[1] The requirements for recognizing the nonobviousness of a selective invention and the contents of the detailed description of the invention required in this case

[2] Whether a prior invention should specifically commence subordinate concepts constituting a selective invention in order to deny the newness of a selective invention (affirmative)

[1] Articles 29(2) and 42(3) of the Patent Act / [2] Articles 29(2) and 42(3) of the Patent Act

[1] Supreme Court Decision 2008Hu736, 743 Decided October 15, 2009 (Gong2009Ha, 1898) Supreme Court Decision 2010Hu3424 Decided August 23, 2012 (Gong2012Ha, 1629) Supreme Court Decision 2012Hu364 Decided May 16, 2014 (Gong2014Sang, 1251) / [2] Supreme Court Decision 2001Hu2375 Decided December 26, 2002 (Gong203Sang, 543), Supreme Court Decision 2005Hu338 Decided September 6, 2007 (Gong2007Ha, 1587Ha, 1636, 2047)

[Plaintiff-Appellant] MMB et al. (Attorneys Lee Jae-soo et al., Counsel for plaintiff-appellant)

D. D. D. C. L.C. (Attorney Ho-hun et al., Counsel for the plaintiff-appellant)

Patent Court Decision 2013Heo2118 Decided July 10, 2014

All appeals are dismissed. The costs of appeal are assessed against each party.

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 No. 1 by the plaintiffs

Selective invention refers to an invention in which the elements of an invention prior to or publicly announced are written as an upper concept, and only the subordinate concepts included in the above upper concept are all or part of the components (see Supreme Court Decision 2012Hu3664, May 16, 2014, etc.).

The lower court determined the inventive step on the premise that the scope of claims (hereinafter “instant Claim No. 2”) for the patent invention (patent registration number omitted) of this case’s patented invention(patent registration number omitted) (hereinafter “instant Claim No. 2”, which was corrected by the trial ruling No. 2013Ma123 of the Intellectual Property Tribunal, December 20, 2013, and the remainder of claims are also the same in the same manner) constituted the cited Invention 5 as indicated in the judgment of the lower court, and that the composition No. 1 and No. 3 of the instant patent invention(patent No. 2013, Dec. 20, 2013) was included in the cited Invention 5 as indicated in the judgment of the lower court.

Examining the reasoning of the lower judgment in light of the aforementioned legal principles and records, the lower court’s aforementioned determination is justifiable, and contrary to what is alleged in the grounds of appeal, there were no errors by misapprehending the legal doctrine

2. As to ground of appeal No. 2 by the plaintiffs

In order for the inventive step of a selective invention not to be denied, all subordinate concepts included in the selective invention have different effects from the effects of the prior invention in quality, or there is a remarkable difference in quantity even without qualitative differences. In such cases, the detailed description of the invention in the specification of the selective invention must clearly state such effects compared to the prior invention. In order to include such description, the detailed description of the invention must state the detailed description that there is a substantial difference in quality or quantity (see, e.g., Supreme Court Decision 2012Hu3664, May 16, 2014).

In light of the above legal principles and the records, the detailed description of the invention in the specification of the correction invention in this case does not contain specific contents that can confirm that “1,4- non-scrylpropye" contained in the part of the parts of the correction invention in paragraph (2) of this case has the effect of reducing sub-ratio by high molecular modification, and there is no other data to know that this is different. Thus, the non-obviousness of the correction invention in Paragraph (2) of this case is denied by comparable invention 5.

Although the reasoning of the court below does not contain some inappropriate points, the court below's conclusion that the nonobviousness of the corrective invention under Paragraph (2) of this case is denied is just, and contrary to the allegations in the grounds of appeal, there is no error of law by misunderstanding the legal principles as to the inventive step of the selective invention

3. As to the Defendant’s grounds of appeal Nos. 1 and 3

In light of the relevant legal principles and records, “4.4’s 4.4’s - non-phenyl diphenylsylate” among the parts of the corrected invention in paragraphs (5), (6), and (8) of this case, which are subordinate inventions of the corrected invention in paragraphs (2) of this case, is included in a large of 100 parts listed in the comparable Invention 1 or comparable Invention 5 as indicated in the judgment of the court below, and the part constitutes selective invention in relation to comparable Invention 1 and 5. The detailed description of the specifications of the corrected invention in this case states that “4.4’s 4.4’s - non-phenyl diphenylsylate” has the effect of reducing sub-ratios due to high moleculation compared to “KYADPT-30” used in the practices of comparable Invention 1 and 5, and thus, the part of the corrected invention in this case is not denied under subparagraphs (A) and (5), (6), (4), and (4) of this case’s -4’s 5’non-diphenyl”.

