[1] A method for determining the scope of protection of a patented invention and a method for interpreting the descriptions of claims

[2] Standard for determining whether the challenged invention falls under the scope of the right to the patented invention

[3] Requirements for establishing a relationship between the invention in question and the invention in question to use the patented invention / Whether the same applies to cases where the invention in question uses an equivalent invention with the patented invention (affirmative)

[1] The scope of protection of a patented invention is determined by the descriptions of the claims, and it is not, in principle, permissible to limit or expand the scope of protection by the description or drawing of the invention. However, it is possible to accurately understand the technical meaning by taking into account the description or drawing of the invention. Thus, the interpretation of the descriptions of the claims should be based on the general meaning of the text, and should be objectively and rationally after considering the technical significance of the invention to be expressed by the text, taking into account the description or drawing of the invention.

[2] In order for the invention in question to be deemed to fall under the scope of a patent right of the patented invention, an organic combination relationship between the elements and the elements indicated in the claims of the patented invention must be included in the invention in question. In addition, even in cases where there are any changes in the composition indicated in the claims of the patented invention in the invention in question, the solution principle of task is identical in both inventions, even if such changes are made, the same effect as that of the patented invention is shown in the patented invention, and if such changes are made to the extent that a person with ordinary knowledge in the art to which the invention pertains can easily think, the invention in question is equivalent to the composition indicated in the claims of the patented invention and still falls under the scope of a patent right of the patented invention, barring any special circumstance. In this context, when determining whether the "the solution principle of task in both inventions" is "the same, it shall not be formally extracted from the composition indicated in the claims, but shall be determined by considering the description of the invention in the specification and the publication of the patent at the time of the application.

[3] In a case where the invention in question is related to the use of the patented invention, it is within the scope of the right of the patented invention. Such use relationship is established when the invention in question adds new technical elements to the composition of the patented invention, and the invention in question satisfies the unity of the patented invention as an invention in question while using the invention as it is, including the substance of the patented invention, and maintains the unity of the invention in question. The same applies to the case where the invention

[1] Article 97 of the Patent Act / [2] Article 135 of the Patent Act / [3] Articles 97 and 135 of the Patent Act

[1] Supreme Court Decision 2006Hu2240 Decided December 22, 2006, Supreme Court Decision 2007Da45876 Decided October 15, 2009 (Gong2009Ha, 1817) / [2] Supreme Court Decision 2007Hu3806 Decided June 25, 2009 (Gong2009Ha, 1239), Supreme Court Decision 2012Hu132 Decided July 24, 2014 (Gong2014Ha, 1753) / [3] Supreme Court Decision 2001Hu393 Decided September 7, 2001 (Gong201Ha, 2197)

DS Co., Ltd. (Attorneys Park Sung-soo et al., Counsel for the defendant-appellant)

ASEAN Electric Co., Ltd. (Patent Attorney Lee Jae-soo, Counsel for the defendant-appellant)

Patent Court Decision 2014Heo4319 Decided December 5, 2014

The judgment below is reversed, and the case is remanded to the Patent Court.

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

1. As to the ground of appeal on interpretation of claims

A. Although the scope of protection of a patented invention is determined by the descriptions of the claims and it is not, in principle, permissible to limit or expand the scope of protection by an explanation or drawing of the invention. However, the interpretation of the descriptions of claims can accurately understand the technical meaning by taking into account the description or drawing of the invention. Thus, the interpretation of the descriptions of claims should be based on the general meaning of the text, but should be objectively and rationally after considering the technical significance of the contents of the claims, taking into account the description or drawing of the invention (see Supreme Court Decision 2007Da45876, Oct. 15, 2009).

B. At the time of the original adjudication, the patented invention (patent registration number omitted) of this case is related to “the air conditioners ELS et al.”. According to the record, paragraph (1) of the claim scope of the patented invention (hereinafter “instant Claim Nos. 1”, and the remainder claims are also made in the same way) is composed of a black shape and a certain height fluor, an inner space is formed, an inner space is formed, an inner space is formed, an inner space is composed of a twitter unit composed of the upper part of the artificial base, an inner space is extended to the upper part of the artificial base, and an inner space is composed of a twitter unit and an inner air outlet composed of five air conditioners that are combined with the inner part of the upper part and connected with the inner part of the artificial base (contest No. 1), and an inner air condition is combined with the outer part of the air of the e.g., the outer part of the e., the e., air conditioners and the inner part of the e., which are supplied with the outer part of the air (E).

Examining in light of the aforementioned legal principles, it is difficult to interpret that the technical composition of the technology consisting of parts of the PEr that combines with the PEr is included in the scope of protection of the invention of this case, in light of the claims as to composition 2, since it is indicated in the claims as “Round combining the lower side of the PEr,” and there is room to interpret that the claims are included in the scope of protection of the invention of this case. However, it is difficult to view that the technical composition of the invention of this case is included in the scope of protection of the invention of this case where the description and drawing of the invention of this case include not only the ESr board that makes up the PEr, but also the spreader that distributes the PEr inside the invention of this case can be less than the scope of protection of the invention of this case where part of the PEr overlaps with the PEr.”

C. In the same purport, the lower court is justifiable to have determined that the PEr does not include the “muff” structure within the scope of protection of the instant Claim No. 1, and contrary to what is alleged in the grounds of appeal, the lower court did not err by misapprehending the legal doctrine on the interpretation of the claims

2. As to the ground of appeal on determining the scope of right to the patented invention

A. In order for an invention to be seen as an invention in comparison with a patented invention to be within the scope of the right of the patented invention, the organic combination relationship between the elements indicated in the claims of the patented invention and their elements must be included in the invention in question. In addition, even in cases where there are any changes in the composition indicated in the claims of the patented invention in the invention in question, if the solution principle of task is identical in both inventions, even if such changes result in the same effect as that of the patented invention, and if a person with ordinary knowledge in the art to which the invention pertains (hereinafter “ordinary technician”) can easily consider, the invention in question is equivalent to the composition indicated in the claims of the patented invention and still falls under the scope of the right of the patented invention, barring any special circumstance. In this context, if it is determined whether “the solution principle of task is identical in both inventions,” a part of the composition indicated in the claims should not be extracted formally, but it should be determined on the basis of 2014 ex officio 214 (see Supreme Court Decision 2014).

