98Hu522 Affirmation of Scope of Right (Patent)

by the Supreme Court of Korea

Justices Lee Kyu-hong (Presiding Justice), Song Jin-hun (Justice in charge), Yoon Jae-sik, Son Ji-yol

Main Issues

1. Standard for determining whether the (Ga) invention has an equivalent relationship to the patented invention
2. Requirements for a use invention and whether it is a use invention when the equivalent of the patented invention is utilized (affirmative)
3. In the invention of manufacturing method of chemical substances, whether the prominent increase in the yield due to the addition of catalyst constitutes a use invention (affirmative)
4. A case that reversed the court below's decision because it failed to examine whether the pertinent part of the (Ga) invention, which corresponds to the patented invention, constitutes the equivalent invention of the patented invention

Summary of Decision

1. In order for the (Ga) invention to be within the scope of patented invention, the organic composite relationship between each element of the patented invention shall be included in the (Ga) invention. However, even if there is a substitution or modification of the element of the (Ga) invention, where the substituted element of the (Ga) invention is considered equivalent to the corresponding element of the patented invention, then the (Ga) invention is still within the scope of the patented invention if the principles of establishing both inventions are the same, the (Ga) invention could achieve the same objective and essentially obtain the same effect even though it is due to the substitution and it is self-evident that such substitution is that a person having ordinary skill in the technology (skilled in the technology) could easily have made, unless there are special circumstances such that the technology has been already publicly known or could have easily been invented by those skilled in the technology from the known prior technology or that the substituted element of the (Ga) invention and therefore, this substituted element was purposefully excluded from the scope of the request for a patent during the application procedure.
2. In the case that the previous patent invention and the subsequent invention are in a use relationship, provided by Paragraph 3 of Article 45 of the former Patent Act (amended by Law No. 4207 of January 13, 1990), the subsequent invention shall be included within the scope of the previous invention. Such use relationship added a new technological element to the technical composition of the previous invention, and the subsequent invention contains all the main substance of the previous invention and applies them as they are. Moreover, such use relationship is formed when the previous invention contained in the subsequent invention maintains unity as an invention and when applying not only the identical invention to the previous invention but also its equivalent invention.
3. Considering that the catalyst to the chemical reaction only effects the rate of reaction and yield by participating in the reaction while remaining as it is after the reaction and does not contribute to the chemical composition of the target material, the unity of the technical composition of the manufacturing method invention as well as the consistency of the sequential organic relationship when producing a particular target material by adding a reactant to an initial material is not lost when adding the catalyst in the invention to the manufacturing method of the chemical material. Therefore, it is appropriate to consider it as a use invention containing all the technological substance of the previous patented invention even when there is a prominent increase in yield due to the addition of a catalyst, unless there are special circumstances.
4. A case that reversed the court below's decision because it failed to examine whether the pertinent part of the (Ga) invention, which corresponds to the patented invention, constitutes the equivalent invention of the patented invention

Reference Provisions

1. Article 57 (current Article 97) and Item 2 of Paragraph 1 of Article 97 (current Paragraph 1 of Article 135) of the former Patent Act (which was wholly amended by Law No. 4207 of January 13, 1990)
2. Paragraph 3 of Article 45 (current Article 98) of the former Patent Act (which was wholly amended by Law No. 4207 of January 13, 1990)
3. Paragraph 3 of Article 45 (current Article 98) of the former Patent Act (which was wholly amended by Law No. 4207 of January 13, 1990)
4. Paragraph 3 of Article 45 (current Article 98), Article 57 (current Article 97) and Item 2 of Paragraph 1 of Article 97 (current Paragraph 1 of Article 135) of the former Patent Act (which was wholly amended by Law No. 4207 of January 13, 1990)

Article 45 of the previous Patent Act (revised by Law No. 4207 dated January 13, 1990) (Patent Right)

(1) ~ (2) omitted

(3) Where the working of a patented invention would infringe another person's patented invention, registered utility model or registered design or similar design under an application filed prior to the filing date of the patent application concerned, or where a patent right conflicts with another person's design right or trademark right under an application for registration for a design right or trademark right filed prior to the filing date of the patent application concerned, the patentee, exclusive licensee or non-exclusive licensee shall not work the patented invention commercially or industrially without the license of the owner of the earlier patent, utility model right, or design right, or trademark right except where Paragraph 1 of Article 59 applies.

Article 57 of the previous Patent Act (revised by Law No. 4207 dated January 13, 1990) (Scope of Protection of Patented Invention)

The scope of protection conferred by a patented invention shall be determined by the detailed statement attached to the patent application.

