Executive Summary
Patent Court Ruling No. 2023Heo14578, Court Decision No. 34, Announced on August 28, 2024, Regarding the Interpretation of Cases Where the Scope of a Patent Claim Includes a Description of the Material of an Article
【Issues Resolved by the Judgment】
[1] The method of interpreting the claims of a utility model when the claims include a description regarding the material of the product.
[2] The method of determining, based solely on the specification, whether the product being compared to the registered utility model was consciously excluded from the scope of the claims of the registered utility model.
【Summary of Judgment】
1. For a registered utility model in which the scope of the claims is generally described in terms of the product’s shape, structure, etc., and further includes a description regarding the material of the product, the technical constitution should not be understood as being limited solely to the material itself. Instead, the product should be understood as having the shape, structure, etc., specified by all the descriptions in the claims, including the material, and it should be compared to the target design accordingly. Ignoring some descriptions in the claims, such as those regarding the material of the product, at the stage of exercising rights effectively constitutes a post hoc expansion of the claims, which is impermissible.
Therefore, the description “ceramic material” in the claims of the registered utility model at issue should not be completely excluded on the grounds that it pertains to the material of the water container. Rather, the claimed invention should be understood as a product that includes the technical content of preventing heat deformation of the main body’s opening and maintaining its shape, which are limitations related to the material of the product, as specified by all the features of the claim, including the shape and structure. This understanding should then be compared to the disputed invention.
2. Even based solely on the description in the specification, it can be deemed that the applicant consciously excluded the subject article from the scope of the claims during the application process for the registered utility model, considering the applicant’s intentions as reflected therein. If the explanation of the invention points out the issues associated with an alternative configuration of the subject article that could replace the technical structure of the registered utility model, while also presenting the technical structure of the registered utility model as a solution to these issues, and if the alternative configuration is explicitly excluded from the scope of the claims of the registered utility model, it is reasonable to conclude that the applicant or the utility model right holder consciously excluded the subject article with the alternative configuration from the claims during the filing process.
In the description of the invention within the specification of the registered utility model in this case, there are statements indicating that the alternative configuration of the disputed design, which could replace the technical structure of the registered utility model, specifically, the configuration where the water container of the subject design is made of a “metal material,” has the problem of causing thermal deformation at the entrance of the main body, which is made of plastic, due to heat transmitted from flames. Additionally, the specification states that when the water container of the registered utility model is made of a “ceramic material,” the heat generated by the flames is not transmitted to the main body through the water container, thereby resolving the issue of thermal deformation at the entrance of the main body. Thus, it can be concluded that the applicant and the utility model right holder of the registered utility model in this case consciously excluded the alternative configuration of the subject design, in which the water container is made of a “metal material,” from the claims during the filing process. Therefore, the plaintiff’s argument that the subject design, which includes the alternative configuration, falls within the scope of the claims of the registered utility model is contrary to the principle of estoppel and is not permissible.
【Implications】
When the scope of the claims includes descriptions regarding the material of the product, the technical configuration should not be limited solely to the material itself. Instead, the product should be understood as having the shape, structure, etc., specified by all the descriptions in the scope of the claims. In determining whether a certain configuration was consciously excluded, it is necessary to comprehensively consider various circumstances revealed during the application process. These points highlight the significance of this precedent in clarifying the interpretation of claims and the conscious exclusion assessment.
Reference source: https://patent.scourt.go.kr/dcboard/new/DcNewsViewAction.work?seqnum=26283&gubun=44&cbub_code=000700&searchWord=&pageIndex=1