República de Corea

The translation does not have any legal effect and the Judiciary of the Republic of Korea does not guarantee the accuracy of the translated text. Please refer to the original decision in Korean for an accurate statement of law.

 

 

PATENT COURT OF KOREA

FIFTH DIVISION

DECISION

 

Case No.:  2015Heo5883 Scope Confirmation (Patent)

 

Plaintiff:  A

 

Defendant:  B

 

Closure of Hearing:  June 8, 2016

 

Date of Decision:  July 8, 2016

 

ORDER

 

1. The Plaintiff's claims are dismissed.

 

2. The trial costs shall be borne by the Plaintiff.

 

PLAINTIFF’S DEMAND

 

The decision of the Intellectual Property Trial and Appeal Board (“IPTAB”) issued on August 21, 2015, in Case No. 2015Dang3488 shall be cancelled.

 

OPINION

 

1. Background Facts

 

A. Plaintiff's patented invention of the subject case (Plaintiff's Exhibit No. 2)

 

1) Title of the Invention: Grass Protection Mat

 

2) Filing date/Registered date/Registration No.: August 9, 2007/April 20, 2010/954978

 

3) Claims

 

Claims 1-4, 6-16, 18-28, 30, 32, 33, 35, and 37 are canceled.

 

Claim 5 (hereinafter, referred to as the "claim 5 invention", and the other inventions of the claims will be referred to in the same manner): A grass protection mat comprising: a body member (10) forming grass passing spaces (12); protruding pillars (20) provided at an upper portion of the body member (10); a lug member (30) formed at a lower portion of the body member (10) (hereinafter, referred to as "constituent element 1"); and a slipping prevention means formed between the protruding pillars and provided as an integrated type plate (110) extending from the body portion to upper portions of the protruding pillars and integrally formed with the protruding pillars and the body member (hereinafter, referred to as "constituent element 2").

 

Claim 17: The grass protection mat according to claim 5, wherein the slipping prevention means is provided as a cut-away type plate (110′) having a center portion that is partially cut away.

 

Claims 29, 31, 34, and 36: descriptions omitted because these claims are not subject to examination

 

4) Summary of the Invention

 

The present invention relates to a grass protection mat capable of protecting grass in a golf course, a grass field, and a park lawn or being used to grow grass, and more particularly, to a grass protection mat having a slipping prevention means that is provided between a protruding pillar and a body member or on an upper portion of the protruding pillar provided on the grass protection mat, which may effectively prevent a person from sliding on the mat when the person passes on the mat, especially, when the mat is constructed on sloped ground on a golf course (Paragraph No. [0011]).

 

According to an aspect of the present invention, there is provided  a grass protection mat comprising: a body member forming a grass passing space; protruding pillars provided at an upper portion of the body member; a lug member formed at a lower portion of the body member; and a slipping prevention means formed between the protruding pillars and provided as an integrated type plate extending from the body portion to upper portions of the protruding pillars and integrally formed with the protruding pillars and the body member (Paragraph No. [0015]).

 

5) Major drawings

 

 

 

B. Invention for review

 

1) Title: Grass Protection Mat

 

2) Detailed description

 

A) Purpose of the invention for review

 

The purpose of the invention for review is to provide a grass protection mat which may support and reinforce protruding pillars thereof even when a load is applied from above the mat and also prevent grass from being damaged as the grass is cut off or pressed by a support wall body.

 

B) Structure of the invention for review

 

A grass protection mat comprises: a body member (110) forming grass passing spaces (112); protruding pillars (120) provided at an upper portion of the body member (110); a lug member (130) formed at a lower portion of the body member (110); and a support wall body (140) indented along a linear or curve line to be lower than the height of the protruding pillars (120) and having an opening portion (142) formed in an upper area thereof, the support wall body (140) connecting the protruding pillars (120) provided at the upper portion of the body member (110) to one another.

