In 2015, a Japanese-origin Santen Pharmaceutical Co., Ltd. (hereafter Santen) obtained a patent right (KR101536885) for a remedy for dry eyes (product name: DIQUAS (registered trademark) ophthalmic solution 3%) from the Korean Intellectual Property Office (hereafter KIPO). Two years later, Sam Chun Dang Pharm (hereafter Sam Chun Dang) and other well-known pharmaceutical companies, such as Chong Kun Dang pharmaceutical (hereafter Chong Kun Dang), Kukje pharma (hereafter Kukje), Samil pharmaceutical (hereafter Samil) and Intro Biopharma, filed an opposition proceeding over the patent in order to revoke their patent right. In particular, as of 31 May 2017, when Hanmi Pharmaceutical (hereafter Hanmi) filed an opposition action, the Intellectual Property Trial and Appeal Board (hereafter IPTAB) partially invalidated the claims (from claim 1 to claim 8), and Hanmi again challenged the rest of the claims before the Patent Court, thereby invalidating the claim 9, 10 and 11. Finally, the IPTAB concluded the case in February this year by maintaining its first instance ruling.

Claims at issue:

KR 101536885 (B9): DIQUAFOSOL-CONTAINING EYE DROP[1]

Claim 9) A method for producing an aqueous ophthalmic solution comprising diquafosol or a salt thereof at a concentration of 3% (w/v) and for use in application to corneal epithelium disorder found in a dry-eye patient, comprising the step of mixing diquafosol or a salt thereof and a chelating agent in an amount that causes a final concentration of the chelating agent in the aqueous ophthalmic solution to be 0.001 to 1% (w/v), to obtain an aqueous solution in which formation of insoluble precipitates is inhibited.

Claim 10) The method according to claim 9, further comprising the step of filtering the obtained aqueous solution through a filtration sterilization filter having a pore size of 0.1 to 0.5 μm.

Claim 11) A method for inhibiting formation of insoluble precipitates in an aqueous ophthalmic solution comprising diquafosol or a salt thereof at a concentration of 3% (w/v), and for use in application to corneal epithelium disorder found in a dry-eye patient, by adding a chelating agent at a concentration of 0.001 to 1% (w/v) to the aqueous ophthalmic solution, where a chelating agent is edetate or a salt thereof.

Main rulings:

As mentioned before, the domestic pharma-corporations filed several opposition trials against Santen before the IPTAB, where the following ruling in the first instance filed by Hanmi was made on the basis that the claims at issue complied to the description requirements in accordance with Articles 42 paragraph(3)1 and paragraph(4)1 of Korean Patent Act[2].

“It is difficult to mention that the amended claims are not supported by the description of the invention and do not reproduce the effects of the revised claims from 9 to 11 in this case merely because the effect of inhibiting the formation of insoluble precipitates in an aqueous ophthalmic solution that does not contain benzalkonium chloride in the amended description is not clearly written, and the request of plaintiff, a lack of the description sufficiency, cannot be accepted from the statement of the evidence 6 in which only the insoluble precipitates resulted from belzalkonium chloride are not supported by the amended description of the invention (darts-387-410-F-ko).”

Accordingly, Hanmi appealed to the patent court for the remaining claims to be revoked, where the court decided to reverse the decision on claim 9 to 11 due to lack of inventive step as follows.

“The amended invention in claim 9, 10 and 11 shall be invalidated as the inventive step of the skilled person can easily derive by combining the prior art 1 and 2 with the well-known technology, thereby not satisfying the inventive step (darts-358-208-H-ko).”

Finally, the IPTAB concluded the case, eventually retaining the initial ruling from the first instance filed by Hanmi (darts-208-945-I-ko).

Meanwhile, the parallel invalidity proceedings filed by Sam Chun Dang, Kukje, Samil, Intro Biopharma and Chong Kun Dang, were ruled in favor of the appellants, primarily focusing on the inventive step insufficiency of the whole claim before the IPTAB and the patent court.

Takeaways:

This lawsuit is noteworthy as it was the first time for South Korean pharmaceutical companies to succeed over a foreign pharmaceutical company in respect to patent opposition trials. Until now, many national conglomerates producing and selling an ophthalmic solution have challenged Santen’s patent, however, Korean authorities usually had been ruling in favor of the original firm, resulting in maintaining the patent.[3]

In the meantime, apart from the patent opposition actions, Santen filed a divisional patent application in July. Yet, Chong Kun Dang was able to acquire generic exclusivity to sell a Diquabell, a generic of DIQUAS, even before their divisional application. Nonetheless, they are middle of challenging Santen’s remaining subject-matters as well.

In conclusion, the divisional patent application has not yet been completely invalidated for the use of DIQUAS, but it should be pointed out that Chong Kun Dang is manufacturing a generic product and domestic pharmaceutical companies have taken a lead by invalidating Santen’s initial patent. Next, attention will be paid to the validity of the remaining patent, and it is expected for South Korean pharmaceuticals to play a bigger role in the ophthalmic solution generic market.

[1] The claims have been amended on 29th June 2018.

[2] Patent Act

Article 42(3)1: to clearly detail the invention in such manner that any person with ordinary knowledge in the technical field of the relevant invention can easily practice the invention;

Article 42(4)1: the invention shall be supported by the description;

[3] www.dailypharm.com

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CaseⅠ

Shenzhen Dunjun Technology Co., Ltd. (“Dunjun” for short) filed a patent litigation against three enterprises including Shenzhen Tenda Technology Co., Ltd. (“Tenda” for short). The Jinan Intermediate Court ruled that Tenda constituted infringement of Dunjun’s patent right on May 6th,2019. Tenda appealed to the Supreme Court. However, the Supreme Court held the first instance judgement on Dec 6th,2019.

