Korean Patent Litigation System
JSIP 20192019. 9. 25.

Changes in the Tribunal System for Patent Infringement
Korean Court System: Separation of Jurisdiction (Jan. 1, 2016)
SupremeCourt
Patent Court

IPTAB

•

Invalidation Action• Confirmation of Scope• Correction••

Main Action

Examiner

District Court

Application•

KIPO
Validity Issues (Mainly)

Infringement Action• Civil (O)• Criminal (X)Infringement Issues (Mainly)2

Organization of Korea Patent Court

Patent Court

Trial Divisions

Trial Divisions
1st Division (21st Division)
2nd Division (22nd Division)
3rd Division (23rd Division)
4th Division (24th Division)

Associate Judge

11th Division(31st Division)

Presiding Judge

Associate Judge

3rd / 23rd Divisions

3rd Div
Presiding Judge
Kyuhong Lee

5th Division (25th Division)•

Cancellation action

23rd Div•

Civil action• 5 judicial divisions (3 judges for each division)
3

Organization of Korea Patent Court

Judicial technical examiner(15) / Judicial research officer(8)Highly technical matters, which the Patent Court is routinely called for to deal with, arereferred to Judicial technical examiner and Judicial research officer, who must satisfy one of
the following prerequisites:(ⅰ) more than 5 years experience as a technical examiner or a trial examiner at KIPO;(ⅱ) more than 7 years experience as a government official dealing with matters related toindustrial or scientific technology, and more than 5 years spent in above Level 5 positions;(ⅲ) a master's degree and 10 years experience in the relevant field;(ⅳ) a doctorate degree in the relevant field;(ⅴ) a National Engineering Certificate obtained in accordance with the National Engineering
Certificate Law.
Currently, 15 Judicial technical examiner and 8 Judicial research officer with long-term
experiences in various scientific fields-such as mechanical engineering, electronicengineering, chemical engineering and bio-engineering serve at the Patent Court.
4International Cases and International division
Related Act• Court Organization Act Article 62-2 (Effective as of June 13, 2018)

International Case
• Given the opposing parties' consent, a party may litigate in a foreign language

International division• Court division exclusively designated for International Cases• Established in the Patent Court and Seoul Central District Court, and may beestablished in Daejeon, Daegu, Busan, Gwangju district courts, if necessary• Division will provide simultaneous translation services and a research assistantwith foreign language skills and international experience5Advantages of Using International Trial

Arguing the case in a permitted foreign language• Besides the parties in the international case, if the expert witness testifies in apermitted foreign language in international case, the party does not need to beaccompanied by an interpreter

Simultaneous Interpretation• The Court shall have an interpreter interpret the words of the judicial divisionand participants in the proceedings on the trial date, and simultaneousinterpretation shall be provided in principle.

Arguing in the Foreign Language• Documents written in permitted foreign languages in international cases neednot be translated
6

Decision to proceed as the international caseApplication for the International Case
• A Plaintiff who decides to apply for a “foreign language argument” under Article 62-2 of
the Court Organization Act must submit an application for such argument to be made• After the foregoing application is filed, the Court will deliver to the Defendant a copy of an
opinion form together with a copy of an application form
• The Defendant will then submit an opinion form, agreeing to the Plaintiff’s application for
the “foreign language argument”
Application and consent for the “foreign language argument” shall be made, in principle,
prior to the date of the first trial

7

International Division for IP Trial (brochure)8Treble Damages For Willful Infringement
Background• Actual damages awarded for patent infringement often have not been high enough toeffectively discourage such infringement (Effective as of July 9, 2019).
Article 128, Paragraphs 8 and 9 of the Korean Patent Act• Courts are authorized to award damages of up to three times the amount of actual
damages for intentional acts of infringement (Article 128, Paragraph 8 of KPA)
• Factors for calculating amount of treble damages (Article 128, Paragraph 9 of KPA)
(i)
(ii)
(iii)
(iv)
(v)
(vi)
(vii)
(viii)

whether the infringer has a dominant position;
whether the infringer knew the act of infringement would cause harm to a patent
owner, or intended such harm;the significance of any such damages;
the economic benefits to the infringer from the infringement;
how frequently and how long the infringing activity was committed, etc.;
the amount of fine for the infringing activity;
the infringer's financial status; andwhat efforts the infringer has made to reduce the harm to the patent owner.
9

Preparatory Hearing Date - Video Conference for CaseManagement
Confirmation and Summarization of the Disputed Issues• The court and the parties confirm the issues in dispute.
• In this case the parties can clarify the disputed issues regarding the difference between thepatented invention and the “D method” ☞ “Issues in This Case”

1) Whether all the features of the "car navigation system" are installed in the vehicle
2) Whether the D Server is a “First Memory Means“ as Referred to by the Invention
3) Whether the D Server is Equivalent to both the “First Memory Means" and the“Second Memory Means" as per the Doctrine of Equivalents

10Request for the Expert Witness
Process Regarding Requests for expert witnesses• If a party files a request for an expert witness, the party shall attach a basic statement by
the expert witness that can confirm the expertise and objectivity of such witness• If an expert witness testifies in a permitted foreign language in the International Trial
System, the party does not need to be accompanied by an interpreter

Acceptance by the Court of the Requests for Expert Witnesses by Each Party• The plaintiff and the Defendant each file a request for an expert witness with a basic
statement by the expert witness confirming the expertise and objectivity of such witness• After the court accepts, the expert witnesses of both sides will be interrogated in thesecond scheduled oral argument

11

Preparatory Order on Person of Ordinary Skill by Patent
Court

Patent Court
The 3rd Division
Order for Preparation of Clarification
Case 2019Gahap1234 Patent Infringement[Plaintiff: Pony Corporation / Defendant: Donkey Corporation]Counsel for Plaintiff: KIM & CHANG
Counsel for Defendant: BAE, KIM & LEE, LLC.
For the purpose of clarifying the case, it is ordered to supplement thefollowing matters. Please submit necessary arguments and evidences inrelation to the issues below by June 25, 2019.
Matters to be Clarified
The level of ordinary skill possessed by the person of ordinary skill in art at
and around time of present invention

June 1, 2019
Presiding Judge Kyuhong Lee (sealed)* For inquiry: Court officer [redacted], the Third Division, Patent Court
Tel.: (042) *** **** (in case of absence of the court officer: 042 *** ****
Fax: (042) *** **** / E-mail:12Electronic Case Filing / Text Message Service
Electronic Case Filing
Membershipregistration

Case filing (Plaintiff)

Response submission(Defendant)

Reading caserecords

Service

Advantages of Electronic Case Filing

Text Message Service••

Allows electronic submission of
documents•

Allows the counterparty’s briefs and thecourt’s documents related to the trial to
be served via electronic mail, etc.

