Patent Court Decision, 2016Heo3051, dated September 30, 2016
The translation does not have any legal effect and the Judiciary of the Republic of Korea does not guarantee the accuracy of the translated text. Please refer to the original decision in Korean for an accurate statement of law.
PATENT COURT OF KOREA
THIRD DIVISION
DECISION
Case No.: 2016Heo3051 Invalidation of Registration (Patent)
Plaintiff: A
Defendant: C Corporation
Closure of Hearing: August 26, 2016
Date of Decision: September 30, 2016
ORDER
1. Plaintiff’s claim is dismissed.
2. The trial costs shall be borne by the Plaintiff.
PLAINTIFF’S DEMAND
In regard to Korean Intellectual Property Trial and Appeal Board’s decision on April 12, 2016 in Case No. 2016Dang337, the section regarding the scope of Claim 3 of Patent No. 1165158 shall be cancelled.[2]
OPINION
1. Background Facts
A. Procedural History
1) On February 5, 2016, Defendant brought an invalidation action against the Plaintiff before the Korean Intellectual Property Trial and Appeal Board regarding the patented invention in question, arguing that, “Claims 3 and 4 of the patented invention are identical to Claim 3 of the Prior Art, and thus, this patented invention’s registration must be invalidated pursuant to Article 36, Paragraph 1 of the Patent Act.”
2) The Korean Intellectual Property Trial and Appeal Board examined this action in Case No. 2016Dang337 and rendered a decision in favor of the Defendant on April 12, 2016, stating that, “Claims 3 and 4 of the patented invention are identical to Claim 3 of the Prior Art, and thus, this patented invention’s registration must be invalidated.”
B. Patented Invention (Plaintiff’s Exhibit No. 3)
1) Title of Invention: Substrate Gap Supporter and its Manufacturing Method
2) Filing Date / Registration Date / Registration Number: September 9, 2010 / July 5, 2012 / Patent No. 1165158
3) Rights Holder: Plaintiff
4) Summary of Invention
| A) Technical Field The present invention relates to gap supporters (also known as: substrate holders), and in particular, those gap supporters that are attached to a substrate so as to avoid having a worker individually and repetitiously fit them into holes on the substrate, and even if they are mass produced, are of a uniform thickness so as to keep the gap between substrates uniform (Paragraph [0001]).
B) Problems of the Prior Art
The flexible printed circuit substrate (230) is bent downwards, as shown below in Figures 2 and 3, to allow the PCB substrate (210) to be deployed at the bottom of the lower receiving member (800). A buffer member (900) is installed on the lower receiving member (800) in order to avoid damage to the flexible printed circuit substrate (230) (Paragraph [0007]). As such, traditional gap supporters were installed between the PCB substrate (210) and the lower receiving member (800) in order to protect the electrical components installed on the PCB substrate (210) …(omitted)… and to protect against the PCB substrate (210) bending if it comes into contact with the lower receiving member (800) …(omitted)… as the PCB substrate (210) is positioned to be almost touching the bottom of the lower receiving member (800) due to flat panel displays becoming slimmer. Figure 4 shows traditional gap supporters (10) (Paragraphs [0008] through [0010]). However, traditional gap supporters (10) had to be installed by fixing them into holes on the PCB substrate (10) by multiple and individual insertions, causing them to be very disadvantageous with regard to installation cost and time. Furthermore, as this method requires fixing them through multiple insertions into holes, there is another problem where many gap supporters (10) do not protrude at a uniform height but instead have slight height differences, making the distance between the PCB substrate (10) and the panel irregular (Paragraph [0015]).
C) Problem to be Solved The problem to be solved by the present invention is providing a gap supporter, and its manufacturing method, that is installed by attaching it onto a substrate, so as to not have a worker repeatedly and individually insert each gap supporter into holes on the board to fix them and instead allow for an automated installation process, in addition to having the gap supporter be of a uniform thickness, even if they are mass produced, so as to have a uniform gap between the panels when the gap supporters are attached onto the substrate (Paragraph [0016]).