The asserted claim 1:

A simple method to access the portal website of a network operator, wherein the method comprises the following steps:
A. The underlying hardware of an access server directly transmits the first uplink HTTP message coming from a portal business user’s device before authentication to a “virtual Web server” which realized by “virtual Web server” module of the access server’s high-level software;
B. Establish TCP connection between website created by the “virtual Web server” for the user to visit and the portal business user’s device; the “virtual Web server” returns a message including redirecting information to the underlying hardware of the access server; the underlying hardware of the access server transmits a Portal Server message redirecting to the real portal website to the portal business user’s device according to normal forwarding process;
C. The browse of the portal business user’s device automatically starts to access the Portal Server of the real portal website after receiving the redirecting message.

The key point of the case was whether Tenda’s behavior of making, selling or offering to sell of the accused router product (equivalents to the access server of claim 1) had constituted infringement.

Tenda claimed that the patent related to a method for realizing the network accessing authentication in light of which no product could be acquired(including the accused product). Hence, the protection of the accused patent should not extend to products.

The Supreme Court held that the patent method had been originally solidified in the accused product during its manufacturing process. The patent method process was re-implemented by users when they were using the accused terminal devices, which was merely the mechanical replay of the patent method previously solidified in the accused product.

The Supreme Court further presented the following grounds for infringement determination: if the suspected infringer solidified the substantive content of the patent method into the accused product with the purpose of business, and the action or the result of the action played an irreplaceable role for the consequence that using the product would fully covered the technical characteristics of the patent claim, in other words, if the user could naturally re-implement the process of the patent method when using the accused product normally, it should be deemed that the infringer implemented the patent method and infringed the right of the patentee.

The court explained the defendant’s behavior from three aspects：

1. The defendant did not implemented the patent method involved, but they manufactured, offered to sell and sold the accused product with the purpose of business. The mentioned accused product with the function of directly implementing the patent method played an irreplaceable role during the procedure that the terminal network users used the accused infringing products to completely re-implement the patent method involved.
2. The defendant’s illegal profits from their action of manufacturing, offering to sell or selling accused product had an intimate association with the patent involved.
3. If the patentee’s innovation investment cannot gain their deserving profits, they would be not able to continue the following research and innovation activities. It was unfair for the defendant to earn the interests of the patentee by infringing their patent, which would result in a serious unbalance regarding the distribution of benefits.

Then the court ruled that the actions of defendant constituted an infringement to the patent involved.

CaseⅡ

IWNComm Co., Ltd. (“IWNComm” for short) filed a lawsuit against Sony Mobile Communication (China) Co., Ltd. (“Sony” for short) in the year of 2015. IWNComm claimed Sony infringed their ZL02139508.X patent with the name of “A method for the access of the mobile terminal to the WLAN and for the data communication via the wireless link securely”. After two trials, the court of the second instance (Beijing High Court) made a decision on March 28th, 2018.

The asserted claim 1:

A method for the secure access of mobile terminal to the Wireless Local Area Network (WLAN) and for secure data communication via wireless link, wherein access authentication comprising the steps:

1) Mobile Terminal (MT) sends to Access Point (AP) the access authentication request message containing the MT certificate;

2) The AP sends the MT certificate and AP certificate to Authentication Server (AS) to request certificate authentication;

3) AS authenticates the AP certificate and MT certificate;

4) AS sends back to AP the result of authentication of AP and MT by certificate authentication response message, go to step 5); if MT fails to be authenticated, AP refuses accessing of MT;

5) AP sends back to MT the result of certificate authentication of AP and MT by access certificate authentication response;

6) MT judges the result of certificate authentication of AP, if AP successes to be authenticated, go to step 7); otherwise MT refuses to access to AP;

7) Said access authentication between MT and AP is completed, they start to communicate with each other.

According to the court of second instance, the patent involved in the case was a typical method patent relating to “multi-parties”. In the process of implementation, multiple parties were required to participate in the technical solution, and only when the multiple parties worked or interacted together could the patent technical solution be fully implemented. In this case, Sony only provided MT with built-in WAPI function module, but didn’t provide AP and AS, wherein MT, AP and AS were three peer-to-peer security frameworks. The patent involved could not been implemented unless all of MT, AP and AS were interactively applied. Therefore, in this case, no individual implementer, including the users, could fully implement the patent involved alone. At the same time, it was also not possible that one single person guided or controlled the implementation of other persons, or multiple persons coordinate the implementation of the patent involved. On the premise of no direct implementer existing, it didn’t conform to the necessities of contributory infringement only if a component supplier had ever contributed to the accused product. And it was also an excessive expansion of the protection of the patentee.

Although the court affirmed that Sony did not constitute contributory infringement, it ruled from another perspective that Sony constituted direct infringement for the following reasons:

According to the common practices of mobile communication equipment manufacturers, WAPI function test was a project of model approval test. Only through WAPI test could smart phones obtain the telecommunication equipment model and network access license approved by the Ministry of Industry and Information Technology. It could be inferred that at least at the stage of design and development or sample testing, Sony had already fully implemented the patent technical solution without acquiring any permission from IWNComm.

Comparison between the two cases:

In caseⅡ,the court decided that the accused infringer constituted direct infringement on the ground that their products involved in the case would inevitably implement the patent method at the test stage. Interestingly, in caseⅠ, the patentee claimed their right based on the same reason above presumably having drawn on the court’s view in caseⅡ. However, the Supreme Court did not make a corresponding judgment based on this reason,  while they believed that “it was not enough to fully protect the interests of the patentee by merely determining that the infringer constituted infringement via their implementation of the patent method during the process of testing. Because the behavior of testing was not the fundamental or direct reason for the infringer to seek illegal profits, and ordering to stop testing could  not prevent the patent method from more infringements. And the patentee had no right to claim that the users who directly implemented the patent method without any purpose of business constituted patent infringement.”

By comparing the two cases, the court in caseⅡadopted the standard similar as the “control or direct” framework determined by the case law of the United States (Akamai Techs., Inc. v. Limelight Networks, Inc.). While in caseⅠ, the Supreme Court set up a new standard that was more suitable for China, which could be deemed as a great progress of judicial trial.

