[2] In a passive claim for a trial to confirm the scope of a patent right, the subject of a trial where the technology the claimant actually conducted is different from the specific invention in the trial

[3] The case holding that the "intermediate absence" of the claim 3 inventions of the patented invention named "X-ray generating device and static electric control machine using them" can promote heat emission because they have high heat level, and on the other hand, the "Pest absorption unit" of the invention in question can absorb them even if they receive vibration and impulses from the outside, and there are differences in its composition and action effects in its composition and action effects in that they have no heat level and electric power level, the invention in question does not fall under the scope of the right to claim 3 inventions of the patented invention of this case

1. Whether the invention in question falls under the scope of right under paragraph (1) of this Article

Inasmuch as a claim for the confirmation of the scope of a patent right is intended to determine the existing scope of the patent right, once the patent right legally created has ceased to have the benefit to seek confirmation of the scope of the patent right after the right has been extinguished (see Supreme Court Decision 2003Hu1581, Nov. 28, 2003, etc.).

According to the records, the claim 1 (Patent No. 465346) of the patented invention of this case (Patent No. 465346) named “X line generating device and static electric control machine using this)” can be known that the patent of this case was invalidated on the ground that the non-obviousness of the patent of this case was not recognized on September 24, 2009, while the lawsuit of this case was pending in the court of final appeal. Thus, the patent of this case No. 1 is deemed to have never existed from the beginning. As a result, upon the extinguishment of patent right of this case No. 1 as to the patent of this case, the part concerning the Claim No. 1 (Patent No. 465346) of the trial of this case as to the patent of this case, the part concerning the Claim No. 1 (Patent No.

Ultimately, the part of the judgment of the court below regarding the claim 1 invention of this case cannot be maintained as it is.

2. As to whether the challenged invention falls under the scope of the right to the inventions described in paragraphs 5, 8, and 11 of this case

According to the records, the defendant filed a petition for trial for correction of the part cited in the Claim Nos. 1 or the Claim Nos. 2 in the Claim Nos. 5, (8), (11) inventions of this case (hereinafter “the Claim Nos. 5, etc. of this case”) and the part cited in the Claim Nos. 2 of this case. On June 4, 2010 after the decision of the court below was rendered and the above decision of trial becomes final and conclusive at that time. Thus, the Claim No. 5 of this case, etc. of this case shall be deemed to have been filed in accordance with the specifications after correction pursuant to Article 136(9) of the former Patent Act (amended by Act No. 6411 of Feb. 3, 2001).

Therefore, the judgment of the court below that examined and determined whether the invention subject to confirmation falls under the scope of the right of the invention such as Paragraph 5 of this case before correction, etc., since there are grounds for retrial under Article 451 (1) 8 of the Civil Procedure Act, there is a violation of law that affected the judgment.

The ground of appeal pointing this out is with merit.

3. As to whether the challenged invention falls under the scope of the rights of the remaining claims

A. As to whether the challenged invention is a free-to-work technology

Upon examining the record, the court below's determination that the challenged invention does not constitute a free-to-be technology that can easily be claimed from comparable inventions 4 through 6 as stated in the judgment below is just and acceptable, and contrary to the allegations in the grounds of appeal, there are no errors in the misapprehension of legal principles as to the judgment of free-to-

B. As to whether the challenged invention falls under the scope of the right to claim 2 of this case

기록에 비추어 살펴보면 다음을 인정할 수 있다. 즉 이 사건 제2항 발명과 확인대상발명은 모두 소형의 X-선 발생장치에 관한 것으로 그 기술분야가 동일하고, X-선 발생장치에서 생기는 열을 냉각시키고 X-선 발생장치의 소형화에 따른 장착의 용이성을 향상시키고자 하는 점에서 목적에 공통점이 있다. 이 사건 제2항 발명의 원심 판시 구성 ③에서 ‘전원부를 수용하는 전원용기에 X-선관 수용부를 설치하는 구성’은 ‘전원용기 내에 X-선관 수용부를 설치하는 구성’ 뿐만 아니라 ‘X-선관 수용부를 전원용기 측면에 인접하여 설치하는 구성’도 포함한다. 그러므로 이 사건 제2항 발명의 구성 ③은 확인대상발명의 원심 판시 구성 ⓒ와 실질적으로 동일하고, 그 밖에 이 사건 제2항 발명의 원심 판시 구성 ①, ②도 확인대상발명의 원심 판시 구성 ⓐ, ⓑ와 실질적으로 동일하다. 그리고 확인대상발명은 이 사건 제2항 발명의 위 대응구성에 원심 판시 구성 ⓓ, ⓔ, ⓕ를 부가하고 있어서 이 사건 제2항 발명과 이용관계에 있다.

