PATENT COURT OF KOREA
THIRD DIVISIONDECISION
Case No.:

2019GAHAP1234

Injunction against(Patent)

Plaintiff:Counsels for the Plaintiff
Defendant:Counsels for the Defendant

Pony Corporation
Attorney Sangwook Han
Donkey Corporation
Attorney Hoodong Lee

Date of Closing Argument:

September

1, 2019

Decision Date:

September25, 2019

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

PLAINTIFF’S DEMAND

1

infringement

[i]Injunction of use of D method and manufacturing and lease 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

OPINION
1. Basic Facts
A. Plaintiff’s Subject Invention at Issue
1) Title of Invention : Control method for car navigation system
2) Filing Date of Application/ Date of Registration/ Registration Number : September
25, 2002/ September 25, 2009 /No. 2190295
3) Claims
Claim 1. Control method for car navigation system that displays a map on a display
screen, the method comprising steps of:reading, from first memory means in which facility data comprising display data
indicative of a plurality of service facilities and coordinate data indicative of existing
positions of the service facilities have previously been stored, the display data to display
the plurality of service facilities on the display screen;2

designating one of the plurality of service facilities displayed on the display screenin accordance with an operation;
reading coordinate data corresponding to the designated one service facility fromthe first memory means;storing the read coordinate data as user registered data in second memory means;anddisplaying a position indicated by the coordinate data read from the second
memory means by superimposing a predetermined pattern on to the map when the map isdisplayed on the display screen.
4) Summary of Invention[Objective of the Invention]
The invention provides a car navigation system control method which allows the user toregister a user registration without performing complicated operations for displaying service
facilities on the map.
[0007][Mode of Operation of the Invention]
In the car navigation system control method of the invention, the display data indicative ofa plurality of service facilities and the coordinate data indicative of the existing positions of theservice facilities are previously stored in the first memory means.

By designating one of theplurality of service facilities displayed on the display screen by the operation, the coordinate
data corresponding to the designated one service facility is read out from the first memory3means and the user position is registered into the second memory means. Then, when the
map is displayed on the display screen, the coordinate data stored as user registered data areread out and the position indicated on the map by the coordinate data are superimposed onto
the map by a predetermined pattern and can be displayed on the display screen.
[0008][Embodiment]
FIG. 1 is a block diagram showing an embodiment of a preferred car navigation system
for working the invention….
[0009]The system controller 5 comprises: an interface 6 which inputs the detection outputs ofthe sensors (system) 1 to 4; a CPU (central processing unit) 7 for processing various image
data and for calculating the running distance, running direction, present location coordinates(longitude, latitude), and the like of the vehicle on the basis of the output data of the sensors(system) 1 to 4 which are sequentially sent from the interface 6; a ROM (read only memory) 8 inwhich various kinds of processing programs of the CPU 7 and other necessary information havepreviously been written; and a RAM (random access memory) 9 into/from which informationnecessary to execute the programs is written and read out. The RAM 9 is backed up by being
supplied with a voltage even when the power source of the navigation system is shut out so thatthe data such as longitude and latitude data, position display pattern data, user registration flag,and the like, will not be extinguished, which will be explained below.

A user registration datatable in which longitude and latitude data and position display pattern data are stored as a pairfor every address is formed in the RAM 9.
[Effect of the Invention]
In the car navigation system control method of the invention, by merely designating oneof the plurality of service facilities displayed as the service list in accordance with an operator
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input, the coordinate data corresponding to the designated one service facility are 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.

