Furthermore, Hybret (Law Firm Multilater, Attorney Choi Jong-young, Counsel for the plaintiff-appellant)

Postal Co., Ltd. (Law Firm LLC, Attorneys Lee Jae-chul et al., Counsel for the plaintiff-appellant)

September 14, 2017

Seoul Central District Court Decision 2015Gahap578109 Decided June 16, 2017

1. Revocation of the first instance judgment.

2. The plaintiff's primary claim and conjunctive claim are all dismissed.

3. All costs of the lawsuit shall be borne by the Plaintiff.

I Purport of claim

1. In the first place, the Defendant shall pay to the Plaintiff 70 million won and its currency 456,428.43 billion won, which is calculated by applying the redemption rate for customer telegraphs in commercial banks as of the closing date of argument, 5% per annum from January 1, 2015 to June 28, 2017, and 15% per annum from the next day to the date of delivery of the application for change of claim and cause of claim, with respect to KRW 70 million, to the Plaintiff.

2. Preliminaryly, the Defendant will pay to the Plaintiff 50 million won and the English currency 291,900 won among them, the amount calculated by applying the redemption rate for customer telegraphs in commercial banks as of the date of closing the argument to the Plaintiff at the rate of 5% per annum from January 1, 2015 to June 28, 2017, and 15% per annum for KRW 500 million from the next day to the date of complete payment (the Plaintiff added the conjunctive claim to this court, but its substance is merely a mere reduction of the claim, and it is difficult to view it as its primary and preliminary relation).

II Purport of appeal

The part against the defendant among the judgment of the first instance is revoked, and the plaintiff's claim corresponding to that part is dismissed.

1. Basic facts

A. The plaintiff's patent right

1) The Plaintiff is a patentee of the patented invention described below (Paragraph 1 of the claim is referred to as “instant patented invention”).

The name of the invention included in the main sentence: The date / the priority date / the registration date / the registration number: 4.00 on January 5, 1995 / the claims / 14 on June 14, 199 / 199 / the claims / the claims / the number of 0.0 on June 14, 199 / the claims / the number / the number of the trademarks / the number of the inventions included in the table / the number of trademarks / the number of trademarks / the number of trademarks / the number of trademarks / the number of trademarks / the number of trademarks / the number of trademarks / the number of trademarks / the number of trademarks / the number of trademarks / the number of trademarks / the number of trademarks / the number of trademarks / the number of trademarks / the number of trademarks / the number of trademarks / the number of the trademarks / the number of the existing trademarks / the number of the existing trademarks / the number of the existing in the adjacent part.

2) The patented invention of this case is known as a contact method with which the addition of probe by inserting probes into the body and movement of probebes into the body, and the addition of the parts around probbbs by using heat in the body, and the combination of both the parts of the two sides of the folds by the parallel, is known as a "masting and FSW" method. Meanwhile, the Mascopistus (FSW equipment) is used as a term "Mascoping and FSW method", which is used exclusively for the working of the patented invention of this case (the same in the following likewise).

B. The plaintiff's execution contract

On September 15, 2004, the Plaintiff entered into a license agreement with Korea Mutual Assistance Co., Ltd. (hereinafter “Korea Mutual Assistance”) with the following terms (hereinafter “instant license agreement”).

1) The Plaintiff belongs to the Korea-U.S. cooperation and permitted the use of the instant patented invention for non-exclusive purposes at the place where separate implementation thereof is possible.

2) The Korea Trade Union may not grant a license to any other person (or hall operations) to the extent that it is possible to grant a license to any other person.

3) This Agreement shall become effective as of July 1, 2002.

C. The defendant's production and delivery of goods;

1) From October 29, 2002 to February 28, 2014, the Defendant produced and supplied 22 Mucom Contac 22 to Han Mutual Assistance.

2) In addition, on April 29, 2014, the Defendant entered into a supply contract on two M&D joints with Korea-U.S. Around January 5, 2005, which was the expiration date of the patent invention of this case, supplied two M&D joints with Korea-U.S. on two M&Ds.

