[1] Where a decision is made to commence the rehabilitation procedure under the Debtor Rehabilitation and Bankruptcy Act, whether the “litigation on property” under Article 78 of the same Act includes a trial seeking registration invalidation of a patent related to the rehabilitation company (affirmative), and whether there is a standing to be a party only to the administrator in the said trial (affirmative)

[2] Where a claimant has indicated a rehabilitation company as a party which is not a party, the measures taken by the Intellectual Property Tribunal and the Intellectual Property Tribunal without taking such measures and the rehabilitation company as a party and the party in the trial decision files a lawsuit for revocation of the trial decision, the Patent Court shall take measures to be taken

[1] When a decision is made to commence the rehabilitation procedure under the Debtor Rehabilitation and Bankruptcy Act, the right to perform the debtor's business and to manage and dispose of assets shall be exclusively applied to the administrator (Article 56(1)), and the administrator shall be the party in the lawsuit concerning the debtor's property (Article 78), and the "litigation concerning property" under this Article includes a trial seeking the invalidation of patent related to the rehabilitation company. Thus, in such a trial, the rehabilitation company is not a party, and only the administrator shall be the party to the lawsuit.

[2] If a claimant has indicated a company as a party with no standing to be a party, the Intellectual Property Trial and Appeal Board shall not only refer to the indication of the party to a request for a trial, but also determine the party by taking into account the contents of the request for a trial. Accordingly, if a final and conclusive party is a custodian, the said party’s indication shall be corrected as a custodian, and if the final and conclusive party is a rehabilitation company, the said party is not qualified as a party. In addition, if a party on a trial decision files a lawsuit for revocation of a trial decision by making a final and conclusive party to a rehabilitation company as a party without taking such measures, the Patent Trial and Appeal Board in charge of the fact-finding of the lawsuit for revocation of the trial decision shall determine the party by taking into account the contents of the claim, rather than the indication of the party. If the final and conclusive party is a custodian, the said party’s indication shall be deliberated and determined, and

[1] Articles 56(1) and 78 of the Debtor Rehabilitation and Bankruptcy Act, Article 133 of the Patent Act / [2] Articles 56(1) and 78 of the Debtor Rehabilitation and Bankruptcy Act, Article 133 of the Patent Act

[1] Supreme Court Decision 93Hu1414 Decided January 12, 1995 (Gong1995Sang, 909) Supreme Court Decision 97Hu3371 Decided January 26, 199 (Gong199Sang, 375) Supreme Court Decision 2012Da68279 Decided August 22, 2013 (Gong2013Ha, 1688)

Samsung Industry (Attorney Seo-young, Counsel for the defendant-appellant)

Cheongjin Co., Ltd. and two others

Cheongjin Co., Ltd. (Attorneys Kang Dong-dong et al., Counsel for the defendant-appellant)

Patent Court Decision 2013Heo779 Decided April 10, 2014

The judgment of the court below is reversed, and the case is remanded to the Patent Court. The defendant Cheongjin Co., Ltd.'s request for taking over the lawsuit is dismissed. The cost of the request for taking over the lawsuit is borne by the defendant Cheongjin Co., Ltd.

Judgment ex officio is made.

1. When a decision is made to commence the rehabilitation procedure under the Debtor Rehabilitation and Bankruptcy Act, the right to perform the debtor's business and to manage and dispose of the debtor's assets shall be exclusively applied to the administrator (Article 56(1)), and the custodian shall be a party in the lawsuit concerning the debtor's assets (Article 78), and the " lawsuit concerning the debtor's assets" in this Article shall also include a trial seeking invalidation of the patent related to the rehabilitation company. Thus, in such a trial, the rehabilitation company has no standing to sue, and only the administrator shall be a party.

Meanwhile, if a claimant indicated a company without standing as a party to a trial request, the Intellectual Property Trial and Appeal Board shall not only refer to the indication of the party to the trial request, but also to the determination of the party by taking into account the contents of the trial request. Accordingly, if a final and conclusive party files a lawsuit for revocation of a trial decision by a trial decision, the Patent Trial and Appeal Board shall examine and determine the party as a custodian. If the final and conclusive party is a rehabilitation company, the final and conclusive party shall not be qualified as a party to the lawsuit (see, e.g., Supreme Court Decisions 93Hu1414, Jan. 12, 1995; 97Hu3371, Jan. 26, 199; 2012Da68279, Aug. 22, 2013). In addition, if the final and conclusive party to the lawsuit is not a party to the lawsuit for revocation of a trial decision but a party to the lawsuit for revocation of the trial decision becomes final and conclusive, the Patent Court shall make the final and conclusive party’s judgment unlawful.

2. Review of the reasoning of the lower judgment and the record reveals the following facts.

A. The Defendants are patent holders of a patented invention (patent registration number omitted; hereinafter referred to as “instant patented invention”) named as “debris block for submarine use.”

B. The Plaintiff asserted that the patent invention of this case against the Defendants can be easily claimed by a person with ordinary knowledge in the technical field to which the invention pertains by the prior inventions publicly notified prior to the filing of the application, and thus, the registration should be invalidated and filed with the Intellectual Property Trial and Appeal Board.

