Plaintiff (Law Firm Dan, Attorney Park Jong-won, Counsel for the plaintiff-appellant)

Norway Co., Ltd. (Attorney Lee Jae-soo, Counsel for the plaintiff-appellant)

May 1, 2014

Seoul Central District Court Decision 2012Gahap63163 Decided October 4, 2013

The plaintiff's appeal is dismissed.

Expenses for appeal shall be borne by the plaintiff.

Purport of claim

The defendant shall pay to the plaintiff 8,926,859,130 won with 20% interest per annum from the day following the delivery of a copy of the complaint of this case to the day of complete payment.

Purport of appeal

Of the judgment of the court of first instance, the part against the plaintiff ordering payment shall be revoked. The defendant shall pay to the plaintiff 1 billion won and 20% interest per annum from the day following the delivery of a copy of the complaint of this case to the day of complete payment.

1. The summary of the case and the facts premised on the case

A. Case summary

In this case, the plaintiff, the patentee of a multi-way mobile device, asserted that the defendant's cell phone product belongs to the scope of protection of the plaintiff's patent right against the defendant and sought compensation (8,926,859,130 won) based on the tort caused by infringement of patent right and compensation for delay.

The first instance court dismissed the plaintiff's claim on the ground that the plaintiff's claim for damages caused by infringement of a patent right constitutes abuse of rights, and the plaintiff raised an appeal only to some (1 billion won part).

B. Presumed factual basis

[Evidence A] 1, 4, 6-1, 2, 7, 8, 9, 13, 5, 8-1, 2, 10-1, 6, 16, and 16, respectively,

(1) The plaintiff's patent right

㈎ 원고는 양방향 멀티슬라이드 휴대단말기라는 다음과 같은 특허발명에 관한 특허권자이다.

(1) The filing date of the original application/ dual application// the filing date/ the registration number: August 5, 2004/ November 1, 2005/ May 10, 2007/ The patent registration number is omitted)

(2) Claims shall be made within the scope of claims.

[Request 1] Slick-Carrying Device 1] When the body of the body of the body of the body of the body of the body of the body of the body of the body of the body of the body of the body of the body of the body of the body of the body of the body of the body of the body of the body of the body of the body of the body of the body of the body of the body of the body of the body of the body of the body of the body of the body of the body of the body of the body of the body of the body of the two direction mlick-

[Request 2] In Paragraph 1, when the upper body runs counter to the lower body, the upper body is referred to both sides of the display, and the upper body is equipped with the first function package in which both sides of the upper body makes it possible to manipulate the two losses possible (hereinafter “Plaintiff’s patent claim 1”, “patent invention 1”, “patent claim 2”, and “Plaintiff’s patent invention 2”, and “Plaintiff’s patent invention” by combining them).

(3) Major drawings: Attached Form 1.

㈏ 특허발명 1, 2의 구성요건은 다음과 같다.

[Patented Invention 1]

(A) a multi-way type portable device;

(B) the upper body with the display windows;

(C) have two or more kids with different functions;

(D) When the upper body moves to any direction with respect to the lower body, at least one of the kids in the other direction of the lower body;

[Patented Invention 2]

Further to the composition of paragraphs (A) through (D).

(E) at the same time the upper body runs up to the lower body with respect to the lower body, including the first functional kidrid part below the upper body so as to be able to manipulate it by both sides of the diver hold.

Shed Defendant’s Action

㈎ 피고는 2007년부터 2010년 무렵까지 휴대전화 단말기 제품으로서 N95를 미완성 제품, 반제품, 완성품으로, N96을 반제품으로 생산하여 수출하였다.

㈏ N95와 N96의 완성품은 다음과 같은 구성으로 이루어져 있다(별지 2 참조).

(a) both direction slick-Carrying devices;

(b) the upper body with the display windows;

(c) include the kids of different functions under and above the upper part of the duplicate;

(d)At the time of the movement of the upper body into or below the upper body, each other function failure shall be open.

(e) When the upper body acts as a counterpart to the lower body with respect to the lower body, the kidds of the first function kids of the upper body and the second body kids of the lower body;

【Request for Correction in Patent Nullity Trial Proceedings

㈎ 피고가 2012. 9. 25. 원고를 상대로 원고의 특허발명이 비교대상발명과 대비하여 진보성이 없다는 등의 사유를 들어 특허무효심판을 청구하였고( 2012당2544호 ), 원고는 2012. 11. 22. 무효심판절차에서 특허발명 1의 특허청구범위에 특허발명 2{구성 (E)}를 병합하여 특허발명 1의 특허청구 범위를 다음과 같이 정정하고, 특허발명 2의 특허청구범위를 삭제하는 내용으로 정정청구를 하였다.

