[1] Criteria to determine whether an infringed product falls under the scope of the right to the patented invention

[2] The meaning of "the same solution principle" as the requirement for deeming the infringed product, etc. within the scope of the patent right of the patented invention and the method of determining the same.

[3] The case holding that since the solution principle with the patented invention cannot be the same as that with the patented invention because the infringed product does not have the essential or distinctive composition of the patented invention, it does not constitute an equal infringement of the patented invention

[4] In a case where an affirmative confirmation of the scope of a patent right for an invention identical or similar to an infringed product, etc. is pending in the Intellectual Property Tribunal, whether the suspension of a patent infringement lawsuit is the court's discretion

[1] Articles 97 and 126 of the Patent Act / [2] Articles 97 and 126 of the Patent Act / [3] Articles 97 and 126 of the Patent Act / [4] Article 164 (2) of the Patent Act

[1] [2] Supreme Court Decision 2007Hu3806 decided Jun. 25, 2009 (Gong2009Ha, 1239) / [1] Supreme Court Decision 97Hu2200 decided Jul. 28, 200 (Gong2000Ha, 1954) Supreme Court Decision 2004Da29194 decided Feb. 25, 2005 / [4] Supreme Court Order 91Ma612 decided Jan. 15, 1992 (Gong192, 1261)

Plaintiff, Ltd.

Defendant 1 Co., Ltd. and three others (Law Firm Gyeong & Yang, Attorneys Park Dong-hwan et al., Counsel for the defendant-appellant)

Seoul High Court Decision 2008Na9957 decided May 28, 2009

All appeals are dismissed. The costs of appeal are assessed against the Plaintiff.

The grounds of appeal are examined.

1. Regarding ground of appeal No. 1

In a case where the other party to a lawsuit seeking patent infringement has parts of a product manufactured or used (hereinafter “infringed product, etc.”) which are identical to the patent scope of the patented invention, barring special circumstances such as where the solution principle for the task of the infringed product, etc. can be achieved the same purpose as that of the patented invention even if such substitution is based on such values, and where it is obvious to the extent that anyone can easily think of the fact that the person has ordinary knowledge in the art to which the invention pertains (hereinafter “ordinary technician”), it should be determined that the infringing product, etc. constitutes a technology that could have easily been patented from the publicly known technology at the time of filing of the application for patent invention, or that the composition of the infringed product, etc. is clearly excluded from the patent scope of the patented invention through the procedure for filing the application for patent invention. However, it should be determined that the whole of the infringed product, etc. falls under the scope of the right of the patented invention as stated in the scope of the patent claim (see, e.g., Supreme Court Decision 200Hu29497, Jul. 29, 2005).

In light of the above legal principles and the records, the composition of the patented invention of this case (patent No. 429587) with the name "Operation Monitoring System and Operation Monitoring Method" and "Control Book on Operation Malar Circulation" among the elements stated in the patent claims of this case (patent No. 429587) shall be deemed to be an essential or distinctive element of the patented invention of this case in comparison with prior art, in comparison with prior art, taking into account the detailed description of the invention in the specification and the prior art at the time of application, taking into account the prior art at the time of application, etc. However, since the products subject to infringement in the judgment of the court below do not have the characteristic composition of the patented invention of this case, the solution principle of the task cannot be deemed to be the same, and therefore, it does not constitute an equal infringement of the patented invention

Therefore, the judgment of the court below that the defendants' products subject to infringement do not constitute the infringement of the patented invention of this case is just and acceptable, and there are no errors in the misapprehension of legal principles as to the infringement of equality, as alleged in the grounds of appeal.

2. Regarding ground of appeal No. 2

Even if a trial seeking confirmation of the scope of active rights with respect to an invention identical or similar to a patent infringement product, etc. is pending before the Intellectual Property Tribunal, whether or not to suspend infringement claims and damages claims based on the patent right should be determined ex officio by the court at reasonable discretion (see Supreme Court Order 91Ma612, Jan. 15, 1992, etc.).

In light of the above legal principles and the records, the decision of the court below that deliberated and judged the patent infringement lawsuit of this case without waiting the result of the active trial to confirm the scope of a patent right filed by the plaintiff against the defendant 2 corporation is just, and there is no error of law in incomplete deliberation, contrary to the allegations

3. Conclusion

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

Justices Min Il-young (Presiding Justice)