[2] In a trial to confirm the scope of a right, whether the challenged invention does not fall under the scope of a patent right without the need to comparison with the patented invention in a case where the challenged invention is a so-called free-to-work technology (affirmative), and whether the aforementioned legal principle applies to a case where the challenged invention constitutes infringement of the so

Therefore, even if the nonobviousness of a patent invention is denied except where the patented invention is an publicly known art, the validity of a patent registered in a trial to confirm the scope of the right cannot be denied as a matter of course.

[2] In a trial to confirm the scope of a right, where an invention subject to confirmation, compared to a patent invention, has been made only with an publicly known technology, and where a person with ordinary knowledge in the art can easily practice the invention from an publicly known technology, it shall be deemed that it does not fall under the scope of a patent right without any need to compared with the patent invention as an publicly known technology. In such a way, without directly determining the invalidity of the patent invention, a prompt and reasonable dispute resolution may be sought by determining whether the invention subject to confirmation falls under the scope

In light of the nature, function, and comparison of the legal principles on free implementation technology, the above legal principles are generally applied when determining whether a patent infringement was committed. As a result, the foregoing legal doctrine applies to an invention subject to confirmation, which constitutes a literal infringement, that is, where the challenged invention has an organic combination relationship with all elements indicated in the patent invention claims.

1. The Patent Act separately provides for a trial to confirm the scope of a patent and a trial to invalidate a patent. A trial to confirm whether a challenged invention, which is the subject matter of a trial, falls under the scope of a registered patent (Article 135 of the Patent Act). A trial to invalidate a patent is final and conclusive after a trial to invalidate a registered patent becomes final and conclusive (Article 133 of the Patent Act). Even in a case where there are grounds for invalidation due to lack of non-obviousness, a trial to invalidate a patent cannot be determined on the premise that the patent is null and void in other proceedings unless there are special circumstances. Determination of the inventiveness of a patent in a trial to confirm the scope of a patent as a procedure to determine the scope of a patent right does not only deviate from the scope of a trial to confirm the scope of a patent right, but also accords with the determination of a trial to confirm the scope of a patent that falls under the function of the original trial to invalidate the patent, and thus does not coincide with the allocation of functions among the two trials (see Supreme Court en banc Decision 2012Hu4162, Mar.

Therefore, even where the nonobviousness of a patent invention is denied except where the patented invention is an known art, the validity of the patent right registered in a trial to confirm the scope of the right cannot be denied as a matter of course (see, e.g., Supreme Court en banc Decision 81Hu56, Jul. 26, 1983; Supreme Court Decision 97Hu2095, Oct. 27, 1998; Supreme Court Decision 2000Hu235, Jun. 14, 2002; Supreme Court en banc Decision 2012Hu4162, Jun. 14, 2002).

However, in a trial to confirm the scope of a patent right, where an invention subject to confirmation, compared to a patent invention, consists solely of publicly known technologies, and where a person with ordinary knowledge in the technical field can easily implement the invention from publicly known technologies, it shall be deemed that the invention does not fall within the scope of a patent right without any need to comparison with the patent invention (see, e.g., Supreme Court Decision 9Hu710, Oct. 30, 2001). In such a way, without directly determining the invalidity of the patent right, a prompt and reasonable dispute resolution may be sought by determining whether the invention subject to confirmation falls within the scope of a patent right of the patent invention by

In light of the nature, function, and comparison of the legal principles on free implementation technology, the above legal principles are generally applied when determining whether a patent infringement was committed. As a result, the foregoing legal doctrine applies to an invention subject to confirmation, which constitutes a literal infringement, that is, where the challenged invention has an organic combination relationship with all elements indicated in the patent invention claims.

2. Nevertheless, the lower court rejected the Defendant’s assertion of free working technology without determining whether the challenged invention is a free working technology in relation to the claim No. 1 of the instant patent invention (patent number omitted) on the ground that the said invention does not apply to the case where the challenged invention infringes on the right scope of the patent invention. In so doing, the lower court erred by misapprehending the legal doctrine on free working technology, which led to failure to exhaust all necessary deliberations

3. Without examining the remaining grounds of appeal, the part of the judgment below against the Defendants is reversed, and the case is remanded to the court below for further proceedings consistent with this Opinion. It is so decided as per Disposition by the assent of all participating Justices on the bench.

Justices Kim Chang-suk (Presiding Justice)