Prevailing on all claims in a patent dispute involving rust removers applied to automobile bodies

Lee & Ko represented Samyang Chemical and Donghee Industrial in a patent dispute initiated by a Korean domestic chemical company that manufactures and sells rust removers applied to the metal surface of automobile bodies and prevailed on all claims.

Immediately after obtaining a patent registration for rust removers, Chemical Company S, the patentee, filed a request for preliminary injunction, a request for permanent injunction, a scope confirmation action as well as a criminal complaint against Samyang Chemical, which manufactures and sells rust removers, and Donghee Industrial, which receives supplies of rust removers from Samyang Chemical and applies them to metal surfaces of automobile bodies.  The dispute over this single patent lasted for more than a decade.  Initially, the Intellectual Property Trial and Appeal Board (the “IPTAB”) found the patent valid and this decision was rendered final and conclusive.  The IPTAB also held that Samyang Chemical’s product fell within the scope of rights claimed by the patent.  Lee & Ko was retained after these unfavorable decisions to represent both Samyang Chemical and Donghee Industrial. 

Lee & Ko discovered new prior art references and filed a petition for invalidation action.  In this invalidation action, Lee & Ko argued that the appraisal results from the previous lawsuit could not serve as evidence of infringement, as significantly lacking reasonableness.  Lee & Ko also carefully orchestrated the progress of each case to ensure that the representatives of Samyang Chemical and Donghee Industrial were not investigated until the Supreme Court ruled on the issue of patent invalidity.  As a result, the IPTAB, the IP High Court and the Supreme Court all ruled that the patent at issue was invalid, and based on this ruling, Lee & Ko secured winning judgments in all related actions, including the preliminary injunction, the main infringement action and the scope confirmation action.  The criminal case also was concluded with the prosecutor finding that there was no suspicion.

Before Lee & Ko’s representation, the situation was particularly unfavorable to the clients, given the IPTAB decision in favor of the patent validity and the appraisal results from a related case indicating patent infringement.  Based on expertise gained from handling various types of patent disputes, however, Lee & Ko reversed the tides and was successful in invalidating the patent.  This case is illustrative of Lee & Ko IP Practice Group’s deep expertise and formidable performance in patent litigation.