•

Electronic service of documents
 Confirmation sent via text message/e-mailAllows case records to be read andprinted electronically[Sent via web]2019.06.05[Sent via web]You received electronic copyof brief (dated June 1, 2019)
for Seoul Central District
Court Case No.
2019Gahap1234.

[Sent via web]You received electronic
copy of notice of hearing
date for Seoul Central
District Court Case No.
2019Gahap1234.
(2019. 07.01).
[Sent via web]You received electronic
copy of decision(dated Sep.
25, 2019) for Seoul Contral
Distrct Court Case No. 2019
Gahap1234

13

The 1st scheduled oral argument – Technical presentation
Proceeding with the Technical Explanatory Session

The Technical Explanatory Session• In cases concerning patents or utility models that require a technical explanation, theCourt may hold a technical explanatory session at the request of a party• The parties and technical experts attend the Technical Explanatory Session and orally
explain their arguments on the technical elements through drawings, products, miniatures,computer graphics, video equipment, etc.

14

The 2nd scheduled oral argument – Expert witness
Testimonies by Expert witnesses of both parties
Testimony on common general knowledge(Example)
ExpertWitness

In comparison to the method that the memory storing in ROM or RAM,
because the method that the data storing in remote server has no newly
effective, both inventions are equaled in substance.

Plaintiff side

(Example)
The technique constructing the memory server remotely was known as
the technical common sense before filing the application of this case.
And, moreover, it was generally known that the navigation system cansearch the facilities information by the radio net.

ExpertWitness

Defendant side
15

The 3rd scheduled oral argument
Arguments regarding the amount of damages• A party seeking damages must specify the applicable legal provisions on which thecalculation of damages is based upon and indicate the relevant evidence number for eachof the requirements of the relevant provisions• Regarding the Plaintiff’s factual arguments, the Defendant must provide a detailed
rebuttal and cannot simply deny the Plaintiff’s arguments (the judicial division may
consider any fact not specifically denied as being undisputed)

Damage calculation methods under the Korean Patent Act (Article 128)
1

2

Plaintiff’s Lost
Profits

Defendant’s
Profits from
Infringing Act

3

4

Ordinary
Royalties

Decision by
Court Discretion

Damages of up to three times the amount of admitted damages awarded by
the court for intentional acts of infringement (Article 128, Paragraph 8)
16

TIMELINE of the mock trial case
Filing a Litigation••

March 1st, 2019
Seoul Central District Court

Application for the International case•

May 1st, 2019

Notice on Video Conference for CaseManagement•

Text message service••

Deliberation on International Case application
Requesting Each party’s opinion on who would be
the person of ordinary skill in the art

The 1st scheduled oral argument•

Technical Explanatory Session by Plaintiff/Defendant

The 2nd scheduled oral argument•

Examination of expert witnesses of Plaintiff/Defendant

The 3rd scheduled oral argument•••

Plaintiff’s argument/substantiation of damages
Rebuttal by Defendant
End of the hearing

Video Conference for CaseManagement

The date for Decision
17

Mock Trial
JSIP 20192019. 9. 25.

Filing of a Litigation

Case Information• Seoul Central District Court• Filing date: 2019. 3. 1.
• Case No.: 2019Gahap1234

Parties and the patent• Plaintiff: Pony Corporation (Counsel: Sang-Wook HAN of KIM & CHANG)• Defendant: Donkey Corporation (Counsel: Hoodong LEE of BAE, KIM & LEE, LLC.)• Patent of the case: patent No. 20190925

19

Application for the International Case

Step 1

Step 2

Step 3

Submitting
an application

Court delivers to the Defendanta document

The Defendant submits
an opinion form

Plaintiff submits an application for the “International Case” on May 1st, 201920

Notice on Video Conference for Case Management
Text Message Service[Sent via web]2019.06.05
You received electronic copyof brief (dated June 1, 2019)
for Seoul Central District
Court Case No.
2019Gahap1234.

21

Video Conference for Case Management• Deliberation on International Case Application• Clarification of technical level of ordinary skill by the person of ordinary skill in the art• Opinions of the persons to participate in the scheduled oral argument proceedings

22

1st Scheduled Oral Argument

Technical Presentation by the Plaintiff

Technical Presentation by the Defendant23

2019Gahap1234
Patent Infringement

Technical Presentation
July 1, 2019

Plaintiff: Pony Corporation

Contents

1. Subject Patent

2. Defendant’s method (D method)
3. Infringement

4. Conclusion25

1. Subject Patent

26

Technical Significance of the Subject Patent
Conventional Art
the user needs to display a position to be registered on the map, therefore the user needs toaccurately know a location of the position previously, and complicated operations are neededfor displaying the location on the screen. (para [0003], [0004])
Let’s register th
e location of IP
Sushi Ginza.

The map of Yokohama City
Kanagawa Prefecture

I still can’t get to thescreen of Ginza area...

The map of K
awasaki City
Kanagawa Pre
fectureFinally the screen
displays the Ginzaarea, but where is
IP Sushi Ginza?

Very complicatedoperations...

The map ofGinza, Chuo
Ward
Tokyo

Objective of the invention (Problem to be solved)
To provide a car navigation system control method which allows the user to register a user
registration without performing complicated operations for displaying service facilities on themap(para [0005]).