D) Means to Solve the Problem
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5) The Scope of the Claims
[Claim 3] A method of manufacturing gap supporters characterized by the following steps: a first step that forms metal foil on both sides of the insulating plate (hereinafter "Element 1"); a second step that etches the metal foil to expose the above insulating plate in such a manner that on both sides of the above insulating plate are multiple parallel stripes at a uniform distance from each other that expose the above insulating plate at a uniform thickness (hereinafter "Element 2"); and a third step that cuts along the same edge of the above stripes in parallel and also cuts perpendicular to the above stripes to complete the gap supporter (hereinafter "Element 3") (collectively hereinafter the "Invention of Claim 3").
[Claims 1, 2, and 4 through 11] each omitted.
C. Prior Art (Defendant's Exhibit No. 1)
1) Summary of Invention
This invention is registered patent No. 10-1009280, which was filed on July 7, 2010, a date earlier than the filing date (September 9, 2010) of the patented invention, by the Plaintiff who also filed and holds the rights for the patented invention, with the name "PCB Gap Supporter and its Manufacturing Method" and a registration date of January 12, 2011. The technical field, problems with the Prior Art, problem to be solved, effects, drawings, etc., as set forth in the specification of the Prior Art are identical/equivalent to those of the patented invention, with the exception of, however, the differences regarding the Invention of Claim 3, as Claim 3 of the Prior Art is additionally limited to having steps involving the formation of through holes and metal plugs, as shown in section 3.B below of this document.
2) Scope of Claims
[Claim 3] A method of manufacturing gap supporters characterized by a step that uniformly forms through holes in a matrix pattern on an insulating plate that has a first metal foil formed on both sides thereof in order to go through the first metal foil; a step that initiates metal plating on the results of the above through hole formation so that a second metal foil is formed on top of the first metal foil and metal plugs are formed inside the above through holes; a step that exposes the above insulating plate by etching the above second metal foil and the first metal foil so that on both sides of the above insulating plate multiple stripes are formed in parallel at a uniform distance from each other that expose the insulating plate at a uniform thickness; and a step that cuts along the same edge of the above stripes in parallel and also cuts perpendicular to the above stripes.
3) Drawings
| [Fig 5] Gap Supporter |
[Fig 6] Gap Supporter Manufacturing Method |
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[Admitted Facts] Undisputed facts, Plaintiff's Exhibit Nos. 1 through 3, each entry in Defendant's Exhibit No. 1, the purport of overall arguments.
2. Plaintiff's Argument and Issues
A. Summary of the Plaintiff's Argument
1) While Claim 3 of the Prior Art is a process that forms a gap supporter that must have "through holes and metal plugs" formed on it through an organic joining process, the Invention of Claim 3 differs from such composition, because it is a process that forms a gap supporter that does not have "through holes and metal plugs" formed on it. Also, this above difference in composition results in new effects for the Invention of Claim 3, such as allowing for reductions in the metal foil's thickness, simplifying the process as the second plating procedure can be avoided, and allowing for an easier ability to keep the gap supporters level as the problem of diagonal cuts occurring during the cutting process is solved. As such, the composition and effects of both inventions are different, and thus, they cannot be seen as identical inventions.
2) The organic joining process that follows from the formation of the through holes in the composition of Claim 3 of the Prior Art is clearly different from the Invention of Claim 3, and such a composition cannot be called common and widely known art so it cannot be removed as common and widely known art, and furthermore, as new effects arise due to the removal of the above composition, the two inventions cannot actually be considered identical.
3) The gap supporters without through holes in the Invention of Claim 3 were invented for the purpose of optimizing electronic devices that have become increasingly elaborate and diverse after the filing of the Prior Art, and each step in both inventions join together organically to create a gap supporter, and thus, each invention is a distinct invention and cannot be seen as inventions that embody a superordinate or subordinate concept.
4) As such, the relationship of the Invention of Claim 3 and Claim 3 of the Prior Art is not in violation of Article 36 Paragraph 1 of the Patent Act, and thus, the decision must be overturned as a violation of law.