On the other hand, among the parts of the corrective invention in paragraphs (5), (6), and (8) of this case, the remaining parts of the corrective invention except “4.4's - non-phenyldiphenylylates” are not included in the part indicated in the cited invention 1 and 5, and the part cannot be deemed as an selective invention in relation to the cited invention 1 and 5. The part cannot be seen as being an selective invention in relation to the cited invention 1 and 5. However, the part concerning the remaining parts of the corrective invention excluding the "4.4's non-diphenylylates" is not included in the part concerning the cited invention 1 and 5, and its inventive step is not denied in relation to the invention in this case’s specification, which can be known by the detailed description of the invention in this case. It is not easily predicted from the cited invention 1 and 5. Therefore, the nonobviousness of the part concerning the composition, complexity, and effect of the composition of the cited invention in comparison with the part concerning the cited invention 1 and 5.

The judgment below to the same purport is just, and contrary to the allegations in the grounds of appeal, there were no errors by misapprehending the legal principles on the establishment and inventive step of selective inventions.

4. As to the defendant's second ground for appeal

In order to deny the newness of selective inventions, prior inventions must specifically start the subordinate concepts constituting selective inventions (see Supreme Court Decisions 2001Hu2375, Dec. 26, 2002; 2005Hu3338, Sept. 6, 2007, etc.).

The lower court determined that “KAYAD PET-30” used in the practice of comparable invention 1 and 5 does not fall under a component 2, but does not fall under a component 2, and that, in the case of the corrected inventions in paragraphs 5, 6, and 8 of this case, a small part of the corrected inventions in paragraphs 5, 5, 6, and 5 of this case, a small part of the corrected inventions in paragraphs 5, 6, and 8 of this case is “4,4's non-phenyl-diphenylrinated” cannot be deemed to have commenced specifically with comparable invention 1 and 5, and therefore, the corrected inventions in paragraphs 5, 6, and 8 of this case do not constitute a new part of the corrected inventions in accordance with paragraphs 5, 6, and 8 of this case.

Examining the reasoning of the lower judgment in light of the aforementioned legal principles and records, the lower court’s aforementioned determination is justifiable, and contrary to what is alleged in the grounds of appeal, there were no errors by misapprehending the legal doctrine on the

5. As to the Defendant’s fourth ground of appeal

The lower court determined that the corrective invention of paragraphs (5), (6), and (8) of this case cannot be deemed as not clearly and concisely stated, on the ground that, in the case of an ordinary engineer’s use of a part of the body included in the corrective invention of this case from the specification of the correction invention of this case, the small rate of the small portion caused by large molecule modification can be expected to be reduced rather than the liquid display device using a part of the other kind conducted prior to the filing of the application for the patent invention of this case.

In addition, the court below determined that the detailed description of the invention in the specification of the correction invention in this case clearly states the structure of a single body compound and the meaning and effect of its structure in relation to the sub-explosion caused by the high molecularation, and that the ordinary technician shows the effect of reducing sub-ratio of the "4,4'-non-diphenyl-diphenylylate" as an example of implementation, and that the remaining part of the correction invention in paragraphs 5 and 6 of this case, except for the "4,4'-non-didiphenylriphenylylate" from the detailed description of the invention in this case and the examples of implementation, can be predicted that the small part of the correction invention in this case, other than the "4,4''s non-diphenylylate" from the detailed description of the invention in this case and the part of the correction invention in this case, it is difficult to view that the correction invention in paragraphs 5 and 6

Examining the reasoning of the lower judgment in light of the relevant legal principles and records, the lower court’s aforementioned determination is justifiable, and contrary to what is alleged in the grounds of appeal, there is no error of law by misapprehending

6. Conclusion

Therefore, all appeals are dismissed, and the costs of appeal are assessed against each losing party. It is so decided as per Disposition by the assent of all participating Justices on the bench.

Justices Jo Hee-de (Presiding Justice)