Article 97 of the previous Patent Act (revised by Law No. 4207 dated January 13, 1990) (Request for Trial)

(1) Except for the special regulations in this Act, trial may be requested with regards to the following items:

1. <omitted>

2. Confirmation of the Scope of Patent Right

3.~5. omitted

(2) ~ (3) omitted

Reference Cases

1. Supreme Court Decision 97Hu2200 delivered on July 28, 2000 (Gong2000Ha, 1954), Supreme Court Decision 98Hu836 delivered on June 15, 2001 (Gong2001Ha, 1651)
2. Supreme Court Decision 92Hu1660 delivered on December 5, 1995 (Gong1996Sang, 235)

• Claimant, Appellee: LG Chem, Inc. (Patent Attorneys Choi Kyu-pal and 1 other, Counsel for claimant-appellee)

• Respondent, Appellant:Nissan Gagaku Gogyo Gabushiki Gayisha (Attorneys Chang Soo-kil and 3 others, Counsel for respondent-appellant)

• Adjudication of Intellectual Property Office Appellate Tribunal: Intellectual Property Office Adjudication 95HangDang240 dated January 6, 1998

• Disposition: The Adjudication of Intellectual Property Office Appellate Tribunal shall be reversed and the case shall be remanded to the Patent Court.

Reasoning

The grounds for appeal are examined as follows. (Supplementary grounds submitted after the legal due date are examined to the extent that they concern grounds for appeal submitted within the due date.)

1. According to the reasoning for the adjudication of Intellectual Property Office Appellate Tribunal(hereinafter referred to as 'tribunal'), the tribunal, depending on the accepted evidence, compared the claimant's (Ga) invention and the respondent's patented invention (application date: February 26, 1983; registration date: June 27, 1989; Patent No. 28242) of the manufacturing method of pyrazolesulfonyl urea derivative, an invention pursuant to Section 1 of the scope of the request for a patent (hereinafter referred to as 'patented invention in question'). The tribuanl found that since the starting material of the patented invention in question is 4-ethoxycarbonyl- 1-methylpyrazole-5-sulfonylisocyanate (hereinafter referred to as 'PSI'), its reactant is 2-amino4, 6-dimethoxypyrimidine (hereinafter referred to as 'ADMP') and its target material is pyrazosulforonethyl, while the starting material of the (Ga) invention is 1-methyl-4-ethoxycarbonylpyrazole-5-sulfonylchloride 'PSC'), its reactant is sodiumcyanate (NaOCN), pyridine and ADMP, its reactive solvent is acetonitrile, its target material is pyrazosulforonethyl, the starting materials and two types of reactant and reactive solvent are different from each other; that, theoretically, the pyridineium adduct, the intermediate product of the first step reaction of the (Ga) invention, exists in an equilibrium state by dissociating into PSI and pyridine; that while the possibility of producing the final product by PSI's reaction with ADMP cannot be excluded, PSI is not produced, or even so, its concentration is below the limit so that it is non-measurable considering that the existence of PSI is not confirmed in the reaction step of the (Ga) invention even if in accordance with NMR (Nuclear Magnetic Resonance); that it is considered that the final product is produced in the second step of the reaction of the (Ga) invention when the pyridineium adduct reacts with ADMP; that even if PSI is minimally produced, the reaction of PSI with ADMP is only a supplemental reaction; that, furthermore, since the yield of the final product reaches 90.83% when adding pyridine in the whole process while it merely reaches 44.47% when omitting the addition of pyridine.; that pyridine functions as a significant catalyst such that it combines with PSC and facilitates the production of pyridineium adduct and it considerably effects the reaction yield. The tribual held that the (Ga) invention uses a different starting material, reactant and reaction mechanism; that although the respondent insists that the part that should be compared with the patented invention in question is the second step reaction of the (Ga) invention, the starting material of the second step reaction, pyridineium adduct, is different from PSI; and that the (Ga) invention is not included within the scope of patented invention in question.

2. In order for the (Ga) invention to be within the scope of patented invention, the organic composite relationship between each element of the patented invention shall be included in the (Ga) invention. However, even if there is a substitution or modification of the element of the (Ga) invention, where the substituted element of the (Ga) invention is considered equivalent to the corresponding element of the patented invention, then the (Ga) invention is still within the scope of the patented invention if the principles of establishing both inventions are the same, the (Ga) invention could achieve the same objective and essentially obtain the same effect even though it is due to the substitution and it is self-evident that such substitution is that a person having ordinary skill in the technology (skilled in the technology) could easily have made, unless there are special circumstances such that the technology has been already publicly known or could have easily been invented by those skilled in the technology from the known prior technology or that the substituted element of the (Ga) invention and therefore, this substituted element was purposefully excluded from the scope of the request for a patent during the application procedure. (See Supreme Court Decision 97Hu2200 delivered on July 28, 2000, Supreme Court Decision 98Hu836 delivered on June 15, 2001, etc.)

