[1] The purport of the provision of Article 130 of the Patent Act, and the matters to be asserted and proved by a person who worked another person's patented invention without permission in order to escape from presumption of negligence

[2] The method of calculating damages under Article 128(3) of the Patent Act

[3] The method of calculating the amount of damages where it is difficult to prove the amount of damages caused by patent infringement

[1] Article 130 of the Patent Act provides that a person who has infringed another person's patent right or exclusive license shall be presumed to have been negligent in the infringement. The purport of the provision is that the contents of the patented invention can be widely known to the general public by publishing it through the Patent Gazette or the Patent Register, etc., and that it is justifiable to impose a business operator who has commercially and industrially conducted technology a duty of care for infringement of a patent in the relevant technical field. Notwithstanding the above provision, in order for a person who has worked another person's patented invention to be not negligent, it shall be argued and proved that there are circumstances justifying the failure to know the existence of the patent right, or that there are circumstances justifying the believe that the technology he/she has conducted does not fall

[2] According to Article 128(3) of the Patent Act, an amount equivalent to the amount which can normally be received for the working of a patented invention shall be determined at an objective and reasonable amount in full, taking into account all the circumstances revealed in the oral proceedings until the closing of pleadings, such as the objective technical value of the patented invention, the contents of the license agreement with a third party for the patented invention, the license agreement with the third party, the license agreement with the infringer in question, the remaining protection period of the patented invention, the use period of the patented invention, the patent right holder's use form, the existence of alternative technology similar to the patented invention, and the profits that the infringer acquired by patent infringement. In particular, if a patentee has paid a patent license agreement with a third party with respect to the patented invention, the above amount shall be calculated by taking into account the license fee as stipulated in the license agreement, unless there are special circumstances that it is remarkably unreasonable for the infringer to apply the patent to the infringer, and the burden of proving that the application is remarkably unreasonable by analogy.

[3] In a case where it is found that a patent infringement damage occurred but it is difficult to prove the fact necessary to prove the amount of the damage due to the destruction of all the materials to know the size of the patent infringement, the reasonable amount of damage may be determined by applying Article 128(5) of the Patent Act. In this case, considering the infringer's capital, facilities, etc. during the patent infringement period, the average amount of the manufactured or sold goods may be used as a basis for calculating the amount of damage. In a case where it is difficult to prove the amount of damage only for a part of the patent infringement period, the amount of damage shall not be calculated by the method of calculating the amount of damage adopted during the period during which the patent infringement can be proven or by any other similar method, but a reasonable method may be

[1] Article 130 of the Patent Act / [2] Article 128 (3) of the Patent Act / [3] Article 128 (5) of the Patent Act

[1] Supreme Court Decision 200Da48272 decided Mar. 11, 2003 (Gong2003Sang, 959) / [2] Supreme Court Decision 99Da69631 decided Nov. 30, 2001 (Gong2002Sang, 160)

1. The case involving Non-Coin (Attorneys Lee Im-soo et al., Counsel for the plaintiff-appellant)

Defendant (Attorney Kim Young-hwan et al., Counsel for the defendant-appellant)

Seoul High Court Decision 2001Na42518 delivered on February 10, 2003

Of the part concerning delay damages of the lower judgment, the part against the Defendant ordering payment of KRW 882,129,970 per annum from July 12, 2001 to May 31, 2003, and KRW 20% per annum from the next day to the day of full payment, shall be reversed, and the Plaintiff’s appeal corresponding thereto and the claim extended at the lower court’s judgment shall be dismissed. The remainder of the Defendant’s appeal and the Plaintiff’s incidental appeal shall be dismissed. The total litigation expenses shall be three minutes, and the remainder shall be borne by the Plaintiff and the Defendant, respectively.

