IP Newsletter | Fall 2017
	PATENT
	Second Korean Supreme Court Decision Upholding Validity of a Selection Invention
	The Korean Supreme Court recently upheld the validity of a selection invention patent owned by Merck, in the case Merck Patent GmbH and Sharp Corporation v. DIC Corporation (Case No. 2014 Hu 1631 rendered on May 11, 2017).
	The term "selection invention" in Korea means an invention in which some or all of the constitutional elements are species of a genus concept disclosed in the prior art. Selection inventions are subject to very strict patentability requirements; even after the Korean Supreme Court provided detailed standards regarding the patentability of selection inventions in 2003 (Supreme Court Decision No. 2001 Hu 2740 rendered on April 25, 2003), there were no cases in Korea upholding the patentability or validity of a selection invention for many years. The Supreme Court first recognized the validity of a selection invention in 2012 (Supreme Court Decision No. 2010 Hu 3424 rendered on August 23, 2012, holding that the selection invention at issue was valid due to a qualitatively different effect; see our Fall 2012 Newsletter). The Merck case represents only the second time the Supreme Court has acknowledged the validity of a selection invention, and is unusual in that the selection from the prior art is only one element of the claimed invention, rather than the invention itself being a selection from a larger genus.
	Background
	The Subject Patent (KR Patent No. 677804) relates to a liquid crystal display device produced using specific monomer compounds. The specification of the Subject Patent discloses that image burn (a phenomenon in which a previous image remains displayed on a liquid crystal display device) caused by polymer deformation can be reduced, and the examples provide experimental results concerning the image burn percentages for one of the claimed monomers along with comparative data for two other unclaimed monomers.
	The cited prior art reference disclosed a liquid crystal display device that is identical to the Subject Patent with respect to its device elements, and listed over 100 compounds as possible monomers for use in the liquid crystal display device, including the monomers of the Subject Patent. However, the working examples in the prior art reference used monomers with completely different structures from the monomers of the Subject Patent.
	The Subject Patent was initially held invalid by the Intellectual Property Trial and Appeal Board ("IPTAB") for lack of inventiveness. The patentee amended the Subject Patent to reduce the scope of claimed monomers, and filed an appeal to the Patent Court where the IPTAB invalidity decision was reversed.
	Supreme Court's Holdings
	On further appeal, the Supreme Court considered three questions: 1) whether a patent for an invention in which the specific monomers that can be used for one element of the invention were disclosed in a previous reference as part of a large group of monomers actually constitutes a selection invention; 2) whether a selection invention in which the selected element was expressly disclosed in a prior art reference lacks novelty; and 3) whether an element claimed in a selection invention that was already expressly disclosed in a prior art reference also inherently discloses any effects claimed for the selection invention, regardless of whether the prior art reference expressly discloses such effects.
	With respect to the first question, the Supreme Court concluded that the Subject Patent was indeed a selection invention, because the invention's primary distinction from the prior art was the selection element, and the monomers constituting the claimed element were expressly identified in the prior art (the Supreme Court clarified that if the monomers were not actually listed in the prior art, the invention would simply be a general invention, not a selection invention).
	With respect to the second question, previous Supreme Court law in Korea has held that a selection invention generally lacks novelty if the prior art either "specifically discloses" the claimed species concept, or if one of ordinarily skill in the art would have been able to "directly recognize" the claimed species from the prior art. The Supreme Court held in this case that the fact alone that the monomer of the Subject Patent was expressly named in the cited prior art reference did not mean it was "specifically disclosed," because the claimed monomer was only one of over 100 monomers listed in the prior art reference, none of the working examples of the prior art reference pertained to the claimed monomer, and there was no disclosure in the prior art reference regarding the effect claimed in the Subject Patent (reducing image burn caused by polymer deformation). As a result, the Supreme Court held that the Subject Patent did not lack novelty.
	Finally, with respect to the third question, the Supreme Court first noted that a selection invention generally is inventive only if all of the species with the selection provide a working effect that is qualitatively different from or quantitatively superior over the prior art. The Supreme Court held that the claimed invention using one of the previously-disclosed monomers (4,4'-biphenyl diacrylate) was inventive because the specification contained express disclosures that the monomer had the relevant effect (reducing image burn caused by polymer deformation) and data was submitted to support such superior effects over the prior art reference, whereas the invention using the other previously-disclosed monomer (1,4-bisacryloyloxy benzene) lacked inventiveness because there was no disclosure or data to confirm the claimed effect using the other monomer (since it was not described in the examples nor supported with experimental data).
	Remarks
	In the past it has been common for courts to reject selection inventions on novelty grounds if the selected species were expressly disclosed in the prior art (even if nothing else about the species was disclosed or suggested). This decision is significant because it suggests that the Supreme Court recognizes that the patentability of selection inventions should not be so easily rejected, but should take into account the level of disclosure in the prior art regarding the claimed invention, as well as the nature of the claimed invention as a whole. The decision strongly suggests that Korean courts may take a somewhat less strict view of selection inventions in the future.
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	Chang Su PARK changsu.park@kimchang.com Yunki LEE yklee2@kimchang.com Daniel KIM daniel.kim@kimchang.com
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