Patent Infringement Lawsuits and Invalidation Trials
Pine IP
January 2, 2025
With rapid technological advancement in a wide range of industries, patent disputes are becoming increasingly common. Among the various legal proceedings aimed at protecting rights and resolving disputes, patent infringement lawsuits and invalidation trials are critical processes that businesses and patent holders must take into account. In this column, we will discuss the concepts, procedures, and strategic considerations of both patent infringement lawsuits and invalidation trials. We will also examine how these two proceedings often unfold simultaneously in Korea, along with statistical data and practical pointers to keep in mind during actual disputes.
1. Patent Infringement Lawsuits
1.1 What Is a Patent Infringement Lawsuit?
A patent infringement lawsuit is a legal action initiated when a party alleges that someone has infringed upon its patent rights or, conversely, to assert that one’s product or service does not infringe upon another’s patent.
Purpose
A party whose patent rights have been infringed may file suit in court to seek remedies such as an injunction to stop the infringement or to claim damages.
Parties Involved
Typically, the patent owner (e.g., a corporation holding the patent, an individual inventor) brings the lawsuit against the party accused of infringement (e.g., a competitor, a manufacturer of a similar product).
1.2 Key Issues in Patent Infringement Lawsuits
Determination of Infringement
Courts evaluate whether the accused technology or product falls within the scope of the claims of the patent in question.
Scope of Damages
The court assesses economic losses, business harm, and market disruption caused by the infringing activities to determine an appropriate compensation amount.
Preliminary Injunctions
If there is clear evidence of infringement and imminent, irreparable harm, the patent owner may request an immediate injunction to halt the infringing conduct.
2. Patent Invalidation Trials
2.1 What Is a Patent Invalidation Trial?
A patent invalidation trial (무효심판) is a proceeding filed before the Korean Intellectual Property Trial and Appeal Board (generally referred to as the Patent Trial and Appeal Board in an international context) to argue that a granted patent should be invalidated on certain statutory grounds.
Purpose
To determine whether the patent fails to meet requirements such as novelty and inventive step (non-obviousness), or whether there was any misconduct during the filing process.
Parties Involved
Any interested party (e.g., a company accused of infringement, a competitor) can file a request for an invalidation trial.
2.2 Key Issues in Patent Invalidation Trials
Validity of the Patent
The trial board examines whether the patent claims are overly broad or fail to satisfy novelty and inventive step requirements, among others.
Effect of a Final Invalidation Decision
Once a patent is invalidated with finality, it is deemed never to have existed. Consequently, any ongoing infringement lawsuit grounded on that patent typically collapses because the patent owner loses the right to assert infringement.
3. Relationship Between Patent Infringement Lawsuits and Invalidation Trials
In patent disputes, infringement lawsuits and invalidation trials often proceed simultaneously or in a manner that one significantly impacts the other. For instance, a defendant accused of infringement may counter by initiating an invalidation trial, arguing that the patent in question is invalid.
Strategic Value of Filing an Invalidation Trial
If the patent is ultimately invalidated, the infringement lawsuit becomes moot, serving as a powerful defensive strategy.
When Filed During an Infringement Lawsuit
An invalidation trial can be pursued first or in parallel, potentially influencing the outcome of the infringement litigation—directly or indirectly.
4. Concurrent Proceedings: Patent Infringement Lawsuits and Invalidation Trials
4.1 Timing of Filing and Issuing Decisions
Sequence of Lawsuit Filing vs. Invalidation Trial Request
An invalidation trial may be requested before or after a patent infringement lawsuit is filed.
Statistically, approximately 61.5% of cases involve the infringement lawsuit being filed first.
This trend reflects the common scenario in which a patent owner files a lawsuit upon believing its patent has been infringed, and the defendant responds by filing or preparing for an invalidation trial.
Sequence of Court Judgment vs. Invalidation Decision
In about 74.1% of cases, the invalidation trial decision precedes the first-instance court judgment in the infringement lawsuit.
The relatively faster procedure at the Patent Trial and Appeal Board—especially when using the expedited trial system—often leads to an earlier decision.
From the defendant’s perspective, an early invalidation decision can be a significant advantage because a successful invalidation essentially undermines the patent owner’s infringement claim. From the patent owner’s standpoint, it is crucial to account for the possibility that an invalidation result may come first when formulating the litigation strategy.
