2017Da231829 Prohibition, etc. of Patent Infringement

Nanox Co., Ltd.

Attorney after completion of the case, et al.

M. A. M.S. et al., and one other

Law Firm Han-ro, Attorney Lee Dong-type, Counsel for defendant-appellant

Patent Court Decision 2016Na1424 decided April 28, 2017

January 14, 2021

All appeals are dismissed.

The costs of appeal are assessed against the Defendants.

The grounds of appeal are examined.

1. As to the propriety of the lower court’s determination based on the specification, etc. before the correction, even if a trial decision on the said request for correction becomes final and conclusive after the closure of arguments in a civil lawsuit that caused infringement of a patent right by a patentee within a patent invalidation trial procedure, the lower court’s determination that there was a ground for retrial under Article 451(1)8 of the Civil Procedure Act by the specification, etc. before the correction cannot be deemed as having been determined (see, e.g., Supreme Court en banc Decision 2016Hu2

Therefore, even if a trial decision on a request for correction becomes final and conclusive in a patent invalidation trial regarding the patented invention of this case (patent number omitted) under the name of "a device and method to prevent the contamination of the head office," after the closing of argument in the court below, the court of final appeal shall determine whether the judgment on the parts within the scope of the right of the court below based on the specification before the correction is made.

2. As to the grounds of appeal Nos. 1 and 2, the scope of protection of the patented invention shall be determined based on the matters described in the claims. However, even if the description alone is unable to identify or identify the technical composition of the patented invention, if it is impossible to determine the technical scope, the supplement may be made by other descriptions in the specification. However, even in such a case, the extended interpretation of the claims by other descriptions in the specification is not allowed, and in a case where the technical scope is apparent solely with the descriptions in the specification, the limitation on the claims cannot be interpreted by other descriptions in the specification (see, e.g., Supreme Court Decision 2010Hu2377, Feb. 10, 201).

The lower court determined that, unless the specification of the instant patent invention does not limit the position of the party to the blocking wall against the occurrence of an electronic recording book, it cannot be interpreted by limiting the electronic recording book to be located more spatially than the blocking wall, and that the content of the drawing(s) of the specification of the instant patent invention is merely one example, and thus, it cannot be a ground for limiting and interpreting the description of the claims. However, the lower court determined that the Defendant’s product, as indicated in the judgment of the lower court, falls under the scope of the right under paragraphs (1) through (5) of

Examining the reasoning of the lower judgment in light of the relevant legal principles and records, even though there were some inappropriate parts in the lower judgment’s reasoning, it did not err by misapprehending the legal doctrine on the interpretation of claims and the judgment on the parts within the scope of rights.

3. Regarding ground of appeal No. 3

Article 42(3) of the former Patent Act (amended by Act No. 9381, Jan. 30, 2009; hereinafter the same) provides that the detailed description of the invention shall include a clear and detailed description according to the method of entry prescribed by Ordinance of the Ministry of Knowledge Economy so that a person with ordinary knowledge in the art to which the invention pertains (hereinafter referred to as "ordinary technician") can easily implement the invention. This is to clarify the technical content and scope that a third party intends to be protected as a patent by disclosing the content of the invention so that it can be easily known only with the specification. As such, the scope of the description required in the above provision refers to the extent that a person with ordinary skill can understand the invention accurately and simultaneously reproduce it without any excessive or special knowledge in light of the level of technology at the time of application (see, e.g., Supreme Court Decisions 2003Hu2072, Nov. 24, 2006; 201Hu285, Oct. 13, 2011).

The lower court determined that there was no ground for invalidation of a violation of Article 42(3) of the former Patent Act, on the ground that the description of the specification of the instant patent invention could accurately understand and reproduce the description of the instant patent invention, and that there was no ground for invalidation of a violation of Article 42(3) of the former Patent Act, even though there was no specific description on the intensity, arrangement, etc. of the instant patent invention, if

Examining the reasoning of the lower judgment in light of the relevant legal principles and records, the lower court did not err in its judgment by misapprehending the legal doctrine on the requirements for specification entry under Article 42(3) of the former Patent Act, etc.

4. Regarding ground of appeal No. 4

For reasons indicated in its holding, the lower court determined that the nonobviousness of claims 1 through 5 of the instant patent invention is not denied on the grounds that it is difficult to view that a person with ordinary skill could easily derive from prior inventions 6 or prior inventions 7, etc.

Examining the reasoning of the lower judgment in light of the relevant legal principles and records, although there were some inappropriate parts in the lower judgment’s reasoning, the lower court did not err by misapprehending the legal doctrine on the determination of inventive step, contrary to what is alleged in the

5. Conclusion

Therefore, all appeals are 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 Park Sang-ok

Justices Noh Jeong-chul

Chief Justice Noh Jeong-hee

Justices Kim In-bok