Republic of Korea

【Main Issues and Holdings】

Method of determining the nonobviousness of an invention

Whether the obviousness of an invention to a person having ordinary skill in the art to which the subject matter pertains may be determined ex post, on the assumption that the art disclosed in the specification of the subject matter was known (negative)

【Summary of Decision】

In determining the nonobviousness of an invention, the court shall: (a) based on the evidence and the record on the scope and content of prior art, ascertain, at a minimum, the distinction between the subject matter and the prior art and the level of technology of a person having ordinary skill in the art to which the subject matter pertains (hereinafter “ordinarily skilled person”); and (b) on that basis, determine whether, in light of the level of technology at the time of patent application, the subject matter is obvious to an ordinarily skilled person, notwithstanding its distinction from prior art. In such cases, it is impermissible to determine the obviousness of the subject matter to an ordinarily skilled person ex post, on the assumption that the art disclosed in the specification was known.

【Reference Provision】Article 29(2) of the Patent Act

Article 29 of the Patent Act (Requirements for Patent Registration)

(2) Notwithstanding paragraph (1), an invention easily creatable by a person with ordinary knowledge in the technical field of the invention, on the basis of the invention referred to in any subparagraph of paragraph (1), prior to the filing of a patent application, shall not be patentable.

【Reference Cases】Supreme Court Decisions 2006Hu138 decided Aug. 24, 2007 (Gong2007Ha, 1486); 2007Hu3660 decided Nov. 12, 2009 (Gong2009Ha, 2112); 2014Hu2184 decided Nov. 25, 2016 (Gong2017Sang, 47)

【Plaintiff-Appellant】Prestige Medicare Co., Ltd. (AIP Patent & Law Firm, Patent Attorneys Lee Su-wan et al., Counsel for the plaintiff-appellant)

【Defendant-Appellee】Defendant (Y.P. Lee, Mock & Partners, Patent Attorneys Baek Ho-yong et al., Counsel for the defendant-appellee)

【Judgment of the court below】Patent Court Decision 2015Heo7254 decided August 11, 2016

【Disposition】The final appeal is dismissed. The cost of the final appeal is borne by the Plaintiff.

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

1. In determining the nonobviousness of an invention, the court shall: (a) based on the evidence and the record on the scope and content of prior art, ascertain, at a minimum, the distinction between the subject matter and the prior art and the level of technology of a person having ordinary skill in the art to which the subject matter pertains (hereinafter “ordinarily skilled person”); and (b) on that basis, determine whether, in light of the level of technology at the time of patent application, the subject matter is obvious to an ordinarily skilled person, notwithstanding its distinction from prior art. In such cases, it is impermissible to determine the obviousness of the subject matter to an ordinarily skilled person ex post, on the assumption that the art disclosed in the specification was known (see, e.g., Supreme Court Decisions 2006Hu138, Aug. 24, 2007; 2014Hu2184, Nov. 25, 2016).

2. We examine the matter in light of the foregoing legal doctrine and the evidence duly admitted by the lower court.

A. The Defendant filed for application of the instant patent invention (patent registration number omitted) under the title of “implant for tissue lifting.” In the patent invalidation adjudication proceedings regarding the instant patent invention, the Defendant filed the instant application for correction on May 9 2014. Patent Claim 1 of the instant patent invention (hereinafter “instant Claim No. 1” and other claims are likewise indicated) relates to “an implant that is surgically inserted into drooped or wrinkled skin and submuscular layers to either lift or straighten the tissues.” Correction Claim No. 1 of the instant patent invention indicates “a mesh member that knots both ends of the bioimplantable thread that forms a protrusion on the surface, while leaving a certain length on both ends” as the composition and “enhance the adhesion of tissues to be surgically treated and surrounding tissues, and apply more pulling force to the tissues beneath the entire face beyond merely the wrinkled areas” as the intended effect.

B. Meanwhile, the Prior Inventions as indicated in the lower judgment do not provide a solution to the technical challenge of Correction Claim No. 1, which is comprised of “a bioimplantable thread that forms a protrusion on the surface” and “a mesh member that allows the thread to pass through to lift tissues by knotting both ends of the bioimplantable thread.” The composition of Prior Inventions 1 and 3 corresponding to the mesh member does not include the composition “bioimplantable thread.” The composition of Prior Inventions 2 and 4 corresponding to the mesh member do not include the composition “bioimplantable thread with both ends knotted,” but a zigzag or loop formed on the bioimplantable thread that passes through the mesh member, thereby controlling the force applied on the thread. As can be seen, the Prior Inventions are incapable of tackling the technical challenge of Correction Claim No. 1 of “applying more pulling force to the tissues to be surgically treated.”

As to the Prior Inventions, the technical idea centers on the composition corresponding to the mesh member connected to the sutures, etc. that are applied in “different directions” to the tissues and, therefore, starkly distinctive from the technical idea of Correction Claim No. 1, which seeks to pull the tissues in the “same direction.” Attempting to apply such composition (pulling in one direction) of Correction Claim No. 1 to the Prior Inventions diminishes the technical significance of the Prior Inventions and, thus, difficult for an ordinarily skilled person to easily infer. Moreover, in this case where such implication or motive is not presented in the Prior Inventions, unless ex post determination is made on the premise that an ordinarily skilled person was already aware of the contents of Correction Claim No.1, such person cannot easily infer the foregoing composition of Correction Claim No.1 through either the Prior Inventions or the combination of the same. Accordingly, the nonobviousness of Correction Claim No. 1 is not denied based on the Prior Inventions.

C. The lower court construed Composition 2 of Correction Claim No. 1 as “surgical mesh protrusions formed in one direction,” but this cannot be deemed as a case of not knowing or not being able to define the technical scope of Composition 2. In the description of Correction Claim No. 1, the part indicated as “the formation of protrusions in one direction” can be viewed as relating to Correction Claim No. 4 indicating “the areas forming protrusions on the surface in one direction.” Hence, while there is a certain degree of inadequacy in the reasoning of the lower court on this part, the lower court is justifiable to have acknowledged the nonobviousness of Correction Claim No. 1. In so doing, contrary to what is alleged in the grounds of appeal, the lower court did not err and adversely affect the conclusion of the judgment by misapprehending the legal doctrine on nonobviousness.

3. Conclusion

The Plaintiff’s final appeal is meritless and thus dismissed, and the cost of the final appeal is assessed against the losing party. It is so decided as per Disposition by the assent of all participating Justices on the bench.

Justices Lee Dong-won (Presiding Justice)

Jo Hee-de

Kim Jae-hyung (Justice in charge)

Min You-sook