The RAM 9 is backed up by being supplied with a voltage even when the power source of thenavigation system is shut out so that the data … will not be extinguished..(para [0009]).
27

Claim 1 of the Subject Patent
Control method for car navigation system that displays a map on a display screen,
the method comprising steps of: (Element A)
reading, from first memory means in which facility data comprising display
data indicative of a plurality of service facilities and coordinate data indicative ofexisting positions of the service facilities have previously been stored, the display
data to display the plurality of service facilities on the display screen; (Element B)
designating one of the plurality of service facilities displayed on the display
screen in accordance with an operation; (Element C)
reading coordinate data corresponding to the designated one service
facility from the first memory means; (Element D)
storing the read coordinate data as user registered data in second memorymeans; and (Element E)
displaying a position indicated by the coordinate data read from thesecond memory means by superimposing a predetermined pattern on to the map
when the map is displayed on the display screen. (Element F)

28

Claim 1 of the Subject Patent
1) Among a plurality of service facilities displayed on the display screen in accordanc
e with display data read out from the first memory means , reading coordinate datafrom the first memory means corresponding to one service facility designated by theuser （Elements B, C and D），
2) Storing the read coordinate date as user registered data in the second memorymeans（Element E），
3) As the map is displayed on the display screen, reading the coordinate data fromthe second memory means , and superimposing a predetermined pattern( ) on to
the map to display a position indicated by the coordinate data （Element F）

29

Mode of operation and technical effect of Claim 1
Mode of Operation of the Invention“the display data indicative of a plurality of service facilities and the position coordinate data
indicative of the existing positions of the service facilities are previously stored in the firstmemory means. By designating one of the plurality of service facilities … by the operation, thecoordinate data corresponding to the designated one service facility is read out from the firstmemory means and the user position is registered into the second memory means. … thecoordinate data which is stored as user registered data is read out and the position indicated on
the map by the coordinate data is superimposed onto the map by a predetermined pattern andcan be displayed on the screen.” (para [0007])

Effect of the Invention“…by merely designating one of the plurality of service facilities displayed … in accordance with
an operator input, the coordinate data corresponding to the designated one service facility isread out from the first memory means and stored in the second memory means as user
registered data. Each user, therefore, can register the user position by a simple operation,even if each user does not know accurate locations of service facilities…” (para [0020])“The RAM 9 is backed up by being supplied with a voltage even when the power source of thenavigation system is shut out so that the data … will not be extinguished..” (para [0009])30

2. Defendant’s method (D method)31

Description of Defendant’s Method (D method) (1/3)
Example: a procedure of searching for a sushi restaurant located in Ginza[i] Select the "Search for Destination" on the top menu of "DK Car Navigation" displayed on the screen of D
terminal (Screen 1).
[ii] Select "Category" tag on the destination search screen and select "Restaurant" on the category selection
screen (Screen 2).
[iii] Select "Sushi" on the category selection screen under "Restaurant" (Screen 3).
[iv] When "Tokyo" is selected on the local area selection screen, area names (Ginza, Roppongi, Shibuya, etc.)
within Tokyo are displayed on the screen of D terminal (Screen 4).
[v] When "Ginza" is selected among them, a list of Sushi restaurant names ("IP Sushi Ginza", "IQ Sushi Ginza","Ginza IT Sushi") is displayed on the screen of D terminal (Screen 5).
[vi] To display spot information, select "IP Sushi Ginza" among the several spots in the displayed list by operating
D terminal (Screen 6).
A plurality of
spots displayedin accordancewith D spot dataread from
D ServerRestaurant/ Sushi
Read out
Memorize
ObtainTokyo/ Ginza
・IP Sushi Ginza・IQ Sushi Ginza
・Ginza IT Sushi ・D position data
・D memo data
・・

D ServerSuperimpose

Means for storingmemo position(within D server)

32

Description of Defendant’s Method (D method) (2/3)

33Description of Defendant’s Method (D method) (3/3)
D method has the following features:
A control method for car navigation system that displays a map on a screen of D term
inal, which includes:
holding D spot data including D name data indicative of a plurality of spots
and D position data indicative of existing positions of the spots in D server of the carnavigation system in order to display the plurality of spots corresponding to the Dname data on the screen;
receiving and instruction to register one of the plurality of spots displayedon the screen as a “memo position”;
obtaining D position data corresponding to the designated spot from D
server to be registered according to the instruction in order to store the D position
data as D memo data; andsuperimposing an icon on the map indicated by the D position data of D
memo data read from D server when the map is displayed on the screen.

34

3. Infringement

35Comparison between Claim 1 of the Invention and D method
Claim 1

D methodControl method for car navigation system that A control method for car navigation system that
A displays a map on a display screen, the method displays a map on a screen of D terminal, which
comprising steps of:includes:reading, from first memory means in which facility
data comprising display data indicative of a plurality ofservice facilities and coordinate data indicative ofB
existing positions of the service facilities havepreviously been stored, the display data to display theplurality of service facilities on the display screen;Cholding D spot data including D name data
indicative of a plurality of spots and D position
data indicative of existing positions of the spots
in D server of the car navigation system in order
to display the plurality of spots corresponding to
the D name data on the screen;

designating one of the plurality of service facilities receiving and instruction to register one of thedisplayed on the display screen in accordance with an plurality of spots displayed on the screen as aoperation;“memo position”;

reading coordinate data corresponding to the obtaining D position data corresponding to the
D designated one service facility from the first memory designated spot from D server to be registeredmeans;
according to the instruction in order to store thestoring the read coordinate data as user registered D position data as D memo data; andEFdata in second memory means;displaying a position indicated by the coordinate data superimposing an icon on the map indicated byread from the second memory means by the D position data of D memo data read from D
superimposing a predetermined pattern on to the server when the map is displayed on the screen.
map when the map is displayed on the display screen
36Comparison of constitution (1/2)• Element A
Element A and the corresponding feature of D method are identical in that they bothare a control method for car navigation system that displays a map on a display screen.

• Element B
Element B and the corresponding feature of D method are identical in that facility
data (D spot data) comprising display data (D name data) and coordinate data (Dposition data) are stored in the car navigation system, and a plurality of service facilities
are displayed on the display screen in accordance with the display data (D name data).

• Element C
Element C and the corresponding feature of D method are identical in that one of theplurality of service facilities displayed on the display screen is designated in accordancewith the user’s instruction.

37

Comparison of constitution (2/2)• Elements D, E
Elements D and E and the corresponding features of D method are identical in thatcoordinate data (D position data) corresponding to the service facility designated by theuser are read and stored as user registered data (D memo data).
Elements D and E specify that the coordinate data are read from the first memorymeans and the user registered data are stored in the second memory means. Given
that the Specification illustrates the first and second memory means to be different
memories, Elements D and E differ from the feature of D method that all data are stored
in D server without a distinction between first and second memory means.

• Element F
Element F and the corresponding feature of D method are identical in that a positionindicated by the coordinate data (D position data) is displayed by superimposing apredetermined pattern (icon) on the map when the map is displayed on the screen.
38

Commonalities and differences in constitution• Elements A~C, and F
Elements A~C, and F are all identical to the corresponding features of D method.