【Ground of recognition】 The fact that there has been no dispute, Gap’s 1 through 4, 13 evidence, Eul’s 1, 2, 8, 13, and 29 (including each number), and the purport of the whole pleadings

2. The plaintiff's assertion

(a) The primary claim

The Defendant manufactured and supplied Ming Ting Ting Ting Ting Ting Ting Ting Ting Ting Ting Ting Ting Ting Ting Ting Ting Ting Ting Ting T. In the process, the Defendant’s each act constitutes indirect infringement or direct infringement on the Plaintiff’s patent right.

In addition, from August 1, 2002 to July 31, 2007, the Defendant participated in a project for the development of light booms for transport machinery (hereinafter “the first research and development project”), and used the instant patented invention while participating in a national research and development project related to Ming and Ming and Ming (hereinafter “the second research and development project”), since 2011, each of such activities constitutes an indirect infringement and direct infringement on the Plaintiff’s patent right.

Therefore, the Defendant is obliged to pay the Plaintiff the amount of KRW 700 million equivalent to the royalty and the damages for delay, as compensation for indirect infringement of patent rights or direct infringement.

(b) Preliminary claim

If the Defendant’s use of the patented invention in the first and second research and development projects cannot be deemed as infringing the Plaintiff’s patent right, the Defendant is obligated to pay to the Plaintiff the Plaintiff the royalty amounting to KRW 500 million for damages for indirect infringement of patent rights or for direct infringement due to the production, supply, tallying, and demonstration of the Ming and Ting and Tinging devices.

3. Determination

A. Order of determination

1) The Plaintiff’s primary and conjunctive claims are premised on that “the Defendant’s act of manufacturing and supplying Mastsing and delivering the Mits to Kitna,” and during that process, the Defendant’s respective production and supply activities (hereinafter “the instant production and supply activities”) may constitute indirect infringement, first of all, examine whether the Defendant’s respective production and supply activities (hereinafter “the instant production and supply activities”) may constitute indirect infringement, and whether the said activities may be deemed as direct infringement or indirect infringement, in addition to the “the act of manufacturing and supply” and the “tallying and demonstration activities” (hereinafter “the instant series of production and supply activities”).

2) Next, we examine whether the Plaintiff infringed the Plaintiff’s patent right by executing the instant patented invention while participating in the research and development project.

B. Whether “the production and delivery of this case” constitutes indirect infringement

1) According to the above basic facts, the Defendant’s “production and delivery of the instant product” constitutes an act of producing and transferring things used exclusively for the working of the instant patented invention, which is an invention of a method (Article 127 subparag. 2 of the Patent Act).

2) Determination as to the establishment of indirect infringement

A) Defendant’s assertion

(1) Since the Defendant was only entrusted with the manufacture and supply of the M&C devices from Han Han-ro cooperation and supplied them entirely, the Defendant’s act is merely an act as a non-exclusive licensee, and thus does not constitute the Plaintiff’s patent infringement.

(2) In addition, indirect infringement stipulated in Article 127 of the Patent Act is the premise of direct infringement. Even if Korea-style cooperation, which is a non-exclusive licensee, has used the M&A equipment supplied by the Defendant, it cannot be deemed that the production and supply of the instant product constitutes an indirect infringement unless the Plaintiff’s patent right is directly infringed.

B) Determination

(1) Legal principles necessary for judgment

Article 127 Subparag. 1 of the Patent Act, which provides for indirect infringement, does not implement any product that has all the elements of the invention, and where it is highly probable that all the elements of the invention will be carried out even if the act was conducted in the preceding stage, to the extent that the patent right is not unfairly extended, it shall be deemed an infringement of a patent under certain conditions to enhance the effectiveness of remedy for infringement of a patent right to the extent that the patent right does not unfairly extend (see Supreme Court Decisions 2007Hu3356, Sept. 10, 200; 2014Da42110, Jul. 23, 2015).