 

The support wall body 140 provided to connect the protruding pillars 120 to one another performs a reinforcement function of supporting the protruding pillars 120 not to bend easily even when a stepping pressure of a person or a load of an object is applied onto an upper surface of the mat.

 

The support wall body 140 is formed to have a height lower than the protruding pillars 120. Due to the low height as illustrated in Figures 3 and 4, the opening portion 142 may be indented along a linear or curved line in the upper area of the support wall body 140. A certain opening portion may be formed if the upper portion is indented regardless of a shape.

 

Accordingly, even when a stepping pressure of a person or a load of an object is applied onto the upper surface of the mat, the object and the upper surface of the support wall body 140 do not contact directly each other, thereby forming a certain opening portion. Thus, grass crossing the support wall body may not be damaged by being cut off or pressed by the support wall body.

 

The opening portion 142 opened upwardly, considering that a stud (spike) protrudes from a bottom surface of a shoe (golf shoe), forms an opening portion that is indented deeper than the length of a protruding spike so that grass is not pressed between the spike and the support wall body.

 

C) Effect

 

The invention for review has durability because the protruding pillars are reinforced by being connected to each other by the support wall body so that the protruding pillars 120 may not bend easily even when a stepping pressure of a person or a load of an object is applied onto the mat. Particularly, even when a load is applied, the grass crossing the support wall body may not be damaged by being cut off or pressed by the support wall body and may be safely protected.

 

3) Drawings

 

[Figure 1] Structure of grass protection mat	[Figure 2] Structure showing that grass is protected by the opening portion
[Figure 3] Real image of the invention for review	[Figure 4] Real image of the invention for review

 

C. Prior arts

 

1) Prior art 1 (Defendant's Exhibit No. 4)

 

Prior art 1 relates to a "Grass Protection Mat" disclosed in Korean Utility Model Registration No. 354896 issued on July 5, 2004.

 

2) Prior art 2 (Defendant's Exhibit No. 5-1)

 

Prior art 2 relates to a "Plant Protection Plate with Evaporated Water Restoration Portion Attached thereto" disclosed in Japanese Patent Publication No. hei 7-250574 published on October 3, 1995.

 

3) Prior art 3 (Defendant's Exhibit No. 6-1)

 

Prior art 3 relates to a "Module and Modular Support for Turf Grass and Like Areas" disclosed in US Patent No. 4,111,585 issued on September 5, 1978.

 

4) Prior art 4 (Defendant's Exhibit No. 7-1)

 

Prior art 4 relates to a "Planting Plate with Mat, and Planting Method by Using the Same" disclosed in Japanese Patent Publication No. 2004-248605 published on September 9, 2004.

 

D. History of the IPTAB decision

 

1) The Defendant filed a negative scope confirmation action against the Plaintiff with the IPTAB on June 8, 2015, on the grounds that the invention for review does not fall within the scope of rights of Claims 5 and 17 of the subject case because the invention for review does not include a structure that is the same as or equivalent to the inventions of Claims 5 and 17 of the subject case and moreover because the invention for review corresponds to free to use technology that a person having ordinary skill in the art (hereinafter, referred to as the "PHOSITA") could have easily employed by using prior arts 1 and 2.

 

2) The IPTAB examined this case under No. 2015Dang3488 and rendered a decision admitting the above trial request and ruled that "the invention for review does not include a structure that is the same as or equivalent to the plate 110 extending from the body portion to the upper portions of the protruding pillarsin the constituent element 2 of the claim 5 invention of the subject case; furthermore, in consideration of the prosecution history of the patented invention of the subject case, the structure in the invention for review that the opening portion is formed in the upper area to be indented along a linear or curved line to be lower than the height of the protruding pillars is intentionally excluded from the scope of rights of the claim 5 invention of the subject case; and thus without having to consider whether the invention for review corresponds to the free to use technology, the invention for review does not fall in the scope of rights of the claim 5 invention of the subject case and, since the invention for review does not fall in the scope of rights of the claim 5 invention  of the subject case, the invention for review does not fall in the scope of rights of the claim 17 invention of the subject case, which is an embodiment of the claim 5 invention obtained by limiting the structure of the claim 5 invention."