• Elements D, E
Elements D, E specify that the coordinate data are read from the first memory means
and the user registered data are stored in the second memory means. And theSpecification gives separate examples for the first memory and the second memory. In
contrast, D method differs in that all data are stored in D server without a distinction
between first and second memory means.

39‘First, second memory means’ in Claim 1 are substantially identical to ‘D
server’ in D method
Q1) Should the first and second memory means in Claim 1 be construed to be limited to suchtypes as RAM, ROM, and CD-ROM, which are described in the Specification?
A1) That is not the case. The memory types recited in the Specification are only some of various
embodiments, and the memory means are not necessarily limited to those types. A method
wherein the memory means are located in D server and accessed through a remote connection asin D method also falls within the scope of Claim 1.
First Memory Means
Q2) Should the first memory means andthe second memory means be different
types of storage media?
A2) That is not the case. As illustrated in
the Specification, while first memory andsecond memory means can bedifferentiated at the hardware level, aperson skilled in the art can also consider
storing data in logically divided sections inthe same memory hardware. It is also
possible in D method to have first memorymeans and second memory means in D
server.

Second Memory Means

 D method substantially comprises first and second memory means.
It constitutes literal infringement as all elements of Claim 1 are identical to thecorresponding features of D method.

40

If not identical, ‘first, second memory means’ and ‘D server’ areequivalents (1/5)• Standard for equivalents(See the Supreme Court's Decision in Case No. 2007 Hu 3806, announced June 25, 2009)

Requirements for Doctrine of Equivalents:①: The problem-solving principle is the same as that of the patented invention (Same Problemsolving Principle)②: The replacement results in virtually the same effect as the patented invention (Possibility of
Replacement)③: The replacement could have been easily conceived of by a skilled person in the art (Ease of
Replacement)④: The alleged product had not been well known in the art or could not have been easily
conceived by a person of ordinary skill in the art at the time the patented invention was filed(Exclusion of Prior Art)⑤: The replacement element included in the alleged product does not correspond to an elementthat has been intentionally excluded from the claims of the patent during the prosecution of thepatent (File Wrapper Estoppel)41

If not identical, ‘first, second memory means’ and ‘D server’ areequivalents (2/5)• Same Problem-solving Principle (Requirement ①)"Determining whether the problem-solving principle applied in the two inventions is the same aseach other should involve analyzing the technical essence underlying the specific problem-solving
means of the patented invention in practical terms when comparing with prior art with reference
to the descriptions in the specification of the patented invention and well-known technology
available at the time the patented invention was filed, rather than selecting part of the elements
included in the claims merely as a matter of formality." (see the Supreme Court's Decision in CaseNo. 2012 Hu 1132, announced July 24, 2014)

Requirement ①: Compared with the prior art (Cited Invention 1, which is directed to a
portable navigation apparatus for pedestrians) in light of descriptions in theSpecification (para [0009]) and publicly known technology, the core of the technical idea
behind the unique solution of the Subject Patent is the implementation of a power
backup system to keep the navigation system running even when the power source ofthe system itself is shut off. In D method, D terminal has a power backup system as it isinstalled inside a vehicle, and D server storing data also has a power backup system.
As such, Claim1 and D method share the same problem-solving principle.
42

If not identical, ‘first, second memory means’ and ‘D server’ areequivalents (3/5)• Possibility of Replacement (Requirement ②)“Whether two inventions have virtually the same effect should be determined with a focus onwhether the problem with prior art, which is resolved by the patented invention, is also resolved by
the accused product or the like. Thus, if the technical essence underlying the characteristic
problem-solving means of the patented invention as understood with reference to the descriptionsin the specification of the patent and the technology well known at the time the patent was filed isalso implemented in the accused product or the like, the two inventions should be found to havevirtually the same effect as each other.” well (see the Supreme Court's Decision in Case No. 2018
Da 267252, announced January 31, 2019).

Requirement ②: Claim 1 has the effect of keep the power supplied to the navigation
system without shutting off by implementing a power backup system. The navigation
system in D method also achieves the same effect.
As such, replacing first and second memory means with D server still achieves
substantially the same effect.

43

If not identical, ‘first, second memory means’ and ‘D server’ areequivalents (4/5)• Ease of Replacement (Requirement ③)
Requirement ③: Although the embodiments in the Specification do not illustrate amethod wherein data are stored in a server, a person skilled in the art would have had
no particular difficulty in incorporating a server as the first and second memory means,
which are components of a car navigation system. Specifically, as of 2013 when D
method was first worked, it would not have been particularly difficult to store data in aserver and use the data using wireless communication because wireless communication
technology had made a significant progress. That is, a person of ordinary skill in therelevant technical field could have easily conceived using a server in place of a memory.
As such, a person skilled in the art could have easily conceived replacing first andsecond memory means with D server.

44

If not identical, ‘first, second memory means’ and ‘D server’ areequivalents (5/5)• Exclusion of Prior Art/File Wrapper Estoppel (Requirement ④, ⑤)
Requirement ④: Defendant’s D method cannot be deemed to have been a publicly known
technology or a technology that a person skilled in the art could have easily conceived as of 2002
when the Subject Patent was filed (No supporting evidence).
Requirement ⑤: It cannot be deemed that the feature of using a server as in D method wasintentionally excluded during the prosecution of the Subject Patent. In response to the Examiner’s
rejection during prosecution, Plaintiff argued in the written opinion to the effect that unlike Cited
Invention 1 directed to a portable navigation apparatus for pedestrians, the claimed memory canbe supplied with power from a separate source even when the power source of the navigation
system is shut down. However, this cannot be regarded as an argument limiting the location wheresome elements of the navigation system are installed.

As such, Defendant’s D method cannot be deemed to have been a publicly known
technology or intentionally excluded from the scope of the claims during theprosecution of the Subject Patent.
 Requirements ① to ⑤ for equivalents are all fulfilled. Since first, second memorymeans in Claim 1 and D server in D method are equivalents, infringement is alsoestablished under the doctrine of equivalents.
45

4. Conclusion

46

Conclusion• Defendant’s D method falls within the scope of Claim 1.
- Defendant’s D method constitutes literal infringement as its constitution issubstantially identical to that of Claim 1 .
- Even if there is no literal infringement, Defendant’s D method constitutes
infringement under the doctrine of equivalents as its constitution is equivalent tothat of Claim 1.