- - The following:

【Claim 1, as a mobile device after the correction, when the main body of the main body is moved to any one direction with two or more main bodies having functions different from those of the main body equipped with the display windows, at least one of the main bodies in the different direction of the main body, and the upper body is connected to the lower body, when the main body is moved to the lower body, the latter shall be open to one of at least one of the main parts, and the latter is set to the lower part under the lower part of the main body, the latter shall be replaced to both of the main body of the upper body, and the latter shall be equipped with the first part of the main body, the latter shall be able to manipulate the two parts.

㈏ 특허심판원은 2013. 1. 22. 원고의 정정청구를 받아들이면서 피고의 무효심판청구를 기각하는 내용의 심결을 내렸다.

㈐ 이에 피고는 특허법원에 심결에 대한 취소소송을 제기하였고( 2013허1351호 ), 특허법원은 2013. 9. 12. 정정 후 특허발명의 진보성이 부정되어 특허등록이 무효가 되어야 한다는 이유로 특허심판원의 심결을 취소하는 판결을 선고하였다. 원고가 특허법원의 판결에 불복하여 대법원에 상고를 제기하였다( 2013후2620 ).

2. Issues of the instant case

A. Whether the defendant's subject product belongs to the scope of protection of the invention 1 and 2

B. It is evident that there are grounds for invalidation in the first and second patented inventions, and whether the Plaintiff’s exercise of rights based on such patent rights constitutes abuse of rights

C. Whether there is a special reason to reject the defense of abuse of rights (whether there is a ground for invalidation in a patented invention after correction)

3. The judgment of this Court

A. Whether the defendant's subject product belongs to the scope of protection of the invention 1 and 2

【Plaintiff’s Claim】

The plaintiff asserts that the products manufactured and sold by the defendant are all the elements of the plaintiff's patented invention 1 and 2, and they belong to the scope of protection of the plaintiff's patented invention 1 and 2.

[Dissenting of the Defendant]

The Defendant did not have the elements of the n95 and n96’s semi-finished or non-completiond products produced by the Defendant, and did not belong to the scope of protection of the Plaintiff’s patent right, and did not constitute an indirect infringement in accordance with the territorialism of the Patent Act, since semi-finished and non-completiond products were produced as a completed product in a foreign country. In the case of a finished product n95, the Defendant imported and re-exported and exported them in a finished state and did not sell them in the Republic of Korea.

[Judgment]

(i) The following facts can be acknowledged in full view of the evidence (i.e., evidence 10-1 to 6) and the purport of the entire pleadings.

Half-finished products of N95 and N96 are not in composition (c), and they are not in composition (a), (b), (c), and (e) and all of the semi-finished and non-completiond products were produced as completed products in a foreign country.

According to Article 127 subparag. 1 of the Luxembourg Patent Act, in the case of an invention of a product, a patent shall be deemed infringement of a patent right or an exclusive license in the case of manufacturing, transferring, leasing, importing, or offering for assignment or lease of, the product used exclusively for the production of the product. The production in such indirect infringement refers to the production prescribed in Article 2 subparag. 3 of the Patent Act, and the production refers to the domestic production in accordance with the territorialism of the Patent Act, so if a direct infringement does not occur in the Republic of Korea, an indirect infringement shall not be established.

According to the above premise facts and the above facts, among the compositions of the defendant's product N95 and N96 completed products, the elements of the patented invention 1, 2, (A), (B), (C), (D), and (e) are substantially identical to the elements of the patented invention 1, 2, (A), (C), (D, and (E), and thus, they are within the scope of protection (attached Form 2).

However, since semi-finished products and finished products of N95 and N96 which the Defendant produced and exported are not equipped with part of the elements of patented invention 1 and 2, direct infringement is not established, and since all of them were manufactured as completed products in a foreign country, it does not constitute an indirect infringement under Article 127 of the Patent Act according to the territorialism of the Patent Act. Furthermore, the Defendant did not produce the complete products of N96. Accordingly, only the complete products of N95 among the Defendant’s subject products belongs to the insurance scope of patent invention 1 and 2. The Plaintiff’s above assertion is reasonable within the scope of the above recognition, and the remainder is without merit.

