REMEDIES IN PATENT INFRINGEMENT

1. Reevaluating the Injunction System

We have already discussed how the �publicly known or worked invention’ defense and the �lack of inventive step’ defense are effective defenses in temporary injunction trials and permanent injunction motions during patent infringement litigation.

Injunctions are remedial means of protecting exclusive rights such as real rights. Although rights to remove interference and rights to prohibit infringe­ment are not explicitly laid out in the Civil Act or the Copyright Act, the courts have consistently granted satisfactory remedies for infringement on personal rights.^[535] Unless infringement on property rights or personal rights is clear, the courts have denied injunctions against business disruptions^[536] and environ­mental pollution (Yoon 1995, p. 9).^[537] Even in reviewing domestic theories on injunction claims, the majority opinion is that although a legislative action may exist for allowing injunctions in relation to the Monopoly Regulation and Fair Trade Act, there is no need to allow for an injunction as a general remedy for all illegal acts because the Civil Act allows for the right to remove inter­ference, and ample precedent from judgments on personal rights exists (Kim 1999, pp. 22-43).

In situations involving infringement on personal rights, the Supreme Court has allowed the granting of injunctions because personal rights cannot be protected through the mere awarding of monetary damages or reputation restoration dispositions.^[538] Also, because infringement on personal rights tends to be continuous and recurring, unlike one-time illegal acts such as car acci­dents, the benefit and protection of law is only possible through preemptive injunctions.

In the same sense, even if a statute provides for an injunction in a given situation, the court must be able to deny the motion when protecting the inter­est of a patent is not desirable due to the purpose of the law or the public’s interest. Looking closely at the Civil Act’s provisions on property, an owner’s right to property, though exclusive in nature, does not automatically grant the right to remove interference. In cases regarding legal superficies, the owner of a plot of land cannot exercise the right to remove interference against the owner or occupant of a building (removal of building) and can only claim rent (Civil Act, Arts. 305, 306; Provisional Registration Security Act, Arts. 10, 12; Act on Stumpage, Arts. 3, 6).^[540] The Supreme Court, stretching this notion even further, stated that although legal elements of legal superficies are not met, the owner of a plot of land cannot exercise his right to remove interference under the notion of �customary legal superficies.’^[541] The reasoning behind the Civil Act and behind the Supreme Court decision to deprive the owner of the right to remove interference and injunction under legal superficies is not only related to inferring implied consent but also stems from the fact that it is not in the interest of the litigants and the public to do so and is, in fact, more reasonable to allow only for claiming damages through rent.

Although the Patent Act also limits patent rights in a similar way as legal superficies (Patent Act, Arts. 103; 107; 138), it is difficult to state that it is possible to deny an injunction when the requirements for injunction are met. Some argue that injunctions must always be granted because compared to property rights, a patent right is socially beneficial in that it promotes inven­tions (Kieff 2001; Wagner 2003). It is undeniable that the Patent Act limits the court’s powers in judging the legality of an injunction motion. Although the concept of injunction has sprouted from the law of equity and, thus, should, at least in the United States, be subject to flexibility, most CAFC decisions that confirm the existence of infringement have automatically led to granting injunctions.^[542] However, in response to the inherent dangers of abuse of soft­ware patents, the Supreme Court has re-established the principle that the effects on the litigants as well as on the public good must all be considered when ordering an injunction.^[543]

2. Injunction Motions by Patent Trolls

Although eBay v. MercExchange^[544] was significant in that the U.S. Supreme Court reaffirmed the four elements required to issue an injunction, it is unclear whether all injunction requests by a patent troll are to be denied or what type of software patent abuse should be regulated. In other words, there is a need to define a standard that specifically denotes when an injunction is dismissed despite patent infringement. It seems difficult to figure out an appropriate stan­dard which distinguishes patent trolls from universities or private inventors. While universities and private investors are similar to patent trolls in the sense they do not exploit their patent/invention to run a business, universities and private investors need more incentive and more remedies for their inventions than patent trolls who are merely transferees or licensees. Moreover, given the fact that the requirements for injunctions under American and Korean law differ from each other, the U.S.

When an abuse of patent violates the Monopoly Regulation and Fair Trade Act, it is subject to a notification by the Fair Trade Commission and also subjects the abuser to liability for damages. It may also be subject to Adjudication for the Grant of a Nonexclusive License or Trial for Granting a Nonexclusive License under the Patent Act. In all other abuse of patent cases, the injunction must be dismissed. In the past, the Patent Act deemed a faulty patent as an abuse of patent right and ordered compulsory licensing or cancel­lation of the patent right (Patent Act, Art. 52).⁴8 For unknown reasons, the 1973 Patent Act’s abuse of patent right provision has been deleted, but the 1973 provision is evidence of the existence of the abuse of patent doctrine, and can be interpreted as applying to today’s Patent Act.

An abuse of patent right can exist not only in the passive exercise of a patent right but also in an active exercise. An active abuse of patent right occurs when one agrees to a patent licensing agreement with a third party and disrupts the production and business by arguing an illegal extension of the patent right (Patent Act in 1973, Art. 52, clause 6; US Patent Act, 35 USC Sec. 271, d). An important question is what the elements are to constitute an abuse of patent right. Because there are no court findings on this matter, the Fair Trade Commission’s �Guidelines of reviewing undue exercise of intellectual property rights’ to the Monopoly Regulation and Fair Trade Act could serve as a potential standard. Of course, abuse of patent rights is not limited to the examples set out in the Fair Trade Commission’s Guideline, so there are addi­tional cases where the abuse of patent right is determined.

Patent trolls exercising patent rights that lack inventive step in order to stop others from producing goods are considered to abuse such rights as they are exercising rights that do not fall within their scope of protection in order to hinder others from production and business.^{[546] [547] However, considering that it is, in practice, difficult to clearly define the notion of a patent troll, it cannot be presumed an abuse of rights when a patent troll exercises a valid patent right. Therefore, even if a patentee does not engage in direct business activity, but receives license fees from a third party, they cannot automatically be pinned as a patent troll, and their claim to damages and injunctions cannot be seen as an abuse of rights. However, if a patent right is acquired without the purpose of providing commercial services, manufacturing products, or research and development, but for the sole purpose of receiving excessive license fees and damages using the injunction as a threat, abuse of rights may be allowed. However, although using an injunction to hinder one’s production and busi­ness constitutes an abuse of patent right, it is not always an abuse of patent right to claim damages. Therefore, claims for both damages and injunctions must be dismissed for patent rights that lack inventive step, but damages claims for infringement of a valid patent should be accepted.}