DR & AJU successfully represented Wooshin EMC (hereinafter, “Client”) in a case where The Welding Institute (hereinafter, “Plaintiff”), a British company, sought damages of approximately KRW 700 million for patent infringement. Plaintiff had entered a license agreement on friction stir welding (FSW) with Halla Climate Control Corp, which then entered an agreement with Client, where Client used the patented invention to produce and supply FSW machines. In the first trial, the Seoul Central District Court ruled that Client’s manufacturing and supplying of FSW machines, which were only used for practicing the patented inventions, constituted indirect patent infringement pursuant to Article 127 of the Patent Act and ordered Client to pay the damages.

On behalf of Client, DR & AJU appealed to the Patent Court, meticulously challenging the initial court’s recognition of the Plaintiff’s argument on indirect infringement and ultimately achieving the revocation of the initial ruling. During the trial, DR & AJU highlighted that Article 127 of the Patent Act, which addresses indirect infringement by recognizing an act that precedes the practice of all components of the invention as patent infringement if it is highly probable that all components of the invention will be practiced, is intended to enhance the effectiveness of future patent rights infringement relief without unduly extending the scope of patent rights. However, Halla Climate Control Corp. holds a non-exclusive license on FSW. Therefore, recognizing the practice of the invention via staple articles supplied by themselves or a third party (i.e., Client) as indirect patent infringement would unduly extend patent rights by imposing unfair restrictions on the non-exclusive license. Moreover, when entering a license agreement, the patentee decides on a license fee considering that the other party will practice the patent through staple articles supplied by a third party. Consequently, the court found Plaintiff’s claim to be without merit.

This case marks the first ruling on the scope of the recognition of indirect patent infringement by the Patent Court in the absence of relevant legal principles. This ruling is expected to serve as a meaningful precedent for future patent right disputes involving similar issues.