(2) Specific determination

Where a non-exclusive licensee with respect to a method invention produces goods used exclusively for the implementation of the method invention (hereinafter referred to as “exclusive product”) and conducts a method invention by himself/herself, if it is recognized as an indirect infringement, it would result in an unfair restriction on a non-exclusive license. On the other hand, a patentee would normally recover or recover profits equivalent to the value of the relevant patent by appropriately establishing a license amount or concluding a license agreement with the producer of the exclusive product. Thus, barring any special circumstance, a non-exclusive licensee cannot be deemed an indirect infringement on the non-exclusive licensee’s production of exclusive product.

Likewise, in cases where a non-exclusive licensee acquires exclusive goods through a third party and conducts a method invention, unlike cases where a non-exclusive licensee produces exclusive goods and executes a method invention, it does not immediately constitute an indirect infringement. In other words, a patent holder can set a royalty by expectationing that a patent should be granted by receiving exclusive goods from a third party when concluding a license agreement, and thus, the need to protect the patent holder is not significant, while it may result in an unjust expansion of the patent right if a third party’s production and supply is considered as an indirect infringement.

However, in the event that an agreement is made specifically to prohibit the act of producing exclusive goods by itself and conducting a method invention, if such agreement is violated, the non-exclusive licensee shall be liable for the non-exclusive licensee's default, and the third party who knowingly participated in the violation shall be held liable for damages arising from a separate tort.

Ultimately, it cannot be deemed that the Defendant’s production and supply of the M&C countercons, which is the former product of the method invention, to the Hanra Mutual Aid, the non-exclusive licensee of the method invention, immediately infringed the Plaintiff’s patent right.

(3) Judgment on the Plaintiff’s assertion

The plaintiff has received separate payments by distinguishing between "working fees for consideration that permit the implementation of a method invention" and "working fees for consideration that permit the production and sale of exclusive products" under a number of different working agreements, and only paid "working fees for consideration that permit the implementation of a method invention" with respect to Korea's mutual aid, so the defendant's act of manufacturing and supplying exclusive products to Korea's mutual aid associations constitutes infringement of patent rights.

However, Korea-U.S.A. under the instant license agreement is prohibited from allowing a third party the right to use (2.3 of the instant license agreement). However, the content of the instant license agreement is that Korea-U.S.C. cannot be sub-l., and it cannot be said that Korea-U.S.C. under the instant license agreement prohibits the use of a method invention by itself or the delivery of a third party-l. Even if the said agreement is prohibited from being supplied with a third party-l. As such, it cannot be deemed an essential effect of a patent right, and it is merely an effect arising from a special agreement between the Plaintiff and Korea-U.S., and there is no evidence to acknowledge the existence of such special agreement and to acknowledge the fact that the Defendant actively participated in the violation of the contract. Therefore, the Plaintiff’s above assertion is without merit.

C. Whether “the series of production acts of this case” constitutes infringement

Comprehensively taking account of the overall purport of the arguments in the above basic facts, the defendant recognized the fact that the defendant conducted tallying and smoke by using the patented invention of this case in the process of confirming whether he displayed the agreed performance in the process of producing and supplying Madna Mutual Assistance in the process of producing and supplying Madna Mutual Assistance in Korea.

B. However, as seen in the above paragraph (b), the Defendant’s act of manufacturing Ming Ting Ting Ting Ting Ting Ting Ting Ting Ting Ting Ting Ting Ting Ting and delivering it to Korea Patent Association, which is a non-exclusive licensee of the instant patent invention, cannot be deemed as an indirect infringement and direct infringement on the Plaintiff’s patent right. Thus, it cannot be said that the Plaintiff’s patent right was directly infringed or indirectly infringed on the Plaintiff’s entire “the instant series of manufacturing activities” solely on the ground that such act was conducted, unless there exist special circumstances, such as selling the goods acquired through the process of ting and transmitting as above, such as selling the goods that “the patentee can obtain from the patented invention.”

(d) Whether participation in research and development projects constitutes infringement;

1) Whether to conduct the project

In relation to the development of Shab 3) Shab, the Defendant used the second M&D research and development method, “the second M&D business,” the Defendant used the M&D business at least four times in 2012.