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         Recently, the KIPO held a briefing session on the trend of the trademark system in 2020, where the KIPO introduced the administrative rules that will change in 2020. They first referred to the ‘trademark preferential examination system’ and suggested that it will operate the trademark registration system more effectively. South Korea’s trademark preferential examination system is a system that prioritizes trademark applications with certain requirements before other applications. The requirements include “applicants are clearly using or preparing to use a trademark on all designated goods”. If you apply for a preferential examination, the examiner will decide whether or not to make a priority screening within 10 days of receiving the application. If the examiner says “Yes”, the trademark registration application will be entered within 45 days of the date of the decision. Applicants with the requirements will be able to register their trademarks and protect their rights faster and more efficiently using this examination.

         Next, some of the trademark examination standards were revised. In the trademark registration, if the trademark gets “acquisition by use”, the trademark is registered. Until recently, there was no specific criteria for ‘the term of trademark usage’. Now, by setting the criteria for “more than five years,” it is now possible to present clearer standard. (Of course, exceptions are allowed in certain cases. For example, if a trademark is suddenly famous and imprinted on the public, even if it is used shorter than this period, it can gain acquisition by use.) In addition, before the revision, only one examiner had previously examined a trademark registration application, yet now 3 examiners are put into the same examination.

         In addition, the amendment sets a different standard for processed foods from natural foods in collective mark with geographical indication application. Previously, the examiners also examined the association with the geographic environment in the examination of the intrinsic association between trademark and geographic environment, indistinguishable from processed food and other products. However, the amendment considers that processed foods are more related to human factors such as production methods and processing methods than geographic environments. Therefore, in the review of the intrinsic association between processed foods and the geographical environment, the amendment now considers the historicity and wellknowness.

         KIPO has established stricter examining standards for drug application, too. According to the amendment, ‘it is necessary to confirm the intention to use the trademark because it cannot use the same name as a drug name already manufactured, sold, imported, or declared’, and ‘if an applicant filed a trademark identical to or similar to his or her drug, or applied for a trademark similar to or similar to another one’s drug name, it can be seen as the case the confuses the quality of the product’.

         Another notable feature is the expansion of the examiner’s authority. According to the amendment, if an applicant made mistakes regarding spelling, punctuation, and the category of the designated product(yet in order to amend the category of the designated product, one should be notified with reasons for refusal more than once) in an international trademark registration is apparent, the examiner can now directly revise the mistakes. In light of these revisions, all of this seems to be aimed at “increasing the efficiency of trademark examining” as a response to increasing trademark-related request.

         If so, how can the amendment affect the current court ruling? Let’s take a quick look at the famous leading case.

         First of all, this is a leading case for the “period of acquiring discernment by use” which is mentioned above.

         “As a result of using a trademark prior to the application for registration, there is a reason for the fact that among the consumers, the trademark is markedly recognized whose trademark it represents. The standard should be strictly interpreted and applied, since it is a non-identifiable mark originally and the exclusive use of a particular person gives universal rights to an inappropriate mark. Yet comprehensively considering the period of use of the trademark, the frequency of use and continuity of the trademark, the market share of the trademarked product, the contents, the period and the amount, and the reputation and credibility of the trademark user, if the majority of traders and consumers concerned have been recognized that a certain trademark is displaying a particular person’s product, the acquisition of discernment by use can be admitted.” (darts-099-428-I-ko, darts-099-430-I-ko, darts-099-431-I-ko)

         This case shows the wording ‘comprehensive consideration’. As a result, it was difficult for the individual to prepare the case as there were no specific standards. The revised amendment now provides a new standard that ‘the term of trademark usage’ should be more than five years, so now it is possible to see more clear criteria and make claims and present data.

         In the case of processed foods, we can see the decision of the courts contain the phrase that “in the case of collective marks, the officials of the KIPO preliminarily reviewed the possibility of registration based on the status of the organization and the application status of trademark rights, also considering geographic relevance, regional specificity, history, celebrity, consumer perception and preference, etc”(darts-720-334-G-ko, darts-978-443-H-ko). In other words, processed foods can be examined by geographic relevance, historicity without any difference from other natural foods. However, as the amendment established a separate standard for reviewing processed foods based on historicity and wellknowness rather than geographic relevance, new decisions of the court would arise.

         In conclusion, the clearer the standard of the examination, the easier it is for the claimant to predict the outcome of the trademark examination. It will also increase efficiency by eliminating unnecessary processes. In other words, Korea’s 2020 trademark revision keywords are predictability and efficiency. This is the current trend of trademark revision in Korea, and the regulations are expected to be revised in this direction continuously.

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The KIPO is now actively involved in the introduction of the Korean discovery system in response to the perception of an impending crisis in South Korean courts as the country is being left out from international IP disputes. Since the amendment of the Court Organization Act on 13 June 2018, only one case bringing a foreign argument was filed in a patent court for a domestic lawsuit after a foreign language argument was granted in an Intellectual Property Right (hereafter IPR) trial. Even if arguments in English become available and the judgement is speedy and fair in Korean courts, the Korean government’s goal to become a hub for IPR dispute resolution cannot be achieved without the discovery system. In fact, there is currently a system for filing a document submission order in South Korea, but it is not very effective in practice. This is because the other party does not get any significant penalties imposed, even if a party bearing a burden of proof has filed an application for filing the order against him.

The Korean Patent Act has a system that resembles the discovery system. According to the paragraph (1) of Article 132 (Submission of Materials) revised on  29 March 2016, “Upon receipt of a request from either party to legal proceedings on infringement of a patent or exclusive license, the court may order the other party to submit materials necessary for proving the relevant infringement or calculating the amount of losses caused by the relevant infringement: Provided, That the foregoing shall not apply where the person possessing the materials has a reasonable ground to refuse to submit them.” The paragraph (4) and (5) further state that, “where a party fails to follow the order to submit materials without any reasonable grounds, the court may deem that the claim of the other party on the record of materials is true” and “In cases of falling under paragraph (4), when a party who filed a petition for the submission of materials has a situation where it is extremely impracticable to make a detailed assertion on the records of materials and it is also difficult to expect that the fact to be proved by the materials may be proved by any other evidence, the court may deem that the assertion of the party on the fact which he/she intends to prove by the records of the materials is true”. However, it was pointed out that this system was too insufficient compared to the original discovery system and it could not properly protect the patentees. This is because the court applied the above-mentioned provisions in a very conservative way.

