[1] Whether an invention containing a description of the manufacturing method constitutes an invention of a product, if the entire claims are indicated as a product (affirmative) and the method of determining whether the invention falls under the scope of the right to the invention of a product described in the manufacturing method (affirmative)

[2] In a case where Gap corporation filed a petition with the Korean Intellectual Property Tribunal for a trial to confirm the scope of passive right by asserting that the challenged invention under the name of "satiscing satisc content" does not fall under the scope of the patent right of the patented invention, which is the patentee of Eul corporation, which is a "satiscing satiscing with the name of "satiscing satiscing with the Republic of Korea", the case affirming the judgment of the court below that the challenged invention does not fall under the scope of the patent right of the patented invention on the ground that the challenged invention does not fall under the scope of the patent right of the patented invention on the ground that the challenged invention does not fall under the scope of the patent right of the patented invention on the ground that it has

[1] Article 2 subparag. 3 of the Patent Act classifys an invention into “an invention of a product”, “an invention of a method”, and “an invention of a method of manufacturing a product.” Thus, in determining the scope of the right to the invention of a product described in the manufacturing method, even if the claims are written as a whole in the case of an invention containing the manufacturing method, it constitutes an invention of a product, not an manufacturing method, but an article finally obtained. Thus, the invention constitutes an invention of a product. The invention of a product must be written in a way that specifies the composition of the product. Thus, the scope of the right to the invention of a product must be determined by specifying the structure and nature of the product, which is the final product. Therefore, in determining whether the scope of the right to the invention of a product described in the manufacturing method falls within the scope of the right to the invention of a product, the technical composition of the invention should be compared to the invention of a product by identifying the structure or nature of the product specified in all description of the manufacturing method including the manufacturing method.

[2] In a case where Gap corporation filed a petition with the Korean Intellectual Property Tribunal for a trial to confirm the scope of passive rights by asserting that the challenged invention under the name of "satisc content" does not fall under the scope of the patent right of a patented invention, which is the patentee of Eul corporation, the title of which is "satiscing satiscing satiscing satiscing satiscing satiscing satising satising satiscing satiss", the case affirming the judgment below that the invention under paragraph (1) of the patented invention claims (hereinafter "paragraph (1) of the patented invention claims and the challenged invention contain satiscing satch satising satising satiss which limit a certain ratio and size as active ingredients, although the invention under paragraph (1) invention does not fall under the scope of the patent right of the patented invention, and it cannot be deemed that the invention under the challenged invention does not fall under the scope of the patent right of the patented invention under paragraph (1).

[1] Article 2 subparag. 3, Articles 42(6), 97, and 135 of the Patent Act / [2] Articles 2 subparag. 3, 42(6), 97, and 135 of the Patent Act

[1] Supreme Court en banc Decision 201Hu927 Decided January 22, 2015 (Gong2015Sang, 270)

SKKK Co., Ltd. (Bae & Yang LLC, Attorneys Ku Dong-dong et al., Counsel for the plaintiff-appellant)

Korea FF Pharmaceutical Co., Ltd. (Patent & Patent Attorney Park Jong-soo et al., Counsel for the defendant-appellant)

Patent Court Decision 2019Heo3694 decided July 17, 2020

The appeal is dismissed. The costs of appeal are assessed against the plaintiff.

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

1. Case summary

According to the reasoning of the lower judgment and the record, the following facts are revealed.

A. On November 15, 2018, the Defendant asserted against the Plaintiff that the challenged invention does not fall under the scope of the right of the instant patent invention (patent number omitted) in the name of “sporadlesing a stable form containing sporadles” and filed a petition with the Intellectual Property Tribunal for a trial to confirm the scope of passive right.

B. On March 7, 2019, the Korean Intellectual Property Trial and Appeal Board rendered the instant trial ruling citing the Defendant’s request on the ground that the challenged invention does not fall under the scope of the right to the instant patent invention.

C. On May 9, 2019, the Plaintiff filed a lawsuit against the Defendant seeking the revocation of the instant trial decision with the Patent Court. On July 17, 2020, the Patent Court maintained the instant trial decision by deeming that the instant patent invention does not fall under the scope of rights under paragraphs 2-7 and 9-11, which are the instant patent invention and its subordinate inventions, and the instant patent invention does not fall under the scope of rights.

2. As to the grounds of appeal Nos. 1 and 2

A. Article 2 subparag. 3 of the Patent Act classifys an invention into “an invention of a product”, “an invention of a method”, and “an invention of a method of manufacturing a product.” Thus, even if the claims are written as a whole in the case of an invention containing a manufacturing method (hereinafter “the invention of a product”), the invention constitutes “an invention of a product” among the types of inventions as seen above, since the invention is not the manufacturing method, but the final obtained, since the invention is the subject of the invention. The claims for an invention of a product must be written in a way that specifies the composition of the subject matter. As such, the scope of claims for an invention of a product must be written in a way that specifies the structure and nature of the subject matter as a final product. Thus, in determining whether the scope of claims for an invention of a product described in the manufacturing method falls within the scope of claims for the product, the technical composition of the invention should not be understood as limited to the manufacturing method in itself, but it should be compared with the invention with the structure and nature of the product specified in the manufacturing method including claims.

B. The lower court determined to the effect that the invention subject to confirmation does not fall within the scope of the right to claim 1 invention of this case, on the ground that the invention subject to confirmation and the invention subject to confirmation are identical in that the invention subject to confirmation and the invention contains porazzle, which limited ratio and size, as active ingredients. However, the invention of this case reflects on the refined structure and character specified by the manufacture of direct sacrific method, and since the invention subject to confirmation has a structure and nature specified by the manufacture of damp methods.

Examining the reasoning of the lower judgment in light of the aforementioned legal doctrine and the record, the lower court did not err by misapprehending the legal doctrine regarding the interpretation of claims and the inclusion of the scope of rights, or by failing to exhaust all necessary deliberations, thereby adversely affecting the conclusion of

3. As to grounds of appeal Nos. 3 and 4

The court below determined, on the grounds stated in its reasoning, that the invention subject to confirmation contains the core of a professional engineer based on which the special solution method of the patented invention of this case is based, and that the direct save method of the patented invention of this case and the habitative method of the patented invention of this case cannot be seen as identical with the patented invention of this case, since it is difficult to see that the physical save method of the patented invention

Examining the reasoning of the lower judgment in light of the relevant legal principles and records, the lower judgment did not err by misapprehending the legal doctrine regarding the doctrine of solving the task and the identity of the operating effect of the patent in an equal relationship, or by failing to exhaust all necessary deliberations,

4. Conclusion

Therefore, the appeal is 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 on the bench.

Justices Kim Jong-hee (Presiding Justice)