＜FIG. 1＞ Car navigation system shown as embodiment＜FIG. 5＞ Display screen when

＜FIG. 6＞ Display screen whenregisteringdriving5

B. Defendant’s ProductDonkey Corporation (Defendant) has been offering a car navigation service called "DK
car navigation" (hereinafter referred to as "D service") in the course of trade since
September 25, 2013 through leasing of a dedicated portable terminal called "DK terminal"(hereinafter referred to as "D terminal") to the user.
D service is offered by a method (hereinafter referred to as "D method") to control a
car navigation system composed of a server managed and operated by Donkey(hereinafter referred to as "D server") and D terminal held by the user. Donkey created aserver program exclusively used for D method (hereinafter referred to as "D server
program"), created a master CD thereof, and installed the program in D server.
Features of D method
A. D method relates to a car navigation method for providing a car route guidance service bydisplaying a map on a screen of D terminal based on a system comprising D terminal
installed in the vehicle and a remote D server (Description of Defendant's Method 1(1)).
B. In the system according to D method, Defendant's spot data (hereinafter referred to as "Dspot data") composed of data relating to names and locations of spots are held in D server(Description of Defendant's Method 1(2)).
D method displays a list of names of spots (e.g. Sushi restaurants) (e.g. "IP Sushi Ginza","IQ Sushi Ginza", "Ginza IT Sushi") on the screen of D terminal (Description of Defendant's
Method 2A[v]), whereby using Defendant’s name data of spots (hereinafter referred to as "Dname data").
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C. D method receives an instruction to register "IP Sushi Ginza", which is one of spots
displayed on the screen, as a "memo position" in accordance with an operation of D
terminal (Description of Defendant's Method 2B).
D. D method obtains position data corresponding to the spot (hereinafter referred to as "Dposition data") from D server, which are to be registered as a "memo position" according to
the instruction, and D position data can be stored as Defendant's memo data (hereinafterreferred to as "D memo data") (Description of Defendant's Method 2B).
E. In order to display the position on a map, D method reads out D memo data from D serverand superimposes an icon on the map indicated by the D position data (Description of
Defendant's Method 2C).
F.

From the above, D method has the following features:"A control method for car navigation system comprising a server and a terminal that displays amap on a screen of D terminal, 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 car navigation system in order to display the plurality of spots corresponding
to the D name data on the screen; receiving an instruction to register one of the plurality of
spots displayed on 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 tostore the D position data as D memo data; and superimposing an icon on the map indicatedby the D position data of D memo data read from D server when the map is displayed on thescreen."7

【Factual Basis 】 Undisputed facts, Plaintiff’s Exhibits, and purport of the overallargument

2. Parties’ Arguments
A. Plaintiff
The essence of the technical idea underlying the solution to the problem unique tothe patented invention at issue (hereinafter referred to as the “patented invention”) is thatthe navigation system is equipped with a power backup system even if the power of thenavigation system is cut off. The technology for differentiating the functions of the first andsecond memories is disclosed in prior arts and not the essence of the technical concept.
The defendant’s D method includes all of the elements identical or equivalent tothose of the patented invention, thereby being within the scope of the rights thereof. The
allegedly infringing invention includes all of the elements of claims 1, 8, and 16, thereby
being within the scope of the rights of claims 1, 8, and 16 of the patented invention.
B. Defendant
The defendant’s D method has some elements of the car navigation system in aremote server and does not distinguish between the first and second memories, whichmakes the method different from the patented invention, thereby not falling within thescope of the rights thereof.
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3. Whether the Product Practiced by Defendant Falls within the Scope ofRights of the Patented Invention
A. Element-by-element Comparison
ElemenClaim 1

D methodt
A control method for car navigation system
Controlmethodforcarnavigation
comprising a server and a terminal that1system that displays a map on a display
displays a map on a screen of D terminal,
screen, the method comprising steps of:which includes
reading, from first memory means inholding D spot data including D name data
which facility data comprising display
indicative of a plurality of spots and D
data indicative of a plurality of service
position data indicative of existing positions
facilities and coordinate data indicative

2of the spots in D server of the car navigationof existing positions of the service
system in order to display the plurality offacilities have previously been stored,spots corresponding to the D name data on
the display data to display the plurality ofthe screen;
service facilities on the display screen;
designating one of the plurality of receiving an instruction to register one of3

service facilities displayed on the display the plurality of spots displayed on thescreen in accordance with an operation; screen as a "memo position";obtaining D position data corresponding toreading coordinate data corresponding
the designated spot from D server to be4

to the designated one service facility
registered according to the instruction infrom the first memory means;order to store the D position data as D
9storing the read coordinate data as user memo data;
5

registered data

in second memorymeans; anddisplaying a position indicated by thecoordinate data read from the second and superimposing an icon on the map
memory means by superimposing a indicated by the D position data of D memo
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predetermined pattern on to the map data read from D server when the map iswhen the map is displayed on the displayed on the screen.
display screen.
■ first memory■ D server○ facility data

○ spot data

= display data + coordinate data
= name data + position data

■ second memory○ coordinate data → user registered■ D server○ position data → memo data

data

B. Literal Infringement
1) Commonalities and differences⒜ Element 1

Element 1 of claim 1 of the patented invention and the corresponding element of D
method are the same in that the elements relate to a control method for car navigation
system that displays a map on a display screen.

