A.M. Co., Ltd. (Attorneys Lee Ba-hoon et al., Counsel for the defendant-appellant)

Defendant

October 27, 2011

Seoul Central District Court Decision 2010Gahap27248 Decided January 27, 2011

1. The defendant's appeal is dismissed.

2. The costs of appeal shall be borne by the Defendant.

1. Purport of claim

The defendant shall not spread to a third party, orally or in writing, any false fact that the plaintiff's over-the-job product infringes on the right stated in the attached list of the defendant.

2. Purport of appeal

The judgment of the first instance is revoked. All of the plaintiff's claims are dismissed.

1. Quotation of judgment of the first instance;

The reasoning for this Court’s explanation concerning this case is as follows, except for the addition of the following judgments as to the matters asserted by the Defendant in the trial, and therefore, the reasoning for this Court’s decision is as follows.

2. Additional matters to be determined;

A. Purport of the defendant's assertion

1) Of the instant inventions and devices, there is no dispute as to whether the patent or utility model right of Korea is an employee invention based on the employment relationship between the Plaintiff and the Defendant.

2) The instant lawsuit filed by the Plaintiff on the basis of the priority of patent rights and utility model rights registered in Korea among the instant inventions and devices, and filed a claim restricting the Defendant’s rights by asserting that the Plaintiff had a non-exclusive license on the patent rights and utility model rights registered in a foreign country, and thus, the effects of each registered country’s patent rights and utility model rights are subject to adjudication, and thus, there are exclusive international jurisdiction over each registered country. Accordingly, the instant lawsuit

3) The Plaintiff’s non-exclusive license for the invention and device of this case is recognized only in Korea, and it does not extend to the invention and device filed and registered in a foreign country, including Canada. Therefore, the Plaintiff’s claim of this case is without merit.

B. Determination

1) International jurisdiction over the instant lawsuit is located in a domestic court.

The Plaintiff’s claim is a lawsuit seeking prohibition of interference since the Plaintiff’s business operator interferes with the Plaintiff’s business by spreading false information that “the Plaintiff infringes the Defendant’s patent right or utility model right.” Therefore, the lawsuit of this case is not a lawsuit directly subject to the validity of the patent right and utility model right, but a lawsuit concerning “request for exclusion of interference” against the Plaintiff’s business. However, the lawsuit of this case is a lawsuit regarding “request for exclusion of interference” against the Plaintiff’s business. However, in order to determine whether the Defendant’s act constitutes the distribution of false information, there is a problem that the Plaintiff has a non-exclusive license on the invention and device of this case. In the case of a lawsuit directly subject to a trial, the validity of the patent right shall be deemed to have exclusive jurisdiction over the registry office, but in the case of a lawsuit directly subject to a trial, the court having jurisdiction over the civil lawsuit may deliberate and determine whether it constitutes the distribution of false information.

Therefore, as to the plaintiff's lawsuit claiming the prohibition of interference with business of this case, the domestic court has international jurisdiction, and the defendant's argument disputing this issue is without merit.

2) A non-exclusive license granted to a domestic patent or utility model right among the inventions and devices of this case, on the basis of the priority rights of the patent and utility model rights, shall also extend to the registered or disclosed patent and utility model rights.

Whether a patent or a non-exclusive license for a patent or a utility model right is granted shall be determined on the basis of the existence or validity of the underlying relationship giving rise to the non-exclusive license. Accordingly, the governing law on the “contract to establish a non-exclusive license” or the “employee relationship forming the basis of an employee’s invention” shall apply. In this case, the underlying relationship between the Plaintiff’s assertion as to the invention and the device is “employee’s invention” and the establishment of an employee’s invention must be directly examined and determined in Korea between the Plaintiff as a domestic

Therefore, insofar as the Plaintiff had a non-exclusive license based on a domestic patent and utility model right among the inventions and devices of this case, since the patent and utility model right filed and registered or disclosed in a foreign country on the basis of the priority of the above patent and utility model right shall also be deemed an employee invention under the same employment relationship, the Plaintiff has a non-exclusive license on this ground. The Defendant’s assertion on this different premise

3. Conclusion

Since the judgment of the first instance is justifiable, the defendant's appeal is dismissed as it is groundless.

[Attachment List omitted]

Judges Noh Tae (Presiding Judge) Jin Tae (Presiding Judge)