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| IP Newsletter | Summer/Fall 2014 | |
Consequently, courts tended to first focus on the plain and ordinary meaning of a claim term in determining the scope of a claim (without reviewing the detailed description and drawings) and did not further look into the technical meaning of the claimed invention if the claim scope seemed clear, although this sometimes varied based on the court's discretion. This generally had the effect of broadening the scope of a patent, particularly for validity analysis, and ultimately, made it difficult to defend against invalidity attacks. However, in a recent ruling, the Korean Supreme Court held that in addition to the ordinary meaning of a term, the claims must generally be construed in light of the detailed description and drawings of the specification by defining the technical meaning of the claimed element in view of the purpose and effect of the claimed invention (Canon v. Alphachem, et al., Supreme Court Case No. 2012Hu917 rendered on July 24, 2014).
In particular, on July 24, 2014, the Korean Supreme Court rendered a decision in a patent litigation between Canon and Korean manufacturers of printer parts. The Supreme Court found Canon's patent directed to a photoconductive drum was valid and infringed, and issued an order enjoining the defendants from making and selling the infringing photoconductive drum and to compensate Canon for damages.
Prior to this case, Korean courts often construed the scope of claims by considering only the language recited in the claims, and invalidated patents on grounds that such broadly-construed claims read on the prior art. However, in the present case, the Supreme Court held that the specific technical meaning of a claim feature must generally be construed in light of the detailed description of the invention considering the purpose and effect of the claimed invention, thereby providing more leeway for patentees to effectively defend against invalidity assertions.
Specifically, the Supreme Court contemplated the issue of whether construing the claims during an invalidation action in light of the detailed description and drawings is proper, even where the dictionary meaning of the claim language is clear, or whether doing so constitutes an unduly limited construction of claim scope.
In upholding the validity of the patent in view of the patent's detailed description and drawings, the Court stated, "the scope of a patented invention must be construed in an objective/reasonable manner based on the plain language of the claims and also in light of the invention's detailed description and drawings, [and]…where it is difficult to fully understand the inventive features from the claim language alone, other disclosures of the specification, including the drawings, should be considered to determine the technical features of the invention." (Canon, Supreme Court Case No. 2012Hu917, at 2). Further, the Court noted the purpose of the claimed invention, how the claimed element at issue achieves the purpose, and the effect of the claimed invention in defining the technical meaning of the claimed element (Id.). Thus, the Supreme Court now appears to require an objective/reasonable interpretation of the claims based on the detailed description and drawings, and a clear understanding of the claimed "technical features" in view of the purpose and effect of the invention, beyond the simple ordinary meaning of the claim language.
Going forward, the present ruling will make it easier for patentees to defend against validity attacks.
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Sang-Wook HAN swhan@kimchang.com |
Kwang-Jik LEE kjlee@ip.kimchang.com |
Tommy KIM tkim@ip.kimchang.com |
Yeon Tae JUNG ytjung@ip.kimchang.com |