1.

Introduction

In recent years, Korea has seen a noticeable increase in patent enforcement activities initiated by non-practicing entities (NPEs). Against this backdrop, Kim & Chang successfully represented Alibaba Group in a patent infringement action in Korea initiated by an Asia-based NPE, ultimately achieving a decisive outcome by strategically coordinating concurrent proceedings. The case highlights our ability to manage complex cross-border patent disputes while safeguarding the client’s know-how in connection with the accused product.
 

2.

Procedural Strategy and Multi-Front Proceedings

Immediately after the NPE initiated the patent infringement action in Korea, we conducted a focused prior art search and analysis and promptly filed an invalidation action against the asserted patent before the Intellectual Property Trial and Appeal Board (the “IPTAB”).

Recognizing the procedural urgency of the parallel infringement litigation, our firm further applied for expedited review of the invalidation action. As a result, the IPTAB issued an invalidation decision within approximately four months, significantly accelerating the resolution of the core patent dispute.

Subsequently, the NPE filed an appeal challenging the invalidation decision with the IP High Court. Concurrently, the NPE filed a correction action with the IPTAB. Since correction actions in Korea proceed on an ex parte basis, we actively submitted relevant materials and technical arguments as an interested third party. These submissions contributed to the IPTAB’s dismissal of the correction action.

While the NPE later pursued an appeal of the correction action decision, the firm strategically advanced the invalidation appeal proceedings and secured a favorable judgment affirming the invalidation decision prior to any appellate determination on the correction action. The NPE elected not to pursue further appeals, rendering the patent conclusively invalid.
 

3.

 Defense of the Infringement Action

In the underlying infringement litigation, our firm adopted a comprehensive procedural defense strategy. This included raising jurisdictional arguments concerning the Korean court’s jurisdiction over the Chinese defendant, as well as contesting the plaintiff’s attempts to add additional defendants by challenging the defendant’s standing and eligibility.

In addition, given the plaintiff’s foreign status, our firm applied to the court for an order requiring the provision of security for litigation costs. These measures served to ensure procedural discipline while providing additional time pending the outcome of the invalidation proceedings.

Throughout the litigation proceedings, our firm carefully balanced litigation strategy with the client’s commercial interests. Despite the plaintiff’s extensive requests for evidentiary disclosure, the defense was structured to minimize the exposure of the client’s know-how while maintaining procedural compliance.

Following the confirmation of patent invalidity, the NPE ultimately withdrew the infringement action, bringing the dispute to a successful resolution in favor of the client.