To conclude, many steps are still needed in order to implement the discovery system in South Korea, one of which includes the total revision of the current legislation in a large scale. Even though the KIPO, many companies and legal communities are on the same page regarding the introduction of the system. These days, e-Discovery is also being actively adopted in international patent litigations beyond the traditional system. In order to respond quickly and appropriately to the spread of electronic evidence, the relevant discussions regarding the introduction of the domestic discovery system will be accelerated and the following changes will be made soon.

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On March 30, 2018, the Beijing Intellectual Property Court made a final judgement on the copyright infringement dispute between CCTV International Network Co., Ltd. (hereinafter referred as “CCTV”) and Baofeng Group Co., Ltd. (hereinafter referred as “Baofeng”). The court found Baofeng infringed CCTV’s copyright and ruled in favor of a damage compensation -4 million RMB.

Summary of the Case

The plaintiff CCTV claimed that it had acquired the exclusive right of broadcasting the “2014 Brazilian World Cup” in the Chinese Mainland area. According to CCTV, Baofeng provided short online video broadcasting services for the sports event to the public through its official website and it’s player “Storm Codec 5” without authorization. The contents of short videos involved came from the TV programs broadcasted by CCTV. The short videos involved qualified as works and were created by a process which was analogous to cinematography under the copyright law of the people’s republic of China. Hence, Baofeng infringed CCTV’s copyright.

According to the court of first instance, the TV programs of “2014 Brazil World Cup” made and broadcasted by CCTV should be protected as video recordings but not works under the copyright law. The short videos involved excerpted from these programs and should also be deemed as video recordings. Therefore, the court held that Baofeng infringed CCTV’s right of disseminating exclusive information online relating to the TV programs which were regarded as video recordings and judged Baofeng to compensate CCTV 672,400 RMB(EUR €88,465).

CCTV appealed to a higher court on the ground of: 1) the programs involved qualify as works and are created by a process which is analogous to cinematography due to their great originality, 2) the amount of compensation is not enough to make up for its financial losses.

During the appeal process, the following two criteria were referred by the appellant court (Beijing Intellectual Property Court) regarding whether the TV programs involved qualify as works:

1.The “fixed” Requirement

Baofeng provided online video-on-demand after the live broadcast of the sports event involved. Hence the TV programs had been stably fixed on the material carrier.

2.The originality requirement

Three factors were considered:

(a) Subject selection: the subjects of the TV programs were absolutely relevant to the World Cup, so the producer mainly had no choice about them.

(b) Video shooting: the objective factors -such as the unified standard of producing sports event signals, the satisfaction to the audiences’ requirements, the shooting methods and techniques commonly used by photographers who need to meet the requirements of live broadcasting, etc. -would extremely limit the individualized choices during the video shooting.

(c) Selection and arrangement of the video pictures: during the live broadcast process, the photographers transmits the their pictures to the live director who collects pictures from each camera and then picks up what he/she needs and broadcasts them live. However, actually the live director also doesn’t have much individualized space on the selections and arrangements of pictures, because live broadcast must reflect the real situation on the spot of the sports event.

Besides, CCTV claimed that the contents which should be considered as works created by a process analogous to cinematography also included Chinese subtitles and commentary besides the continuous scenes carried by the World Cup signals involved. However, the court held that the continuous scenes could not be considered as cinematographic works, so the TV programs could not  qualify as cinematographic works merely depending on the Chinese subtitles and commentary .

The appellate court finally partially upheld the lower court’s points of view of which the TV programs involved did not qualify as works, but overturned the amount of compensation. Actually, instead of ruling an obviously low compensation as the court of first instance did, the appellate court fully supported CCTV’s requirement of compensation which was 4 million RMB(EUR €525,686) .

Comments

Cinematographic works or works created by a process analogous to cinematography with great originality are comprehensive arts which are produced by directors  who select actors, lighting engineers, sound designers, cameramen, and propmen, etc. and guide them to cooperate meticulously and closely according to scriptwriters’ drama. While video recordings are productions of recording continuous figures or images with or without accompanying sounds except films, televisions or video works. Nearly no creative work is needed during the process of recording, so the video recordings  cannot meet the standard of originality and cannnot be regarded as works.

When distinguishing a cinematographic work from a video recording, we need to consider the requirement of “fixity” and originality. The judgement of originality is more subjective than “fixity”, so different people may get different conclusions.

There’re also some points of view believing that the descriptions of sport events are not just objective and unthinking records, instead, they are story descriptions which are different from the events themselves and therefore should qualify as works.

In this case, the Beijing Intellectual Property Court deduced the difference between a cinematographic work and a video recording from the difference between copyright and adjacent right on the basis of the originality standard. Actually, this standard plays an important role in the determination on whether a sportscast qualifies a work. Similarly, the standard can also be applied in the determination on other types of videos, such as MV, short videos on social medias.

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If you search in a Korean dictionary, the word “팔팔(palpal)” is defined either as:

1. Strong and urgent in nature (source: standard Korean dictionary)

or

2. active and alive’ (source: standard Korean dictionary)

It is commonly used as a nuance, or colloquialism, meaning that a person ‘is still alive(팔팔), even though they are old’. Hanmi Pharm also seems to have this nuance and named ‘팔팔’ for its product that improves deteriorated function.

However, there are quite a few products that use the expression ‘팔팔’, as it is frequently used in everyday life and has a positive meaning. In particular, its use is prominent in medicines and health supplements. If you just search Google for the word ‘팔팔,’ you can see Hanmi’s ‘팔팔,’ and other several other products such as health food ‘청춘팔팔,’ and “혈관팔팔’. One might have a rational question that if a word like ‘팔팔’  is used widely in various products, can it be approved as a trademark that has exclusive usage.

