On March 16, 2016, the Patent Court published its
"Guidelines Regarding Appeals of IP Infringement Actions"
Since January 1, 2016, the Patent Court has had jurisdiction
over most appellate IP infringement cases in Korea, in addition to
invalidity cases, which it already heard. As a result, the
Guidelines essentially articulate specific procedures to be
followed in most appellate IP cases in Korea going
The Guidelines also provide rules for negotiating procedural
issues concerning appeals of IP infringement cases. For example,
they designate (i) deadlines for submitting claims and defenses,
(ii) procedures for conducting argument sessions (including
hearings for each issue), and (iii) methods for requesting and
Other Notable Aspects Include:
1. New case management conference procedures (similar to U.S.
The Guidelines establish a "Case
Management Video Conference" procedure, similar to case
management conferences used in U.S. federal district courts, which
allows the court to discuss and negotiate various procedural issues
with the parties.
Specific procedural issues include:
i) the dates and number of hearings, and the issues to be discussed
at each hearing; ii) deadlines for submitting claims and evidence;
iii) whether there is a need for evidence that requires time to
prepare (e.g., expert testimony or testing), and any relevant
deadlines; iv) whether the parties will utilize technical
presentations to explain any relevant technologies; v) whether to
refer the case to mediation; and vi) any other procedures that may
be helpful for confirming and organizing the issues of the
Under the Guidelines, the court can
then issue a "Preparation Order for Procedural Matters,"
similar to a U.S. scheduling order.
Potential Impact: Since the Guidelines do not
outline any specific sanctions or penalties for failure to follow
the deadlines prescribed in a preparation order, it remains to be
seen how the Patent Court will utilize such orders.
2. Specific issues can be heard on different dates
The Guidelines also allow the court
to set up separate dates for pleading different issues where: i) a
case includes several claims that are consolidated, or involves
multiple issues, which need to be heard separately; ii) a case
requires a hearing on the interpretation of the claims first, as
there is a dispute over interpretation affecting other issues in
the case; or iii) there is some other reason that requires issues
to be heard separately.
Potential Impact: It may become more common to
hold a separate hearing in patent cases to determine the meaning of
patent claims, as with Markman hearings in the U.S.
3. Formal expert witness procedures
The Guidelines specify new procedures
for qualifying and admitting the testimony of expert
Features of these procedures include:
i) when moving for the admission of expert witness, the party must
include a statement showing the expert's expertise and
objectivity; ii) the court may issue an order specifying procedural
matters necessary for the examination of the expert witness (e.g.,
setting a submission deadline for a witness affidavit, setting the
subject matter for a particular expert examination, setting time
limits on witness examination, and setting deadlines for submitting
witness impeachment arguments and evidence); and iii) direct
examination should not go beyond what is included in the
corresponding expert affidavit.
Potential Impact: The new rules may encourage
greater use of expert witnesses in patent litigations in
4. Higher threshold for introducing new arguments or evidence
Previously, the Patent Court would
generally accept new arguments and evidence even if they were
presented for the first time on appeal.
Now under the Guidelines, parties
seeking to introduce new arguments or evidence on appeal must
provide reasons why such arguments or evidence could not have been
presented during the lower court proceedings.
Potential Impact: This requirement is expected to encourage
parties to develop and present their arguments and evidence at the
first instance trial level, rather than relying on late disclosures
for strategic or other reasons.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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