2014년 7월 10일 목요일

3. Disputable Agenda on Precedent Case


Claim 5
To form a metal panel in which a filing member is to be filled between a front plate and a rear plate which are made of a colored steel sheet, a method of forming a continuous metal panel comprising: continuously forming said front plate and rear plate having a certain width, in a lengthwise direction; forming caulking grooves having a narrow width to be in equal intervals in a lengthwise direction to said front plate; forming a connection groove portion and a connection projection portion respectively by bending upper and bottom portions of said front and rear plates; installing a cover so that said caulking grooves may be sealed with an outside; stiffening in a manner to fill a filing member between said front and rear plates; and loading said panel by cutting into a necessary length for use

Claim 6
The continuous metal panel as claimed in claim 5, produced by use of an insulator in which a filing member is selected from a polyurethane foam (PU), a glass wool board (G/W), a mineral wool board, a rock wool board (R/W), a styrofoam board (EPS), a polyester foam board or a plastic insulation board

‘A discrepancy of an inventive category between an independent claim and a dependent claim’



□ Argument of Plaintiff
A. An invention subject to confirmation appertains to the scope of right of claim 5 invention regarding the subject case.
B. An invention of claim 6 regarding the subject case is a product invention; whereas, the invention subject to confirmation is a manufacturing method invention. In this regard, a category of an invention is specified differently such that an inter-comparison cannot be realized. Hence, a claimed matter of the trial to confirm the scope of right by the defendant, with respect to the invention of claim 6, should have been dismissed as being unlawful.
C. Even if, the category of invention as for the invention of claim 6 of the subject case holds an ambiguous description such that the scope is not recognized, for which protection is sought, in such a case, it is impossible to inter-compare the invention described in claim 6 and the invention subject to confirmation. Hence, a claimed matter of the trial to confirm the scope of right by the defendant with respect to the invention of claim 6, should have been dismissed as being unlawful. Further, the aforementioned ambiguous description is just a matter to be examined on an additional invalidation trial.
D. The invention described in claim 6 of the subject case is interpreted clearly as a product invention. Further, even if ‘…continuous metal penal’ described in the end of the scope of claims is a typographical error of ‘…a method of forming a continuous metal penal’, a skilled artisan can readily appreciate the scope of claims by reference to the detailed description of the invention and the drawings, so the scope for which protection is sought, can thus be specified.
E. Moreover, if the invention of claim 6 regarding the subject case is interpreted as a method of forming a continuous metal penal, the invention subject to confirmation furnishes all constituents same as or equivalent to those of the invention of claim 6 regarding the subject case, it thus pertains to the scope of right of claim 6 invention regarding the subject case.
F. Therefore, the trial decision of the subject case being concluded differently from above should be canceled since it is unfair.



□ Issue
       Whether a claim for a trial to confirm the scope of right is available or not, by taking into account another invention in a different inventive category from the patent invention as an invention subject to confirmation
       Whether, in cases where there is an ambiguous description in the scope of claims of the patent invention such that the scope of right cannot be specified, a claim for a trial to confirm the scope of right becomes illegitimate



□ Gist of Decision
       Whether it is possible to claim a trial to confirm the scope of right by taking into account another invention in a different inventive category from the patent invention, as the invention subject to confirmation -> Possible
According to Articles 94, 2 of the Patent law, in cases where a patent invention is a product invention, a patentee has the exclusive right for acts of manufacturing, using, assigning, leasing, importing, or offering for assigning or leasing (including displaying for the purpose of assignment or lease) the product commercially or industrially. Therefore, inside the scope of right of the product invention, not only the product but also the inventions as regards a manufacturing method and a usage method which are related with the product shall be regarded as being included.
Thus, in such a trial to confirm the scope of right as to confirm the scope of patent invention for which protection is sought (i.e., the scope to which the effects of patent right extend), it is obviously possible to confirm whether an invention of a process subject to confirmation pertains to the scope of patent invention, which is a product invention, for which protection is sought. More specifically, it is possible to determine sufficiently whether or not the scope of right falls within the another scope of right by comparing both inventions, in a manner that examines whether a product related to a process invention subject to confirmation (in cases of an invention regarding a manufacturing method, a product produced by the manufacturing method, or the like), includes all constitutions of the product of the patent invention. Therefore, based on the grounds that the patent invention of the subject case and the invention for which confirmation is sought are in different categories, it cannot be determined that the claim for trial to confirm the scope of right should be dismissed as being illegitimate.