B. Issue
The issue is whether or not the Invention of Claim 3 is identical to that of Claim 3 of the Prior Art, making it a repeated patent as set forth in Article 36 Paragraph 1 of the Patent Act.
3. Whether Article 36 Paragraph 1 of the Patent Act was Violated
A. Relevant Regulation and Principle
1) Article 36 Paragraph 1 of the Patent Act adopts a first to file policy, stating that, "[w]here at least two patent applications for an identical invention are filed on different dates, only the applicant of the application having the earlier filing date is entitled to a patent on the invention." The purpose of the above regulation is to prevent the repeat registration of identical inventions, and thus, this regulation applies even when the applicant is identical.
2) The scope of protection for a patented invention is determined by the claims, and thus, the question of whether two inventions are identical inventions as set forth in Article 36 Paragraph 1 of the Patent Act must be determined by a comparison of the first "invention specified by the claims" to the later "invention specified by the claims" (refer to Supreme Court Decision 2002Hu1973 rendered on September 24, 2004). This determination as to whether the inventions are identical must involve a comparison between the two actual inventions and must not involve the question of whether there is a difference between the two forms of expression (refer to Supreme Court Decision 2007Hu2827 rendered on September 24, 2009).
Meanwhile, a determination as to whether two inventions are identical is obvious for cases where the technical compositions are completely identical, but if there are differences in scope yet the inventions are identical in parts, the inventions will be identical so long as there are no special circumstances, such as the parts that are not identical form, by themselves, a separate invention, or the above identical parts organically join with the new invention to create a whole that is a novel invention. Even if the composition of both inventions have differences, if these differences do not go past the level of changes able to be made by a person having ordinary skill in the art and do not create special changes in the invention's purpose and effect, then both inventions will also be considered identical (refer to Supreme Court Decision 84Hu30 rendered on August 20, 1985 and Supreme Court Decision 2007Hu2827 mentioned above).
B. A Comparison of the Invention of Claim 3 and Claim 3 of the Prior Art
1) Composition Comparison
| Invention of Claim 3 |
Claim 3 of the Prior Art |
| [Element 1] A first step that forms metal foil on both sides of the insulating plate |
Onto an insulating plate that has applied on both sides metal foil a step that uniformly forms through holes in a matrix form onto the above insulating plate in order to go through the above first metal foil; a step that initiates metal plating on the results of the above through hole formation so that a second metal foil is formed on top of the first metal foil and metal plugs are formed inside the above through holes;
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| [Element 2] a second step that etches the metal foil to expose the above insulating plate in such a manner that on both sides of the above insulating plate are multiple parallel stripes at a uniform distance from each other that expose the above insulating plate at a uniform thickness |
a step that exposes the above insulating plate by etching the above second metal foil and the first metal foil so that on both sides of the above insulating plate multiple stripes are formed in parallel at a uniform distance from each other that expose the insulating plate at a uniform thickness |
| [Element 3] a third step that cuts along the same edge of the above stripes in parallel and also cuts perpendicular to the above stripes to complete the gap supporter; these steps being the characteristics of the manufacturing method to create gap supporters. |
a step that cuts along the same edge of the above stripes in parallel and also cuts perpendicular to the above stripes; these steps being the characteristics of the manufacturing method to create gap supporters. |
2) Results of the Comparison
All of the compositional elements of the Invention of Claim 3 are included identically in Claim 3 of the Prior Art (hereinafter “Common Composition”), while Claim 3 of the Prior Art has compositional elements that are not included in the Invention of Claim 3 , or in other words, “a step that uniformly forms through holes in a matrix form onto the above insulating plate in order to go through the above first metal foil,” “a step that initiates metal plating on the results of the above through hole formation so that a second metal foil is formed on top of the first metal foil and metal plugs are formed inside the above through holes,” and “a step that exposes the above insulating plate by etching the above second metal foil,” has been added (hereinafter “Additional Compositional Elements”).
