2017Hu2291 Confirmation of the scope of rights (specific)

Doz Partnership Co., Ltd.

Patent Attorney O Jae-hwan et al., Counsel for the defendant-appellant

Boskin Czebane Co.

Patent Firm Epia, Counsel for the defendant-appellant

Patent Attorney in charge and five others

Patent Court Decision 2017Heo660 decided September 14, 2017

May 28, 2020

The appeal shall be dismissed.

The costs of appeal shall be borne by the defendant.

The grounds for appeal are determined.

1. As to the ground of appeal No. 1

A. In filing a petition for a trial to confirm the scope of a patent right, the invention subject to the confirmation must be specifically identified to the extent that it can be compared with the relevant patented invention, as well as that it can be distinguishable from other patented invention under generally accepted social norms (see, e.g., Supreme Court Decisions 2010Hu3356, Sept. 8, 201). However, even if there are unclear parts in the specification or some drawings that do not coincide with the description in the specification, if it is possible to determine whether the invention subject to the confirmation falls under the scope of a patent right of the patented invention in question by comprehensively taking into account the remaining contents and drawings written in the specification, the invention subject to the confirmation should be deemed specified (see, e.g., Supreme Court Decisions 2010Hu3356, Sept. 8, 2011; 2010Hu2966, May 27, 2010).

B. According to the records, the following circumstances can be revealed: Defendant 1 also claimed against the Plaintiff that it would be bound to the scope of the right of the instant patent invention (patent number omitted) under the name of the title of “the 3rd World Cup for the purpose of using the 3rd World Cup”. The Defendant stated that the instant patent claims No. 1 (hereinafter referred to as “instant Claim No. 1”) were able to be identified in the same way as that of the instant Claim No. 1; the instant Claim No. 1 (hereinafter referred to as “the instant Claim No. 1”) was linked to the instant Claim No. 3’s instant instant instant Claim No. 1; the instant Claim No. 20148, supra, the instant Claim No. 11665, Apr. 1, 2006). The lower court concluded that the instant Claim No. 2016, “the instant Claim No. 16655, Feb. 1, 2006>

C. Examining these circumstances in light of the legal principles as seen earlier, the invention subject to confirmation can be deemed to have been specifically specified to the extent that it can be compared to the patented invention in this case. Therefore, under the premise that the invention subject to confirmation is legally specified, the judgment of the court below was based on the scope of right, and did not err by misapprehending the legal principles on the specification of the invention subject to confirmation, or by failing to exhaust all necessary deliberations, thereby adversely affecting the conclusion of the judgment.

2. As to the second part of the grounds of appeal, where a patent and an invention subject to confirmation are in a relationship of use, the invention subject to confirmation shall belong to the scope of the right to the patented invention. Here, the term “the case where two inventions are in a relationship of use” refers to the case where a new technical element is added to the technical composition of the invention subject to confirmation. The term “an invention subject to confirmation” refers to the case where the invention subject to confirmation includes an organic combination relationship between the elements and components indicated in the scope of the right to the patent invention, and uses it as it is, and maintains the unity of the invention as a patented invention within the invention subject to confirmation (see, e.g., Supreme Court Decisions 98Hu522, Aug. 21, 2001; 201Hu161, Apr. 28, 2016

The court below held that even if the invention in question includes functions and actions similar to the structure of the issue in the process of executing the invention in question, the difference related to the structure of the two inventions exceeds the extent that new effects occur since the difference in the structure of the issue in both inventions is nothing more than the specific means for solving the task, and it is difficult to see that the invention in question includes the organic combined relation between the elements of the Claim 1 and the elements thereof, and it is difficult to see that the invention in question falls under the case where the invention in question uses the invention equivalent to the Claim 1 of this case. Considering that the invention in question does not fall under the scope of the right to the Claim 1 of this case, and does not fall under the scope of the right to the Claim 4 of this case, which is a subordinate claim containing the elements of the Claim 1 of this case, as it is as is.

Examining the reasoning of the judgment of the original court in light of the aforementioned legal principles and records, the lower court did not err in its judgment by misapprehending the legal doctrine on the interpretation of the scope of rights to the claim 4 invention of this case or by failing to exhaust all necessary deliberations, thereby affecting the conclusion of the judgment.

3. 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.

Justices Kim Jong-hwan

Justices Park Sang-ok

Lee In-bok and Lee In-chul

Justices Noh Jeong-hee