[판례평석] 캐논사건 권리범위확인심판의 부당성

A Case Study Regarding Patent Trial Board Case No.2013DANG11 and Patent Court Case No.2013HER3340 for Scope Trial for Patent Claims

It is not understandable to dismiss a petition for a scope trial for claims against an accused article of the petitioner without discussion on the legal issues. The accused article is an aluminium drum for a cartridge for use adapted in a printer. The accused article was produced by the petitioner. The accused article is very simple and clear and definite. However, the Patent Trial Board dismissed the petition without further discussion on the legal issues, reasoning that the accused article is not clearly described or defined. The petitioner made aluminium drums for cartridges. An aluminium drum is assembled in a cartridge. The cartridge is sold to a printer user to replace in the printer. The aluminium drum is rotated with the female part of the printer during printing. Manufacture of aluminium drum is one thing and the use of aluminium drum with the female part of the printer is another. However, the Board dismissed the trial under the ground that the aluminium drum is not clearly described or defined. Further, the Board demanded that the female part of the printer should be included as a part of the accused article because the aluminium drum is worked with the female part of the printer when use. If the claimed inventions of claims 25 and 26 relate to an aluminium drum, this issue for scope trial is very simple. The accused aluminium drum can easily be defined for the scope trial over the claimed inventions. However, the claimed inventions do not relate to an aluminium drum itself but an assembly having a cartridge equipped with an aluminium drum. Under the circumstances, the doctrine of exhaustion should be applied and the relationship between a part and an assembly should be analyzed. The dismissal of the scope trial by the Korean Patent Trial Board without any substantial discussion on the legal issues was seriously wrong. A petition against the Patent Court's decision was filed with the Korean Supreme Court and is pending at the moment. If the Patent Court' decision is affirmed by the Supreme Court, local manufacturers including plaintiff shall not have any opportunitiy whether or not their accused article is within the scope of the defendent's claims, resulting in that they shall pay 15 billion Korean Won to the patent owner.