In addition, in the case that the previous patent invention and the subsequent invention are in a use relationship, provided by Paragraph 3 of Article 45 of the former Patent Act (amended by Law No. 4207 of January 13, 1990), the subsequent invention shall be included within the scope of the previous invention. Such use relationship added a new technological element to the technical composition of the previous invention, and the subsequent invention contains all the main substance of the previous invention and applies them as they are. Moreover, such use relationship is formed when the previous invention contained in the subsequent invention maintains unity as an invention (see Supreme Court Decision 92Hu1660 delivered on December 5, 1995) and when applying not only the identical invention to the previous invention but also its equivalent invention.

3. Judgment on the technical composition of the patented invention of this case and the (Ga) invention

(1) In light of the records, since the material included in the patented invention in question covers a relatively broad field, it is necessary to compare the patented invention with the (Ga) invention after specifying an invention, most appropriate to compare with the (Ga) invention. Such invention, as stated in the written judgment of the tribunal, is the manufacturing method of pyrazosulforonethyl, indicated as the below chemical formula 1 and pyrazosulforonethyl is a new chemical material, which have not been publicly known before the application of the patented invention in question.

(2) On the other hand, the (Ga) invention relates to the manufacturing method of the pyrozosulforonethyl and involves the manufacturing method of the target material by reacting PSC, NaOCN, pyridine and ADMP with the acetonitryle solvent. However, if looking at the specifics, as the below chemical formula 2, after the intermediate product is produced by first reacting PSC and NaOCN and pyridine (hereinafter such reaction is referred to as 'first step reaction'), this intermediate product reacts with ADMP and manufactures the final product (hereinafter such reaction is referred to as 'second step reaction').

(3) Comparing the patented invention in question and (Ga) invention, since the first stage reaction of the (Ga) invention is separate from the patented invention in question and does not become an object for comparison, the second stage reaction part shall be used to compare (Ga) invention with the patented invention of the case. The second stage of the (Ga) invention has the same reactant and target material as that of the patented invention and there is a difference only in the starting material (namely, the intermediate product) {Although the court below also considered the acetonitryle, the reactive solvent of the (Ga) invention, to be different from the patented invention in question, the reactive solvent not only cannot become an object for comparison because the reactive solvent is not an element of the patented invention in question but also the patented invention uses the same acetonitryle as the reactive solvent when looking at the details (page 160 of the detail statement) of the patented invention in question.} With regard to the initial product, both parties' arguments can be expressed like the following chemical formula 3.

1. the reaction process asserted by respondent

2. the reaction process asserted by claimant

(4) Furthermore, with regard to whether the initial material reacting with ADMP in the second step reaction of the (Ga) invention is pyridineium adduct or PSI, each of the submitted expert opinions in the tribunal offered different views. Nevertheless, when synthesizing the opinions, while PSI and pyridineium adduct coexists in equilibrium according to chemical theory, PSI's comparative quantity has a possibility to be minimum so that it does not reach the concentration limit for detection and PSI with a better reactivity has a possibility that it reacts with ADMP before pyridineium adduct does. However, considering the fact that PSI is not detected even using the latest detection methods such as NMR and the fact that pyridineium adduct is only detected, it is difficult to conclude that the above reaction is commonly confirmed by the majority chemists from the evidence submitted by claimant for adjudication (If neither pyridineium adduct nor PSI is detected, there is no choice but to adopt reasonable presumption according to the chemical theory, but as far as only pyridineium adduct is detected, it is difficult to conclude that PSI also exists and PSI reacts with ADMP).

If so, unless there is a special circumstance such that the reaction by way of PSI is confirmed by future developments of technology or that there is objective proof instead of presumption about the reason why PSI is not detected in spite of its existence, there is no choice but to consider pyridineium adduct, which is confirmed by detection experiments, as the initial material of the second step reaction of the (Ga) invention, thereby, the ground for appeal concerning this issue cannot be accepted. Regarding this issue, the tribunal added the judgment, meaning that even if PSI is produced, the reaction due to PSI is merely a sub-reaction and thereby cannot be taken into account. Although it is inappropriate to exclude PSI from the scope of patented invention only because it is a sub-reaction without examining the extent and meaning of the sub-reaction, this decision does not affect the conclusion of the judgment.