 

[Factual Basis] Undisputed facts, Plaintiff's Exhibit Nos. 2, 3, and 6, Defendant's Exhibit Nos. 4 to 7 (including sub-numbers, if there is any evidence(s) with sub-numbers), and purport of overall arguments 

 

2. Summary of Arguments by Each Party

 

A. Summary of the Plaintiff' arguments

 

1) The body member, the protruding pillars, and the lug of the invention for review are the same elements of constituent element 1 of the claim 5 invention of the subject case, the support wall body of the invention for review is the same as the slipping prevention means of constituent element 2 in that the support wall body is formed between the protruding pillars and in the upper portion of the body member.  In addition, in relation with the height of constituent element 2, the "upper portion" signifies not the top portion only but also a middle height or higher, and the portion that has been intentionally excluded by the amendment in the prosecution history is merely a middle or lower height, and thus, the support wall body of the invention for review is a structure that is the same as or equivalent to the slipping prevention means of constituent element 2. Accordingly, the invention for review falls in the scope of rights of the claim 5 invention of the subject case. Furthermore, since the invention for review includes the structure that the middle portion is partially cut off which is limited in the claim 17 invention of the subject case, the invention for review falls in the scope of rights of the claim 17 invention of the subject case as well.

 

2) The invention for review is not free to use technology because PHOSITA could have not easily practiced the invention for review from prior arts 1 to 4.

 

3) Therefore, since the invention for review falls in the scope of rights of the claim 5 and 17 inventions of the subject case, the IPTAB decision reaching the opposite conclusion is unjust and should be revoked.

 

B. Summary of the Defendant's arguments

 

1) Regarding constituent element 2 of the claim 5 invention of the subject case, since the "upper portion" signifies a height that is the same as or almost similar to the height of the protruding pillars and the portion not extending to a degree similar to the height of the protruding pillars has been excluded in the prosecution history, the support wall body of the invention for review is a structure that is not the same as or equivalent to the slipping prevention means of constituent element 2.

 

2) Since the invention for review could have been easily practiced by PHOSITA from prior arts 1 to 4, the invention for review corresponds to free to use technology.

 

3) Thus, since the invention for review does not fall in the scope of rights of the claim 5 and 17 inventions of the subject case, the decision reaching the above conclusion is legal.

 

3. Whether the Invention for Review Belongs to the Scope of Rights of Claim 5 and 17 Inventions

 

A. Whether the invention for review belongs to the scope of rights of the claim 5 invention

 

1) Interpretation of the scope of rights regarding the "upper portion" in the claim 5 invention

 

A) Related legal principles

 

The scope of protection of a patented invention should be determined according to the subject matters described in the claims, and a limitation or expansion of the scope of protection based on the detailed description of the invention or drawings is not fundamentally allowed. However, since the technical meaning of the subject matters described in the claims can be accurately understood by referring to the detailed description of the invention or drawings, the subject matters described in the claims should be interpreted in an objective and reasonable manner based on the general meaning of the text and further in consideration of the technical meaning intended by the text while referring to the detailed description of the invention or drawings (see Supreme Court Decision No. 2014Hu2788 rendered on May 14, 2015).