C. Whether the Inventions are Identical
1) When viewed in light of the following circumstances that follow from the above admitted facts taken together with Plaintiff's Exhibit No. 3, each entry in Defendant's Exhibit No. 1, and the overall pleadings, Claim 3 of the Prior Art is an invention that falls under the category of a subordinate concept of the Invention of Claim 3 , and thus, it is appropriate to view both inventions as identical inventions as set forth in Article 36 Paragraph 1 of the Patent Act.
a) Claim 3 of the Prior Art includes all of the compositional elements of the Invention of Claim 3 and is an invention that merely adds the Additional Compositional Elements. Thus, the goal of both inventions is, “providing a gap supporter… manufacturing method, that is installed by attaching it onto a substrate, so as to not have a worker repeatedly and individually insert each gap supporter into holes on the board to fix them and instead allow for an automated installation process, in addition to having the gap supporter be of a uniform thickness, even if they are mass produced, so as to have the gap between the substrate and the other panel be uniform when the gap supporters are attached onto the substrate (Paragraph [0016] of Plaintiff's Exhibit No. 3, Paragraph [0018] of Defendant's Exhibit No. 1),” and the effect of both inventions is, “to be able to create gap supporters through an automated process and have the gap supporter heights be uniform (Paragraph [0030] of Plaintiff's Exhibit No. 3, Paragraph [0025] of Defendant's Exhibit No. 1).” Thus, both inventions have identical purpose and effects.
b) According to the entries in Defendant's Exhibit No. 1, Claim 1 of the Prior Art is composed of, “a gap supporter having as characteristics a body made of an insulator in a hexahedral shape as it is a gap supporter that is to be installed on a PCB substrate; metal foil installed on two sides of the above body that face each other, but installed on the bottom section of the above two sides so that the upper section of the above two sides are exposed and the bottom sections of the two sides of the above body are covered; and the above metal foil being soldered onto the PCB substrate so that the bottom of the above body is attached to the above PCB substrate,” and Claim 2 of the Prior Art is composed of, “a gap supporter according to Claim 1 that has as characteristics a through hole formed on the above body so as to go through both sides that have installed the above metal foil, and a metal plug inserted into the above through hole so as to connect the metal foil that is formed on both sides of the above body.” According to the Claims of the Prior Art, such as those set forth above, while Claim 1 of the Prior Art does not specify the Additional Compositional Elements of a “through hole and metal plug,” Claim 2 of the Prior Art includes the compositional elements of Claim 1 in its entirety and additionally limits itself to a composition that has the Additional Compositional Elements of a “through hole and metal plug.” Thus, it is significant to see that it is possible to separate Claim 3 of the Prior Art into common compositional elements and the excluded Additional Compositional Elements relating to the through hole and the metal plug.
c) According to each of the entries of Plaintiff's Exhibit No. 3 and Defendant's Exhibit No. 1, both specifications for the patented invention and the Prior Art state that, “[t]he metal plugs (33) have the role of preventing the metal foil (32a, 32b) from coming off of the sides of the body (31), thereby improving the reliability of the gap supporter (30) (Paragraph [0037] of Plaintiff's Exhibit No. 3, Paragraph [0031] of Defendant's Exhibit No. 1),” and while the specifications of the patented invention additionally states that, “[i]f there is no concern about the metal foil (32a, 32b) coming off, then the metal plugs (32) are not absolutely necessary (Paragraph [0037] of Plaintiff's Exhibit No. 3),” when viewed in light of the above, it is difficult to see the “through hole and metal plug” that are Additional Compositional Elements as basic compositional elements that must be equipped as part of the gap supporter's composition.
d) As shown above, it is possible to separate out common compositional elements that exclude Additional Compositional Elements from Claim 3 of the Prior Art, and so long as these Additional Compositional Elements cannot be seen as basic compositional elements that must be equipped, it is difficult to see either that the common compositional elements of both inventions are organically joined to the Additional Compositional Elements of Claim 3 of the Prior Art so as to make the whole a new invention, or that the Additional Compositional Elements in Claim 3 of the Prior Art that exclude the common compositional elements are by themselves a separate invention.