B. It is evident that there are grounds for invalidation in the first and second patented inventions, and whether the Plaintiff’s exercise of rights based on such patent rights constitutes abuse of rights

【Defendant’s Claim】

The defendant asserts that the plaintiff's patented invention is not allowed to claim damages on the basis of a patent right that is obvious that there exists grounds for invalidation since the inventive step is denied because the plaintiff's patented invention is new compared to the comparable invention, and the person with ordinary skills can easily make inventions by combining comparable inventions or combining prior art different from the comparable invention.

【Counterclaim by the Plaintiff】

The plaintiff asserts that the patented invention contains an unexploitable component, and that there is a useful effect that can not be expected in the comparable invention.

[Judgment]

(1) If a request for correction was made in a trial for invalidation of a patent, whether to recognize a correction is also examined in the procedure for invalidation trial. Thus, unlike the case of a request for an independent trial for correction, it becomes final and conclusive at the time when a trial decision for invalidation becomes final and conclusive, not only by a correction but also by the time when a trial decision for invalidation becomes final and conclusive (see, e.g., Supreme Court Decisions 2006Hu2912, Jun. 26, 2008; 2007Hu1053, Jan. 15, 2009). Therefore, if a request for correction is made in the procedure for invalidation trial, whether to recognize a correction is deliberated together in the procedure for invalidation trial, and if a litigation for revocation of a trial decision for the trial decision

According to the above facts of recognition, the Korean Intellectual Property Tribunal rendered a decision to dismiss the defendant's request for correction against the plaintiff's patented invention while the Korean Intellectual Property Tribunal received the plaintiff's request for correction, but the defendant filed a lawsuit to revoke the trial decision and the lawsuit is pending in the lawsuit, and thus the plaintiff's correction of the patented invention does not occur. Accordingly, the Korean Intellectual Property Tribunal determines whether the patent infringement was made based

an invention described in a publication distributed inside or outside the Republic of Korea prior to the filing of the application for a patented invention

㈎ 비교대상발명 1(을1)

(1) Date/Publication/Publication Number: April 3, 2004 / Patent Gazette/ (Publication of Patent Gazette omitted)

(2) Name: Mobile communications terminal equipped with the liquid septic plane of slots.

(3) Major drawings: Attached Form 3-1.

㈏ 비교대상발명 4(을3의 1. 디자인에 해당하나 편의상 발명이라 한다)

(1) Date of public announcement / Publication/Registration number: March 22, 2004 / Registered Design Gazette/ (Omission of Registered Design Gazette)

(2) Goods: Mobile phones.

(3) Major drawings: Attached Form 3-2.

㈐ 원고의 특허발명과 비교대상발명의 대비

(1) Preparation for composition.

(A)

A person shall be appointed.

(A) The response composition of comparable inventions 4 is not different in that it is a mobile device (portable mobile phone) that can be moved in the upper and lower direction, and the response composition of comparable inventions 1 is the mobile device with a liquid septic plane consisting of a structure that can be used to drive in the direction of length, and the response composition of comparable inventions 1 is the same as the slot portable device of (A) and the core professional engineer stand.

(B) Composition (B)

A person shall be appointed.

Each response structure has no particular difference in that upper body (spool, cover) is equipped with a display panel (dplate, liquid purification).

Meanwhile, the specification of the comparable invention 1 contains a description that “a liquid (100) consisting of a size and shape that can cover the front body of the body (100) and output images (22-23).” The Plaintiff asserts to the effect that the size and shape are different from the upper body of the cited invention 2, which is limited to the size and shape as seen above.

However, since the core technology composition that consists of a cover of the comparable invention 1, i.e., a liquid septic tank, is located in the composition (B), it should be deemed that both sides are substantially the same even if there are additional restrictions different from the composition (B) with respect to its size and form.

Category of Financial Damage (C)

A person shall be appointed.

The response structure of the comparable invention 4 is a group consisting of multiple keys, namely, a kids, which is a group composed of a kids, but the upper part is only a city in which the kids are located, so there is a difference in the number of kids equipped with two or more kids with two or more kids with different functions in comparison with a kids.

However, the response structure of the comparable invention 1 has a function key (140) for signal inputs related to the performance of special functions, including mobile devices, together with a key for signal inputs (110) related to the implementation of the functions of mobile devices, and the key (110) and the functional key (140) have been initiated in a group consisting of multiple keys, i.e., a keyboard, and there is no particular difference from three sub-dus with two or more sub-dus with different functions.

Catch composition (D)

A person shall be appointed.