(5) On the other hand, the respondent contends that the appellee (claimant for adjudication) should exclude the theoretical possibility that the initial material of the second step reaction of (Ga) invention is PSI, under the preposition that the novel identical material is presumed to have been produced by an identical method due to article 45 Paragraph 2 of the former Patent Act and the target material of the patented invention in question is novel and is identical with that of the material in question. A ground for appeal on this point cannot be accepted because the appellee fulfilled his burden of proof that the initial material of the second step reaction is pyridineium adduct by proving, through the detection experiment, that PSI does not exist while pyridineium adduct does.

4. Judgment on the scope of rights

(1) The tribunal adjudicated with an intention that the technical thoughts of both inventions are different when comparing the complete procedure of the (Ga) invention and the patented invention in question since the initial material, reactant and reaction mechanism are different and the yield of the target material prominently increases due to the addition of pyridineium, which functions as a catalyst.

However, as the reaction procedure of the (Ga) invention occurs consecutively from the first step reaction to the second step reaction as seen above, the second step reaction of the (Ga) invention must be contrasted to the patented invention in question pursuant to the principle of law of use invention, based on the use relationship seen above, even if the reactant of the first step reaction and the second step reaction is put in the reaction container at the same time as long as the reaction occurs consecutively since the invention of the second step reaction can be considered to be included as it is and maintaining its unity while the artistic element of the first step reaction is added.

In addition, considering that the catalyst to the chemical reaction only effects the rate of reaction and yield by participating in the reaction while remaining as it is after the reaction and does not contribute to the chemical composition of the target material. The unity of the technical composition of the manufacturing method invention, that is the consistency of the sequential organic relationship when producing a particular target material by adding a reactant to an initial material, is not lost when adding the catalyst in the invention to the manufacturing method of the chemical material. Therefore, it is appropriate to consider it as a use invention containing all the artistic substance of the previous patented invention even when there is a prominent increase in yield due to the addition of a catalyst, unless there are special circumstances. Accordingly, the adjudication of the court below inconsistent with the above is in error and the ground for appeal regarding this issue is justifiable.

(2) The tribunal adjudicated that the (Ga) invention is not included within the scope of the patented invention in question for the reason that the initial material is different even when that of the second step reaction of the (Ga) invention and the patented invention in question is compared.

However, with regard to the second step reaction, the reactant and the target material is the same and only the initial material is substituted from PSI to pyridineium adduct and, according to the record, both the pyridineium adduct which is the initial material of the second step reaction of the (Ga) invention and the PSI which is the initial material of the patented invention in question react with the reactant, ADMP, and produce the same target material, pyrazosulforonethyl. Furthermore, considering that the pyridine, which is combined within the pyridineium adduct in the (Ga) invention is not involved in the structure formation of the pyrazosulforonethyl, as it is not directly involved in the second step reaction, and flows out intact after obtaining the target material, the initial material of the patented invention in question, PSI, and the initial material of the second step reaction of the (Ga) invention, pyridineium adduct, could be seen as the solution even though they are substituted for each other and their technical aim and effect are practically the same.

In addition, as the pyridineium adduct, the initial material of the (Ga) invention, is a novel material which has not been publicly known before the application of the patented invention in question, the skilled in the art, in principle, cannot conclude that he could have easily come up with the substitution of PSI of the patented invention in question to pyridineium adduct. However, according to the text of the detailed statement (160) of the patented invention in question, "In the case that there is difficulty in the progress of the reaction for the acquirement of the target material, the reaction is expedited easily when adding a small quantity of appropriate sodium such as triethylamine, triethylenediamine, pyridine, sodium ethoxide, hydrogenated sodium." Since the detailed statement of the patented invention in question itself clearly states that the addition of a small quantity of pyridine to the reaction can expedite the reaction (there seems to be such record with the same intention in the detailed patent statement of the (Ga) invention), the court below must have examined technical meaning of such record in the detailed statement, PSI's conversion into pyridineium adduct when adding pyridine in the process of PSI's reaction and whether the substitution of PSI in the patented invention of this case with pyridineium adduct is easy to the skilled person in the technology. However, the court below adjudicated that the (Ga) invention is not included within the scope of the patented invention without examining the equivalent relationship of the initial materials on the ground that the initial materials are different.

Thus there are reversible errors as to misunderstanding of the legal principle of equivalent relationship and incomplete trial, which affected the conclusion of the judgment. The ground for appeal pointing out this issue is also justifiable.

5. Therefore, the adjudication of the tribunal shall be reversed and the case shall be remanded to Patent Court. This decision is delivered with the assent of all Justices who heard the appeal.