In March last year, the KIPO(Korean Intellectual Property Office) dismissed the claim of Hanmi Pharm in a trademark invalidation lawsuit filed by Hanmi Pharm. (darts-378-569-G-ko). Hanmi Pharm claimed that a trademark ‘氣八八(기팔팔)’, which is a trademark for a dietary supplement, should be invalidated because the mark 氣八八(기팔팔) is a violation of Article 7 (1)(7)(Notwithstanding Article 6, none of the following trademarks shall be registered: Any trademark which is identical or similar to another person’s registered trademark for which the application was filed earlier, and which is to be used on goods identical or similar to the designated goods) and 7(1)(11)(Any trademark which is feared to mislead or deceive consumers concerning the quality of goods) of the old trademark law.

In this regard, KIPO believes that trademark similarity must first be recognized in order to check whether the trademark violated Article 7(1)(7) or 7(1)(11). Therefore, KIPO first judged this and concluded that the two brands are not similar.

         “The ‘palpal’ part common to both the registered and pre-registered trademarks, in this case, appears to be indistinguishable in relation to the designated or used product, and it is not appropriate to monopolize it to a specific person. Therefore, the “八八” or “팔팔” part of the registered trademark of this case cannot be regarded as an important part with its own distinctive power… The trademarks registered in this case and the pre-registered trademarks differ in appearances, such as the type of letters, the number of letters, and the typeface. The trademark registered in this case is called ‘기팔팔(gi-pal-pal)’, whereas the registered trademark is called ‘팔팔(pal-pal)’ and is not similar. The registered trademark, in this case, has the meaning of ‘has strong energy’ or ‘getting strong energy’, whereas the registered trademark has the meaning of ‘active and lively’, and there is a difference in the concept. After all, the trademarks registered in this case and the pre-registered trademarks cannot be said to be similar in all respects such as appearance, designation and concept.” (darts-378-569-G-ko)

However, the Patent Court ruled and reversed the decision of KIPO. First, regarding the similarity of trademarks, the Patent Court decided that they were similar because of the similarity of concept.

“Even if there is a difference in appearance and title, in the conception, if a normal person sees the registered trademark(氣八八(기팔팔), the meaning of ‘has strong energy’ will come to mind. Considering the relationship between the pre-registered trademark and erectile dysfunction treatment drug and sexual dysfunction medicinal product, which is a designated product, the general consumer or trader can easily think of the meaning of ‘has strong energy’ when they see the pre-registered mark(‘팔팔’). Thus the concepts of both trademark which contain the word ‘팔팔’ are similar. Therefore, even if there is a difference in the appearance and name of the two brands, it is difficult to see that the difference overwhelms the similarity of the concept…Both marks are similar.”(darts-783-875-H-ko)

         Based on this, the Patent Court decided that “(氣八八(기팔팔)” is a trademark that may be deceptive to the consumer, corresponding to Article 7(1)(11) of the old trademark law.

“If a registered trademark corresponds to a trademark that may deceive a consumer under the provisions of Article 7 (1) 11 of the Old Trademark Act, the trademark or product may be recognized as a trademark or a product of a specific person by a domestic consumer or trader. In such a case, if there is a special situation in which a trademark identical or similar to the previous trademark is used in a product identical or similar to the used product, or if the trademark is misused as being used by the owner of the trademark, there is a concern that the use of a registered trademark may mislead the consumer by causing misunderstanding and confusion of the source. … Pre-registered mark(팔팔) was sold more than 22 billion won in seven months after its launch, ranking third in the market share. In 2014, it was ranked No. 1 in market share, and since then, it has continued to rank No. 1 in market share in prescription amount and prescription volume. … Thus, the pre-registered mark was known enough to be recognized as a trademark of a specific person by domestic consumers or traders, and it is reasonable to say that it was recognized as a well-known trademark…

‘Medical food’ is defined as ‘medical food, that is, dietary food’ in the food science and technology dictionary. In the nutrition dictionary, it defines ‘medical food’ as ‘food for medical use and food used for meal therapy, but in general, medical food generally refers to special purpose food for patients among special nutritional foods prescribed by the Food Sanitation Act.’ Therefore, among the designated products of this case trademark, `Dietary supplements, dietary supplement health supplements, mixed vitamins, vitamins and minerals dietary supplements, mineral supplements, micronutrient food supplements, medical dietary foods , medical diet and fortified foods’ can also be classified as pharmaceuticals according to their nutrient content, and their use is similar to the products of pre-registered mark(팔팔) which is a medicine used for the treatment and prevention of diseases.” (darts-783-875-H-ko)

It is now difficult to use ‘팔팔’ in other health foods or medicinal products as Hanmi Pharmaceutical’s prevailing use of ‘pal-pal’ is recognized. As trademark lawsuits increase day by day, it is important to fully understand existing landmark cases and to keep abreast of emerging cases in order to gain an advantageous position in legal disputes.

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The word ‘Hall of Fame’ is often found in South Korea, too. KBS TV SHOW ‘The Golden Bell Challenge’ quiz show also uses the concept of “Hall of Fame,” which is the list of the people who took all the quizzes up to number 50. A trademark infringement lawsuit has been filed around this frequently used term, ‘the Hall of Fame’.

Plaintiff is a company that operates e-commerce and related distribution business and signed an exclusive license agreement for the ‘Hall of Fame’ shown below.

Defendant is an apparel brand whose main business is the sale of Internet shopping malls. The defendant used the emblem containing the word “Hall of Fame” on the site and on the Internet open market, M. (Example: Hall of Fame XXX Trench Coat, etc.) The plaintiff hereby filed a claim for damages, saying that the defendant used the same or similar marks and these actions violated his or her exclusive license.

In order for a trademark infringement to be recognized, its use must correspond to “trademark use.”