• Defendant’s working of D method infringes Plaintiff’s Patent Right.

47

2019Gahap1234
Patent Infringement

Technical Presentation
July 1, 2019.
Defendant: Donkey Corporation48

Contents

1. Technical features of the patent at issue in this case
2. Comparison between the Claim 1 and D Method

3. Whether D Method infringes the patent at issue
4. Conclusion49

1. Technical features of the patent at issue
in this case50

1. Technical features of the patent at issue in this caseMode of Operation of the Invention
para [0007]: “the display data indicative of a plurality of service facilities and the position coordinate data
indicative of the existing positions of the service facilities are previously stored in the first memory means.
By designating one of the plurality of service facilities … by the operation, the coordinate data
corresponding to the designated one service facility is read out from the first memory means and the user
position is registered into the second memory means. … the coordinate data which is stored as user
registered data is read out and the position indicated on the map by the coordinate data is superimposed
onto the map by a predetermined pattern and can be displayed on the screen.”

Effect of the Invention
para [0020]: “…by merely designating one of the plurality of service facilities displayed … in accordance with
an operator input, the coordinate data corresponding to the designated one service facility is read out fromthe first memory means and stored in the second memory means as user registered data. Each user,
therefore, can register the user position by a simple operation, even if each user does not know accurate
locations of service facilities…”
para [0015]: “… By storing longitude and latitude data and position display pattern data as facility data in a
CD-ROM, which is an inexpensive memory medium, and storing user registering data in rewritable RAM,
improved convenience and cost reduction can be both achieved.”
The technical feature tries to achieve cost reduction and improved convenience by registering the user’s
position by a simple operation and storing facility data in the comparatively lower priced first memory means
while storing user registered data in the comparatively more expensive second memory means.
51

2. Comparison between the Claim 1
and D Method52

2. Comparison between the Claim 1 and D Method
Claim 1

D MethodA

Control method for car navigation system that A control method for car navigation system
displays a map on a display screen, the method comprising a server and a terminal that displays acomprising steps of:map on a screen of D terminal, which includes:

B

reading, from first memory means in which facility
data comprising display data indicative of a plurality ofservice facilities and coordinate data indicative ofexisting positions of the service facilities havepreviously been stored, the display data to display theplurality of service facilities on the display screen;C

designating one of the plurality of service facilities receiving and instruction to register one of thedisplayed on the display screen in accordance with an plurality of spots displayed on the screen as aoperation;“memo position”;

Dreading coordinate data corresponding to the obtaining D position data corresponding to thedesignated one service facility from the first memory designated spot from D server to be registeredmeans;
according to the instruction in order to store the Dstoring the read coordinate data as user registered position data as D memo data; andEF

holding D spot data including D name data
indicative of a plurality of spots and D position data
indicative of existing positions of the spots in D
server of the car navigation system in order todisplay the plurality of spots corresponding to the
D name data on the screen;data in second memory means;displaying a position indicated by the coordinate data superimposing an icon on the map indicated by theread from the second memory means by D position data of D memo data read from D server
superimposing a predetermined pattern on to the when the map is displayed on the screen.
map when the map is displayed on the display screen53

2. Comparison between the Claim 1 and D Method•

While claim element A is the same for claim 1 and D Method in that they are both control methods for car
navigation system that displays a map on a display screen, claim 1 requires that all elements of the carnavigation system needs to be installed in the car and D Method has D terminal installed in the car but Dserver is not.

•Claim elements B and C are the same•

They both read the coordinate data and store them in user registered data or D memo data. However, claim
1 stores the facility data in the first memory means and user registered data in the second memory means,
but D Method does not differentiate between D spot data and D memo data when storing both data in the Dserver.

•They both displaying a position indicated by the coordinate data or position data by superimposing apredetermined pattern or an icon on to the map when the map is displayed on the display screen, but claim 1
requires that the coordinate data be read from the second memory means while D Method reads the datafrom the D server.
54

3. Whether D Method infringes the patent
at issue55

3-1. Literal Infringement
Claim 1 requires that all elements of the “car navigation system” be installed within the vehicle.
(Claim element A)• Principle of Prosecution History Reference states one needs to consider the applicant’s statements
made during the prosecution in order to construe the claim terms, and this is applied the sameeven when there was a statement of opinion by submitting a Written Opinion without any
reduction of the scope of claim (Sup. Court Decision 2014Hu638)• It is true that in the specification or the claims, the patented invention is not limited to a system
where all the features are installed inside the vehicle. However, on its Written Opinion submitted
during the prosecution, Plaintiff specifically stated “By providing this second memory means using
RAM that is backed up by being supplied with power from a battery even when the power sourceof the system is shut down so as not to extinguish the data such as a user registration
flag(specification, [0009]), user registration data can be continuously stored and held even when
the power source is turned off, thus exhibiting an effect of improving convenience for users. Suchan effect can be obtained only because the system according to the invention of the application is
installed in the vehicle and constant power supply from a vehicle battery with a large capacity to
RAM is possible.”• The aforesaid Written Opinion is filed by Plaintiff in response to the notice of reasons for rejection
by the examiner. Therefore, it should be regarded that Plaintiff tried to claim around the prior art
and purposely disclaimed a car navigation system with a part of the elements being installedoutside of the vehicle.
56

3-1. Literal Infringement
Claim 1 requires that all elements of the “car navigation system” be installed within thevehicle. (Claim element A)• As seen above, the car navigation system according to the Patent at Issue should be
restrictively construed to only include the system that has all the features are
installed inside the vehicle.
• However, unlike the patented invention at issue, D method uses a car navigation
system that is markedly different from the patented invention and is comprised ofcomponents that include 1) D terminal, which is found inside the vehicle, and 2)
Remote D server outside the vehicle, on which is stored facility data (D spot data)
and user registered data (D memo data) without any distinction as to the firstmemory means or second memory means.

