Whether the method of interpreting the scope of the claim for a product invention described in the manufacturing method falls under the scope of the right of the patented invention at the stage of patent infringement, such as a litigation for patent infringement or a trial to confirm the scope of the right to the patented invention (affirmative), and where the scope of the right of the patented invention can be limited to the scope of the manufacturing method

The method of interpreting the scope of claims for a product invention described in the manufacturing method shall be equally applied when determining whether it falls under the scope of rights of the patented invention at the stage of patent infringement, such as a patent infringement lawsuit or a trial to confirm the scope of rights, etc.: Provided, That in cases where there are extenuating circumstances, such as where the scope of rights of the patented invention derived from such interpretation method is too broad in light of the substance of the invention identified by the overall description of the specification, the scope of rights may be limited

Article 2 Subparag. 3, Article 94, and Article 97 of the Patent Act

East Asia AP Co., Ltd., a litigation taking over the same lawsuit

[Plaintiff-Appellant] Gammbex Co., Ltd. (Patent Attorney Park Jong-chul et al.,

Patent Court Decision 2012Heo1139 decided June 21, 2013

The appeal is dismissed. The costs of appeal are assessed against Dongi St Co., Ltd., the plaintiff Dongi-gu.

The grounds of appeal are examined.

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.” Even if the scope of a claim is written as a whole in the case of an invention containing a manufacturing method (hereinafter “the invention of a product”), the subject of the invention is not the manufacturing method, but the subject of the invention is the product itself finally obtained, and thus constitutes “an invention of a product.” The scope of a claim for an invention must be written in a way that specifies the composition of a product. As such, the method of manufacturing described in the scope of a claim for an invention of a product must be defined in a way that specifies the structure and nature of the product, which is the final product, as a single means that specifies the structure and nature of the product.

Therefore, in determining the patent requirements for a product invention described in the manufacturing method, the technical composition of the invention is not limited to the manufacturing method itself, but it is necessary to examine whether there is newness, inventive step, etc. compared with prior art publicly notified prior to the filing of the application by identifying it as an object with the structure, character, etc. specified by all descriptions of the patent claim including the description of the manufacturing method.

Meanwhile, among the inventions in the field of biotechnology, high molecules, mixtures, metal, etc., there may be circumstances under which it is impossible or difficult to specify the goods obtained by any manufacturing method directly due to the structure, nature, etc., and it is difficult to specify the goods only by the manufacturing method. However, the same applies to the invention of a product, the essence of which is “the invention of a product,” and the fact that the manufacturing method indicated in the claim is merely a means to specify the structure, nature, etc. of the product. Thus, even though there is no such circumstance, the meaning of the manufacturing method written by classifying the invention of a product, as stated in the manufacturing method, does not change (see Supreme Court en banc Decision 2011Hu927, Jan. 22, 2015).

In addition, the method of interpreting the above scope of claims as to a product invention described in the manufacturing method should be equally applied when determining whether it falls under the scope of rights of the patented invention at the stage of patent infringement, such as a patent infringement lawsuit or a trial to confirm the scope of rights of the patented invention. However, in cases where there are clearly unreasonable circumstances, such as that the scope of rights of the patented invention derived from such interpretation method is too broad in light of the substance of the invention identified by the overall description of the specification, the scope of rights may be limited to the scope

2. We examine these legal principles and records.

가. 명칭을 ‘위장질환 치료제용 쑥추출물’로 하는 이 사건 특허발명'(특허등록번호 생략)'의 특허청구범위 제7항(이하 ‘이 사건 제7항 발명’이라 하고, 다른 청구항도 같은 방식으로 표시한다)은 ‘쑥잎을 메탄올 또는 에탄올로 추출하여 얻은 쑥추출물을 탈지하고 클로로포름으로 용출시켜 소분획물을 얻은 다음 이를 다시 실리카겔 컬럼에 충전하여 용출시키는 방법에 의하여 제조한 자세오시딘(5,7,4'-trihydroxy-6,3'-dimethoxy flavone)을 유효성분으로 하여 이에 약제학적으로 허용되는 물질이 첨가된 위장질환 치료제용 약학적 조성물’이다. 이와 같이 이 사건 제7항 발명은 약학적 조성물의 유효성분과 관련하여 특허청구범위가 전체적으로 ‘자세오시딘’이라는 물건으로 기재되어 있으면서 그 제조방법의 기재를 포함하고 있으므로 앞서 본 ‘제조방법이 기재된 물건발명’에 해당한다.

However, since the manufacturing method of the detailed oidine stated in the claim does not affect the structure or nature of the detailed oidine, which is the final product, the effective substance should be interpreted as the single product itself in interpreting the scope of the right to the claim 7 invention of this case. In addition, the aforementioned manufacturing method of the detailed oidine is separately claimed from the claim 6 invention of this case, and the specification of the patented invention of this case contains 17 examples indicating that it indicates the effect of a disguised disease treatment of approximately 30 times compared to the occinal Salkhidine itself by conducting an experiment on the detailed occinzidine itself. In light of the above, even if the scope of the right to the claim 7 invention of this case is interpreted as above, it cannot be said that there is an unreasonable circumstance, such as excessively widen in light of its substance.

B. On the premise of such interpretation, these inventions are identical in that they are “the pharmaceutical products for the purpose of treating disguised diseases with which pharmacologically permissible substances are added.” However, in the instant Claim 7 invention, the effective substance is “self-defluorzidine,” and the challenged invention contains 0.80-1.3% of lusium and 0.25-0.6% of lusiumidine, and include lusium 0.25-25% of lusium 0.6% of lusium,” and include lusium lusium lusium lusium lusium lusium lusium lusium lusium lusium lusium lusium lusium lusium lusium lusium lusium lusium lusium lusium lusium lusium lusium lusium lusium lusium lusium lusium lusium lusium lusium.

Therefore, in the case of the invention subject to confirmation, the “ favorable extraction” as seen earlier, which is the effective substance of the instant Claim 7, cannot be said to be identical or equal to the “self-saisidine”, which is the effective substance of the instant Claim 7, and the invention subject to confirmation cannot be deemed to have used it as it is, while maintaining the unity of the invention, including the technical composition of the instant Claim 7, and therefore, the invention subject to confirmation cannot be deemed to fall under the scope of the right

C. The court below erred in interpreting the scope of the right to the instant Claim 7 invention as limited to the “the manufacturing method of the Voluntaryidine” as stated in the instant Claim 6 invention, but it is reasonable to conclude that the instant Claim 7 invention cannot be deemed to fall under the scope of the right to the instant Claim 7 invention. Therefore, it is not erroneous in the conclusion of the judgment.

3. 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 Jo Hee-de (Presiding Justice)