“If another’s mark is used to mark the origin of a product, which is an essential function of the trademark, it should be considered that it is used as a trademark… Whether or not a trademark is used as a trademark should be a combination of the relationship with the product, the mode of use of the trademark, the well-known reputation of the trademark, and the intention and use of the user. Therefore, whether or not the mark is used as an identification mark of a commodity shall be judged comprehensively. ” (darts-587-020-H-ko)

The plaintiff has made the following claims to prove that the defendant’s use of the word ‘Hall of fame’ is used ‘as a trademark’: ① the word ‘Hall of Fame’ was placed in front of the defendants’ products to convince the consumer that the plaintiff and the defendant company made  an agreement to use the mark, ② in addition to the word ‘Hall of Fame’, the words ‘Best’ could be used to convey the same meaning, ③ the Hall of Fame was recognized for its recognition in the process of filing and registering the trademark.

However, the court rejected the plaintiff’s claim for the following reasons: first, ① ‘Hall of Fame’ is a word that is widely used in the e-commerce industry, ② defendants used the word ‘Hall of Fame’ only in front of some products, ③the word ‘Hall of Fame’ is not widely recognized among consumers as the source of indication of the plaintiff in relation to a particular product or business.

“’Hall of Fame’ is the term used by the e-commerce industry, and it is a term extensively used in the sale of merchandise, and refers to “a product category that is a collection of popular products, high quality products, or products that have received good reviews from customers”… It is natural to see that consumers who purchase goods marked with ‘Hall of Fame’ on the Internet get intuition that the product belongs to “popular items, high quality products or product categories that have been well received by customers.”… In the defendant shopping mall, the product name is described as ‘product specific description’ + product type.’ As a general consumer who sees the mark, one can naturally feel it in the same sense as “a popular product, a quality product, or a product well-received by consumers. There is no data to admit that a registration service mark this case is a mark that indicates the origin of the plaintiffs in relation to the designated service industry or designated goods.” (darts-587-020-H-ko)

Therefore, trademark infringement on the ‘Hall of Fame’ has been denied. This is the opposite of the court’s decision about Hanmi Pharmaceutical’s ‘팔팔(pal-pal)’ tablet (written in last newsletter). The word ‘팔팔(palpal)’ is also often used in South Korea to mean ‘to be energetic’. Hanmi Pharm, which sells an erectile dysfunction treatment drug ‘팔팔’, filed a lawsuit against a dietary supplement ‘氣八八(기팔팔)’, claiming that it infringes trademark rights. Intellectual Property Trial and Appeal Board of KIPO judged that it is not appropriate to monopolize the word ‘팔팔(palpal)’ to a specific person or company (darts-378-569-G-ko). However, the court overturned the conclusion of the Intellectual Property Trial and Appeal Board of KIPO and concluded that the use of the trademark ‘氣八八(기팔팔)’ violates the plaintiff’s trademark rights because of following reasons: ① the similarities of the two brands in question were recognized because they were similar in concept and ② the domestic consumer is well recognized that Hanmi Pharm is the owner of the trademark ‘팔팔(palpal)’. (darts-783-875-H-ko)

Words that are often used in everyday life and have positive meanings are often used as trademarks because of their familiarity and the positive association effect that consumers will hear when they hear them. However, it is difficult to predict whether a court will admit or not admit ‘distinction’ for the words in specific cases. Therefore, we will need to see more cases and analyses of them.

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What makes this difference? In general, there is a distinction within the current practice in regard to patent examination. In accordance with the Patent Examination Guideline published by KIPO, it specifies several possibilities for determining the inventive step of the combining invention, one of which is the following: “the determination of whether a prior art disclosure contains a motivation, suggestion, or the like for a combination shall be made by synthetically assessing the following: whether the motivation, suggestion, or the like is explicitly taught in the prior art; whether the motivation, suggestion, or the like is inherent from the technical problem to be solved by the invention; or whether the motivation, suggestion, or the like is part of the common general knowledge or empirical rules of a person skilled in the art.” As stated directly in the guideline, KIPO often employs combining of prior arts for the assessment of non-obviousness.

As an example, let’s look at the latest case ruled by IPTAB (Intellectual Property Trial and Appeal Board) on 27-11-2019 (darts-993-496-H-ko). The patentee (plaintiff) argues that it is not obvious to combine those previous invention 1,2 because they have different purposes. Nevertheless, IPTAB concluded that “The prior art 1 and 2, as discussed earlier, not only have in common for use of two or more types of electrolyte salt as a mixture in order to solve the problem of using one type of electrolyte salt, but also the combination of electrolyte salt from prior art 1 is identical to Example 3 in the claimed invention, and also the combination of prior art 2 is identical to Example 2 in the claimed invention. Therefore, the plaintiff’s argument that combining two inventions 1,2 is not obvious from the different purpose shall not be accepted.”

In comparison, the approach to this matter in EPO is somewhat different. ‘Problem-Solution Approach (PSA)’^[2] and ‘Could/Would Have Been Approach’ are generally used as the main criteria for the assessment of an inventive step. Although the EPO’s Guideline for Examination^[3] mentions the combination of inventions, it implies the possibility of combination of inventions achieved from the problem-solving approach. In addition, it distinguishes ‘combination’ from ‘aggregation’. The former is namely a structurally meaningful sum of each feature as a whole, while the latter is a mere juxtaposition of each one. Most importantly, EPO emphasizes the ‘synergistic effect’ as follows:

“A set of technical features is regarded as a combination of features if the functional interaction between the features achieves a combined technical effect which is different from, e.g. greater than, the sum of the technical effects of the individual features. In other words, the interactions of the individual features must produce a synergistic effect. If no such synergistic effect exists, there is no more than a mere aggregation of features.”

Let’s take another look at a recent case from the opposition division in EPO on 31-10-2019 regarding the determination of inventive step of the patent EP2968302. The judges argued that “It would not be obvious for the skilled person to add compound 2 to the combination of TM5 and expect an improved antiviral activity, let alone a synergistic effect…(omit)…even if the synergy was not considered in the formulation of the problem to be solved, a pangenotypic effect of the present combination in absence of interferon would still be a surprising effect. It would not be obvious to combine the present compounds and expect the claimed activity.” (darts-993-909-H-en)

Although the KIPO’s Patent Examination Guideline refers to ‘synergistic effect’ similar to those of the EPO’s in terms of combining previous inventions as follows, it is partial and not mandatory to do so in practice.

