[1] Where it is evident that a patent will become invalidated due to the denial of non-obviousness even before a final decision on invalidation of a patented invention becomes final and conclusive, whether a claim for prohibition of infringement or compensation for damages based on a patent right constitutes an abuse of rights (affirmative in principle), and in such case, whether the court in charge of patent infringement litigation may examine and determine the non-obviousness of the patented invention on the premise of determining the propriety

[2] In a case where Gap corporation, the patentee of the patented invention named "the old structure of the drum laundry machine", filed a claim against Eul corporation for the prohibition of patent infringement, the case holding that the court below erred by misapprehending the legal principles in holding that the above claim constitutes an abuse of rights even though the non-obviousness cannot be obviously invalidated due to non-obviousness

[1] Article 29(2) of the Patent Act provides that a patent may be invalidated through a separate procedure for invalidation of a patent established in a certain case. As long as registered grounds for invalidation exist without non-obviousness, a patent shall not be deemed null and void on a commercial basis unless a trial decision invalidating such invalidation has become final and conclusive. However, Article 1 of the Patent Act provides that the purpose of promoting technological development by promoting the protection, encouragement, and use of an invention shall be to contribute to industrial development by promoting the development of technology, thereby protecting not only inventors and users’ interests, and ultimately contributing to industrial development. Meanwhile, the legislative purpose of Article 29(2) provides that a person with ordinary knowledge in the art to which the invention pertains (hereinafter referred to as “ordinary technician”) may easily make an invention by prior art prior to the patent application, and thus, any person who does not contribute to the technological development of the society is entitled to obtain a patent on the so-called public sector where the patent invention has no non-obviousness and thus, a claim for patent infringement against the patent owner’s right to use the invention can be deemed null and void without any particular meaning of the patent right.

[2] In a case where Gap corporation, the patentee of the patented invention named "the old structure of the drum laundry machine", filed a claim against Eul corporation for prohibition of patent infringement, disposal of patent infringement products, and damages against Eul corporation, the case holding that the court below erred by misapprehending legal principles in holding that the above claim constitutes an abuse of rights, even though some of the elements of the claim 31 of the above invention had already been initiated or can be easily derived therefrom, since the "shotter/bending composition" cannot be easily derived from the prior art since it was not commenced or proposed entirely in the prior art, and the claim 31 of the patent claim is not clear that the inventive step is denied by the prior art and the patent cannot be invalidated because of its organic combination.

[1] Articles 1, 29(2), 126, 128, and 133 of the Patent Act; Article 2 of the Civil Act / [2] Articles 1, 29(2), 126, 128, and 133 of the Patent Act; Article 2 of the Civil Act

[1] Supreme Court Decision 91Ma540 delivered on June 2, 1992 (Gong1992Ha, 2109) (amended) Supreme Court Decision 98Da7209 delivered on March 23, 2001 (Gong2001Sang, 926) (amended) (amended)

El Electronic Co., Ltd. (Attorney Full-time et al., Counsel for the defendant-appellant)

Medical clinic Co., Ltd. (Attorney Lee Im-soo et al., Counsel for the plaintiff-appellant)

Seoul High Court Decision 2009Na112741 decided September 29, 2010

The judgment below is reversed and the case is remanded to Seoul High Court.

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

1. As to the ground of appeal on Article 31 of the Patent Claim No. 1 of this case

A. The Patent Act provides that a patent may be invalidated through a separate procedure for the invalidation trial of a patent established separately in a certain case. As long as registered grounds for invalidation exist due to lack of non-obviousness, the patent does not become a large-scale invalidation, unless a trial decision invalidating the patent by such a trial becomes final and conclusive.

However, Article 1 of the Patent Act provides that the purpose of promoting the development of technology by protecting, encouraging, and promoting the use of inventions is to contribute to the development of industry by promoting the development of technology, thereby protecting not only the inventor but also the user’s interests, and ultimately contributing to industrial development. Meanwhile, Article 29(2) provides that a person with ordinary knowledge in the art to which the invention pertains (hereinafter “ordinary technician”) can not obtain a patent for an invention easily made by prior art publicly known prior to the patent application, and that an invention without any inventive step that does not contribute to technological development of society is located in the so-called public domain where anyone can freely use the invention. Therefore, if a patent registration is made by mistake on the technology to be open to the public due to lack of inventive step, and without any restriction, such technology is inconsistent with the legislative purpose of the Patent Act as seen above. Moreover, insofar as a patent right is one of private property rights, it is unreasonable to claim compensation against a patentee for damages in accordance with the concept of justice and equitable exercise of the patented invention, and thus, it is against the patent holder’s right to claim compensation for infringement or non-obviousness.

In light of these points, even before a final and conclusive decision on invalidation of a patented invention becomes final and conclusive, if it is evident that the patent will be invalidated by a patent invalidation trial, the claim for injunction or damages based on the patent right shall not be deemed to constitute an abuse of rights unless there are special circumstances. In a case where there is a defense that the patent holder's claim constitutes an abuse of rights, the court in charge of patent infringement litigation may examine and determine the inventive step of the patented invention on the premise of examining the legitimacy thereof.

