IADC member Kurt B. Gerstner, of Lee International IP & Law Group in Seoul, Korea, along with Korean attorneys and patent attorneys at his firm, successfully defended four patent infringement claims brought against their client. The suit was brought in the Seoul District Court by a large Korean telecommunications carrier against the defendant, a foreign software developer. The defendant supplies an application which allows smartphone users to make free telephone calls over the internet. The plaintiff alleged that the defendant infringed multiple patent claims in four of the plaintiff’s patents.
The defendant filed invalidity lawsuits before the Korean Intellectual Property Tribunal against each of the four patents that were alleged to be infringed. The defense conducted research and was able to find “prior art” publications from different parts of the world to help support the defendant’s arguments that each of the four patents at issue should be invalidated because the patented inventions were not novel, they were obvious and the language of the patent claims was impermissibly vague and ambiguous. The defense succeeded in invalidating three of the four patents that were alleged to be infringed, and successfully defended appeals of those invalidity decisions in the Patent Court.
The plaintiff alleged that the defendant’s application infringed multiple patent claims contained in the one remaining patent that was not invalidated. The defense was successful in convincing the court to reject the majority of those arguments. The Seoul District Court found that only one claim in the subject patent was infringed.
The defendant appealed the infringement decision and appealed the denial of its action to invalidate the one remaining patent. It also undertook steps to design around the single claim of the patent that had been found to be infringed. While the appeals were pending the parties settled the claims involving the one remaining patent on terms favorable to the defendant.