“It is normally considered to be obvious to combine a well-known technology with another prior art disclosure. However, if a technical feature to be combined is a well-known technology in the art, but a combination with another technical feature results in an advantageous effect, the combination is not regarded as obvious.”

As such, there is a slight but clear difference between each patent office regarding the combining of prior documents for the inventive step. While KIPO views it from a broader perspective, EPO has a narrower view that emphasizes the advantage of the synergistic effect. If you wish to file a patent application with success, adopting a strategic behavior according to each patent office would be a shortcut to obtain your patent right.

^[1] Search criteria: KIPO/European Instance, decisions (decision & order) from 01-01-2019 to 31-12-2019. Please note that there can be a slight error from some un-analysed cases.

^[2] Each step is the following:

1) determining the “closest prior art”,
2) establishing the “objective technical problem” to be solved, and
3) considering whether or not the claimed invention, starting from the closest prior art and the objective technical problem, would have been obvious to the skilled person.

^[3] Guideline for Examination, November 2019

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Both the doctrine of equivalents[1] and prosecution history estoppel[2] play important roles in the determination of patent infringement. The prosecution history estoppel has a priority when there is a conflict between the applications of these two principles, because prosecution history estoppel is one of the factors that limit the application of the doctrine of equivalents. But before that, it is necessary to estimate whether the prosecution history estoppel can be applied in the determination of equivalent infringement.

During the patent prosecution or invalidity procedures, applicants or patentees usually make amendments on claims or make statements that limits and narrows the scopes of claims in order to accommodate the patent law. Adding new technical features into the independent claim ——picking technical features from the specification and adding them into the independent claim or using a subordinate claim as a new independent claim——is a common manner of amendments in practice, and therefore leads to the change of the scope of the independent claim. It was once believed that if such a change produced an essential effect on the patent right, for example overcoming the lack of novelty or inventive step, then all of the other technical features other than the new added one should be excluded from the scope of the independent claim (i.e., the prosecution history estoppel should be applied). While the court of a patent infringement case holds a  different view on this matter, and we will introduce this typical case focusing on whether the prosecution history estoppel is applicable or not in facing of equivalent infringement.

Background

In December 2018, the Supreme People’s Court of China made a judgment on a patent infringement case of Tianjin Lianli Chemical Co., Ltd.(“Lianli” for short) v. Zhejiang Friend Chemical Co., Ltd.(“Friend” for short). The court reversed the judgment of the first and second instance courts that Friend infringed the patent right of Lianli, and decided that the accused products did not fall into the scope of the claims involved.

One dispute of the case is whether “the material level switch” in claim 1 should apply the prosecution history estoppel or not.

The accused product lacks of “the material level switch” in comparison with claim 1. According to the specification, the function of the material level switch is detecting whether the aluminum powder in a feed tank has been completely transferred. During the first trial, Friend had ever clearly expressed that the accused product used pressure measurement to check whether the aluminum powder was emptied.

The patentee held that the pressure measurement of the accused product was basically the same as what was recorded in the specification, i.e. the material level switch in the form of “tuning forks, capacitors or others like them”. With the same method, the same function and the same effect, they constituted the equivalent features.

Friend argued that the patent was authorized based on a new claim 1 which was amended from the original one by Lianli during the procedure of prosecution, i.e. the technical feature “material level switch” was added to the original claim. In addition, during the patent invalidation procedure, the Patent Reexamination Board held that the difference between the patent and the prior art was “material level switch” which was non-obvious for the ordinary skilled person in the field. Therefore, the prosecution history estoppel should be applied to prevent “material level switch” expanding to its equivalent technical features, i.e., the technical feature of pressure measurement should not be regarded as an equivalent technical feature of material level switch.

The Court of Second Instance held that the prosecution history estoppel should not be applicable in this case, on the grounds that Friend failed to prove that the relevant statements made by the patentee during the invalidation procedure had a substantial impact on the patentability.

Judgement

The Supreme Court rectified the applicable law of the court of second instance and held that: in the situation of no other evidences having proved that the patentee has abandoned a certain technical solution through amendment or statement, it cannot be deemed that patentee has completely abandoned all other technical features which are equivalent to the additional technical feature and the prosecution history estoppel cannot be applied, simply because the scope of the claim is narrowed down by adding a technical feature. Otherwise, the scope of the claim will be overly limited after being added a technical feature, and it’ll be too easy for the accused infringer to avoid infringement by modifying and replacing the added technical feature, resulting in an imbalance of interests between the patentee and the public.

If asserting applying the prosecution history estoppel, the accused infringer should provide the specific proofs of the patentee’s “narrowly amendment or statement”  and whether the patentee has abandoned any ” technical solution “. While if asserting the prosecution history estoppel is not applicable due to “no abandon on any technical solution”, the patentee should bear the burden of proof for “the narrowly amendment or statement is explicitly negated”. It should be ascertained whether the patentee has abandoned a specific technical solution through “narrowly amendment or statement”, rather than merely considering whether the “narrowly amendment or statement” has a substantial impact on the patentability.

Ultimately, the supreme court held that: 1) the judgment of the court of second instance was correct, but the applicable law was inappropriate; 2)no evidence supported the patentee had abandoned the technical solution of pressure measurement by the “narrowing amendment or statement” and therefore the prosecution history estoppel was not applicable.

Comment

According to the view of the supreme court, the key point of whether the prosecution history estoppel is applicable depends on if any technical solution is abandoned or not. The prosecution history estoppel is a necessary restriction on the doctrine of equivalence. Its purpose is to propel the parties to be honest and trustworthy in litigation activities and avoid inconsistent interpretations during administrative authorization procedures and infringement litigations.

For sure,the added technical feature mentioned above has narrowed the scope of the patent claim, but it doesn’t mean that the patentee had abandoned the equivalent technical features. The prosecution history estoppel cannot be expansively applied arbitrarily.