10⒝ Element 2

Element 2 and the corresponding element of D method are the same in that facility
data (D spot data) includes display data (D name data) and coordinate data (D positiondata) and that facility data is stored in the car navigation system in order to display aplurality of spots corresponding to display data (D name data) on the display screen.
⒞ Element 3

Element 3 and the corresponding element of D method are the same in that one ofthe plurality of service facilities displayed on the display screen is designated inaccordance with the user’s instruction.
⒟ Elements 4, 5Elements 4, 5 and the corresponding element of D method have some in common inthat 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 first memory 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

11Element 6 and the corresponding element of D method are the same in that aposition indicated by the coordinate data is displayed by superimposing a predeterminedpattern or an icon when the map is displayed on the display screen. However, thecoordinate data is read from the second memory means under claim 1 while D method
reads the data from D server.
This is because the elements 4 and 5 store user registered data (D memo data) indifferent locations.
2) Whether the plaintiff deliberately excluded the technology for installing somecomposition of the car navigation system remotely from the scope of the rights ofthe patented invention
The defendant argued that “The Plaintiff claimed in the written opinion that the carnavigation system of claim 1 is installed in the vehicle and thus claim 1 should be regarded
as intentionally excluding the same server connection method as D method.”
In view of the circumstances below, however, the car navigation system of claim 1,
instead of being construed to be limited to the installation of all elements of the system inthe vehicle, includes the composition where some elements are remotely connected as D
method if external power other than the power of the system itself can be supplied.
(A) Claim 1, which relates to the car navigation system, should be regarded as at
12least some of the elements constituting the car navigation system, such as a display,provided in a vehicle. Claim 1, however, does not limit all elements of the car navigation
system to be installed in the vehicle. In addition, the technology for building a memory
server remotely is already publicly known before the application filing of the patented
invention. Considering these, it is difficult to conclude that all elements constituting the carnavigation system of the patented invention should be installed in the vehicle, and it seems
that the case where some elements are connected remotely is included.
(B) Regarding this, the plaintiff submitted the following written opinion in response to
the notice of reasons for rejection during the examination stage.
Cited Invention 1 is similar to the Invention in the feature of a navigation apparatus inwhich map data is stored in a recordable medium. However, Cited Invention 1 relates to a
portable navigation apparatus for pedestrians and does not disclose a control method for
car navigation system as in the case of the invention of the application. Cited Invention 1 isdirected to solve the problem unique to the navigation apparatus for pedestrians and sucha problem would not have been solved by the navigation apparatus for automobiles.
The Invention of the present application involves "second memory means for storing theread coordinate data as user registered data" as specified in Claim 1. By providing thissecond memory means using RAM that is backed up by being supplied with power from abattery even when the power source of the system is shut down so as not to extinguish thedata such as a user registration flag (specification, [0009]), user registration data can becontinuously stored and held even when the power source is turned off, thus exhibiting an13effect of improving convenience for users. Such an effect can be obtained only because
the system according to the invention of the application is installed in the vehicle andconstant power supply from a vehicle battery with a large capacity to RAM is possible.

It is described in the last paragraph of the contents of the above written opinion thatthe effect of the patented invention occurs only when the car navigation system according
to the patented invention is installed in the vehicle.
Then, according to the above written opinion, Cited Invention 1, which relates to a
portable navigation apparatus for pedestrians, does not operate unless the power sourceof the navigation system itself is supplied while claim 1, which relates to the car navigation
system installed in the vehicle, may be supplied with power from other sources such as
vehicle battery even if the power of the system itself is not supplied to the elements of thenavigation system, especially RAM, the second memory means. In other words, the overallpurpose of the plaintiff’s claim in the written opinion is to emphasize the difference that thenavigation system can operate with other power sources such as vehicle when the powerof the system itself is not supplied. It is difficult to perceive that the plaintiff’s argument isthat all elements of the car navigation system must be included in the vehicle, and there is
not enough data to acknowledge otherwise. Therefore, although claim 1 can be regarded
as excluding the navigation apparatus which cannot receive a separate power supply as in
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Cited Invention 1, it cannot be seen as limiting the installation location of the elements of
the navigation apparatus or even excluding all the elements being installed away from thevehicle and supplied with a separate power from the scope of the rights of claim 1.
(C) In D method, some elements of the car navigation system such as storing spot
data and memo data are carried out in a remote server. In general, the server is known tohave a system that provides a stable supply of power including backup power. Thus, there
is no difference in the effect that a stable power can be supplied to the memory.
(D) In consideration of the above, the car navigation system of claim 1