The response composition of the cited inventions 4 of the Act is the structure that is open at least one of the kids in the other direction of the body when the body moves to a lower part of the body when the main body is moved to a lower part, but the kids of the main body when the main body is moved to a lower part of the body, that is, at least one of the kids in the other direction of the main body when the main body moves to a lower part, the number of kids equipped with the main body of the comparable inventions 4 is derived from that of the main body of the 4th part when the main body moves to a lower part.

However, the response composition of the comparable invention 1 is a component where a cover (200) is sealed in the upper end of the body (100), and where a cover (200) is located in the lower part of the main body (100), a functional key (140) is exposed externally. When the upper body moves in one direction to a lower part of the main body (100), there is no difference from at least one of the drums opened in the other direction of the main body.

A person shall be appointed.

The plaintiff asserts to the effect that, in the technical composition of paragraph (D), where the upper body does not move to the lower body in one direction, any one of the kids in the lower body is not opened. The response composition of the comparable invention 1 asserts to the effect that there is a substantial difference in the composition between the two response structure, since the aforementioned composition is not commenced or proposed in the response composition of the comparable invention 1. However, the above assertion by the plaintiff cannot be accepted in light of the following circumstances:

In the specification of the plaintiff's patented invention, the upper body (10) and the lower body (20) overlap completely, indicate that the situation of the lower body would normally be good atmosphere when being carried, and the drawings 1 include a form in which either the upper body and the lower body are completely overlapped with each other, but no one of the lower body is opened.

However, the scope of protection of a patented invention shall be determined according to the descriptions of the patent claims, and even if the descriptions alone are either known or known, if it is impossible to determine the scope of protection, the supplement may be made by other descriptions of the specification. However, in such a case, the expansion of the patent claims cannot be permitted by other descriptions of the specification. When the scope of protection is apparent solely based on the descriptions of the patent claims, the interpretation of the scope of protection cannot be limited by other descriptions of the specification (see, e.g., Supreme Court Decisions 2003Hu2447, Oct. 28, 2004; 2010Hu2377, Feb. 10, 201).

In this case, in relation to the patent claims of the Plaintiff’s patented invention, when the upper body moves to the lower body in the description on the composition (D), at least one of the kids in the lower body at least one of the kids in the lower body of the lower body, and when the upper body moves to the lower body, it is clear that at least one of the kids in the upper body of the lower body is open to the lower body, and its technical composition and scope are apparent. As pointed out by the Plaintiff, the technical composition of the composition 4 is not limited to one of the kids in the upper body where the upper body is not moved to any direction on the lower body, and there is no other material that can be interpreted differently from that of the Plaintiff’s patented invention in comparison with that of the fourth body in comparison with the upper body in which the upper body completely overlaps with the upper body in which the upper body is open to the lower body.

Guide (E)

A person shall be appointed.

Referenced Invention 4’s functional key and functional servers on the lower side of the lower side of the string of comparable invention 4 are also a structure that can be operated when the strings are listed below the upper body with reference to reference to reference 2. Accordingly, there is no particular difference between (E) the composition of the first functional key part equipped with the lower side of the upper body to make it possible for the upper body to be operated when the upper body is listed below the lower side of the lower body and the corresponding composition of comparable invention 4.

A person shall be appointed.

(E) The technical significance of the technical significance of the remainder of the composition, which is referred to both sides of the dplate and is capable of both operations, has inherent the composition that, as if the composition was initiated under subparagraph (D), the kids existing in the upper part of the body of the lower part, are open when the upper part moves to the lower part of the lower part, as one of more than one kids with the upper part of the (C) when the upper part moves to the lower part of the lower part (the kids existing in the upper part of the body of the Plaintiff’s patented invention 3 is indicated as above as “the kids (22).”

In light of these circumstances, the response composition of comparable inventions 4, which differs from the main body of (D) where the number of kids equipped with the main body is different from the main body of (D), is only open to the upper body of the main body when moving the main body to the lower body, and there is no kids attached to the upper body of the main body, such as the remaining parts of the composition (E). Therefore, there is a difference between the two parts.

However, the response structure of the comparable invention 1 is composed of the functional height (140) located in the upper part of the body of the body of the body of the body of the body of the body of the body of the body of the body (the body of the body of the body of the body of the body of the body of the body of the body of the body of the body of the body of the body of the body of the body of the body of the body of the body of the body of the body of the body of the body of the body of the body of the body of the body of the body of the body of the body of the body of the body of the

(2) Preparation for technology fields.

The plaintiff's patented invention, comparable invention 1, and comparable invention 4 are all related to a portable device (a mobile communications terminal, mobile phone), and the technical field is the same.

(3) Whether it is difficult to organize a combination.