573-1. Literal Infringement‘First, second memory means’ in Claim 1 are not substantially identical to ‘D server’ in D
method(Claim elements D and E)• Excerpts from the specification
Para [0009](embodiment): “… A user registration data table in which longitude andlatitude data and position display pattern data are stored as a pair for every address isformed in the RAM 9 as shown in FIG.2.
Para [0010]: “For instance, a CD-ROM is used as an external memory medium. In
addition to the map data obtained by converting each point on the roads of the map
into digital values, service list display data,….. Which will be explained below, have alsopreviously been stored in the CD-ROM.”
para [0015]: “… By storing longitude and latitude data and position display patterndata as facility data in a CD-ROM, which is an inexpensive memory medium, and storinguser registering data in rewritable RAM, improved convenience and cost reduction canbe both achieved.”• In the patented invention, the “first memory means” and “second memory means” areclearly distinguished, and the specification thereof also indicates to the effect that thefirst memory means store facility data using low-cost media such as CD-ROM, while thesecond memory means store user registered data with relatively higher-cost RAM to
improve performance.
583-1. Literal Infringement‘First, second memory means’ in Claim 1 are not substantially identical to ‘D server’ in D
method(Claim elements D and E)• However, through D method, spot data and memo data are not separately stored
but instead stored in D server, and therefore, it is difficult to expect lower costand greater convenience that can be enabled by Claim 1 of the patented
invention, and also D method is irrelevant to such technology.

59

3-2. Doctrine of Equivalents
the D Server is not Equivalent to both the “First Memory Means" and the “Second
Memory Means" as per the Doctrine of Equivalents• As stated above, the “first memory means” and “second memory means” in Claim 1 ofthe patented invention are limitedly interpreted to use memory storages with separatedfunctions for cost reduction and the improvement of system performance. This suggeststhat the core of the technical idea, which is the basis of solutions specific to thepatented invention, is to separate memories to store facility data and user registereddata to comprise system at a low cost and improve convenience in usage.
• However, through D method, spot data and memo data are not separately stored but
instead stored in D server, and therefore, it is difficult to expect lower cost and greater
convenience that can be enabled by Claim 1 of the patented invention, and also D
method is irrelevant to such technology.
• Therefore, it is difficult to deem that both inventions’ principle to solve a problem is
identical, because of the differences identified in the core of the technical ideas.
• In sum, it does not seem that the compositions of Claim 1 of the patented invention(data is stored and read in the first memory means and second memory means) and thatof D method (data is stored and read in D server) are equivalent.
60

4. Conclusion

61

4. Conclusion• Claim 1 of the patent at issue requires that all elements of the car navigation
system be installed in the vehicle, however, Defendant’s D Method has a D
server provided outside of the vehicle, and claim 1 requires that the first andsecond memory means be differentiated in terms of their hardware in order toachieve cost reduction and convenience, but Defendant’s D Method utilizes D
server which does not differentiate in terms of hardware, therefore, D Method
does not literally infringe Claim 1 of the patent at issue.
• Plaintiff asserts that Claim 1 of the patent at issue is infringed under doctrine ofequivalents but Claim 1’s first and second memory means and D Method’s D
server do not share the same principle for solving the problems, therefore D
Method does not infringe Claim 1 under doctrine of equivalents either.

62

2nd Scheduled Oral Argument

Examination of Plaintiff’s Expert Witnesses

Examination of Defendant’s Expert Witnesses

632019Gahap1234
Patent Infringement

Expert Witness Examination

August 1, 2019

Plaintiff: Pony Corporation

About the Expert witness65About the Expert witness

1. Please tell us about your education and professional career, the topic foryour thesis, and your main research area.

66

About the technical field of the Invention

67About the technical field of the Inventions
1. Could you tell us briefly about the overall gist of the Invention and thefeatures of Claim 1?

2. When considering the level of car navigation technology publicly known
as of the filing date of the Invention (September 25, 2002) in light of thedescriptions of the prior art in the specification of the Patent (paragraphs[0003] to [0005], [0009]) as well as the prior art references cited during theprosecution of the Patent, what do you think is the distinctive feature of
Claim 1 compared to the publicly known technology?

68About the technical field of the Inventions
3. What are the technical differences between ROM, RAM, and CD-ROM,
the storage media described in the specification of the Invention?

4. As of the filing date of the Invention (September 25, 2002), what typesof memory could a person skilled in the art envisage as 'first and second
memory means' of Claim 1? Can we say that the first and the second
memory means necessarily refer to different types of memory in terms ofhardware?

69About Defendant’s method70About Defendant’s method
1. Could you tell us briefly about the characteristics of Defendant's service
you have noted?

2. What is the technical feature of Defendant's service in comparison with
the Invention you have understood?

71

About Defendant’s method
3. (Regarding the picture below) it is shown that in Defendant's service, D
server stores both spot data (name data, position data) and memo data.
Can it be deemed that these data are stored without any distinction?

4. At the time Defendant's service was first offered (September 25, 2013),
was the technology by which an electronic device receives and uses datastored in a remote server in general use? Was such technology also in use
at the time the Invention was filed?
72About the comparison of constitution
between the Invention and Defendant’s
method73

About the comparison of constitution between the Invention andDefendant’s method
1. Summarizing what you have told us, what do you think is the biggest
difference between the Invention and Defendant's service?

2. (Associated with Question No. 1) Can the difference be deemed
relevant to the distinguishing feature of the Invention in comparison withthe prior art?

3. (Associated with Question No. 2) From the perspective of a person
skilled in the art, would it have been difficult at the time Defendant's
service was first offered (September 25, 2013) to conceive a system wheredata is stored in a server instead of internal/external memory of anelectronic device in view of the Invention?
74

2019Gahap1234
Patent Infringement

Expert Witness Examination

August 1, 2019.
Defendant: Donkey Corporation

75

About the Expert witness76

About the Expert witness

1. Please tell us about your education and professional career, the topic foryour thesis, and your main research area.

77

About the technical field at the time of
application of the patent at issue78

About the technical field at the time of application of the patent at issue
1. The specification of the patent at issue describes one embodiment using
CD-ROM for first memory means and RAM for second memory means.
What were the pros and cons of using CD-ROM and RAM at the time of theapplication of the patent at issue around September of 2002?

2. How were the car navigation systems’ memory capacity during the timearound the application date of the patent at issue?

79About the technical field at the time of application of the patent at issue
3. Do you remember what the RAMs capacity and price around theapplication date of the patent at issue?

4. If so, if a car navigation system had around 3 GB in RAM composed of
512MB DDR RAMs for the first memory means, it would have cost about
60,000 yen, correct?

80

Technical features of the invention at issue

81Technical features of the invention at issue
1. Have you reviewed the patent at issue?

2. Could you briefly explain what you believe is the main technical featureof the invention at issue?

82About the comparison between
the Invention and Defendant’s method83About the comparison between the Invention and Defendant’s method
1. Have you reviewed the D Method?