 

B) Interpretation of the "upper portion"

 

(1) According to constituent element 2 of the claim 5 invention of the subject case, the definition of a "slipping prevention means provided as an integrated type plate (110) extending to upper portions of the protruding pillars and integrally formed with the protruding pillars and the body member” means that the integrated type plate provided as the slipping prevention means extends to the height of the "upper portion" of the protruding pillar. However, considering that, no definition is given for the "upper portion" in the specification of the patented invention of the subject case, that the "upper portion" generally signifies a "certain upper portion of an object" (Plaintiff's Exhibit No. 4) and thus it is difficult to definitely define which part of the protruding pillar corresponds to the upper portion, and that while constituent element 2 functionally describes the "slipping prevention means", how high the integrated type plate extends corresponding to the protruding pillar so as to be used as the slipping prevention means is not clearly defined in the claims, the technical meaning intended by the text regarding the "upper portion" of constituent element 2 cannot be understood from the descriptions of the claims, and thus, the detailed description of the invention or drawings should be referred to in the interpretation of the "upper portion".

 

(2) According to the detailed description of the invention and drawings of the subject case, the integrated type plate and the height thereof (the upper portion) provided as the slipping prevention means are as follows.

 

▪ As illustrated in FIG. 5, the slipping prevention means 80, 90, and 100 according to the above-described first to third embodiments are integrally connected between the upper portions of the protruding pillars 20, and preferably a protrusion height D2 of the protruding pillars almost matches an installation height D1 of the slipping prevention means (Paragraph No. [0072]). This is because, when the slipping prevention means is installed to be lower than the protruding pillars, the bottom of a shoe of a person contacts only the protruding pillars and thus a slipping prevention effect is low (Paragraph No. [0073]).

 

[Figure 5]

 

▪ In this connection, as illustrated in FIG. 7B, with regard to the slipping prevention means of the body member and the protruding pillars integrated type plate 110, it is desirable to make the height D2 almost the same as the height D1 of the protruding pillars 20. The reason for this is the same as described above (Paragraph No. [0084]).

 

 

[Figure 7a]                                                         [Figure 7b]

              

 

 

According to the detailed description of the invention and drawings of the patented invention of the subject case as described above, the technical objective of the patented invention of the subject case is to provide a grass protection mat that may effectively prevent, via the slipping prevention means provided between the protruding pillars and the body member or at the upper portions of the protruding pillars, a person passing on the grass protection mat from slipping on the mat, in order to address a problem that, when a conventional grass protection mat is constructed on sloped ground, a person passing on the sloped grass protection mat may slip easily. To achieve the above technical objective, the claim 5 invention of the subject case uses the slipping prevention means extending to the upper portion of the protruding pillar and provided as an integrated type plate integrally formed with the protruding pillars and the body member. To be provided as the slipping prevention means, when the installation height D1 of the integrated type plate is lower than the protrusion height D2 of the protruding pillars, the bottom of a shoe of a person (a spike of a golf shoe) contacts only the protruding pillars so that a slipping prevention effect is low. Accordingly, by matching the installation height D1 of the integrated type plate to be substantially the same as the protrusion height D2 of the protruding pillars, the bottom of a shoe of a person passing on the mat contacts the integrated type plate, so there is a technical effect that the person passing on the mat may be effectively prevented from slipping.

 

(3) Considering text of the claim 5 invention of the subject case, the detailed description of the invention, and the drawings altogether, it is reasonable to interpret that the "upper portion" of constituent element 2 of the claim 5 invention of the subject case should be interpreted as having a height such that the installation height of the integrated type plate is matched to be substantially the same as the protrusion height of the protruding pillars and thus the bottom of a shoe of a person contacts the integrated type plate, for enabling the integrated type plate to function as the slipping prevention means.

 

2) Whether the invention for review belongs to the scope of rights of the claim 5 invention of the subject case based on literal interpretation

 

A) Comparison by each constituent element

Both of the claim 5 invention of the subject case and the invention for review relate to a grass protection mat. Both inventions are compared by each constituent element as shown in the following table.

 

 

B) Comparison determination

 

(1) The constituent element 1 of the claim 5 invention of the subject case and the invention for review are identical to each other in that they both include a body member forming grass passing spaces, protruding pillars provided at an upper portion of the body member, and a lug formed at a lower portion of the body member.