In addition, if the challenged invention is related to the use of the patented invention, it is within the scope of the right of the patented invention. Such use relationship is established when the challenged invention adds a new technical element to the composition of the patented invention, and the challenged invention maintains the unity of the patented invention as an invention in the challenged invention while using it as it is, in whole, includes the outline of the patented invention. This also applies to the case where the patented invention uses an identical invention as well as an identical invention (see Supreme Court Decision 2001Hu393, Sept. 7, 2001).

B. Review of the reasoning of the lower judgment and the record reveals the following circumstances.

(1) Composition 2 through 6 of the instant Claim No. 1 invention is included in the instant challenged invention at the time of original adjudication. In response to Composition 5, part of the proliferationer of the instant challenged invention, which corresponds to the instant challenged invention, is an urban area where part of the diffusioner of the instant challenged invention, as well as the part of the LED modules, is used together with the emulter. However, as seen below, it is nothing more than the circumstance where the technical element of “the part of the LED cap overlaps with the emulter” is added.

However, as to the composition 1 of Claim 1 invention of this case, the response composition of the challenged invention of this case is different in terms of the location consisting of "the part consisting of black shape, the edge consisting of a certain height fluor, and the part consisting of the main body consisting of the main body consisting of the main body consisting of the main body consisting of the main body near the part of the Vietnames where the internal space is formed and extended by the inner space is formed, and the part consisting of a majority of the main body that was stolen at the upper edge and connected with the inner space unit." Unlike that the part consisting of "the central body of Vietnames of the main body," the part consisting of the main body consisting of the part consisting of "the part consisting of the main body."

(2) In the description of the invention in the specification of the instant patent invention, the part of the body’s central part on the part of the body is stating “the shape of the surface of the body, i.e., the surface of the body of the body, e., the surface of the body of the body, or the surface 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 paper of the body of the paper of the body of the paper of the shape of the Gu, citing the shape of the body of the body of the body of the body.” In full view of the description and the publicly known technology at the time of the application, the core of the professional engineer’s opinion on the basis of the special resolution method for the instant claim 1 invention is “the formation of a space 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.”

In addition, the human rights-holder of the invention in question indicates the same effect as the human rights-holder of the instant Claim No. 1 in that “the human rights-holder minimizes exposure to the human rights-holder’s surface,” even with respect to the modification of the aforementioned composition.

Furthermore, it is merely a technical means adopted in the field of technology to form the part adjacent to the part of the Berterancy, such as the invention subject to confirmation of this case, because it is merely a technical means that can be adopted officially in the field of technology. If a person is a trade technician who deals with the specification of the patented invention of this case, he can easily consider the modification of the composition.

(3) Meanwhile, the explanatory note of the challenged invention of this case contains the statement that it is “EDRr,” the “LEDRr,” and the “LEDrrrrr, installed in light of the general meaning of the foregoing text,” and on the basis of the drawings of the challenged invention of this case, the said explanatory note appears to mean that the composition “the partial arrangement of the PErrr with the ELrrrr is more than the instant challenged invention of this case.”

However, the composition of partial overlapping arrangement as above of the challenged invention of this case is a new technical element added to the technical composition of the instant Claim 1, and merely added the area where the PEr is arranged. Thus, the instant challenged invention of this case can be seen as using the entire substance of Claim 1 invention. Moreover, the effect that the instant Claim 1 invention of this case maintains the unity of the instant Claim 1 invention as an invention in the instant challenged invention, since the internal air of the spreader flows into the inside space part of the main body, which can be achieved through the entire composition, so that the PEr can be seen as cooling by natural larges discharged through the air discharge outlet of the main body.

Although the invention subject to confirmation of this case can also additionally realize the effect that “not to have any light shack,” by arranging part of the ED cycles to the area of the hacker,” the invention subject to confirmation of this case does not maintain the unity of the invention as an invention within the invention subject to confirmation of this case on account of such circumstance.

C. Examining the above circumstances in light of the legal principles as seen earlier, it is reasonable to deem that the invention subject to confirmation falls under the scope of the right to the instant Claim 1 invention, since it includes the organic combination relationship between the same or equal element as the instant Claim 1 invention and its components.

Nevertheless, unlike the instant Claim 1 invention, the lower court determined that the instant invention subject to confirmation falls under the scope of rights because the instant invention did not have any identical or equal composition with the instant Claim 1 invention, on the ground that the instant invention subject to confirmation does not fall under the scope of rights, on the ground that the instant invention does not have any identical or equal composition with the instant Claim 1 invention, and on the premise thereof, the instant invention subject to confirmation cannot be deemed to fall under the scope of rights of the instant Claim 2 through No. 8 inventions, which are subordinate inventions to the instant Claim 1 invention. In so determining, the lower court erred by misapprehending the legal doctrine on determining the scope of rights of the patented invention, thereby adversely affecting the conclusion of judgment. The allegation in the grounds of appeal assigning this error

3. Conclusion

Therefore, without further proceeding to decide on the remaining grounds of appeal, the judgment of the court below is reversed, and the case is remanded to the court below for a new trial and determination. It is so decided as per Disposition by the assent of all participating Justices

Justices Ko Young-han (Presiding Justice)