1. The defendant's ground of appeal Nos. 1 and 2

A. In full view of the adopted evidence, the court below acknowledged that the defendant, when it is necessary to plan the production of CDs or to produce and sell CDs at the request of its customers such as music planning company, etc., he saw that the defendant produced and sold CDs by reporting the posters tape, etc. containing sound sources such as singing and singing in CDs to producers, etc., and by being supplied with stamps made through the process of implementing the patented invention in this case, and then produced and sold CDs, the court below held that the defendant's implementation of the patented invention in this case to produce stampers should be evaluated as the implementation of the patented invention in this case by the defendant, and even if it is not so, the defendant bears the responsibility as joint tortfeasor as a joint tortfeasor, who has instigated the production of stamps by SKC and other music producers.

B. In light of the records, the above determination by the court below is just and acceptable, and there is no error of law such as misunderstanding of facts or misunderstanding of legal principles due to violation of the rules of evidence or incomplete hearing, in light of the fact that the patented invention of this case is an essential process to be implemented for the production of CD and thus, it cannot be said that the patented invention of this case cannot be executed in producing stamp for the production of CDs.

2. Judgment on the Defendant’s third ground for appeal

A. Article 130 of the Patent Act provides that a person who has infringed another person's patent right or exclusive license shall be presumed to have been negligent in the infringement. The purport of the provision is that the contents of the patented invention can be widely known to the general public through the Patent Gazette or the Patent Register, etc., and that it is justifiable to impose a duty of care for infringement of a patent in the pertinent technical field on an entrepreneur who has commercially and industrially conducted technology (see Supreme Court Decision 2000Da48272, Mar. 11, 2003). Notwithstanding the above provision, in order for the person who has worked another person's patented invention to be not negligent, it shall be argued and proved that there are circumstances justifying the lack of knowledge of the existence of the patent right, or that there are circumstances justifying the believe that the technology he/she has conducted does not fall under the scope of the right to the patented invention

B. In light of the above legal principles and records, the court below's decision that the defendant is presumed to have been negligent in patent infringement is just and acceptable, and there is no error of law such as incomplete trial or incomplete trial, etc., on the ground that the defendant purchased high-priced CD-making machinery which does not know the existence of the patented invention in this case and operated it in the explanatory note, or the result of executing the patented invention in this case does not remain in a tangible form. It cannot be said that the defendant knew the existence of the patented invention in this case, or that there was no reason to justify the fact that the technology it performed was not within the scope of the right of the patented invention in this case.

3. The defendant's ground of appeal No. 4

The court below recognized the defendant's liability for damages concerning the defendant's act of infringement of the patented invention of this case committed between January 1, 1993 and July 11, 2001, and judged that there is no evidence to acknowledge that the plaintiff had already known the defendant's patent infringement of this case and the damages caused thereby prior to the filing of the lawsuit of this case. In light of the records, the judgment of the court below is just and acceptable, and there is no error of law such as incomplete deliberation or violation of the rules of evidence.

4. The defendant's ground of appeal No. 5

A. According to Article 128(3) of the Patent Act, an amount equivalent to the amount which can normally be received for the working of a patented invention shall be determined at an objective and reasonable amount, taking into account all the circumstances revealed in the oral proceedings until the closing of pleadings, such as the technical value of the patented invention, the content of the license agreement with a third party on the patented invention, the license agreement with the third party, the license agreement with the infringer in the past, the remaining protection period of the patented invention, the use period of the patented invention, the patent right holder's use form, the existence of alternative technology similar to the patented invention, and the profits derived from patent infringement. In particular, if a patentee has received a patent license agreement with a third party with respect to the patented invention in question, the above amount shall be calculated by taking into account the license fee set forth in the license agreement with the infringer, unless there are special circumstances that it is remarkably unreasonable to apply the patent to the infringer (see Supreme Court Decision 9Da69631, Nov. 30, 201).

