[1] The measures to be taken by the Intellectual Property Trial and Appeal Board where the specification of the invention in question and the composition of the invention in question are unclear in a claim for a trial to confirm the scope of a patent right of a patented invention, and where the invention in question is not specified to the extent that it

[2] The case holding that in a case where the challenged invention, "the PLC system (Electric Power Line Communication System) for remote inspection of the standard of general purchase," refers to the scope of the right of the patented invention, "the distance control system that combines the load surveillance of dive voltages and the power system," and the patentee Gap et al. filed a petition for an affirmative confirmation of the scope of the right of the patent invention, the case holding that the trial decision of the Intellectual Property Trial and Appeal Board, which cited the petition for a confirmation of the scope of right without taking measures such as ordering the correction, should be revoked, on the grounds that the invention in question cannot be deemed to have

[1] In filing a request for a trial to confirm the scope of a patent right, the invention subject to a request for a trial must be specified to the extent that it can be compared with the patented invention in question, and the invention subject to a request for a trial should be specified to the extent that it can be distinguished from the other invention in terms of social norms. If the part of the invention subject to a request for a trial is not specified to the extent that it can be distinguished from the other invention because it is unclear, the Korean Intellectual Property Tribunal must take measures such as ordering the correction of the description and drawing of the invention subject to a request for a trial to the extent that it does not change the substance. Nevertheless, if the invention subject to a request for a trial is insufficient, the effect of res judicata cannot be clearly defined even if the trial decision becomes final and conclusive, and the remaining composition alone can determine whether the invention subject to a request for a trial falls under the scope

[2] The case holding that in case where the challenged invention, the name of "Korea Electric Power Complex PLC system (Electric Power Line System) for remote inspection of standard specifications," belongs to the scope of the patent invention's right that "the distance control system that combines the load monitoring of ruptures and the power system," and the patentee Gap et al. filed a claim for active confirmation of scope of scope of scope of scope of scope of scope of right of the invention, the part of "data communications using ruptures, such as HFC, CDs, and opticals," among the elements indicated in the specification of the challenged invention, includes the implementation form of data communications using rFC, CDs, and opticals, and the tupture network means the function of the tupture line, and it does not refer to the specific data communications system, and thus, it cannot be seen that the corrective decision cannot be seen as having been made to the extent that it does not clearly state any objective and objective means of communication for data itself, and thus, it cannot be seen that the corrective decision has not been made.

[1] Articles 135 and 140(3) of the Patent Act / [2] Articles 135 and 140(3) of the Patent Act

[1] Supreme Court Decision 2003Hu656 Decided April 29, 2005 (Gong2005Sang, 868), Supreme Court Decision 2004Hu486 Decided September 29, 2005 (Gong2005Ha, 1720), Supreme Court Decision 2010Hu296 Decided May 27, 2010 (Gong2010Ha, 1296)

Korea Electric Power Corporation and one other (Patent Dana Patent Dana Patent LLC, Counsel for defendant-appellant)

Defendant 1 and one other

Patent Court Decision 2010Heo111 Decided November 3, 2010

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

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

In filing a claim for the confirmation of the scope of a patent right, the invention subject to a request for a trial to confirm the scope of patent right must be specified to the extent that it can be compared with the relevant patented invention (see, e.g., Supreme Court Decisions 2003Hu656, Apr. 29, 2005; 2010Hu296, May 27, 2010). Furthermore, if the invention subject to a request for a trial to confirm the scope of patent right is not specifically specified to the extent that it can be distinguished from that of other patented inventions under generally accepted social norms, the Korean Intellectual Property Tribunal shall take measures, such as ordering the correction of the specification and drawing of the invention subject to the request to the extent that it does not clearly express the composition of a part of the invention subject to a request for a trial to confirm the scope of patent right. Nevertheless, if it is insufficient to specify it, even if the trial decision becomes final and conclusive, the scope of res judicata effect of the remaining invention subject to a request for a trial can be dismissed even if it falls under the scope of patent right.

In light of the above legal principles and the records, the part concerning “data communications using the inter-line network, such as HFC, CDMA, and light” among the constituent elements of the challenged invention in the judgment of the court below is also included in the form of data communications using the inter-line network other than the HFC, CD, and optical. However, the inter-line network means the function of the inter-line network in the entire network composed of multiple classes, and does not refer to the specific data communications method. As such, the statement itself of “data communications using the inter-line network” itself cannot be objectively and objectively identified as to data for communications, and therefore, it cannot be said that the invention in question is clearly identified to the extent that it can be distinguishable from that of other social norms because some composition is unclear.

Although the reasoning of the judgment below is somewhat inappropriate, the decision of the court below is just in the conclusion that the defendants' decision accepting the claim to confirm the scope of a patent right of this case without taking measures, such as ordering correction, even though the invention in question cannot be deemed to have been legally specified, and contrary to the allegations in the grounds of appeal, there is no error of law by misunderstanding the legal principles

In addition, the judgment of the court below that the invention subject to confirmation of the scope of right of the invention of this case is unlawful because it is subject to the invention subject to confirmation including the plaintiffs' request for confirmation of the scope of right. The invention subject to confirmation is different from the patent invention of this case (patent No. 416926) paragraph (1) and its composition, and does not fall under the scope of right of the invention of this case. As seen above, the judgment of the court below that the invention subject to confirmation cannot be legally specified as seen above is just, and as long as the judgment of the court below that the invention subject to confirmation cannot be seen as legally specified, the legitimacy of the judgment on the assumption and addition cannot affect the conclusion of the judgment. Furthermore, in this case where the determination of whether the invention subject to confirmation falls under the scope of right of the patented invention of this case, with the exception of the ambiguous composition in this case where the invention subject to confirmation is not specific to the extent that it is distinguishable from that of social norms, it cannot be viewed differently.

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 on the bench.

Justices Jeon Soo-ahn (Presiding Justice)