Jay Young-June Yang

Jay Young-June Yang

Ji Eun Lee

Ji Eun Lee

In May 2010 a global manufacturer/supplier of laser printers that owned a patent for photoconductive drum technology for laser printers filed a petition with the Trade Commission against five local laser printer manufacturers. It requested that the commission issue an injunction to stop the export and manufacture for export of their products, alleging that the respondents had infringed the petitioner's patent.

The commission commenced an investigation into possible unfair trade practices on 1st June 2010. It obtained expert opinions from patent attorneys and held hearings to consider technical presentations by the parties. During the course of the investigation, four of the respondents jointly filed an invalidation action with the Intellectual Property Tribunal of the Korean Intellectual Property Office against the photoconductive drum patent. On 30th June 2011 the invalidation action was dismissed by the tribunal, which had found that there were no grounds to invalidate the patent.

On 21st September 2011 the commission dismissed the petitioner's claim based on its finding that the acts of the respondents did not constitute unfair trade practices. Despite the tribunal's decision, the commission found that the patent at issue lacked novelty and inventive step when compared to the relevant prior art, applying an overly broad interpretation to the scope of the patent right without taking into consideration the totality of the circumstances, such as the purpose of the patent, its components and the detailed description.

In a subsequent lawsuit filed by the petitioner with the Seoul Administrative Court, seeking cancellation of the commission's decision, the court pointed out that the decision could not be overturned unless the commission had engaged in an egregious abuse of its discretion. On consideration of the relevant facts, the court found that the commission had failed carefully to consider the findings of the tribunal and had erred in incorrectly interpreting the scope of the patent claims. Furthermore, it found that the commission had considerably exceeded the limitation of its discretion in deciding the case. The court therefore, for the first time, overturned the commission's decision.

For further information please contact:

Jay Young-June Yang
Kim & Chang
www.kimchang.com
Email: yjyang@kimchang.com
Tel: +82 2 3703 1114