[1] The meaning and scope of “production” under Article 127 subparag. 1 of the Patent Act, which provides for indirect infringement, and the elements to constitute “goods used exclusively for the production of a patent product”

[2] The case holding that the act of producing and selling goods of the invention in question, "CMF No. Ro-Mad", as business, constitutes an indirect infringement on the patent right, the title of which is "improvementd Ro-Mad-Mad-Mad-Mad-Mad-Mad-Mad-Mad-

[3] The degree of specification of the invention subject to a trial request as an element for a claim to confirm the scope of a patent right

[1] Article 127 subparag. 1 of the Patent Act, which provides for indirect infringement, does not carry out any product that has all the elements of the invention, and even if an act is conducted prior to it, where it is highly probable that all the elements of the invention will be carried out, a patent right shall not be extended unfairly even if it is deemed infringement upon a patent right under certain conditions in order to enhance the effectiveness of remedy for infringement of patent rights in the future. In light of the language and purport of the above provision, the term “production” in this context refers to all the acts of newly creating an article that has all the elements of the invention using an article that lacks part of the elements of the invention, and thereby includes processing and assembly activities without industrial production. Furthermore, in order to fall under the term “goods used exclusively for the production of a patent product”, there is no economic, commercial, or practical use which can be generally accepted by social norms, and otherwise, if it is merely a theoretical, experimental, or temporary use of an article other than a patent product, it cannot be readily established for any other purpose.

[2] The case holding that since the product of the invention in question is used exclusively for the production of the patented goods, the name of the invention in question "CMF Nos. 140" and "the method of use", the act of producing and selling the product of the invention in question as business constitutes an indirect infringement on the patent right at the time of a trial decision to confirm the scope of a patent right

[3] In filing a request for a trial to confirm the scope of a patent right, the invention subject to a request for a trial must be specified to the extent that it can be compared with the patented invention in question. Although it is not necessary to state all the specific composition of the subject matter for the specific purpose, at least the specific composition of the part corresponding to the elements of the patented invention should be stated to the extent that it is necessary to determine the difference compared

[1] Article 127 subparagraph 1 of the Patent Act / [2] Article 127 subparagraph 1 of the Patent Act / [3] Article 135 of the Patent Act

[1] Supreme Court Decision 96Ma365 delivered on November 27, 1996 (Gong1997Sang, 72) Supreme Court Decision 98Hu2580 delivered on January 30, 2001 (Gong2001Sang, 574) Supreme Court Decision 2000Da27602 Delivered on November 8, 2002 (Gong2003Sang, 12) / [3] Supreme Court Decision 2004Hu486 Delivered on September 29, 2005 (Gong2005Ha, 1720)

Plaintiff (Law Firm C & Yang, et al., Counsel for the plaintiff-appellant)

Defendant (Attorneys Son Ji-yol et al., Counsel for the defendant-appellant)

Patent Court Decision 2006Heo3496 Decided July 13, 2007

The appeal is dismissed. The costs of appeal are assessed against the plaintiff.

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

1. As to the newness of the patented invention of this case

The court below acknowledged the scope of rights of the patent invention of this case (patent No. 195831) on the ground that the patent invention of this case (patent No. 195831) with the name "a fluords and the method of use thereof" is new, on the ground that the "a fluore solid compound with no unique capacity to smoke or move any slurr," which is a characteristic element of the patent claim No. 1, 2, 4, 6, 11, 16, and 18, is not publicly known in the comparable invention as indicated in the judgment of the court below,

In light of the records, the above determination by the court below is justifiable. The court below did not err by violating the rules of evidence or by misapprehending the legal principles on the judgment on the retrial of invention.

2. As to whether the patent of this case constitutes indirect infringement

Article 127 subparag. 1 of the Patent Act provides, “In the event that a patent is an invention of a product, an act of producing, transferring, leasing, importing, or offering for transfer or lease of, the product used exclusively for the production of the product shall be deemed an act of infringement of a patent right or exclusive license (hereinafter referred to as “patent right”). This is understood to mean, “In the event that it is highly probable that a patent will be carried out all elements of the invention even if it is considered as an infringement of a patent right under certain conditions to enhance the effectiveness of remedy for infringement of patent rights in the future, the patent right shall not be unfairly extended even if it is considered as an infringement of a patent right. In light of the language and purport of the above provision, “production” refers to all acts of newly creating things that possess all elements of the invention by using an article that lacks part of the elements of the invention, including manufacturing, processing, assembling, etc. (see Supreme Court Decision 200 through 80, Nov. 28, 200). 208.

The lower court determined the following facts after comprehensively taking account of the adopted evidence. In other words, the invention subject to confirmation of the scope of passive rights of the Plaintiff is in comparison with the patent claim Nos. 1, 2, 4, 6, 11, 16, 18, and 19 (hereinafter “patent of this case”) of the instant patent invention, and there are differences in that the small-sized channel and the large-sized solid body are lacking, and microphones are added to the manufacturing process of the instant invention. However, when a person supplied with the product subject to confirmation carries out the manufacturing process of the instant invention by using the cMP, the Plaintiff’s act of using the product subject to confirmation to the extent that it does not have any effect on the surface of the patented invention of this case, such as the diverse type of the patented invention of this case, and the Plaintiff’s act of using the product subject to confirmation to the extent that it does not have any effect on the surface of the divers, e.g., the number of the product subject to confirmation and the manufacturing process.

Such fact-finding and determination by the court below is justifiable in light of the above legal principles and records. The court below did not err in the misapprehension of legal principles as to indirect infringement of patent rights, interpretation of patent claims, violation of the rules of evidence, and incomplete hearing.

3. As to whether the invention in question is specified

In filing a request for a trial to confirm the scope of a patent right, the invention in question must be specifically identified to the extent that it can be compared with the patented invention in question. In order to specify the scope of the patent right, the detailed composition of the subject invention is not necessary, but at least, the specific composition of the part corresponding to the elements of the patented invention must be stated to the extent that it is necessary to determine differences compared with the elements of the patented invention (see Supreme Court Decision 2004Hu486, Sept. 29, 2005)

In light of the above legal principles and records, the court below is justified in holding that the invention in question did not contain specific elements corresponding to the composition of the patent claim 20 to 28 of this case. The court below did not err in the misapprehension of legal principles as to the specification of the invention in question, as alleged in the grounds of appeal.

4. Conclusion

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

Justices Kim Ji-hyung (Presiding Justice)