[1] The case holding that in a case where, with respect to the determination of the inventive step of the key elements of the patent claim No. 2 invention among the patented inventions whose names "a luminous film with diverse height structural screen and goods consisting of such films," no demonstration or motive, etc. is presented that the invention can be described in the said component if the technology is combined or combined with the technology in the inventions No. 1 and 2, the case holding that it is not allowed to ex post facto determine whether the inventive step of the invention is denied on the premise that the ordinary technician already knows the contents of the invention described in the specification of the corrected patented invention

[2] In a case where a request for correction is made in a patent invalidation trial, the determination of whether to allow correction should be made in entirety (affirmative)

[1] The case holding that, in case where the inventive step of "in determining the inventive step of the corrected patent claim No. 2, which is an essential element of the corrected patent claim No. 2, among the patented inventions, "a luminous flom film with a high height structure screen and goods consisting of such a film, the composition that actually has two sides identical in substance, and that does not substantially reduce the total amount of light in the axis direction vertical on the film surface," the determination of the inventive step of the corrected patent claim No. 2 cannot be made after combining the identical invention No. 1 and No. 1 and No. 5334, etc., on the premise that the description of the corrected patent invention had already been known, unless the determination is made that the corrected patent invention No. 1 and No. 5440, supra, constitutes the above component ex post facto, on the premise that the contents of the invention as described in the specification of the corrected patent invention had already been known, it cannot be easily derived, and such determination cannot be allowed ex post facto.

[2] Where a request for correction is made in a trial for invalidation of a patent, whether to recognize a correction is also examined in the trial procedure. Thus, unlike a request for an independent trial for correction, the part of a request for correction is not determined separately and becomes final and conclusive

[1] Article 29 (2) of the former Patent Act (amended by Act No. 6411 of Feb. 3, 2001) / [2] Article 133-2 of the Patent Act

[1] Supreme Court Decision 2006Hu138 Decided August 24, 2007 (Gong2007Ha, 1486), Supreme Court Decision 2007Hu3660 Decided November 12, 2009 (Gong2009Ha, 2112) / [2] Supreme Court Decision 2006Hu2912 Decided June 26, 2008 (Gong2008Ha, 1087), Supreme Court Decision 2007Hu1053 Decided January 15, 2009 (Gong2009Sang, 171)

[Plaintiff-Appellant] Plaintiff (Attorney Son Ji-yol et al., Counsel for plaintiff-appellant)

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

Patent Court Decision 2009Heo6526 Decided August 18, 2010

The part of the lower judgment regarding the patent claim No. 398940 pertaining to the patent claim No. 398940 is reversed, and that part of the case is remanded to the Patent Court. The remaining grounds of appeal are dismissed.

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

1. As to the invention of this case Nos. 1, 3 through 9

Examining the reasoning of the judgment below in light of the records, it is just in the court below to determine that, for the reasons stated in its holding, all elements of claim 1 (hereinafter referred to as "claim 1 invention of this case," the correction of which is deemed legitimate in the patent invalidation trial of this case among the patented inventions of this case (Patent No. 398940) are publicly known to comparable invention 1, and as long as the composition is substantially the same, both inventions are the same as the objective purpose and effect of both inventions. Thus, both inventions are the same, and even if they are not the same, the corrected Claim 1 invention of this case can easily be made by a person with ordinary knowledge in the art of this case (hereinafter referred to as "ordinary technician") by comparable invention 1 and 4, and thus, its newness or inventive step is denied. In so doing, contrary to what is alleged in the grounds of appeal, there is no error of law by misapprehending the legal principles as to the judgment of newness or inventive step of the invention.

In addition, the ground of appeal as to the Claim No. 8 and Claim No. 9 invention of this case, which are corrected together as a subordinate claim of the Claim No. 1 invention of this case and the corrected Claim No. 1 invention of this case, is not accepted since it is based on the premise that the newness and inventive step of Claim No. 1 invention of this case are not denied.

2. As to the Claim 2 invention of this case

The elements 2-1 and components 2-3 of the instant Claim No. 2 corrected together as a dependent claim of the corrected Claim No. 1 invention are limited to all the corrected element 1-2 of the instant Claim No. 1 invention, and the corrected specification of the instant patent invention does not contain any indication to recognize the significant effect following the limitation of the above numerical value. Thus, it is merely a simple numerical limitation to the extent that a person with ordinary skills can properly choose through ordinary and repetitive experiments.

However, the components 2-2 of the decision of the court below are as follows: “The frithm elements have the same 2 pages substantially, and are composed not to substantially reduce the total amount of light on the film surface,” whereas the frithm elements of comparable inventions 1, which are response components of comparable inventions 1, have different parts depending on the frithm part, and there is a difference in that they do not have the same 2 pages.

Meanwhile, the normal angle of the refrithm in the comparable invention 2 is the same as 90∑, and there appears a composition with the same 2 pages. However, the comparable invention 1 is a technical feature to solve the task of removing the brithmless angle by employing the two different compositions of the defrithm. As such, it is difficult to easily consider that: (a) removing different brithm from the comparable invention 1; and (b) introducing the same 2 pages appearing in the comparable invention 2, it would have lost the original technical meaning of the comparable invention 1; and (c) the comparable invention 2 is not allowed to make a judgment on the same element of the identical invention as an ex post facto combination or combination of the two different components of the identical invention, on the contrary that the two different components of the identical invention are not identical after the combination of the two different components of the identical invention.

Thus, the corrected Claim No. 2 invention of this case cannot be denied by the cited Invention 1 and 2. Nevertheless, the lower court determined that the nonobviousness of the Claim No. 2 invention of this case, which was corrected on the premise that there is no difficulty in combining the Claim Nos. 1 and 2 with the cited Invention 1 and 2, is denied by comparable Invention 1 and 2. In so doing, the lower court erred by misapprehending the legal doctrine on the determination of inventive step, which affected the conclusion of the judgment, and

3. Scope of reversal

Where a correction is requested in a patent invalidation trial procedure, whether to recognize a correction is examined together with the trial procedure. Unlike the case of a request for an independent trial for correction, the part of a request for correction is not determined separately and becomes final and conclusive at the time a trial decision becomes final and conclusive (see, e.g., Supreme Court Decisions 2006Hu2912, Jun. 26, 2008; 2007Hu1053, Jan. 15, 2009).

The part concerning the invalidity of patent of the corrected Claim No. 2 in the judgment of the court below should be reversed for the reasons as seen above. Since the correction of this case extends to the invention of this case No. 1 through No. 7, the correction of this case must be reversed together with the parts concerning the invalidation of patent of the corrected invention of this case under the above legal principles.

4. Conclusion

Therefore, without further proceeding to decide on the remaining grounds of appeal, the part concerning the invention of this case among the judgment below is reversed, and that part of the case is remanded to the court below. The remaining appeal is dismissed. It is so decided as per Disposition by the assent of all participating Justices on the bench.

Justices Lee In-bok (Presiding Justice)