includes acomposition in which the memory is installed remotely as in D method. Therefore, thedefendant’s claim cannot be accepted.
3) Whether the plaintiff deliberately excluded the remotely installed memory
from the scope of the rights of the patented invention
Although an inexpensive medium such as CD-ROM is described as the first memorymeans in the subject specification at issue, this is just one embodiment. Therefore, the firstmemory means included in claim 1 cannot be limited to portable storage medium such as
CD-ROM. That is, it should be understood that claim 1 includes not only a portable storage
medium but also ROM embedded in the system, and an inexpensive memory other than arelatively expensive memory such as RAM is all included. In addition, it should be deemed15that the first memory means of claim 1 does not exclude the memory composition of theremote server wirelessly connected as described above.
4) Literal Infringement
As described above, claim 1 includes not only a composition in which memory is
installed in a vehicle but also a composition in which 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 andthe functions thereof. As such, there is a difference in composition and thus thedefendant’s D method is not literally included in the scope of the rights of the patented
invention.
C. Infringement under Doctrine of Equivalents
1) Standard
Even if a product manufactured by the other party of a patent infringement lawsuit
involves a modification of the composition described in the claims of the patented invention
at issue (hereinafter referred to as the “invention”), unless there are special circumstances,the product must be considered equivalent to the corresponding composition of theinvention, thereby infringing the invention if the means to solve the problem is the same as
those of the invention, the invention obtains essentially the same effect despite the16modification, and such modification is what could be easily conceived by a person having
ordinary skill in the art. In addition, when determining whether “the principles to solve theproblem are the same,” it is necessary to substantively investigate and determine theessence of the technical idea on which the solution unique to the patented invention isbased compared with the description of the invention in the specification and the publicly
known technology at the time of filing, instead of formally extracting a part of thecomposition described in claims (See Supreme Court Decision 2014Da7964, decided
August 27, 2015).
2) Analysis
Claim 1 clearly distinguishes between the first memory means in which facility datais stored and the second memory means in which user registered data is stored. The
specification at issue also describes as follows.
By storing longitude and latitude data and position display pattern data as facility data in a CDROM, which is an inexpensive memory medium, and storing user registering data in rewritable
RAM, improved convenience and cost reduction can be both achieved (Bottom of Paragraph[0015]).

It may be suggested from the above description that convenience and cost reduction
are both satisfied by using a low-cost memory medium such as CD-ROM as the firstmemory means to store a large amount of data and by using RAM as the second memory17means to improve performance even though it is relatively expensive. In view of thesecircumstances, the technology of the patented invention to configure the system at low
cost and improve convenience by differentiating the memory where facility data is stored
and the memory where user registered data is stored is the essence of the technical idea
on which the solution unique to the patented invention is based.
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 andconvenience as in claim 1 from the method. D method is not relevant to the technology that
constitutes an economical system by distinguishing the frist 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 the technical idea, it
is difficult to believe that the principles to solve the problem are the same. As a result, thecomposition of storing and reading data in the first and second memory means under claim
1 and the composition of storing and reading data in D server under D method are not in
an equivalent relationship.
In response, the plaintiff argues that “the technology to differentiate the functions of
the first and second memories is disclosed in prior arts and is what could be easily
conceived by a person having ordinary skill in the art.”18

If the first and second memories are not distinguished in claim 1, however, user
registered data and coordinate data would be all stored in the same memory, making it
difficult to achieve the effects of cost reduction and convenience of claim 1. In addition,
claims that the technology to store what becomes relatively more important due to a user’s
selection from coordinate data stored in the first memory as registered data in the second
memory is publicly known or could be easily derived from the prior have no ground.
D. Summary of Analysis
The defendant’s D method does not have elements literally identical to or in an
equivalent relationship with the patented invention, thereby not being within the scope ofthe 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 merit and therefore dismissed as ordered.

Judge LEE KYU HONG

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