IP Newsletter | Fall 2017
	PATENT
	Patent Court Holds that Proof of "Exclusive Use" for Infringement Only Necessary if Other Uses Are First Shown to Exist
	While there is no such thing as inducement of infringement under Korean patent law, Article 127(1) of the Korean Patent Act ("KPA") provides that a party indirectly infringes a product patent by "producing, selling, leasing, importing or offering for selling or leasing a product that is exclusively used for the production of the patented product . . .," similar to contributory infringement law in the U.S. The key issue in Korean indirect infringement cases usually is whether "exclusive use" of the accused product for producing the patented product can be proven.
	The Korean Supreme Court previously held that the patentee has the burden to prove whether an accused product is exclusively used for the production of the patented product (see Supreme Court Decision No. 98Hu2580 rendered on January 30, 2001). Thus, under the Supreme Court's holding, if neither party presents any relevant evidence on the issue, the patentee would fail to prove indirect infringement. However, in practice, patentees have generally been allowed to simply deny the existence of non-infringing uses at the outset, due to the difficulty of proving a negative (the absence of alternative uses), and the burden of proof thus generally shifts to the accused infringer to prove alternative uses despite the lack of evidence. This has led to legal uncertainty regarding whether such a procedure is valid under Korean law.
	The Patent Court recently issued a decision clarifying the Supreme Court's previous holding that a patentee should assert and prove "an accused product has no alternative use other than a use for the production of a patented product" to establish indirect infringement (see Patent Court Case No. 2016Heo7305 rendered on May 25, 2017). The Patent Court's decision affirms current practice in certain circumstances, by holding that while the ultimate burden of proving "exclusive use" lies with the patentee, if the accused product is not a standard article of commerce or does not otherwise have a reasonable economical, commercial or practical use, the initial burden of production is on the accused infringer to show that the accused product has a reasonable alternative use other than for production of the patented product.
	The claimed invention involved in the Patent Court case was directed to a taximeter having a border alert system, while the accused product was a device for producing a border alert protocol designed to be used in combination with a taximeter (such that the combination would infringe the asserted patent). The accused infringer attempted to assert that the accused product could also be used as a cruise navigation system for alerting when a ship goes off course.
	Regarding the appropriate legal standards, the Patent Court first noted that as a practical matter, it should be much easier for a party asserting an alternative use to provide evidence of such use, than for a party asserting no alternative uses to provide evidence that no such uses exist. The Patent Court also remarked that an accused infringer generally would be in a much better position than a patentee to know how an accused product may be used. Thus, in cases where it is not clear the accused product has any alternative uses except the accused use, the Patent Court took the practical position that the patentee should not be required to further support its position on exclusive use until there is evidence presented of at least one reasonable alternative use.
	In response to the accused infringer's assertion in this particular case, the Patent Court found that the accused infringer failed to present any evidence of particular devices or parts which could be used in combination with the accused product to produce the claimed cruise navigation system. Consequently, the Patent Court did not recognize the claimed alternative use to be economical, commercial, or practical, and noted that even if the accused infringer had produced evidence of such devices or parts, the patentee would then have an opportunity to show that the alternative use was not economical, commercial, or practical. The Patent Court concluded that the accused product was exclusively used for the production of the patented product.
	As the first case in Korea since the above-cited Supreme Court case to deal specifically with the issue of burden of proof in indirect infringement cases, this decision provides sensible guidance on how to fairly balance the burden of production between patentee and accused infringer in indirect infringement cases in Korea.
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	If you have any questions regarding this article, please contact:
	Yoon Ki KIM ykkim1@kimchang.com Daniel KIM daniel.kim@kimchang.com
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