As seen earlier, the composition (A), (B), (C), (D), and (E) of the Plaintiff’s patented invention can easily lead by combining the response composition and covers of comparable invention 4 with the functional height existing in the upper part of the body of the body of the body of the body of the body of the body of the body of the body of the body of the body of the body of the body of the body of the body of the combination of response composition of comparable invention 1 and comparable invention 4, which are prior art, and in light of the following circumstances, there is no special technical difficulty in combining the response composition of comparable invention 1 and

In the specification of the comparable invention 1, “The recent rapid development of the mobile communication technology makes the smallization of the mobile communication device, at the same time, the diversification of the use of the mobile communication device makes it possible to perform various functions, such as Internet search, video reproduction, and various games using the mobile communication device. Therefore, the large scale of the liquid septic tank is required so that a large number of information can be printed out at one time, and the diversification of the amount is required for a variety of signal transmission (4-7 type "the technology to which the invention belongs and the previous technology in its field"). In light of the description of the specification, it is difficult to diversify the composition of the camera so that the use of the mobile communication device can be searched on the Internet or input various signals to be used in various ways through the reproduction of video images and various games at the time of the Plaintiff’s application for the patented invention. As such, the composition of the mobile communication device, including the composition of the comparable invention 4 and the response body, can not be seen as a technical task that can easily be seen as a combination between the Plaintiff’s general technological composition and the composition.

(4) Whether the effect of action is obvious or not.

A person shall be appointed.

The Plaintiff’s specification of the patent invention states that the purpose of providing a personal-based device is not only to properly use the unique telecommunications function and multimedia function in the case where the upper body slicks the lower body in both directions with respect to the effects of the invention, but also to properly use the lower body (for example, “technical task that the invention intends to form”), and that the Plaintiff’s specification of the patent invention is to provide a personal-based device that can easily use the game or camera image in line with its original communication function as well as to the entertainment function that display the game or camera image (for example, “the effects of the invention” 1-2, 3).

As such, the effects of the Plaintiff’s patented invention, which provides a tamper structure that allows proper use of proper communication functions and multimedia functions, can be achieved by systematically combining components (A), (B), (C), (D), and (E).

Since both paragraphs (A), (B), (C), (D), and (E) can easily lead to the combination of corresponding elements with comparable inventions 1 and 4, it cannot be deemed that there exists a significant action effect beyond the expected range by a person with ordinary skills combining the prior art as seen earlier in the action effect of the Plaintiff’s patented invention.

(5) Reorganization.

Inasmuch as the Plaintiff’s patented invention cannot be deemed to have an obvious difficulty and function effect of its composition compared with the same technical field of comparable inventions 1 and 4, the nonobviousness of the Plaintiff’s patented invention is denied as it can be easily claimed by a person with ordinary skills with comparable inventions 1 and 4. Therefore, the Plaintiff’s patented invention has no inventive step, and it is obvious that there exists grounds for invalidation on the patent invention due to patent registration in violation of Article 29(2) of the Patent Act, and thus, the Plaintiff’s claim against the Defendant for damages on the grounds of patent infringement based on the Plaintiff’s patented invention

C. Whether there is a special reason to reject the defense of abuse of rights (whether there is a ground for invalidation in a patented invention after correction)

[Judgment]

In a patent invalidation trial, the Plaintiff filed an application for correction of the Plaintiff’s patent claim. After the correction, the patent invention is merely a combination of claims 1 and 2 of the patented invention before the correction, and the elements of the patent are substantially the same.

Therefore, the nonobviousness of a patented invention after the correction of the Plaintiff cannot be deemed to have the complexity and effect of composition in comparison with the same technical field 1 and 4. Thus, the nonobviousness of the patented invention is denied since a person with ordinary skills can easily bring about the patent invention with comparable invention 1 and 4. Therefore, even if the Plaintiff’s correction becomes final and conclusive, it is obvious that the patent invention has no inventive step after the correction of the Plaintiff, and even if the Plaintiff’s correction becomes final and conclusive, there is grounds for invalidation in the patent invention after the correction of the Plaintiff’s correction, and even if the patent invention 1 and 2 becomes a patent invention after the correction becomes final and conclusive after the correction of the patent invention, the Plaintiff’s claim for damages based on the patent invention after correction constitutes abuse of rights is not allowed

4. Conclusion

Therefore, the plaintiff's claim is without merit. The judgment of the court of first instance which dismissed the plaintiff's claim is just, and the plaintiff's appeal is dismissed as it is without merit.

[Attachment Form Omission]

Judges Lee Dong-sung (Presiding Judge)