[1] Standard for determining the inventive step of a patent invention by citing various prior art documents

[2] In a case where the inventive step under paragraphs (2), (4) through (6) of the patent claim No. 2, and (6) of the patent claim No. 2, which is the patentee of the patent invention named “sweld transport prefabricateds”, is at issue, the case holding that the court below erred by misapprehending the legal principles, in light of the composition and technical task of the corrective invention, inasmuch as the corrective invention under paragraphs (2) and (6) can be easily made by combining ordinary technicians with widely known art to prior inventions, and thus, the inventive step is denied, and even though it cannot be deemed that the inventive step of the corrective invention under paragraphs (4), (5), which adds and limits some elements while including the technical characteristics of the corrective invention under paragraphs (2

[3] In a case where a trial for correction is pending in the Intellectual Property Trial and Appeal Board, whether the trial for revocation of a patent invalidation trial on a patented invention pending in the court of final appeal shall be suspended (negative)

[1] Article 29(2) of the Patent Act / [2] Article 29(2) of the Patent Act / [3] Articles 133 and 136 of the Patent Act

[1] Supreme Court Decision 2005Hu3284 Decided September 6, 2007 (Gong2007Ha, 1582), Supreme Court Decision 2016Hu564 Decided June 28, 2018, Supreme Court Decision 2016Hu1529 Decided December 13, 2018, Supreme Court Decision 2016Hu502 Decided January 31, 2019 (Gong2019Sang, 69) / [3] Supreme Court Decision 2014Hu1709 Decided January 15, 2015

Sweak (Law Firm LLC, Attorneys Gyeong-si et al., Counsel for the plaintiff-appellant-appellant)

Defendant (Law Firm Jinjin, Attorneys Soh-nam et al., Counsel for the defendant-appellant)

Patent Court Decision 2017Heo8046 decided July 26, 2018

The part of the lower judgment against the Plaintiff is reversed, and that part of the case is remanded to the Patent Court. The Defendant’s appeal is dismissed.

The grounds of appeal are examined.

1. Plaintiff’s ground of appeal

A. In determining the inventive step of a patented invention by citing various prior art references, the inventive step of the patented invention is denied in a case where a person who has ordinary knowledge in the art at the time of the application of the patented invention in question (hereinafter “ordinary technician”) can easily conduct such combination in light of the technical level at the time of the application of the patented invention in question, technical awareness, basic tasks of the relevant technical field, development tendency, demand of the relevant industry, etc. (see Supreme Court Decision 2005Hu3284, Sept. 6, 2007, etc.).

B. We examine the above legal principles and the evidence duly adopted by the court below.

1) As to the corrective invention under paragraphs 2, 4, and 5 of this case

A) The instant patent invention (patent registration number omitted) is an invention with the title “a assembly and stay for transport by adjacent means.” Article 2(2) of the said Claim (hereinafter “instant Claim Nos. 2” and “the instant Claim Nos. 2”) limits the scope of the instant patent invention to include the subordinate claim of the instant corrective Claim No. 1, which is the part of the instant corrective invention. The instant patent invention includes the word “an h where the upper number of vertical cpppones and the vertical donspones of the vertical dones,” the two parallels of the hons where the said hons are combined, the fixed hons where the hons are inserted, and the hons of the hons where the hons are inserted, and the honks that are inserted in the fixed honspons of plastic groups adjoining other parts, which are inserted in the upper part.”

B) Of the instant corrective invention as referred to in paragraph (2) of this case, the composition of inserting and combining the two frameworks in a liquid form (the composition included in the instant corrective invention, in which the instant corrective invention is cited; hereinafter “clock fixed structure”) and the composition of the two sub-clocks, excluding the two sub-pocks, and the three sub-pocks, i.e., the two sub-pocks 1. However, since the aforementioned sub-pocks constitute well-known art, the composition of the sub-pocks 3 fixed-pocks excluding the fixed-pocks 3 fixed-pocks excluding the two sub-pocks 5 pre-pocks excluding the fixed-pocks 3 fixed-pocks excluding the fixed-pocks 3 fixed-pocks in the sub-paragraph (2) invention of this case is identical to the pre-pocked one.