       Whether a claim for a trial to confirm the scope of right becomes illegitimate in cases where the scope of right is not specified due to the ambiguous descriptions of the scope of claims regarding the patent invention -> Determination available
A trial to confirm the scope of patent right is to specifically confirm the scope where the effects of the right extend, in relation with the invention subject to confirmation. In regards to the specific confirmation, under a premise that the scope of patent invention is being recognized, there are included a confirmation by which the recognized scope of right is compared to the invention subject to confirmation so as to identify whether or not the effects of the patent right apply, as well as another confirmation whether the effects of the subject patent right do not reach to the invention for which confirmation is sought because the scope of patent invention for which protection is sought itself is not fundamentally recognized.
Furthermore, in cases where the technical scope of the invention itself cannot be specified because a part of the constituents of the invention is abstractive or obscure at the time of filing even given the description of the scope of claims and the detailed description of the invention and the description of the drawings regarding the patent invention, it is difficult to judge ‘being applied/not being applied’ through a specific constitutional comparison with the invention for which confirmation is sought. However, this is a case in which there is no recognized the scope of the patent invention for which protection is sought thus the effects of the patent right are not extended to the invention for which confirmation is sought. As examined above, it is a form to confirm the scope of right, which is obviously predetermined by the trial to confirm the scope of right. Hence, it cannot be deemed that the claim for trial to confirm the scope of right with respect to the corresponding patent invention becomes unlawful because of the circumstance wherein the technical scope of the patent invention cannot be specified. Such a legal principle shall be identically applied so long as the technical scope for which protection is sought cannot be specified either, which is resultant from cases where an inventive category is ambiguous as well.



       Whether a claim for a trial to confirm the scope of right becomes illegitimate in cases where the scope of right cannot be specified due to the ambiguous description of the scope of claims regarding the patent invention or not -> Determination available
The invention described in claim 6 of the subject case, may be interpreted as a product invention that is so-called process limitation that limits a product invention, in that the scope of claim is ‘…as claimed in claim 5, the continuous metal panel produced by use of an insulator in which a filing member is selected from a polyurethane foam (PU), a glass wool board (G/W)…’ and its end demonstrates ‘continuous metal panel’ being a product invention and that there is description ‘produced by use of…’ just in front thereof, thereby somewhat corresponding to a manufacturing method. By the way, putting together the following, ‘continuous metal panel’ described in the end of the scope of claims with respect to the invention described in claim 6 of the subject case, may be regarded sufficiently as a typographical error of ‘a method of forming a continuous metal panel’.
(Omitted)
Putting together above, the invention of claim 6 of the subject case may be deemed to claim ‘continuous metal panel’ which is a product invention being a process limitation, or to omit ‘a forming method’ erroneously while trying to claim ‘a method of forming a continuous metal panel’ which is another manufacturing method invention in a different category therefrom (it is difficult to regard it even as an explicit typographical error). Consequentially, the scope of claims is not described explicitly such that the technical scope cannot be specified, therefore, the scope of right is not recognized.



5. Conclusion
□ Notice the description of the scope of claims
- If the scope of claims is described unclearly, a risk may occur in which the scope of right may be denied.
- The invention of claim 5 of the subject case and the invention for which confirmation is sought underwent the judgment whether the scope of right is included through a specific technical constitutional comparison as below.
Item
Technical Constitution
Comparison Result
Preamble
To form a metal panel in which a filing member is filled between a front plate and a rear plate which are made of a colored steel sheet
No difference
Constitution 1
continuously forming said front· rear plates having a certain width, in a lengthwise direction
No difference
Constitution 2
forming caulking grooves having a narrow width to be in equal intervals in a lengthwise direction to said front plate
No difference
Constitution 3
forming a connection groove portion and a connection projection portion respectively by bending upper and bottom portions of said front and rear plates
No difference
Constitution 4
installing a cover so that said caulking grooves may be sealed with an outside
Different
Constitution 5
stiffening in a manner to fill a filing member between said front and rear plates
No difference
Constitution 6
loading said panel by cutting into a necessary length for use
No difference


- However, with respect to the invention described in claim 6, just because the scope of claims is not clearly described, a judgment was made without a comparison for a technical constitution, whereby it does not appertain to the scope of right.

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