e) In the context of inventions, a superordinate concept means a broader, more comprehensive technology and a subordinate concept means a more specific technology that is encapsulated within the superordinate concept. As shown above, while Claim 3 of the Prior Art includes all of the compositional elements of the Invention of Claim 3, as it is an invention that limits itself to also having the Additional Compositional Elements, both inventions cannot be seen as inventions distinct from each other. As such, Claim 3 of the Prior Art is considered to be a subordinate concept to the Invention of Claim 3.[6]
2) Regarding such, the Plaintiff argues that, as the Invention of Claim 3 is a manufacturing method for gap supporters that do not have “through hole and metal plug” compositional elements, when it is compared to Claim 3 of the Prior Art, new effects arise such as, “allowing for reductions in the metal foil's thickness, simplifying the process as the second plating procedure can be avoided, and allowing for an easier ability to keep the gap supporters level as the problem of diagonal cuts occurring during the cutting process is solved,” and thus, the two inventions cannot be seen as identical inventions.
However, as the Invention of Claim 3 set forth at the end, “…a method for manufacturing gap supporters with such characteristics,” and does not explicitly exclude “through hole and metal plug” compositional elements, it is difficult to see how effects such as those argued by the Plaintiff definitely result from the composition of the Invention of Claim 3. Furthermore, regarding its effects, the specifications of the patented invention simply state that, “gap supporters can be made through an automated process so their size can be finely controlled, there is a smaller chance of installation height differences as they are installed on the surface of the substrate, and this installation can also be done through an automated process, so a mass production process is appropriate (Paragraph [0030]),” (the specification of the Prior Art also sets forth an identical purpose) making it impossible to find content identical to that argued by the Plaintiff. As such, the above argument of the Plaintiff is without merit.
D. Conclusions and Summary
When the various circumstances as set forth above are viewed together, Claim 3 of the Prior Art is an invention that falls under the category of a subordinate concept of the Invention of Claim 3 , and thus, both inventions are to be considered identical. Therefore, the later application which is the Invention of Claim 3 cannot receive patent protection pursuant to Article 36 Paragraph 1 of the Patent Act. As such, the relevant decision that reached the same conclusion is appropriate.
4. Conclusion
Therefore, the request of the Plaintiff to overturn the relevant decision is without merit, and thus, this Court renders a decision in accordance with the Order that dismisses the Plaintiff's claim.
Presiding Judge Hyeong Jun Park
Judge Hyejin Lee
Judge Hyeon Seop Jin
[2] Plaintiff initially sought to cancel the entire decision , but limited the scope of the relief sought during the 1st hearing to only the scope of Claim 3.
[3] Acronym for “Liquid Crystal Display.”
[4] Acronym for “Thin Film Transistor,” and is a transistor made by forming a thin film above a substrate through such methods as vacuum depositing and the like.
[5] Acronym for a “Printed Circuit Board,” and is a circuit board onto which electrical components are placed and soldered.
[6] In cases where the Prior Art is a subordinate concept and an invention that is the superordinate concept is filed, if the Prior Art is disclosed art then the invention is not novel, if the Prior Art is an earlier application then it is identical to the earlier application, and if the Prior Art is an expansion of an earlier application then it is identical to the expanded earlier application, preventing it from being registered as a patent.
However, a person who intends to obtain a patent may claim a priority right for an invention for which a patent application has been made on the basis of an invention described in the specification or drawings initially attached to an application filed in advance as a patent application or a utility model registration application, for which the person has the right to obtain a patent or utility model registration (Article 55 Paragraph 1 of the Patent Act). Of the inventions in an application accompanying a claim for the priority right that is identical to the invention described in the initial specification of the earlier application which is the basis of the relevant priority claim, when applying certain patentability requirements such as the principle of first to file, novelty, non-obviousness and the like, the patent application in question is viewed as if made during the time of the earlier application (same Article Paragraph 3). Therefore, it seems that the Plaintiff would have been able to assert the domestic priority right as provided above.