4.2 Practical Impact and Statistical Significance of Concurrent Proceedings
Influence of the Invalidation Trial Outcome
Roughly 78.2% of court rulings in infringement lawsuits make substantial reference to the outcome of the invalidation trial.
If the patent is invalidated, the infringement lawsuit often cannot proceed meaningfully because the patent’s validity is a prerequisite for any infringement claim.
As a result, proving not only infringement but also maintaining the validity of the patent is paramount for the patent owner. Conversely, a defendant can turn the tide by successfully challenging the patent’s validity.
Invalidity Defense vs. Filing an Invalidation Trial
In an infringement lawsuit, defendants often raise an invalidity defense (arguing that the patent is invalid and thus cannot be infringed) while simultaneously filing an invalidation trial request.
When the board recognizes prior art or other evidence supporting invalidity, it can decisively affect both damage calculations and the question of infringement.
If the defendant successfully undermines the patent’s validity through the invalidation trial, the court must then consider whether the patent is valid before even addressing infringement—a scenario often advantageous to the defendant.
5. Effect of the Patent Board’s Decision on Court Rulings
5.1 Relationship Between the Patent Trial and Appeal Board and Civil Court Judgments
In principle, decisions by the Patent Trial and Appeal Board (an administrative body) do not have binding authority over civil court rulings.
However, courts frequently treat the board’s decisions—particularly an invalidation decision—as persuasive evidence, giving them considerable weight.
5.2 Relevant Case Law
The Korean Supreme Court has held that a final decision in a scope confirmation trial (권리범위확인심판) can serve as important evidence in civil proceedings, but it may be overridden by other evidence submitted to the court if there is a conflict (Supreme Court Decision 99Da59320, January 11, 2002).
Nonetheless, in practice, board decisions and subsequent rulings by the Patent Court (특허법원) significantly influence civil infringement lawsuits, underscoring the practical importance of diligently pursuing or defending invalidation trials.
6. Key Considerations for Developing Litigation and Trial Strategies
Pre-Litigation Patent Analysis
Thorough prior art searches and validity assessments of relevant patents are essential to prepare for potential infringement lawsuits.
Even for patents you own, regularly review claim scope and potential grounds for invalidation to ensure they meet statutory requirements.
Use of the Expedited Trial System
For a defendant, a swift resolution in the invalidation trial can be advantageous if it can invalidate the patent before the court issues a judgment in the infringement case.
Patent owners may also seek accelerated proceedings if a quick outcome is favorable for their enforcement strategy.
Parallel Invalidity Defense and Invalidation Trials
Raising an invalidity defense in civil litigation alone differs significantly from simultaneously filing an invalidation trial.
Evidence and technical analyses introduced in the invalidation trial can become powerful tools in the civil case. Close collaboration with legal and technical experts is vital.
Respect for Decisions by the Patent Trial and Appeal Board and Patent Court
In practice, invalidation decisions heavily influence civil court proceedings.
A comprehensive dispute strategy must integrate not only civil litigation tactics but also a well-prepared approach to the patent board and any subsequent appeals.
7. Conclusion
It is quite common in Korea for patent infringement lawsuits and invalidation trials to be pursued at the same time. Statistics indicate that in 61.5% of cases, the infringement lawsuit is filed first, yet in 74.1% of cases, the invalidation trial decision is issued before the first-instance judgment in the infringement suit. Moreover, approximately 78.2% of infringement rulings actively reference the results of the invalidation trial, highlighting the substantial impact of the board’s determination on the civil court’s decision.
Although decisions of the Patent Trial and Appeal Board are not legally binding on the courts, they wield significant practical influence. Courts frequently defer to the board’s findings, making it crucial to navigate both proceedings in a coordinated manner. Ultimately, to prevail in a patent dispute, one must develop a holistic strategy that addresses both infringement litigation and invalidation trials concurrently, rather than focusing on just one avenue.
At Pine IP Firm, we understand the intricate interplay between patent infringement lawsuits and invalidation trials. Drawing on our extensive experience in Korean patent practice, we provide comprehensive legal strategies tailored to safeguard our clients’ interests and optimize outcomes in these complex, high-stakes proceedings.
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