Kim & Chang’s Intellectual Property Practice successfully defended the liquid crystal business of Merck KGaA, a German chemical and pharmaceutical company, in a Korean patent infringement lawsuit brought by a Japanese company. 

As a pioneer and frontrunner in the liquid crystal field since Merck first invented liquid crystals in the late 1800s, Merck has continuously developed its know-how and technology to become the leading supplier of liquid crystal mixtures to major display companies worldwide.

In 2016, a Japanese competitor (the “Company”) brought a patent infringement action against Merck, claiming damages and seeking an injunction against the production and sales of related liquid crystal mixtures.

During the court proceedings, the Company, as the patentee, requested court-ordered expert testing of Merck’s liquid crystal mixtures delivered to Merck’s Korean customers, on the basis that this would help to determine whether Merck’s products infringed the Company’s patent in suit.  In response, Kim & Chang successfully convinced the court that no expert testing should be ordered since forcing Merck to disclose information on its liquid crystal compositions or samples would violate trade secrets belonging not only to Merck but to Merck’s customers, and that no expert testing was even needed or appropriate until the Company’s patent right was first confirmed to be valid, which was in turn unlikely due to several invalidation grounds against the patent in suit.  The Company ultimately voluntarily withdrew the infringement action, which ended the suit and meant that Merck’s trade secrets on its liquid crystal compositions were successfully protected.

The defense to the infringement claim against Merck was focused more on the separate invalidation action we filed against the Company’s patent in suit.  The Intellectual Property Trial and Appeal Board (IPTAB) at the first instance decided to invalidate the patent in suit.  The Company then filed an appeal of the invalidation decision to the Patent Court, and filed a separate correction action to amend the claims of the patent in suit.

In response to the correction action, we searched for additional prior art references and argued that the Company’s corrected invention still lacked inventiveness as a selection invention and violated the expanded first-to-file rule.  To further bolster Merck’s arguments against the validity of the  corrected invention, we searched for a renowned expert in the liquid crystal mixtures field, who then performed independent experiments carefully designed by our team.  The experimental data were submitted to prove that the  corrected invention had no significant effects.  As a result, the correction action was dismissed.

Thereafter, the Company eventually withdrew the patent infringement action and all related cases.

As these cases proceeded as part of a global patent dispute over similar liquid crystal mixtures, the outcomes were very important to Merck’s business in Korea given that the pertinent global display market has been led by Korean companies.  The successful resolution of the disputes protecting Merck’s liquid crystal business from the Japanese competitor’s fierce challenges reflects our experience and expertise in handling complex global intellectual property litigation.