[1] In a case where a patentee or a licensee who has obtained permission from the patentee or the licensee for an invention of a product has lawfully transferred an article embodied in the patented invention in Korea, whether the patent right has the effect on the act of using, transferring, etc. an article (negative), and whether the same applies to cases where a patentee, etc. for an invention of a method of manufacturing a product has lawfully transferred an article produced by the patented method in Korea (affirmative)

[2] Criteria to determine whether a certain product has practically realized an invention of a method, including an invention of a process for manufacturing a product

[3] In a case where the specific and direct judgment on the matters alleged by the parties is not indicated in the reasoning of the judgment, but it does not affect the conclusion of the judgment, whether there is an error of omission of judgment (negative)

[1] Article 2 subparag. 3 of the Patent Act classifys an invention into “an invention of a product”, “an invention of a method”, and “an invention of a method of manufacturing a product”

If a patentee or a licensee (hereinafter referred to as “holder, etc.”) who has obtained permission from a patentee or a patentee for an invention of a product (hereinafter referred to as “invention of a product”) has lawfully transferred an article that is embodied in the patented invention in Korea, the patent right has already been achieved and advanced with respect to the assigned article. Therefore, the patent right does not have effect on the act of using, transferring, etc. the article by the transferee or the subsequent purchaser (hereinafter referred to as “transferee, etc.”). The same applies to cases where the patentee, etc. of the “invention of the method of manufacturing the product” has lawfully transferred an article produced by the patented method in Korea.

If a patentee, etc. of a method invention, including “the invention of a method of manufacturing a product” (hereinafter collectively referred to as “the invention of a method”), legitimately transfers any product used for the use of the patented method in Korea, and such product is practically embodied in the process invention, the patent right of the method invention has already been achieved, and thus, the patent right is not effective against the act by the transferee, etc. of using the product.

[2] Whether a certain thing is practically implemented, including “an invention of a method of manufacturing a thing” (hereinafter collectively referred to as “a method invention”), shall be determined specifically and individually on the basis of the following factors, comprehensively taking into account: (a) whether the original purpose of the thing recognized by social norms is only the implementation of the method invention; (b) whether the thing contains any other purpose; (c) whether the essential element of the professional engineer based on the special solution of the method invention is included; and (d) the proportion of the process performed through the thing to the entire process of the method invention.

In order to ensure that the original use of a product recognized by social norms is only a process invention and that it does not have any other purpose, the product must have no economic, commercial, or practical use, which can be widely accepted and approved by social norms. On the contrary, if it is merely a theoretical, experimental, or temporary use of a product other than a patent method, its use is difficult to be deemed the original use of the product recognized by social norms.

[3] Even if the specific and direct judgment on the matters alleged by the parties was not indicated in the reasoning of the judgment, if the judgment does not affect the conclusion of the judgment, it shall not be deemed that there was an omission of

[1] Article 2 subparag. 3, Article 99, and Article 127 of the Patent Act / [2] Article 2 subparag. 3 of the Patent Act / [3] Articles 208 and 423 of the Civil Procedure Act

[2] Supreme Court Decision 2007Hu3356 Decided September 10, 2009 (Gong2009Ha, 1690) / [3] Supreme Court Decision 2002Da56116 Decided December 26, 2002 (Gong2003Sang, 488)

Furthermore, Hybret Inc. (Attorney Choi Jae-soo, Counsel for the plaintiff-appellant)

주식회사 윈젠

TS et al. (Law Firm ClarS, Attorneys Kang Dong-gu et al., Counsel for the defendant-appellant)

Patent Court Decision 2017Na1001 Decided November 10, 2017

All appeals are dismissed. The costs of appeal are assessed against the Plaintiff, including the part resulting from supplementary participation.

The grounds of appeal are examined (to the extent of supplement in case of supplemental appellate briefs not timely filed).

1. As to the grounds of appeal Nos. 1, 2, and 3

A. Whether the exhaustion of a patent is recognized

Article 2 Subparag. 3 of the Patent Act is classified into “invention of a thing,” “invention of a method,” and “invention of a method to produce a thing,” respectively.

If a patentee or a licensee (hereinafter referred to as “holder, etc.”) who has obtained permission from a patentee or a patentee for an invention of a product (hereinafter referred to as “invention of a product”) has lawfully transferred an article that is embodied in the patented invention in Korea, the patent right has already been achieved and advanced with respect to the assigned article. Therefore, the patent right does not have effect on the act of using, transferring, etc. the article by the transferee or the subsequent purchaser (hereinafter referred to as “transferee, etc.”). The same applies to cases where the patentee, etc. of the “invention of the method of manufacturing the product” has lawfully transferred an article produced by the patented method in Korea.

If a patentee, etc. of a method invention including “the invention of a method of manufacturing a product” (hereinafter collectively referred to as “the invention of a method”) legitimately transfers any product used for the use of the method to Korea and the product is practically embodied in the process invention, the patent right of the method invention is not effective against the act by the transferee, etc. of using the product, since the purpose of the patent right has already been achieved.

