Last February, the US District Court of the Eastern District of Texas issued a decision requiring Samsung Electronics to pay USD 200 million in compensation for deliberate infringement of technology held by KIP Co., Ltd.

The corresponding technology relates to a double-gate FinFET that was invented by Professor Lee Jong-Ho (Seoul National University) in 2001, and patents for it were granted in Korea and the US.  Intel and Apple, both of which use the technology, have paid royalties according to agreements with KIP, and the relevant technology has been owned and managed by KIP, a KAIST affiliate specializing in patents.

While Professor Lee provided Samsung Electronics with an explanation of the patented technology and continuously requested a royalty agreement, Samsung Electronics never agreed.  The court concluded that Samsung Electronics merely listened to Lee’s explanation of the technology, and deliberately infringed the patent without paying royalties.

Samsung Electronics plans to appeal to receive acknowledgement that the technology belongs to Samsung Electronics.  A reexamination request has been filed with the Patent Trial and Appeal Board, and the appeal hearing is currently pending.

In this regard, two invalidation actions against the patent at issue were lodged by Samsung Electronics with the Patent Trial and Appeal Board, but were dismissed.  Also, invalidation actions filed with the KIPO were dismissed as well, and thus the chances of success in invalidation of the patent are estimated to be low.  However, in the pending reexamination, the Examination Bureau has determined an invalidity opinion, and when the patent is finally determined, the determination will have an influence on the infringement action, and thus the development of the final decision is being watched with keen interest.