Standard for determining whether the challenged invention falls under the scope of the right to the patented invention / Requirements for deeming the challenged invention falls under the scope of the right to the patented invention if there are any changes in the composition of the claims of the patented invention in the challenged invention

In order for a challenged invention to be deemed to fall under the scope of a patent right of a patented invention, an organic combined relationship between each element and its component stated in the claims of the patented invention must be included in the challenged invention. Meanwhile, even in cases where there are any changes in the composition of the claims of the patented invention in the challenged invention, 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 in the art to which the invention pertains, and if it is possible for anyone to easily consider if there is a person with ordinary knowledge in the art to which the invention pertains, barring any special circumstance, the challenged invention in question is equivalent to the composition stated in the claims of the patented invention, and still falls under the scope of a patent right of

Article 135 of the Patent Act

Supreme Court Decision 2007Hu3806 Decided June 25, 2009 (Gong2009Ha, 1239) Supreme Court Decision 2012Hu132 Decided July 24, 2014 (Gong2014Ha, 1753) Supreme Court Decision 2014Hu2788 Decided May 14, 2015 (Gong2015Sang, 821)

Cheong full-time Co., Ltd. (Patent Attorney Oi-ok, Counsel for defendant)

CheongambPP Co., Ltd and one other (Attorney Song-ju et al., Counsel for the defendant-appellant)

Patent Court Decision 2015Heo8738 Decided September 6, 2016

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

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

1. In order for the invention in question to be deemed to fall under the scope of the right of the patented invention, the organic combination relationship between each element indicated in the claims of the patented invention and the elements thereof should be included in the invention in question. Meanwhile, 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 both inventions are identical with the solution principle of task, even if such changes are made, the same effect as the patented invention actually represents the same as the patented invention, and if it is possible for anyone to easily think of the matter with ordinary knowledge in the art to which the invention pertains (hereinafter “ordinary technician”), the invention in question shall be deemed to be equal 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 special circumstances (see, e.g., Supreme Court Decision 2012Hu132, Jul. 24, 2014).

2. The following facts are examined in light of the above legal principles and records.

A. Whether the principle of solving the task is identical

(1) The instant patent invention (patent registration number omitted) is an invention of the title “the method of constructing a bathing room to install a drainage pipe system on the floor and its three-dimensional bath room.”

(2) Of the claims 1 of the instant patent invention, elements 2, 3, and 5 of the instant patent invention Claim Claim No. 1 (hereinafter referred to as “instant Claim No. 1,” and the remainder of the claims are identical in the same way) are related to “the stage of installing the floor draining device consisting of the Ler-type connection pipe and the floor sewage pipe inside the basic concrete floor, and the stage of installing a small hole at the upper part of the Ler-type connection pipe.”

(3) Of the instant challenged inventions, the corresponding components are to install a drainage pipe, including a drainage connection pipe, a ceiling pipe, a ceiling extension pipe, and a seal pipe, inside the underground concrete floor (which correspond to the floor finishing materials located on the floor upper part of the basic concrete floor of the instant Claim 1), and to form a multiple drainage pipe and a double drainage pipe in the ceiling connecting pipe and the ceiling extension pipe, respectively.

(4) The task of both inventions is the same that the upper part of the basic concrete floor and the inner part of the floor finishing materials can be easily discharged.

(5) In order to solve these issues, the instant Claim 1 invention is based on the principle of solving the task, “the discharge of sewage, etc., to the upper part of the basic concrete floor through water intake tool, with water intake apparatus installed on the upper part of the basic concrete floor of the Sejong Bridge,” which is “the discharge of sewage, etc., to the upper part of the basic concrete floor through water intake tool.”

(6) On the other hand, the challenged invention of this case is a solution principle for the task that “in installing a drainage pipe on the inner floor of the outer concrete floor of the upper part, which is not the basic concrete floor of toilets, and forming a majority hole in the ceiling connecting pipe of the drainage pipe and the ceiling extension pipe, thereby discharging water through the hole.” Therefore, the solution principle of the task cannot be deemed the same in both inventions.

(b) Whether the action effects are identical;

Due to such difference in the principle of solution of the task, the challenged invention of this case cannot expect the effective effect of discharging sewage, etc. on the upper part of the basic concrete floor during the toilet construction. Therefore, it is difficult to view that the effective effect of the instant Claim 1 invention is substantially the same as the instant Claim 1 invention.

(c) Whether the organization is a self-consible member;

(1) The floor drainage system of the instant Claim 1 invention is installed inside the basic concrete floor, is installed into the L self-connection and the floor sewage pipe, and discharges sewage, etc. from the upper surface of the basic concrete floor through the water-flow outlet installed on the upper surface of the Lic-type connection pipe.

(2) The drainage pipe of the instant invention in question is installed inside the final concrete floor, and is composed of drainage connection pipes, ceiling connection pipes, ceiling extension pipes, and sealed pipes, respectively, and discharges water contained in the final concrete floor through the 1st distribution pipe and the 2nd distribution pipe.

(3) As above, there is a considerable difference between the floor draining system of the instant Claim No. 1 and the drain pipe system of the instant invention subject to confirmation in terms of its installation location, structure, and function. Therefore, it is difficult to deem that any person can easily think if he/she ordinary technicians to change the floor draining system of the instant Claim No. 1 like the drain pipe system of the instant invention subject to confirmation.

D. Therefore, the invention in question does not include identical or equal components identical or equal to the element 2, 3, and 5 of the Claim 1 invention. Thus, the invention in question does not fall under the scope of the right to the Claim 1 invention. Moreover, since the Claim 4 invention in question contains the same element as the element 2, 3, and 5 of the Claim 1 invention in question, the invention in question does not fall under the scope of the right to the Claim 4 invention in question.

E. The judgment below to the same purport is just, and contrary to the allegations in the grounds of appeal, it did not err by misapprehending the legal principles on equal infringement, thereby affecting 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 Kim Jae-hyung (Presiding Justice)