Kim & Chang’s Intellectual Property Practice recently secured an important court decision on behalf of a global chemical company patentee granting an injunction and damages for patent infringement against a defendant company that had been illegally importing raw materials that infringed three of the patentee’s crystalline form patents, and then manufactured and sold finished agrochemical products in Korea using those raw materials.

The patentee had developed a number of new crystalline forms of certain conventional agrochemical substances that significantly enhanced both the usability and efficacy of these substances, and obtained three patents relating to these crystalline forms in Korea in 2012 and 2013 (the “Subject Patents”). The patentee has sold agrochemicals utilizing these crystalline forms worldwide, including in Korea. For many years, the defendant had been importing agrochemical raw materials that infringed the Subject Patents into Korea, manufacturing agrochemical products from these materials, and then selling them in Korea. The patentee confirmed that the infringing raw materials were actually used in the defendant’s products, and sent a warning letter to the defendant to cease infringing the Subject Patents. However, the defendant denied the infringement and continued to sell its products, leading the patentee to file an infringement action seeking damages and an injunction at the Seoul Central District Court.

Defendants in Korean infringement cases (including the defendant at issue) typically respond by filing an action to invalidate the patent at the Intellectual Property Trial and Appeal Board (the “IPTAB”), forcing the validity issue to be resolved before the infringement case can move forward. The IPTAB accordingly issued a ruling in favor of the defendant and invalidating those patents. However, our firm successfully appealed the IPTAB invalidation decision to the Intellectual Property High Court (the “IP High Court”), which overturned the invalidation decision, and the Supreme Court ultimately affirmed the validity of the Subject Patents. This allowed the patentee’s infringement action to move forward, and the District Court finally assessed whether the Defendant had indeed infringed the Subject Patents.

One difficulty was that agrochemical registration documents or product labels in Korea identify the active ingredient but not the specific crystalline form of the ingredient, so proof that the defendant’s agrochemical products contained the claimed crystalline forms was critical. Our firm’s pharmaceutical crystallography expert submitted a persuasive expert statement indicating that the analysis of the defendant’s products confirmed the presence of the claimed crystalline forms, and the Court ultimately recognized patent infringement based on the defendant’s failure to adequately disclose information about its own product in the litigation (Article 126-2 (1) of the Korean Patent Act (the “KPA”)). Our firm also submitted document production order requests directed to the defendant, the customs office and the tax office, and successfully obtained the defendant’s financial records and importation details of the raw materials, which allowed accurate calculation of damages and resulted in a significant award.

The determination of infringement in this case was significant since it is commonly difficult in Korean cases not only to establish infringement through expert testimony rather than direct evidence, but also to obtain significant damages awards due to the difficulty in gathering relevant damages-related evidence through established Korean procedures, since there have been cases where the Korean courts have not actively enforced Article 126-2 (1) of the KPA, which theoretically compels an alleged infringer to come forward with some evidence of the product or process it is actually using and why the product/process is not infringing. This decision establishes a positive precedent that is likely to be helpful for similar infringement situations in the future.