In a case where Company A filed a petition for a invalidation trial against Company B, a patentee of a patented invention named “the local derived liver cell and shooting” on the ground that the nonobviousness of the patented invention is denied, and the Intellectual Property Trial and Appeal Board dismissed Company A’s petition for correction of the patent claim of the patented invention on the ground that the nonobviousness of the corrected invention is not denied, the case holding that the nonobviousness of the corrected invention cannot be denied on the ground that the ordinary skilled person could not easily derive the composition of the corrected invention of Paragraph (1) from the cited invention, and that the nonobviousness of the corrected invention cannot be denied, as long as the nonobviousness of the corrected invention of Paragraph (1) cannot be denied, the nonobviousness of the corrected invention of Paragraph (3) cannot be denied.

Article 29(2) of the Patent Act

rinked Co., Ltd. (Patent Attorney Lee Dong-young, Counsel for the defendant-appellant)

U.S.C. 1 et al. (Law Firm L&C Patent Attorney L&C et al., Counsel for the defendant-appellant)

Patent Court Decision 2012Heo6823 Decided February 13, 2013

The judgment below is reversed, and the case is remanded to the Patent Court.

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

1. In determining the inventive step of an invention, at least the scope and content of the prior art, differences between the prior art and the prior art, and the level of technology of a person with ordinary knowledge in the art to which the invention pertains (hereinafter “ordinary technician”), shall be identified based on the evidence and other records. Based on such findings, whether an invention subject to inventive step determination, even though it differs from the prior art at the time of patent application, can overcome such differences and make the invention easier from the prior art. In such cases, it shall not be determined ex post facto on the premise that the person with ordinary skill knows the technology disclosed in the specification of the invention subject to inventive step determination (see, e.g., Supreme Court Decisions 2006Hu138, Aug. 24, 2007; 2007Hu360, Nov. 12, 2009).

2. We examine the above legal principles and records.

A. In the invalidation trial procedure for the patent invention of this case (patent registration number omitted), the patent claim 1 of the patented invention of this case as corrected by the correction request from the Defendants on January 18, 2012 (hereinafter “instant correction claim 1”, and other claims also indicate in the same manner) is an invention with its technical characteristics in a way that uses the local organization, which is the leakage of local inhales, for the benefit of “undivided stem cell with the ability to divide into three or more developmental routes”.

Invention 1, as indicated in the holding of the lower judgment, it was commenced that a cell group, which was acquired by separation from the lower court after treating a local organization, is divided into three types of cells, such as a frame, stoke, local area, etc. In addition, according to the cited Invention 2 and 8 as indicated in the holding of the lower judgment, the group of cells acquired by the same method can be divided into two types of cells, such as a frame, local area, etc.

However, the comparable invention 1 is intended to provide a method of separating “former cells” from local organizations from “former cells” (the specification is as follows: “former cells are defined as “a cell performing a specific function with a capability to divide” and clearly distinguishable from “a stem cell.” The comparable invention 2 and 8 only have the purpose of identifying that the inter-pactary cells separated from local organizations have the ability to divide into somatic cells, and there is no purpose or intent to ascertain whether the stem cell can be obtained from local organizations, and therefore, in these comparable inventions, there is no purpose or intent to identify whether the stem cell can be obtained from local organizations. Accordingly, the “self-performance test required to confirm the stem cell” as stated in the specification of the correction invention of paragraph (1) of this case is deemed to have been implemented.

In addition to these circumstances, considering the fact that it is difficult for ordinary technicians to recognize the existence of stem cells without presenting the results of repeated reproductive tests in the stem cell technical field, and the fact that there are diverse types of cells in an unaffortable state in the local organization at the time of the priority date of the patent invention of this case, it cannot be said that it is difficult for them to recognize or predict that the same decentralization as before the commencement of the patent invention 1, 2, and 8 is due to the diversification of a single stem cell that exists in the local organization, and rather, there is only room to recognize that each specific decentralization route has been determined by the mixture of the whole cell cells where each specific decentralization route is already determined.

In addition, even according to the record, there is no evidence that can easily recognize or forecast that other ordinary technicians obtain stem cells from local organizations at the time of the priority date of the instant patent invention.

On the other hand, the method of confirming stem cells derived from the stem cells 6 and 9 as indicated in the judgment of the court below is initiated, but from this point, it cannot be deemed that the person with ordinary skills can easily confirm the existence of stem cells in a local organization, which is an organization different from the stem cells, and as seen earlier, it cannot be deemed that it is difficult to recognize or predict that ordinary technicians can obtain stem cells from local organizations at the time of the priority date of the patent invention of this case, as long as it cannot be seen that it is easy to recognize or forecast that the person with ordinary skills can obtain stem cells from the local organization without any particular motive, it is also difficult to find that it is easy to confirm the existence of stem cells from the local organization by applying the stem cell verification method

Therefore, unless it is determined ex post on the premise that the contents of the invention commenced in the specification of the instant patent invention had already been known, the person with ordinary skill could not easily derive the composition of the instant Claim No. 1 from comparable Invention No. 1, 2, 6, 8, 9, etc., and such ex post determination is not allowed as seen earlier. Accordingly, the nonobviousness of the instant Claim No. 1 cannot be denied.

B. As long as the nonobviousness of the corrective invention under Paragraph (1) of this case cannot be denied, the nonobviousness of the corrective invention under Paragraph (3) of this case and its composition are substantially the same as the corrective invention under Paragraph (1) of this case, Paragraph (2) of this case, which is the subordinate invention citing the corrective invention under Paragraph (1) of this case, and Paragraph (3) of this case, which is the subordinate invention citing the corrective invention under Paragraphs (4) through (8), 139 through 144, 147, 148 and 155 cannot be denied.

C. Nevertheless, the lower court determined that the nonobviousness of the instant Claim No. 1 could be denied on the ground that a person with ordinary skills could easily anticipate that a stem cell exists in a local organization from comparable inventions 1 and 2. Thus, the lower court determined that the nonobviousness of the instant Claim No. 1 could be easily derived by combining comparable inventions 6 and 9, in which the method of verifying stem cells was initiated, and that the nonobviousness of the instant Claim No. 1 was denied. Furthermore, the lower court erred by misapprehending the legal doctrine on the determination of inventive step of the invention, thereby adversely affecting the conclusion of the judgment. The

3. Therefore, the lower judgment is reversed, and the case is remanded to the lower court for further proceedings consistent with this Opinion. It is so decided as per Disposition by the assent of all participating Justices on the bench.

Justices Kim Chang-suk (Presiding Justice)