[로펌의기술]⑦’Armed with talent in the science and engineering field’ Small law firm Darae… No. 1 patent corporation who defeated Kim & Chang

Input 2021.02.24 06:00

Korea-US Semiconductor’All-kill’ against Generem from 1st and 2nd trial to appeal
Da-rae neutralizes Kim & Jang’s offensive by insisting on unlisted matters

Hanmi Semiconductor, a semiconductor equipment developer, filed a patent infringement lawsuit against the manufacturer Generem. Kim & Chang and Darae met with law firms. In terms of the battle between the largest law firm in Korea and a small law firm with more than 20 lawyers, the result was expected, but Da-rae won the first and second trials and appeals. Darae’s expertise, which has gained a reputation as a’first generation boutique law firm’ as a patent corporation armed with science and engineering talent, shines brighter than ever.

◇”Even if the nut position is different, the function is the same…Patent right infringement”
The lawsuit of both companies began in April 2018. At that time, Korea-US Semiconductor filed a lawsuit and won the first trial ruling in October 2019. The judiciary admitted that Genesem had used Han-U.S. Semiconductor’s core equipment patent technology without permission, and ruled that Generem to ban the production and sales of the product.

The second trial court rejected Generem’s appeal for the same reason in September of last year, and the Supreme Court confirmed it on the 28th of last month, resulting in the final victory of Korea and the US.

The patented product dealt with in this trial was’Vision Placement,’ Hanmi Semiconductor’s flagship product. This product is a packaging process equipment that performs cutting and cleaning of semiconductor packages, 3D vision inspection, and loading functions, and has improved the part where it was difficult to accurately place the cut semiconductor package in the loading groove of the loading table.

To solve this problem, Hanmi Semiconductor made the steep inclination angle of the guide slope formed at the edge of the loading groove 20 to 40 degrees gently. In addition, in order to prevent interference between the loading grooves, the loading grooves and spare spaces are alternately arranged.

The issue was whether or not the’transfer part’ which supports the loading table and has a nut member (material that forms the frame of the structure) and the’guide member’ of the loading table that guides the movement of the transfer part among the components of the two companies’ products was equal. If either one of them judged that the response composition was different, then Generem could win.

Genesem said that it did not infringe on the patent right, emphasizing the location of the nut member and the fact that its products differ from those of Hanmi Semiconductor. In fact, in the case of the transfer part, the two companies’ products differ in that the nut is located at the bottom of Hanmi Semiconductor, and the Generem at the side.

However, the judiciary decided that both products were the same response structure in that the table loaded with the semiconductor package was transferred by the nut. Even if the nut’s position was different, in the end, the function was the same, and the patent right was infringed.

The judge said, “Which to position the nut member at the bottom or the side of the transfer part is only a matter that a technician can easily select in light of the technology level at the time.”

Genesem countered that the two products are not equal because their product has a nut member on the side of the transfer part, so it can secure more free space on both sides of the loading table than Hanmi Semiconductor’s products. It was judged that it was due to the difference in width of and not according to the nut position.

In addition, because the horn-shaped member on the lattice point of Hanmi Semiconductor’s product loading groove hindered the seating of the’smooth’ loading groove of the semiconductor package, the patent was ineffective, and Generem’s claim that the product itself was’unfinished’ was not acknowledged. . The horn-shaped member is not a component of the patented invention, and even with this, the semiconductor package is considered to be’smoothly’ placed in the loading groove.

◇Darae defends against Kim & Jang’s offensive with a focus on patent litigation’principles’

The reason why Kim & Chang’s argument was not accepted by the court was that Darae’s defense strategy elected by Korea-US Semiconductor was effective. In a patent infringement lawsuit, Da-rae neutralized Kim & Chang’s offensive by emphasizing the principle of’determined by the matters stated in the claims’. It emphasized the point that the transfer part and the guide member of the patented product solved the conventional problem in terms of functionality, while at the same time emphasizing the point that Kim & Jang’s claim is outside the scope of the claims.

“The most important thing in a patent lawsuit was interpretation of the claims, and it was the most important to determine whether the infringing product (Generem) belongs to the patent right,” said Da-rae-eui, attorney Min Hyeon-ah (the 33rd Judicial Research and Training Institute). He said, “I focused on responding to this part by referring to contents not described in the claims, such as a horn-shaped member, and claiming that the patent itself was invalid.”

The first trial court decided to recommend reconciliation to both sides in April 2019, one year after the trial began. However, as the pre-lawsuit spread overseas, where the two companies’ products were used, the Korean-American Semiconductor could not accept the court’s decision to recommend reconciliation. Even Kim & Jang, who represented Generem side, did not accept. At the same time, the two companies’ lawsuit battles continued for about two years and nine months. The patent litigation recognizes ownership of intangible values, and a separate lawsuit for damages arising from this victory is in progress.

Attorney Min said, “The reconciliation recommendation contained our claim as it was, so it could be seen that the first trial court judged it as’patent infringement.’ However, an overseas agent handling Generem products defamed the foreign agent selling Korean-American semiconductor products. “We filed a lawsuit for damages of billions of billions of dollars on charges of obstruction of business and did not accept the recommendation for reconciliation because it needed a final judgment from the Supreme Court that Genasem infringed the patent of Korea-US Semiconductor in order to end this overseas lawsuit.”

In 1999, Darae Law Firm was composed mainly of members who were former Judges of the Patent Court, technical examiners, and Judges of the Patent Tribunal, and put up the banner of’a law firm specializing in intellectual property rights’. The strong point is that lawyers from science and engineering who have accumulated specialized expertise and lawyers who have developed basic knowledge related to intellectual property rights harmonize and respond organically. In addition to intellectual property rights, it also deals with civil, criminal, and tax-related litigation.

Min Hyeon-ah, who oversees the lawsuit from the first trial to the end, is an expert in intellectual property litigation. It has dealt with dozens of copyright infringement and patent infringement-related lawsuits. Representatively, Soribada and Pruna P2P service copyright infringement lawsuits have been dealt with. In addition, Park Seung-moon’s representative lawyer (13th Judicial Research and Training Institute) served as a judge at the Seoul District Court and Seoul High Court after passing through the Patent Court. Attorney Geum-Yang Jeong (5 attorney exams) has also been in charge of patent law related affairs, such as working as a technical investigator at the Patent Court.