Unlike this, Supreme Court Order 91Ma540 Decided June 2, 1992 and Supreme Court Decision 98Da7209 Decided March 23, 2001, which held that even in the absence of non-obviousness, the court cannot automatically deny the scope of rights in a patent or a utility model right infringement lawsuit, shall be modified to the extent inconsistent with this Opinion.

B. In accordance with the above legal principles, it is apparent that the nonobviousness of the patent claim No. 31 (hereinafter “instant Claim No. 31”) among the Patent Claim No. 1 (Patent Registration No. 457429) of this case’s patented invention (Patent Registration No. 457429) based on the name “the old structure of the drum laundry” would be invalidated due to the lack of non-obviousness, and it is examined in light of the records as to whether the Plaintiff’s prohibition of patent infringement,

First of all, among the composition of Claim 31 invention of this case, "the composition of the master material of plastic, the drums installed on the inside side of the terb, the drums installed on the side of the terb, the drums and the outer drums made up of the drums in which the racker’s main power is connected with the drum, and the racker’s main power is connected to the racker’s central part and the drums, the bending for supporting showers, the bending for supporting showers, etc., the composition of the master material of metal formed by the central part of the central part of the 31 invention of this case has been initiated as it is in the judgment of the court below." In addition, among the composition of Claim 31 invention of this case, the composition of the master material of the hiver of the hiver invention of this case, the composition of the master material of the hiver of this case, which had no difficulty in applying the 3rd et 1 invention of this case.

Next, in regard to paragraph 31 invention of this case, "the composition that enables the sweveter to be adhered to the outside part of the latter part of the swevethy to stick out from the sweves wall and to be exposed to the outside part of the sweves wall, and the latter part of the sweveter to be adhered to the external part of the exposed sweves (hereinafter "sweveter and beveing sub-sweves")" (hereinafter "sweveing sub-sweves composition"), this composition is short of sweves and then the sweves of the sweves body in order to maintain the swevedness of the sweves through removal of part of the sweves wall from the sweves wall to the outside part of the sweves wall so that the sweves from the sweves wall to the sweves body structure of the sweves body.

Thus, when considering that the invention of this case is a whole that systematically combines each of its composition, the complexity and effect of composition is recognized compared to prior art 1, 2, and 3. Thus, it cannot be said that the patent is invalidated due to the denial of non-obviousness by such prior art. Therefore, the plaintiff's claim of this case based on the patent right of this case No. 31 does not constitute abuse of rights.

C. Nevertheless, the court below held that the plaintiff's claim of this case based on the prior art 1, 2, and 3 is not allowed as it constitutes an abuse of right, on the ground that the nonobviousness of the prior art 1, 2, and 3 of this case is denied, and it is obvious that the patent will be invalidated. The judgment of the court below is erroneous in the misapprehension of legal principles as to the inventive step, which affected the conclusion

2. As to the ground of appeal as to the claim No. 5 and 28 of the claim No. 1 of the patented invention of this case and the claim No. 1 and 2 of the claim No. 2

According to the reasoning of the lower judgment, the lower court determined that the Plaintiff’s prohibition of patent infringement, disposal of patent infringement products, and claim for damages based on such patent right constitutes abuse of rights, on the ground that: (a) the claim(s) and (2) of the second patent invention (patent registration number 434303) of this case (patent registration number 434303) of this case, which used the scope of the claim(s) and the name(s) of the instant patent invention(s) as “a rescue to support the operation of laundry machine”; and (b) all of them

However, according to the records, on July 21, 201, which was after the decision of the court below was rendered to correct the claims of each of the above inventions on July 21, 201 after the decision of the court below was rendered upon the plaintiff's request for a correction trial, and the confirmation becomes final and conclusive at that time. As to the claims 5 and 28 of the patented invention of this case under Article 136 (9) of the former Patent Act (amended by Act No. 6411 of Feb. 3, 2001), as to the claims 1 and 2 of the patented invention of this case under Article 136 (8) of the Patent Act, the claims 1 and 2 of the patented invention of this case shall be deemed to

Therefore, the judgment of the court below, which examined and judged the validity of the plaintiff's claim of this case for each invention before correction, was erroneous in the violation of law which affected the conclusion of the judgment, since there were grounds for retrial under Article 451 (1) 8 of the Civil Procedure Act.

3. Conclusion

In a case where a plaintiff filed an appeal against a judgment of an appellate court which has dismissed multiple selective joined claims, the court of final appeal shall reverse the original judgment in its entirety, if the court of final appeal deems that some of selective claims are well-grounded (see Supreme Court en banc Decision 92Da46226, Dec. 21, 1993). Therefore, the judgment of the court below that dismissed all of several selective joined claims of this case, and the case is remanded to the court below for further proceedings consistent with this Opinion. It is so decided as per Disposition by the assent of all participating Justices on the bench.

Justices Yang Sung-tae (Presiding Justice)