Under which situations would it be recognized as “abandoning a technical solution ”? With referring to other representative decisions (e.g. Darts-ip reference: darts-889-929-A-zh, darts-653-218-F-zh, darts-037-482-G-zh), the situations are summarized as following:

Ⅰ:

Assumming that a patentee amended the dependent claim N to a new independent claim during the procedure of prosecution or invalidation.

>If the scope of the original independent claim is A+B ,and the scope of the dependent claim N is A+B’, wherein B is the superordinate concept of B’, then it can be inferred that all the equivalent technical features other than the technical feature B’ have been abandoned, as the technical feature B’ in the dependent claim N is covered by the original independent claim and an original reference for the technical features B’ had ever existed.

>If the scope of the original independent claim is A+B, and the scope of the dependent claim N is A+B+C, wherein C is a new added technical feature, then it cannot be inferred that all the equivalent technical features other than the technical feature C have been abandoned, as the technical feature C in the dependent claim N is not covered by the original independent claim and no original reference for the technical features C had ever existed.

Ⅱ:

Assumming that the scope of the independent claim is A + B, and the technical solution of A + B’ is disclosed by prior art where B’ is equivalent to B.

If the patentee added a new technical feature or stated that there was an obvious difference between B and B ‘ during the procedure of prosecution, and therefore caused patentability of the invention, then it can be inferred that all the equivalent technical features other than the technical feature B have been abandoned, as the patentee’s action shows that the patentability is essentially based on the technical feature B which makes the patent different from the prior art.

[1] Means the scope of a patent right not only includes the essential technical features, but also the technical features that equivalent to the essential technical features in substance.

[2] Means a court won’t determine in favor of an applicant or patentee, if he surrenders a subject matter during prosecution and uses the doctrine of equivalents to recover for infringement based on that same subject matter .

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The case we will look at today is the first case that applies this Act, which is an important indicator. Let’s look at the facts first.

Plaintiff A and B were operating ‘G Sweet Bean Bread’ at KORAIL Airport Railroad Station E and Subway station F. Defendant C worked as a plaintiff’s baker and then left office in 2013 and then operated “I Red Bean Bread” at Subway H Station with Defendant D from 2013.12.5 to 2014.5.21. After the partnership, Defendant D changed his business name to “J Red Bean Bread” and sold red bean bread made in the same way as before. The plaintiff filed a lawsuit for damages against the defendant, in violation of the (j) (currently (k)) of the Unfair Competition Prevention Act.

The trial court judged about 3 following points: ① whether the plaintiffs’ store is a result of substantial investments or efforts by the plaintiffs, ② whether the plaintiffs’ store formed a trade dress through the components, ③ whether the defendant’s operation of the store is an unauthorized use of the plaintiff’s performance.

First, about the ①issue, the court decided that the plaintiffs visited Japan several times, researched interiors, promotional materials, etc., and commissioned design firms to produce store designs. In sum, the court concluded that the plaintiffs’ store was recognized as a result of the substantial investment and efforts of the plaintiffs. (darts-340-410-H-ko).

Before explaining the ② issue, there is a good explanation about ‘trade dress’.

       “Trade dress” means a complex intangible element used to represent a unique image of a product or service, such as color, size, or shape. The shape of the Coca-Cola bottle makes it easy to understand. Coca-Cola bottles, such as the shape of a woman’s waist and a wave pattern on the surface, have a unique shape that is different from other beverage bottles. The distinctive feature of Coca-Cola bottles, which distinguishes them from other beverage bottles, is the trade dress. So if you can look at the overall exterior design and think of a particular brand, the design is patentable, and the key to the ‘trade dress’ is that. “ (Source: Naver Dictionary(네이버 지식백과), 트레이드 드레스 [Trade Dress] (트렌드 지식사전, 2013. 8. 5., 김환표).”

In this case, the question was whether the plaintiffs’ stores could be recognized as a trade dress as a whole. In response, the court found that the plaintiff’s interior of the store was a combination of several factors, “acquiring uniqueness and discrimination”(darts-340-410-H-ko).

          “Plaintiffs chose the colors and signage of the above colors to create a unique store atmosphere that is calm, clean and luxurious throughout. In addition, by incorporating the shapes such as the sign and signboard of the above shape into various promotional materials and packaging containers, consumers were informed that high-quality sweet-red-bean bread is the main product of Plaintiffs. An open store layout was opened to the customer to reveal the manufacturing process to the customer so that they could see the entire process from kneading to fermentation and baking in the oven. Through this, plaintiffs created the unique atmosphere of plaintiffs’ sales or plaintiffs’ stores as a whole, such as highlighting the image of fresh and healthy sweet-red-bean bread. In this way, the plaintiff’s business or plaintiff’s stores gained their uniqueness and differentiation compared to other stores.” (darts-340-410-H-ko)

(Photo Source: 한겨례신문, 단팥빵 전쟁에까지 뛰어든 ‘빵빵한’ 로펌들, 2016.10.23, 민은희 제공)

                      Plaintiff’s store                                                             Defendant’s store

On the issue ③, the court also accepted plaintiff’s claim that the operation of the defendant’s store was an unauthorized use of plaintiff’s performance.

          “The defendants operated the defendants ‘stores by copying the elements of the plaintiffs’ stores and by adopting them as they were or by modifying only the letters of the business name or the signboard. The defendants thus made consumers feel that the defendants ‘stores and the plaintiffs’ stores were identical or very similar. Therefore, defendants’ operation of the defendant’s store as described above corresponds to the unauthorized use of the plaintiff’s achievements.” (darts-340-410-H-ko)

The defendants later appealed, but both the appeals and the Supreme Court came to the same conclusion. It should be noted that this ruling is one of the first precedents of the application of anti-competition law (k) and that ‘trade dress’ is protected by the anti-competition law. Trade dress is a new concept in Korea, and there is no legal provision to protect it directly. However, through the formation of such precedents and the Unfair Competition Prevention Act (K), the trade dress can be now indirectly protected. However, as ‘complex intangible elements that symbolize the brand'(which is a meaning of a ‘trade dress’) has a broad spectrum of interpretation,  in order to win, it will be necessary to utilize a database of related cases and formulate a strategy accordingly.

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