C. The Plaintiff already started rehabilitation procedures before the instant claim was filed and the administrator was appointed, but the written appeal stated “T&T industry” as the claimant.

D. However, the patent attorney’s comprehensive delegation letter attached to the written appeal was affixed with the seal of “non-party to the Samsung Industry Manager of Samsung Company” on the name of the delegating. Nevertheless, the Intellectual Property Trial and Appeal Board, without clarifying or correcting the parties, expressed the Plaintiff as the claimant, and subsequently dismissed the instant written appeal on the ground that the patented invention could not be easily claimed from the prior inventions (hereinafter “instant trial decision”).

E. The Plaintiff filed a lawsuit seeking revocation of the instant trial decision, which was described as the claimant for the instant trial decision. The Plaintiff, as the cause of the claim, filed a lawsuit seeking revocation of the instant trial decision, because the Plaintiff, as a business entity manufacturing and selling concrete products such as matr block for the protection of submarine cables, claimed a registration invalidation trial of the instant patent invention, but the Intellectual Property Tribunal erred in the inventive step

F. The lower court recommended the Plaintiff to submit the Plaintiff’s certificate of corporate registration, and subsequently confirmed that the Plaintiff was a rehabilitation company through the Plaintiff’s certificate of corporate registration submitted accordingly, and subsequently submitted an application for correction of the party indication to correct the Plaintiff’s indication as a custodian.

G. The Plaintiff submitted, as the recommendation of correction, an application for correction of the party indication with the indication of the party as a custodian in the rehabilitation company, and re- submitted the delegation of the lawsuit as a custodian.

H. After that, on the premise that the Plaintiff’s application for the correction of the indication of the party is lawful, the parties made an objection only to the inventive step of the instant patent invention on the premise that the application for the correction of the indication of the party was lawful. Meanwhile, the Plaintiff asserted to the effect that the Plaintiff’s application for the correction of the indication of the party should be accepted on the grounds that the representative director and the manager of the rehabilitation company are the same person and there is only a difference in legal qualifications, and that there is no problem in guaranteeing the party’s right to defense, on the date of pleading, the Plaintiff

I. Based on such progress, the lower court revoked the instant trial decision on the ground that: (a) the Intellectual Property Trial and Appeal Board, as a matter of course, did not take measures to clarify or correct the relevant party although it could have known that the Plaintiff was under rehabilitation proceedings and the administrator requested the instant trial; and (b) did not take measures to clarify or correct the relevant party.

3. Examining these facts in light of the legal principles as seen earlier, it is deemed that: (a) if there was a decision to commence the rehabilitation procedure, the party would have filed a petition for a trial for invalidation of registration with the administrator as a claimant if he/she knew that the standing to file a petition for a trial would only be the administrator and that the judgment received under the name of the administrator would naturally affect the rehabilitation company; and (b) in light of the power of attorney attached to the petition for a trial or the power of attorney submitted to the court below, the Plaintiff’s legal brief as of March 24, 2014, the administrator would actually file a petition for the adjudication in this case; and (c) the Plaintiff filed a lawsuit for revocation of the trial decision; and (d) the lower court should have deliberated and determined after taking measures to correct the party’s indication as the administrator.

Nevertheless, the lower court concluded the pleading and revoked the instant trial ruling without taking measures to confirm the parties, such as ordering the Plaintiff to clarify the defective grounds for the defect on the date of pleading. In so doing, the lower court erred by misapprehending the legal doctrine on the confirmation of parties and the court’s duty to explain, thereby failing to exhaust all necessary deliberations, thereby adversely affecting the conclusion of the judgment.

Meanwhile, the record reveals the fact that the decision to terminate rehabilitation procedures was made with respect to the plaintiff after the appeal. Accordingly, the court below after remanding the case shall confirm the parties in consideration of the above circumstances, and point out that the court below should examine and determine the non-obviousness of the patented invention in this case, unless there exist any other improper grounds for rejection.

4. On December 31, 2015, the Defendant Cheongjin Co., Ltd. filed an application to resume the lawsuit with the Supreme Court on January 11, 2016, when Cheongjin Co., Ltd. was merged and dissolved with Cheongjin Co., Ltd. on December 31, 2015.

However, according to the records, after the Defendants filed a final appeal and filed a statement of grounds for final appeal, it can be known that Cheongjin Co., Ltd. was merged with Defendant Cheongjin Co., Ltd. (the trade name of Defendant Cheongjin Co., Ltd. was changed to Cheongjin Co., Ltd.). As long as the litigation procedures in the final appeal were entered the same phase, it is unnecessary to take over the lawsuit, and thus, it is not necessary to accept an application for taking over the lawsuit (see, e.g., Supreme Court Decision 2014Da210449, Apr. 29, 2016). However, it is pointed out that the court below’

5. Therefore, without further proceeding to decide on the grounds of appeal, the lower judgment is reversed, and the case is remanded to the lower court for further proceedings consistent with this Opinion. The Defendant Cheongjin Co., Ltd.’s application for taking over the lawsuit is dismissed, and the expenses incurred in taking over the lawsuit are borne by the Defendant Cheongjin Co., Ltd.’s applicant for taking over the lawsuit. It is so decided as per Disposition by the assent

Justices Jo Hee-de (Presiding Justice)