C) The technical task of the instant patent invention and the instant patent invention 1 and 5 are the same in that both the two hacks increase the compressed rate and provide a solid mat container gambling using hacks. Each literature published by the 1 and 5 preceding inventions cannot be found to the effect that the combination of the constituent elements of each invention is obstructed. There is a hack part in the preceding invention 1 and a panel’s formation of the hacker type “cock” type. Thus, there is no particular difficulty in replacing the part of the preceding invention 1 and the composition of the hacker type “cock” type with the hacket of the preceding invention 5, and there is no particular difficulty in adding the structure of the fixed hacker type and the composition of the hacker type, which is an widely known art, to the extent possible from the preceding invention.

D) Therefore, the instant corrective invention is denied inasmuch as ordinary technicians can easily make an invention by combining prior inventions 5 and widely known art to prior inventions 1. Furthermore, insofar as the nonobviousness of the instant corrective invention is denied, the nonobviousness of the instant corrective invention cannot be deemed as a matter of course to affirm the nonobviousness of the instant corrective invention, which adds and limits some elements while including its technical characteristics, and should be examined and determined as to whether the nonobviousness of the instant corrective invention, including its added and limited elements.

E) However, while recognizing that the composition of the correction invention of Paragraph 2 of this case was made in prior inventions 1, 5 and widely known art, the lower court determined that the nonobviousness of the correction invention of Paragraph 4 and Paragraph 5 of this case, which are subordinate claims, is not denied on the ground that it is difficult to combine the structure of the coppacks and the composition of the fixed chain inserted in the prior inventions 5, which are widely known art. On the premise of this, the lower court determined that the inventive step of Paragraph 4 of this case, which

The court below erred by misapprehending the legal principles as to the determination of inventive step of a patented invention and thereby adversely affecting the conclusion of the judgment. The ground of appeal assigning this error is with merit.

2) As to the corrective invention under Paragraph 6 of this case

A) The corrective invention of Paragraph 6 of this case is a subordinate claim cited in sequence the corrective invention of Paragraphs 1 and 3 of this case. It is limited to the corrective invention of Paragraph 3 of this case to include “Bags formation formation of the upper vertical frame and Bags formation of Bags on both sides, respectively, for the formation of Bags for the formation of Bags on both sides, and the publication of the inserted bags formed under the upper direction so that the edge of Pags adjoining plastic teams may be inserted.”

B) Of the instant corrective invention as referred to in paragraph 6 of this case, the remainder composition, excluding the above vertical frame and the Nagrgrology, appears in the preceding invention 1. However, the aforementioned vertical frame structure is merely a structure that a person with ordinary skills can easily adopt to improve the strength of container body 1 of the preceding invention. The composition of the above Nagrgrgrgrgrgrgrgrgrgrgrgrgrgrgrgrgrgrgrgrgrgrgrgrgrgr

C) Of the composition of the instant corrective invention under paragraph 6, the function and operating effect are identical in that both the inserting channels formed in the vertical frame and the “cadic body” type of the prior invention 1 both are inserted and connected by the board or the panel. In addition, in a case where adding the vertical frame on the face of the prior invention 1, it is unnecessary to see whether a person with ordinary skill easily removes the “sh” portion of the prior invention 1 and applies the “cadic body” type in the vertical frame. Thus, the instant corrective invention under paragraph 6 is denied since a person with ordinary skill can easily make an invention by combining the widely known and used art with the prior invention 1, and thus, its inventive step is denied.

D) However, while the lower court acknowledged that the composition of the above vertical frame and the Nabag Contracts can easily be made from prior inventions 1 and widely known art, etc., the lower court determined that the instant corrective invention did not deny its nonobviousness on the ground that there were differences between the “chilling channels” formed in the vertical frame and the “chilling type” type 1 of the prior inventions 1.

The court below erred by misapprehending the legal principles as to the determination of inventive step of a patented invention and thereby adversely affecting the conclusion of the judgment. The ground of appeal assigning this error is with merit.

2. As to the Defendant’s ground of appeal

The ground of appeal purporting that the trial on revocation of a patent invalidation trial on a patented invention pending in the court of final appeal should not be interrupted on the ground that a trial on correction of the same patented invention is pending in the Intellectual Property Tribunal (see, e.g., Supreme Court Decision 2014Hu1709, Jan. 15, 2015). We cannot accept the allegation in the grounds of appeal that the result of a trial on correction should be avoided on a different premise.

3. Conclusion

Therefore, the part of the judgment of the court below against the plaintiff is reversed, and that part of the case is remanded to the court below for a new trial and determination, and the defendant's appeal is dismissed. It is so decided as per Disposition by the assent of all participating

Justices Ahn Jae-chul (Presiding Justice)