(b) Grounds for recognizing the exhaustion of patent rights to a method invention;

A patented invention can be practically embodied through a device that can implement such a method. If the assignee, etc. who has lawfully acquired an article that is practically embodied from the patentee, etc., obtains the permission of the patentee, etc. whenever the invention is conducted using such article, it may compromise the free distribution and transaction safety of such article. In addition, as long as the patentee, etc. is practically aware of the right to transfer an article that is exclusively used in the implementation of a method invention under subparagraph 2 of Article 127 of the Patent Act, the patentee, etc. is able to determine the transfer price of the article or the license fee for the licensee, by anticipateing the assignee, etc. to use the method invention as the article. In addition, there are many cases where the invention of a product and the method invention are substantially the same invention, and if so, the patentee, etc. may prepare the patent claim as a product invention or the method invention as required, there is no reasonable ground to exclude the patent claim from the subject matter of exhaustion. Rather, if the patent invention of a method is uniformly excluded from the subject matter of patent exhaustion, the patentee can easily avoid the patent application of the method invention.

C. Criteria for determining whether to realize the substance

Whether a certain product substantially implements a method invention shall be determined on a specific and individual basis based on the case-by-case basis, comprehensively taking into account the following factors, such as whether the original purpose of the product recognized by social norms is only the practice of a method invention and no other purpose is used; whether the product includes all the elements corresponding to the core of a professional engineer based on which the special solution of the method invention is based; and the degree of the process performed through the product to the entire process of the method invention.

In order for a product to be used as a method invention to be used only and to have no other purpose, the product must have no economic, commercial, or practical use, which can be widely accepted and approved by social norms. On the contrary, if the product is merely a theoretical, experimental, or temporary use, other than a patent method, its use cannot be deemed as its original use, which is recognized by social norms (see Supreme Court Decision 2007Hu3356, Sept. 10, 2009).

D. Determination on the instant case

(1) In light of the following circumstances, the lower court determined that the patent right of each of the instant patented inventions was so advanced as to each of the instant patented inventions, on the following grounds: (a) each of the instant patented devices constitutes an object practically embodied in the instant patented invention; and (b) Defendant TS Co., Ltd. (hereinafter “Defendant Co., Ltd”) lawfully acquired the ownership of each of the instant patented devices.

(A) The original purpose of each of the adjoining machines of this case is only the executing of the patented invention of this case, and it is difficult to view that there exists an economic, commercial, or practical other purpose that can be widely used and approved by social norms in each of the adjoining machines of this case.

(B) The contact process performed through the contact equipment of this case extends to the entire process of the patented invention of this case, and the probin and probin of each of the contact equipment of this case have all the limited shapes and equipment in the patented invention of this case. Since each of the contact equipment of this case has the effect that it can be achieved by the patented invention of this case, each of the contact equipment of this case can be deemed to include all the elements corresponding to the core elements of the professional engineer based on the special solution method of the patented invention of this case.

(C) The Plaintiff concluded the instant license agreement with the Plaintiff’s Intervenor (hereinafter “ Intervenor”) and explicitly granted the Intervenor the authority to manufacture and sell equipment suitable for executing the instant patent invention. As such, the Plaintiff’s sales of each of the instant contact to the Defendant Company constitutes a lawful transfer made with the Plaintiff’s permission, a patentee.

(2) Examining the reasoning of the lower judgment in light of the aforementioned legal doctrine and the record, the lower court did not err in its judgment by misapprehending the legal doctrine regarding the exhaustion of patent rights under Article 2 of the Patent Act, or by exceeding the bounds of the principle of free evaluation of evidence in violation

2. Regarding ground of appeal No. 4

The court below rejected the plaintiff's assertion as to the revocation of confession on the ground that it is difficult to recognize that the confession was contrary to the truth and due to mistake, since the plaintiff voluntarily recognized that the contact between each of the instant patented invention was an equipment for practicing the patented invention, that is, a pre-use product for executing the patented invention of this case, through the statement of the complaint at the first day of pleading of the court of first instance.

Examining the reasoning of the lower judgment in light of the relevant legal principles and records, the lower court did not err by misapprehending the legal doctrine on the binding force of confession and the revocation of confession, contrary to what is alleged in

3. Regarding ground of appeal No. 5

Even if the specific and direct judgment on the matters alleged by the parties was not indicated in the reasoning of the judgment, if the conclusion of the judgment does not affect the conclusion of the judgment, it cannot be said that there was an error of omission of judgment (see Supreme Court Decision 2002Da56116, Dec. 26, 2002, etc.).

Although the court below did not make any judgment as to whether Defendant Company used part of each of the adjoining machines of this case, it is alleged in the grounds of appeal that the court below did not make any judgment, as long as patent rights were so advanced as to each of the adjoining machines of this case and patent infringement was not constituted, such omission of judgment by the court below does not affect the conclusion of the judgment, and thus, the plaintiff's ground of appeal as to this cannot be accepted.

4. Conclusion

Therefore, all appeals are dismissed, and the costs of appeal are assessed against the losing party, including the portion arising from the participation in the appeal. It is so decided as per Disposition by the assent of all participating Justices on the bench.

Justices Jo Hee-de (Presiding Justice)