 

(2) Constituent element 2 of the claim 5 invention of the subject case and the support wall body of the invention for review are identical to each other in that both are formed between the protruding pillars and are integrally formed with the protruding pillars and the body member.

However, the "slipping prevention means provided as an integrated type plate" of constituent element 2 has a height extending from the body member to the upper portions of the protruding pillars and, as seen above in the interpretation of the claims regarding the "upper portion", the height of the slipping prevention means almost matches the protrusion height of the protruding pillar so as to extend a height of the integrated type plate to a height at which the bottom of a shoe of a person contacts the integrated type plate. In contrast, the "support wall body" of the invention for review is indented along a linear or curved line to be lower than the height of the protruding pillar, and the opening portion, that is indented deeper than a protruding length of a stud (spike) on the bottom of a shoe (golf shoe), is formed in the upper area of the support wall body so as to prevent grass from being pressed between the spike and the support wall body, which are different from constituent element 2 of the claim 5 invention of the subject case.

 

(3) Therefore, since the invention for review does not include constituent element 2 according to the literal interpretation of the claim 5 invention of the subject case, the invention for review does not belong to the scope of rights of the claim 5 invention of the subject case.

 

3) Whether the principle of prosecution history estoppel is applied

 

A) Related legal principles

 

Whether a certain structure is intentionally excluded from the scope of a claim in the prosecution process of a patented invention, should be determined by considering not only the specification but also the Examiner's comments suggested from filing to grant and the applicant's intention revealed from the amendments and responses submitted during the examination process. In the case of an invention having a scope of rights determined by several claims, unless special circumstances exist, a prosecution history of each claim should be considered separately, and it should be determined which structure is intentionally excluded from the scope of rights of each claim (see Supreme Court Decision no. 2004Da51771 rendered on June 30, 2006).

 

B) Detailed determination

 

(1) In the pending process of the patented invention of the subject case, the Examiner issued a non-final notice of rejection on June 12, 2009, indicating that "the subject application is not patentable because the invention of the subject case could have been easily invented by PHOSITA from the invention disclosed in Korean Utility Model Registration No. 354896 (Prior art 1) and the invention disclosed in Korean Utility Model Registration No. 416783 (Defendant's Exhibit No. 1-2)".

 

(2) The Plaintiff submitted on August 12, 2009, an amendment (Defendant's Exhibit No. 1-3)  and a response (Defendant's Exhibit No. 1-4), but the Examiner made a decision on December 8, 2009, to maintain the rejection decision because the above-mentioned reason for rejection was not cleared by the above amendment (Defendant's Exhibit No. 1-5).

 

(3) Then, the Plaintiff requested on February 8, 2010, an appeal against the Examiner's decision of refusal along with filing of an amendment for reconsideration before appeal for amending the scope of claims to the item "1-A-3") (Defendant's Exhibit No. 1-6) and an appeal brief (Plaintiff's Exhibit No. 7). As a result, the patented invention of the subject case was granted. According to the amendment, in connection with the height of the slipping prevention means provided as the integrated type plate 110, a structure of "extending from the body member to upper portions of the protruding pillars" was added. The response dated August 12, 2009, and the appeal brief include the following descriptions.

 

[Response dated August 12, 2009]

 

▪ ⑤ This is possible because the slipping prevention means of Claims 1, 5, 6, and 22 of the present application is configured by, connecting the protruding pillars on the body member forming the grass passing spaces, between the body members, or across the grass passing spaces, and has a plate shape having a sufficient height or is configured to connect across the upper portions of the protruding pillars having a height. Thus, a slipping prevention effect may be much improved compared to the slipping prevention means or protrusions of Cited documents 1 and 2 in which the slipping prevention means or protrusions are merely protrusions slightly protruding from a surface of a buffer wing or a flat upper plate and sufficient space may not be secured unlike the present invention (Defendant's Exhibit No. 1-4, p. 24),

 

▪ ⑥ In the case of general sports shoes or dress shoes, in addition to the golf shoes, according to the slipping prevention means of the present application, since the sports shoes or dress shoes may be more easily supported by being caught in the slipping prevention means than in Cited documents 1 and 2, the slipping prevention effect is more remarkably enhanced compared to Cited documents 1 and 2 (Defendant's Exhibit No. 1-4, p. 25).