B. From January 1, 1996 to July 11, 2001, the lower court: (a) determined the Defendant’s damages amount by the infringement of the instant patent invention; (b) based on its adopted evidence, determined periodically the royalty on the basis of the quantity of CDs produced by conducting the patented invention regardless of the number of the patented inventions permitted by the Plaintiff to practice the patented invention, including the instant patented invention, for a long time; and (c) determined the royalty on the basis of the number of CDs produced by the Defendant, regardless of the number of the patented inventions permitted to practice the patented invention necessary for the manufacture of CDs; and (d) in the case of CDs manufactured and sold by the Defendant, by analogying the contents of the said license agreement to the Defendant, the lower court calculated the damages amounting to KRW 832,129,970 for the said period by multiplying the number of CDs manufactured and sold by the Defendant and the monthly minimum exchange rate in the Korean currency regarding USDs during the said period.

C. In light of the above legal principles and records, the above measures of the court below in this case are just and acceptable, and there are no errors in the rules of evidence or in the misapprehension of legal principles, such as violation of the rules of evidence or in the misapprehension of legal principles, since the defendant's infringement on the patented invention of this case started, the royalty has been significantly reduced due to the reduction of the remaining protection period of the patented invention of this case, or the above royalty has been considerably unreasonable to apply to the defendant's patent infringement during the above period.

5. Ex officio determination on damages for delay

ex officio, the portion of "interest rate prescribed by Presidential Decree" in the main sentence of Article 3 (1) of the Act on Special Cases Concerning the Promotion, etc. of Legal Proceedings (amended by Act No. 6868 of May 10, 2003) prior to the amendment was decided unconstitutional by the Constitutional Court on April 24, 2003. Accordingly, the amended provision of the above Act and the provision on the statutory interest rate in the main sentence of Article 3 (1) of the Act on Special Cases Concerning the Promotion, etc. of Legal Proceedings (amended by Presidential Decree No. 17981 of May 29, 2003) shall be 20% per annum, which is applicable after June 1, 2003. Thus, the court below erred by applying the above revised law with the annual interest rate of 5% per annum until May 31, 2003, and damages for delay as a result, which shall be affected by the amendment from June 21, 2003.

6. Judgment on the Plaintiff’s grounds of incidental appeal

A. In a case where it is recognized that a patent infringement has occurred but it is difficult to prove the fact necessary to prove the amount of damages due to the destruction of all the materials identifying the size of the patent infringement, the reasonable amount of damages may be determined by applying Article 128(5) of the Patent Act. In such a case, taking into account the infringer's capital, facilities, etc. during the pertinent period, the average amount of manufactured or sold goods may be determined by calculating the amount of damages. In a case where it is difficult to prove the amount of damages only for a part of the patent infringement period, it is not necessary to calculate the amount of damages according to the method of calculating the amount of damages adopted during the period during which the patent infringement can be proven or any other similar method. It is possible to freely adopt a reasonable method

B. In light of the above legal principles and records, in calculating a reasonable amount of damages from January 1, 1993 to December 31, 1995 when the records on the Defendant’s CD manufacture and sale were destroyed, and such records were not known, the court below is justified in calculating a reasonable amount of damages as a considerable amount of damages, by applying Article 128(5) of the Patent Act, based on the trend of changes in exchange rates during which the Defendant made and sold during the period from January 1, 1996 to July 11, 201, taking into account the number of CDs manufactured and sold between the Defendant and July 11, 2001, as well as other various circumstances and relevant evidences shown in the argument in the instant case, and there is no error of law such as misunderstanding of legal principles as claimed in the grounds of incidental appeal.

7. Conclusion

Therefore, the part of the judgment of the court below against the defendant ordering payment of KRW 882,129,970 as to damages for delay in the amount exceeding 5% per annum as prescribed by the Civil Act from July 12, 2001 to May 31, 2003, and 20% per annum as prescribed by the "Special Act on the Promotion, etc. of Legal Proceedings" from the next day to the day of full payment. Since this part is sufficient to be directly judged by the court, the plaintiff's appeal corresponding to the above reversal portion and the claim expanded by the court below are dismissed, and the remaining appeal by the defendant and the plaintiff's supplementary appeal are dismissed, and the total costs of the lawsuit 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 Ji-hyung (Presiding Justice)