Therefore, the court below's determination that the invention in question belongs to the scope of the right to the invention in the claim 2 of this case is just and acceptable. Contrary to the allegations in the grounds of appeal, the court below did not err by misapprehending the legal principles on the interpretation of the scope of right to the claim 2

C. As to whether the challenged invention falls under the scope of the right to the claim 3 invention of this case

1) The scope of the scope of the right to confirm the scope of a patent shall be specifically decided in relation to the subject matter, and thus, the subject matter of the request for a trial to confirm the scope of a patent right shall be the specific invention which the claimant is the subject matter of the trial in the request (see Supreme Court Decisions 90Hu373, Mar. 27, 1991; 2001Hu1549, Oct. 22, 2002, etc.). In the passive scope of the scope of the right to confirm the scope of a patent right, even though the technology actually conducted by the claimant is different from the specific invention that is the subject matter of the trial in the request for a trial, if the claimant has no possibility of executing the specific invention, it may be an issue of whether the claim is legitimate, and the subject matter of the trial shall be determined whether the claimant falls under the scope of the right in comparison with the patented invention (see, e.g., Supreme Court Decisions 89Hu1

2) The lower court determined that the challenged invention falls under the scope of the right of the instant Claim 3 invention, on the premise that even if the description states that “heat level and electric power level are not included in the description,” the composition of the instant Claim 3 invention is practically the same as that of the instant Claim 3 invention under the premise that the instant Claim 3 invention is composed of heat level and electric power level.

3) However, in light of the above legal principles, according to the explanatory note of the challenged invention, the explanatory note of the challenged invention can be seen as "the shock absorption unit can absorb it even if it is punched with punch, vibration and impulses from outside, and does not have the heat and electric power." In this case, even if the "sult absorption unit" of the challenged invention is required to have the heat and electric power, and it can be said that it can be a matter of legitimacy of a petition for a trial because there is no possibility that it can be carried out as a matter of legitimacy or legitimacy of a petition for a trial, the claimant still should be based on the invention subject to a specific confirmation, and it should be determined whether it falls under the scope of the right in comparison with the patented invention.

Therefore, in comparison with the “Intermediate absence” of the instant Claim No. 3 as well as the “compact absorption book” specified by the explanatory note of the instant Claim No. 3, the “Intermediate absence” of the instant Claim No. 3 as it has high heat level, which can promote the heat generation through the protection container by expanding the heat level between franchising branch and static board. On the other hand, the “compact absorption register” of the instant Claim No. 3 as the instant Claim No. 3 as it differs in its composition and action effect in that it can absorb the vibration and impulse from outside, and it does not have any heat and electric power level. Therefore, the instant Claim No. 3 as the instant invention does not fall under the scope of the right to the instant Claim No. 3 without examining the remaining composition.

Therefore, the court below erred in the misapprehension of legal principles as to the scope of right to confirm the scope of right, which affected the conclusion of the judgment, based on the contents different from the specific contents. The ground of appeal on this point is with merit.

D. As to whether the challenged invention falls under the scope of the right to the invention in paragraphs 4, 6, 7, 9, 10, 12, and 13 of this case

Inasmuch as claims 4, 6, 7 of this case directly or indirectly cited the claims 3 of this case, insofar as the invention subject to confirmation does not fall under the scope of the right to the claims 3 of this case as seen earlier, the invention subject to confirmation does not fall under the scope of the right to the claims 4, 6, and 7 of this case. In addition, the claims 9, 10, 12, 13 of this case are claims 3, 4, 6, and 7 of this case, since the invention subject to confirmation falls under the scope of the right to the claims 9, 10, 12, and 13 of this case using X-ray generation devices, respectively, the invention subject to confirmation does not fall under the scope of the right to the claims 9, 10, 12, and 13 of this case. The assertion in the grounds of appeal on this point is with merit.

4. Conclusion

Therefore, the part of the judgment of the court below regarding the invention of this case concerning paragraphs (1), (3) through (13) of this case is reversed, and the lawsuit as to the invention of this case is dismissed, and the part concerning the invention of paragraphs (3) through (13) of this case is remanded to the court below for a new trial and determination. The remaining appeal by the plaintiff is dismissed. It is so decided as per Disposition by the assent of all participating Justices

Justices Kim Ji-hyung (Presiding Justice)