Standard for determining whether the composition of the challenged invention described in functional expressions is specified as a requirement for filing a petition for a trial to confirm the scope of a patent right, which is the subject matter of a petition for trial.

In filing a claim for the confirmation of the scope of a patent right, the invention subject to a request for a trial on the confirmation of the scope of a patent right must be specified as much as possible in comparison with the patented invention. In addition, even though the detailed composition of the subject matter is not to be written in whole, the specific composition corresponding to the elements of the patented invention must be stated as necessary to determine the difference in comparison with the elements of the patented invention at least in comparison with the elements of the patented invention. In particular, if the composition of the challenged invention is described in the so-called functional expression, such as function, effect, nature, etc., in particular, if it is not stated to the extent that the technical meaning of the composition can be clearly grasped by a person with ordinary knowledge in the technical field to which the subject matter pertains, the composition of the challenged invention can be compared with the patented invention.

Article 135 of the Patent Act

Supreme Court Decision 2004Hu486 Decided September 29, 2005 (Gong2005Ha, 1720) Supreme Court Decision 2007Hu3356 Decided September 10, 2009 (Gong2009Ha, 1690)

Gongjin Co., Ltd. (Patent Attorney Lee Jae-soo, Counsel for defendant-appellee)

Defendant (Patent Attorney Lee Im-soo, Counsel for defendant-appellant)

Patent Court Decision 2010Heo6300 decided June 9, 201

The appeal is dismissed. The costs of appeal are assessed against the defendant.

The grounds of appeal are examined.

1. In filing a request for a trial to confirm the scope of a patent right, the invention subject to confirmation must be specified as much as it can be compared with the patented invention in question. In addition, even though the concrete composition of the subject matter is not to be stated in order to specify it, the specific composition of the part corresponding to the elements of the patented invention must be stated at least as necessary to determine differences compared with the elements of the patented invention (see, e.g., Supreme Court Decisions 2004Hu486, Sept. 29, 2005; 2007Hu3356, Sept. 10, 2009). In particular, where the composition of the subject matter of confirmation is indicated in so-called functional expressions such as function, effect, nature, etc., a person with ordinary knowledge in the field of technology to which the subject matter pertains (hereinafter referred to as “ordinary technician”), if it is not clearly stated in the description or drawings of the subject matter of confirmation to the extent that it is possible to determine the technical meaning of the composition of the patented invention.

2. According to the reasoning of the lower judgment, the lower court determined that: (a) the invention subject to confirmation cannot be determined specifically to the extent that it can not be determined to be a difference between Paragraph 1 and Paragraph 1 (hereinafter referred to as “the instant paragraph 210”) in its composition (2); (c) the invention subject to confirmation can not be determined specifically from the instant paragraph 1 (hereinafter referred to as “an invention subject to confirmation”) since it cannot be determined to be an invention subject to disclosure, inasmuch as it can not be determined specifically from the instant paragraph 1 (hereinafter referred to as “the instant paragraph 1) because it is difficult to find out how the central axis inserted (215) can not be converted into a vertical exercise or straight line, and the technical meaning of its composition cannot be clearly determined to the extent that it can not be determined separately from the instant paragraph 1 (hereinafter referred to as “the instant invention subject to confirmation”) on the ground that there is no difference between the instant patent invention (patent No. 321873) and the instant paragraph 1 (hereinafter referred to as “the instant invention subject to as “the instant case”).

In light of the above legal principles and records, the above determination by the court below is just, and there is no error in the misapprehension of legal principles as to the specification of the invention subject to confirmation and the interpretation of the scope of claims and the doctrine of equivalents.

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 Kim Chang-suk (Presiding Justice)