 

[Appeal Brief]

 

▪ The integrated type plate 110, which is the slipping prevention means of the present invention, is integrally formed with the body member 10 and the protruding pillars 20 between the protruding pillars 20 as seen from the reference drawing below. Particularly, since the integrated type plate 110 is formed to extend by a height to the upper portions (near top ends) of the protruding pillars 20, the integrated type plate 110 has a height close to that of the protruding pillars. When the grass protection mat is constructed on the ground, particularly on sloped ground, an effective slipping prevention effect may be achieved (Plaintiff's Exhibit No. 7, p. 12).

 

[Plaintiff's Exhibit No. 7, p. 12, Reference drawing]

 

 

 

▪ The slipping prevention means of an integrated type plate having a height as the protruding pillars of the present invention, as described above, even when constructed on a golf course, which is a place where a grass protection mat is most typically constructed, particularly in a sloped area of tee ground, the spike on the bottom of a golf shoe is supported by being caught by the slipping prevention means of an integrated type plate that is connected with another one. Thus, the slipping prevention means of the present invention provides a very remarkably slipping prevention effect, compared to the above-described Cited document 1 and the Cited document 2 described herein (Plaintiff's Exhibit No. 7, pp. 20-21).

 

(4) In consideration of the above prosecution history of the patented invention of the subject case, since the Plaintiff obtained a patent by limiting "the height of the integrated type plate of the claim 5 invention of the subject case to be the same as the height of the protruding pillars or to a height close to the height of the protruding pillars", the Plaintiff would not claim the scope of rights for the structure in which the height of the integrated type plate is lower than the height of the protruding pillars and the bottom of a shoe does not contact the integrated type plate. Consequently, in consideration of a stud (spike) protruding from the bottom of a shoe (golf shoe) based on the prosecution history estoppel, it is appropriate to view that the Plaintiff intentionally excluded the structure of the invention for review, in which the height of the support wall body is lower than the height of the protruding pillars to form the opening portion indented deeper than the protruding length of the spike, from the scope of rights of the claim 5 invention of the subject case.

 

4) Sub-conclusion

 

Based on the literal interpretation, the invention for review includes constituent element 1 of the claim 5 invention of the subject case as it is, but does not include constituent element 2 of the claim 5 invention of the subject case as it is. Moreover, considering the prosecution history of the patented invention of the subject case, the above partial structure of the invention for review has been intentionally excluded from the scope of rights of the claim 5 invention of the subject case. Therefore, the invention for review does not include a structure that is the same as or equivalent to constituent element 2, and thus it is deemed that the invention for review does not belong to the scope of rights of the claim 5 invention of the subject case.

 

B. Whether the invention for review belongs to the scope of rights of the claim 17 invention of the subject case

 

The claim 17 invention of the subject case is a dependent claim directly citing the claim 5 invention of the subject case, and thus, as described above, since the invention for review belongs to the scope of rights of the claim 5 invention of the subject case, the invention for review does not belong to the scope of rights of the claim 17 invention of the subject case.

 

C. Summary

 

As described above, since the invention for review includes a structure that is the same as or equivalent to constituent element 2, without having to consider whether the invention for review falls in the range of free to use technology, the invention for review does not belong to the scope of rights of the claim 5 and 17 inventions of the subject case.

 

4. Conclusion

 

The trial decision reaching the same conclusion as above was lawful, and thus, the Plaintiff's request for cancelling the trial decision is dismissed for being groundless.

 

Presiding Judge:  Youngjoon OH

Judge:  Dongju KWON

Judge:   Donggyu KIM