)
[2] Where the judgment of the court below which revoked correction of the scope of claims and dismissed a trial decision dismissing a request for invalidation trial under paragraphs (1) through (5) of the scope of claims, where only the appeal as to the invalidation of claims under paragraph (3) of the scope of claims is justified and the correction is extended to the entire scope of claims, the case holding that
[1] Where a request for correction is made in a trial for invalidation of a patent, the issue of whether to grant a correction is deliberated together with the decision-making procedure for invalidation trial. Thus, unlike the case of a request for an independent trial for correction, it shall be finalized at the time the decision of invalidation becomes final and conclusive, not with the case of a request for an independent trial for correction. On the other hand, the determination of invalidation of a patent shall be made in an indivisible relationship
[2] In a case where the court below's decision that recognized correction of the scope of claims and dismissed a trial decision dismissing a request for invalidation trial under paragraphs (1) through (5), where only the appeal as to the invalidation of claims under paragraph (3) of the scope of claims is justified and the correction is extended to the entire scope of claims, the case holding that the court below'
[1] Article 133-2 of the Patent Act / [2] Article 133-2 of the Patent Act
[1] Supreme Court Decision 2006Hu2912 Decided June 26, 2008 (Gong2008Ha, 1087)
Plaintiff (Patent Firm Han-mun et al., Counsel for the plaintiff-appellant-appellee)
Defendant 1 and one other (Patent Attorney Lee Jong-hoon et al., Counsel for the defendant-appellant)
Patent Court Decision 2006Heo5737 Decided January 18, 2007
The judgment below is reversed, and the case is remanded to the Patent Court.
The grounds of appeal are examined (to the extent of supplement in case of supplemental appellate briefs not timely filed).
1. Regarding ground of appeal No. 1
A. Inasmuch as the scope of a claim for the invention of a product is specified by the method of directly specifying the composition of the product, barring special circumstances, the scope of the claim for the invention of a product shall be compared to the invention publicly notified before the application, in determining the inventive step of the invention, unless there are special circumstances such as the manufacturing method only by the manufacturing method, unless there exist special circumstances such as the manufacturing method. (See Supreme Court Decision 2004Hu3416 delivered on June 29, 2006, etc.).
B. Examining the reasoning of the judgment below in light of the above legal principles and the records, the court below is just in comparing only the goods obtained by the method with the cited inventions in the judgment of the court below without considering the manufacturing method itself, "the manufacturing method of "the internal, middle and external floors are dried up and formed" as stated in the claim(s) of the patented invention(patent No. 290302) of this case(patent No. 290302), which is the subject of the claim(s) correction claim(s) of the patented invention(s) of this case(patent No. 1) of this case(patent No. 290302), and there is no difficulty in directly specifying its composition. There is no error in the misapprehension of legal principles as to the interpretation of the claim(s) as asserted in the ground of appeal.
2. Regarding ground of appeal No. 2
A. Whether to recognize the correction of this case
Examining the reasoning of the judgment below in light of the records, the court below is just in holding that the entire claim for correction of this case cannot be permitted without examining the inventions of paragraphs (2) through (5) of this case, which were corrected in the patent invalidation trial of this case, compared to the inventions of paragraph (1) of this case, which were corrected in the patent invalidation trial of this case, and based on its stated reasoning, the invention of paragraph (1) of this case, which was corrected for correction, can be easily combined with comparable inventions, and its inventive step is denied, and thus, the claim for correction after correction, which is corrected, does not constitute an invention entitled to a patent at the time of filing a patent application. Thus, the court below did not err in the misapprehension
B. Whether the nonobviousness of the instant Claims Nos. 1, 2, 4, and 5 is denied
Examining the reasoning of the judgment below in light of the records, the court below determined to the effect that the inventive step of Paragraph 1 invention of this case, which has a wider wide range of claims, is denied unless non-obviousness exists in the invention of Claim 1 of this case as corrected by the court below, and the court below also compared the inventions of Claim 2, 4, 5 with the comparable inventions of this case, and based on its stated reasoning, the judgment of the court below to the effect that the inventive step of Claim 2 of this case is denied because the inventions of Claim 2 of this case can easily be combined with the comparable inventions of this case and the inventions of Claim 4, 5 of this case can be combined
C. Whether the nonobviousness of the instant Claim 3 invention is denied
According to the records, paragraph (3) invention of this case is a dependent claim that limits "Nows (13) which discharges intermediate stories (3)" to "Nows (14), and (15) one side of the middle floor (3) discharged by double discharge by placing "Nows (14), 15)" among the elements of paragraph (2) invention of this case, to "poss (14)," and it does not include only the number of stories (14), (15), and (16) as the detailed description of the invention of this case in the specification of the patented invention of this case, the reason for forming two-3 spaces is that "nows (13), (14), (15), and (16) are composed of two sub-storys (3), so it does not fall under the problem of not cooling if discharged in one set, so that they can easily form a thickness and create a thickness that they want for cooling by discharging two to two-3 lines, and there is no limit to the number of stories of the cited inventions of this case."
Thus, in order to solve the above problem, paragraph 3 invention of this case has two no more than 2 know-hows of the enjoyer of the middle floor in the invention of this case, in order to separate and discharge the middle floor into 2 lines. However, if the non-obviousness of paragraph 2 invention of this case is denied by the comparison of paragraph 3 of this case, it is not easy to deny the non-obviousness of paragraph 2 invention of this case, which is a subordinate claim limiting the structure of enjoyer of the middle floor to limit the structure of enjoyer of the middle floor, among the elements of the invention of this case, so that the whole composition limiting the number and arrangement of the Nowon-gu hole can easily be easily changed or devised by a person with ordinary knowledge in the art of this case (hereinafter referred to as "ordinary technician"). Thus, it is not easy to deny the non-obviousness of paragraph 2 invention of this case.
Nevertheless, the court below held that the inventive step of the Claim No. 3 invention of this case is denied on the ground that the number and arrangement of the enjoying hole can be easily changed or applied by ordinary technicians. In this regard, the court below erred by misapprehending the legal principles on the determination of inventive step of the invention, which affected the conclusion of the judgment, and the ground of appeal pointing this out has merit.
D. Scope of reversal
Where a correction is requested in a patent invalidation trial procedure, the issue of whether the correction is recognized is examined together with the decision procedure on the invalidation trial procedure. Thus, unlike the case of a request for an independent correction trial, it shall be finalized at the time when a decision on the invalidation trial becomes final and conclusive (see Supreme Court Decision 2006Hu2912, Jun. 26, 2008). As seen above, the defendants' appeal on the correction of this case and the part on the invalidation of the invention 1, 2, 4, and 5 of this case among the judgment below is without merit. However, the part on the correction of this case as to the invalidation of the invention 3 of this case, among the judgment of the court below, shall not be reversed, unless there are special circumstances, since the correction in the invalidation trial of a patent is judged separately by claim, it shall be determined as a whole in an indivisible relationship with the part on the invalidation trial of a patent, and therefore, the correction of this case shall be reversed in whole and in part 4 of the judgment below as to the whole invention of this case.
3. Conclusion
Therefore, the entire 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.
Justices Yang Chang-soo (Presiding Justice)