Recent Developments

Lee & Ko represented Shanghai Kaiying Network Technology Co., Ltd. (“Kingnet”) in an ICC arbitration concerning a claim for damages arising from the breach of a game copyright licensing agreement brought against Wemade, securing a full award in favor of Kingnet.

The subject of the dispute, the Legend of Mir series, which is co-owned by Wemade and Actoz Soft, is one of the most successful games in both Korea and China. In 2016, Kingnet entered into a licensing agreement for the development and distribution of the game in China. However, immediately following the execution of the agreement, litigation commenced between Wemade and Actoz Soft in China, which effectively prevented Kingnet from exercising its contractual rights.

As a result, Kingnet initiated arbitration proceedings against Wemade, seeking damages for breach of contract. Based on an in-depth analysis of the relevant legal principles under Korean and Chinese copyright law, Lee & Ko successfully established Wemade’s liability for the breach. The ICC Tribunal accepted all of Kingnet’s claims and awarded approximately KRW 70 billion in damages.

The dispute over the Legend of Mir IP has consistently attracted attention in both Korea and China, and this arbitral award received significant media coverage. Lee & Ko acted as sole counsel in this arbitration, and the case stands as a representative example of the firm’s capability and expertise in independently handling large-scale international disputes.
 

Lee & Ko successfully defended KBS, MBC, SBS, YTN, and Korea DMB (“Clients”) in a legal dispute involving MPEG standard essential patent initiated by a United States Non-Practicing Entity (“NPE”), by obtaining invalidation decision.  

Clients are representative broadcasting companies of Korea, and have maintained ground radio wave DMB broadcasting business since 2005. In October 2020, the U.S. NPE, who is a patentee of two MPEG standard essential patents, filed suit against the Clients with a Korean court while asserting that Clients’ DMB broadcasting services infringe the MPEG standard essential patents.

Lee & Ko represented Clients to defend against the patent infringement claim. In particular, Lee & Ko argued that the asserted patents were markedly different from the known standard for MPEG, thus not amounting to standard essential patent, and also that the embodiment practiced by Clients in their DMB broadcasting business was significantly different from the asserted patents and thus not infringing. At the same time, Lee & Ko also filed invalidation action against the patents before the Intellectual Property Trial and Appeal Board (“IPTAB”) to challenge the validity of the patents. Specifically, Lee & Ko emphasized that the asserted patent should be found invalid for lack of novelty or inventiveness, since the same standard content was publicly disclosed in standard documents.

In November 2021, consistent with Lee & Ko’s invalidation argument, IPTAB determined that one of the asserted patents lacked novelty or inventiveness. Thus, Clients secured an advantageous position in the infringement action as well. In particular, one of the legal issues for the invalidation action was whether a standardization document, which seemed to have originated from foreign country, would qualify as prior art. By presenting wide range of precedents and evidence, Lee & Ko was able to convincingly argue and prove that the standardization document should clearly qualify as prior art and that its disclosed date was before the filing date of the assert patent. The invalidation action against the other patent is currently pending. 

Recently, NPEs who would not engage in any productive business activities but rather profit from its patent rights by via litigation and licensing have become many companies’ nightmare. If Clients could not adequately defend against NPE’s exercise of the patent rights, Clients would not have been able to continue providing stable DMB services, which could have harmed public interest in using DMB service. Further, there were chances that, if NPE were successful in exercising its patent rights, then the dispute could have expanded to include other Korean DMB broadcasting companies, threatening the entire broadcasting industry of Korea. Lee & Ko was able to minimize the legal risk threatening the Clients with the team’s thorough analysis of law and factual background, therefore allowing the Clients to maintain their public services without problem.

Lee & Ko represented Mobile Authentication Standard Association (masa.or.kr) (“Client”) of which three leading mobile carriers are members, in a legal dispute involving mobile driver’s license service (“mDL") provided by the three mobile carriers and the National Police Agency via PASS application, initiated by patentee of a name verification patent. In an invalidation action against the asserted patent and a defensive confirmation trial for the scope of a right before Intellectual Property Trial and Appeal Board (“IPTAB”), Lee & Ko led all cases to victory by obtaining a favorable decision from IPTAB that mDL did not infringe the asserted patent in May 20, 2021, and successfully convinced IPTAB in invalidation action against the asserted patent September 2, 2021. 

With its thorough analysis of the difference between the asserted patent and mDL in terms of technical structure, Lee & Ko was able to prove that mDL did not constitute infringement of the asserted patent in the defensive confirmation trial for the scope of a right, and also convinced IPTAB that the asserted patent’s registration cannot be maintained due to lack of inventiveness by presenting strong argument that any person can easily invent the asserted patent based on prior art. Thus, Lee & Ko successfully prevented the adverse party from arguing patent infringement. One of the legal issues for both invalidation action against the patent and defensive confirmation trial for the scope of a right was whether Client had standing to bring an action before IPTAB. By demonstrating necessity and legal justification to recognize interest of Client to represent its members, each of whom had interest in the subject matter, Lee & Ko was able to convince IPTAB to recognize Client’s standing. 

mDL is a service an outcome of a collaboration among the leading mobile carriers and the National Police Agency available to public since 2020 which provides Korean population with a convenient alternative to physical driver’s license, which can be presented at any time with a smartphone. This case is meaningful to Lee & Ko for being able to contribute to everyday lives of the society by eliminating patent infringement and other legal risks from the operation of mDL.