With the exception of the Defendant’s identity, the evidence submitted by the Plaintiff, such as evidence Nos. 7, 39, 41, is insufficient to recognize whether the Defendant used or worked the patented invention of this case in relation to the research and development projects of the first and second research and development projects of this case. There is no other evidence to acknowledge it.

2) Defendant’s assertion and judgment

A) Defendant’s assertion

The defendant asserts that the above use of the patented invention of this case constitutes working of the patented invention for the purpose of research or experiment, and thus, it does not have the effect of patent right pursuant to Article 96 of the Patent Act.

B) Legal principles necessary for judgment

The implementation of a research and test for a patented invention is to contribute to the industrial development by facilitating the development of technology by verifying the effectiveness of the patented invention or by enabling the improvement invention (Article 1 of the Patent Act). Thus, Article 96(1)1 of the Patent Act provides that the implementation of a patent for research and experiment does not have the effect of a patent, thereby in harmony with the interests of a third party who intends to use the patented invention.

Therefore, whether the working of a patented invention constitutes the working of a research and test under Article 96(1)1 of the Patent Act ought to be determined by comprehensively taking account of whether the working of the patented invention would harm a patentee’s interest or cause damage to a patentee, or cause damage to a patentee, such as whether the working of the patented invention would harm a patentee’s interest or cause damage to a patentee, whether the working of the patented invention would be intended to research and test whether the patented invention would have the effects stated in the specification, whether the working of the patented invention would be intended to investigate the commercial or economic feasibility, whether the working of the patented invention would be used as an instrument or means for other inventions, whether the working of the patented invention would have been used as an instrument or means for other inventions, and whether the result of the research and test was transferred to the

C) Specific determination

Comprehensively taking account of the following circumstances, the aforementioned research and examination conducted by the Defendant constitutes the working of a patented invention for the purpose of research or test and thus does not have the effect of a patent pursuant to Article 96 of the Patent Act.

(1) The above research and test conducted by the Defendant appears to be aimed at ascertaining the intensity required by Rab’s showers when applying the patented invention in this case to the Shave production, and whether the patented invention in this case can be equipped with the composition, etc. (Evidence B No. 33). It appears to be aimed at verifying the effects or utility of the patented invention in this case or at improving the patented invention through testing whether it can be applied to a specific sale, and it is difficult to see that the patented invention in this case was used only as a tool or means for other inventions.

(2) It is difficult to find out circumstances to deem that the research and test conducted above, such as where the result of such research and test was put to the market in the form of a prototype or product, has harmed the interests of a patentee or has inflicted damage on a patentee.

(3) Rather, if the conclusion that the patented invention of this case can be applied to the shower production through the above research and test is obtained, it may contribute to the development of technology. In addition, in order to commercially use the results of the above research and test, it is necessary to obtain permission from the patentee by entering into a license agreement with the patentee, and thus, permission for research and test also conforms to the interests of the patentee.

3) Comprehensive determination

Therefore, the plaintiff's assertion of patent infringement related to the 1 and 2 research and development projects is without merit.

4. Conclusion

If so, the plaintiff's main and conjunctive claims are without merit, all of them shall be dismissed. Since the judgment of the first instance is unfair, the judgment of the court of first instance is revoked, and all of the plaintiff's main and conjunctive claims are dismissed. It is so decided as per Disposition.

Judges Kim Jong-soo (Presiding Judge)

주1) 일반적으로 대상물의 계측 내지 탐사의 목적으로 사용되는 침상(침상)의 소도구를 의미하지만, 여기서는 부재 사이에 들어갈 수 있게 뾰족하게 만들어진 부품을 의미하는 것으로 보인다.

2) Household fire extinguishing: granting home fire extinguishing to materials and making it easy to share with them.

Note 3) Drve’s showft: Parts that play a role of transmitting the engine’s engine’s engine’s engine’s engine’s engine’s engine’s engine’s engine to wheels, and play the same role as knee if it is left to human body.