2. What do you think is the main technical difference between theinvention of the patent at issue and the D Method?

About the comparison between the Invention and Defendant’s method84

3rd Scheduled Oral Argument (1)Plaintiff’s Argument/Substantiation of Damages

Defendant’s Rebuttal to Plaintiff’s Argument for Damage85

2019Gahap1234
Patent Infringement

Damages Calculation

September 1, 2019

Plaintiff: Pony Corporation

Contents

1. Calculation of Damages and Treble
Damages
2. Calculation of Damages to Plaintiff
3. Conclusion87

1. Calculation of Damages and Treble Damages

88Calculation of Damages
Pursuant to Article 128 of the Korean Patent Act,
amount of damages may be calculated via following methods.
1

Plaintiff’s Lost Profits

2

Defendant’s Profits from Infringing Act

3

Ordinary Royalties

4

Decision by Court Discretion

89

Treble Damages
Background• Actual damages awarded for patent infringement often have not been high enough toeffectively discourage such infringement.

Article 128, Paragraphs 8 and 9 of the Korean Patent Act•

Courts are authorized to award damages of up to three times the amount of actual damages forintentional acts of infringement (Article 128, Paragraph 8 of KPA)•

Factors for calculating amount of treble damages (Article 128, Paragraph 9 of KPA)
(i)
(ii)

whether the infringer has a dominant position;
whether the infringer knew the act of infringement would cause harm to apatent owner, or intended such harm;(iii) the significance of any such damages;(iv) the economic benefits to the infringer from the infringement;(v)
how frequently and how long the infringing activity was committed, etc.;(vi) the amount of fine for the infringing activity;(vii) the infringer's financial status; and(viii) what efforts the infringer has made to reduce the harm to the patent owner.
90

Effective Date of Treble Damages Provision
Treble Damages Provision applicable beginning on July 9, 2019, the date
Amendments to the Korean Patent Act became effective.
• Addendum
Article 3 (Applicability of Claim for Damages): The amended provisions ofArticle 128 Paragraphs 8 and 9 shall apply beginning with the first act ofviolation committed after this Act enters into force.

Pursuant to Article 3 of the Addenda, Treble Damages is applicable topatent infringements which occur after July 9, 2019, the date Amendments
to the Korean Patent Act went into effect.

912. Calculation of Damages to Plaintiff

92Calculation of Amount of Damages
via ‘Defendant’s profit from infringing act’ Method
Plaintiff’s Loss = (Defendant’s Total Amount of Sales resulting from Defendant’s
infringing acts) * (Marginal Profit Rate) * (Contribution Rate)
Based on the materials submitted at the Order to Submit Materials, the calculation of total sales
amount and marginal profit rate for Defendant’s vehicles which adopted the D Method is asfollows:•Sales price of one vehicle utilizing the D Method: KRW 50 million•Number of vehicles sold which adopted the D method: 1 million in total- Prior to treble damages taking effect (Sept. 25, 2013 ~ July 8, 2019): 0.9 million- After treble damages went into effect (July 9, 2019 to present): 0.1 million•Total Sales Amount- Prior to treble damages taking effect (Sept. 25, 2013 ~ July 8, 2019):
KRW 50 million x 0.9 million vehicles sold = KRW 45 trillion- After treble damages went into effect (July 9, 2019 ~ present):
KRW 50 million x 0.1 million vehicles sold = KRW 5 trillion•Marginal Profit Rate: 25%
93

Contribution Rate
For automobiles, if the utility (role) and the price of a navigation is considered, thecontribution rate of Plaintiff’s navigation product for vehicles must be recognized to be 5%.

Contribution Rate = Comprehensive assessment of integrality, importance, priceratio, quantitative ratio of parts infringed upon
Supreme Court Decision 2002 Da 18244 rendered June 11, 2004
“In cases where infringement of copyright involves a part or parts of a product, the entire profit
gained from producing or selling that product cannot be deemed profit gained from the infringing act.
For the entire profit gained by the infringing party from producing or selling the product, thecontribution rate (degree of contribution) of the part(s) involved in the infringement of the subject
copyright has to be determined, and based on that contribution rate, derive the amount of profit
gained from the infringing act. In assessing such contribution rate, the integrality, importance, priceratio, and quantitative ratio, etc. of the infringement-related parts of the product have to becomprehensively considered.”• Contribution Rate: 5%94Applicability of Treble Damages to Defendant’s Act of Infringement• Intentional act or recognition of potential damages by the Defendant:
Infringement continued despite the warnings from the Plaintiff• Damages suffered by the Plaintiff due to Defendant’s act of infringement:
Reduction in the number of Plaintiff’s vehicles sold
• Profit gained by the Defendant from its act of infringement:
Profit generated from selling 1 million vehicles• Duration/frequency of infringement: As much as 1 million vehicles
produced/sold over a period of approximately 6 years• Defendant’s financial status: Defendant qualifies as a major company• Level of Defendant’s effort towards relief: Defendant did not cease its
infringing act nor tried to settle with the Plaintiff, but simply continues todeny its act of infringement.
 Thus, since Defendant’s act of infringement on Plaintiff’s patent rights
can be deemed intentional act of infringement, treble damages must be
applied to infringements which took place after July 9, 2019.
95

Amount of damages suffered by the plaintiff (Treble damages applied)• Plaintiff’s Loss 1 (prior to treble damages taking effect)=
Defendant’s Total Sales Amount (900,000 x KRW 50,000,000)
x Marginal Profit Rate (25%) x Contribution Rate (5%)=
KRW 562.5 billion• Plaintiff’s Loss 2 (after treble damages went into effect)=
Defendant’s Total Sales Amount (100,000 x KRW 50,000,000)
x Marginal Profit Rate (25%) x Contribution Rate (5%)=
KRW 62.5 billion• Plaintiff’s final amount of damages = Loss 1 + (Loss 2 x 3)
= KRW 562.5 billion + KRW 187.5 billion = KRW 750 billion

96

3. Conclusion

97

Conclusion• The amount of profit gained by the Defendant from its infringing act may be
assumed as the amount of loss suffered by the Plaintiff.
• Since Defendant’s act of infringement qualifies as an intentional act of
infringement, the treble damages provision must be applied.
• When treble damages is applied, the amount of profit unlawfully gained by the
Defendant from selling its automobiles which adopted the D Method, in total, is
KRW 750 billion.

• Defendant must indemnify the Plaintiff with the payment in the amount of KRW
750 billion.

98

3rd Scheduled Oral Argument (2)End of the Hearing

99

Date of the Decision

Decision

DECISION- Patent court of Korea(International Division)
2019. 9. 25.
Presiding Judge
Kyuhong LEE
100

DECISION OF PKID
Case No.:

2019GAHAP1234 Injunction against infringement(Patent)

Plaintiff:

Pony CorporationCounsels for the Plaintiff

Defendant:

Sang-Wook HAN of KIM & CHANG

Donkey CorporationCounsels for the Defendant

Hoodong LEE of BAE, KIM & LEE, LLC.

Date of Closing Argument:

September 1, 2019

Decision Date:

September 25, 2019101

DECISION OF PKID
ORDER
1. The plaintiff’s petition is dismissed.
2. The cost arising from this litigation shall be borne by theplaintiff.

PLAINTIFF’S DEMAND[i] Injunction of use of D method and manufacturing andlease or offer for lease of D terminal;[ii] Destruction of D terminal and any media recorded on D
server program;[iii] Payment of 1 billion yen (10M USD) for damages
equivalent to royalty

102

DECISION OF PKIDOPINION
1. Basic Facts
A. Plaintiff’s Subject Invention at Issue (Pat. No. 20190925)
B. Defendant’s Product2. Parties’ Argument
A. Plaintiff
The defendant’s D method includes all of the elements identical orequivalent to those of the patented invention, thereby being within thescope of the rights thereof. The allegedly infringing invention includes
all of the elements of claim 1, thereby being within the scope of therights of claim 1 of the patented invention.
B. Defendant
The defendant’s D method has some elements of the car navigation
system in a remote server and does not distinguish between the firstand second memories, which makes the method different from thepatented invention, thereby not falling within the scope of the rights
thereof.
103

DECISION OF PKID
3. Whether the Product Practiced by Defendant Falls within the Scope of Rightsof the Patented Invention
A. Element-by-element Comparison
Element

1

Claim 1

D methodControl method for car navigation system that

A control method for car navigation system comprising

displays a map on a display screen, the method

a server and a terminal that displays a map on a screen

comprising steps of:of D terminal, which includes

reading, from first memory means in which facility
holding D spot data including D name data indicative
data comprising display data indicative of a plurality ofof a plurality of spots and D position data indicative ofservice facilities and coordinate data indicative of exist

2

existing positions of the spots in D server of the car navi
ing positions of the service facilities havegation system in order to display the plurality of spots copreviously been stored, the display data to display the
rresponding to the D name data on the screen;plurality of service facilities on the display screen
designating one of the plurality of service facilities dispreceiving an instruction to register one of the plurality of3layed on the display screen in accordance with an op

spots displayed on the screen as a "memo position";
eration;104

DECISION OF PKID
Element

Claim 1

D method

reading coordinate data corresponding to the desi

4

gnated one service facility from the first memorymeans;

obtaining D position data corresponding to the designa
ted spot from D server to be registered according to the instruction in order to store the D position data as

storing the read coordinate data as user registered5

D memo data;

data in second memory means; anddisplaying a position indicated by the coordinate
and superimposing an icon on the map indicated bydata read from the second memory means by sup

6

the D position data of D memo data read from D server
erimposing a predetermined pattern on to the map
when the map is displayed on the screen.
when the map is displayed on the display screen.

■ first memory○ facility data
= display data + coordinate data
■ second memory○ coordinate data → user registered data

■ D server○ spot data = name data + position data
■ D server○ position data → memo data

105

DECISION OF PKID
B. Literal Infringement• Element 1 ~ 3 ; SAME
• Elements 4, 5 and the corresponding element of D method have some incommon in that coordinate data corresponding to the designated service
facility is read out and stored as user registered data (D memo data).
However, claim 1 stores facility data including coordinate data in the firstmemory means and the user registered data in the second memory means
whereas D method stores D spot data and D memo data all in D server.
• Element 6 and the corresponding element of D method are the same in thata position indicated by the coordinate data is displayed by superimposing apredetermined pattern or an icon when the map is displayed on the display
screen. However, the coordinate data is read from the second memorymeans under claim 1 while D method reads the data from D server. This isbecause the elements 4 and 5 store user registered data (D memo data) indifferent locations.

106

DECISION OF PKID
B. Literal Infringement
 Whether the plaintiff deliberately excluded the technology for installing somecomposition of the car navigation system remotely from the scope of therights of the patented invention.(Prosecution history of application)• “In view of the circumstances below, however, the car navigation
system of claim 1, instead of being construed to be limited to theinstallation of all elements of the system in the vehicle, includes thecomposition where some elements are remotely connected as D
method if external power besides the power of the system itself canbe supplied”
 Whether the plaintiff deliberately excluded the remotely installed memory fromthe scope of the rights of the patented invention• the first memory means included in claim 1 cannot be limited toportable storage medium such as CD-ROM.

107

DECISION OF PKID
B. Literal Infringement

 As described above, claim 1 includes not only a composition inwhich memory is installed in a vehicle but also a composition inwhich memory is installed remotely. The defendant’s D method,
however, does not distinguish the memory provided in the
remote server by function while claim 1 distinguishes between
the first and second memories and the functions thereof.
As such, there is a difference in composition and thus thedefendant’s D method is not literally included in the scope of therights of the patented invention.

108

DECISION OF PKID
C. Infringement under Doctrine of Equivalents• D method, however, stores spot data and memo data all in D server
without distinguishing where each data is stored. Thus, it is difficult to
expect cost reduction and convenience as in claim 1 from the method.
D method is not relevant to the technology that constitutes an
economical system by distinguishing the first and second memories andonly relates to the technology to install the memory in a remote server.
Therefore, since the two inventions are different at the core of thetechnical idea, it is difficult to believe that the principles to solve theproblem are the same. As a result, the composition of storing andreading data in the first and second memory means under claim 1 andthe composition of storing and reading data in D server under D method
are not in an equivalent relationship.

109

DECISION OF PKID
D. Summary of Analysis
The defendant’s D method does not have elements literally identicalto or in an equivalent relationship with the patented invention, thereby
not being within the scope of the rights of the patented invention.
4. Conclusion
The defendant’s D method does not infringe the patented invention,and the plaintiff’s claim based on a different premise is without meritand therefore dismissed as ordered.

110