Unitalen and Korea Law Firm SHIN & KIM Represented Client Sanhua to Win Second Instance in Patent Court in Korea

November 9, 2021

Summary of the case:

Zhejiang Sanhua Intelligent Controls Co., Ltd. ("Sanhua") was established in 1994. After 27 years of development, Sanhua has formed a development pattern centered on the two major business segments of home appliance refrigeration components and automotive thermal management components. As a leading enterprise in home appliance refrigeration parts, Sanhua has achieved significant economy of scale and long-term stable operation. In the field of electronic expansion valves involved in this overseas lawsuit, currently only 6 companies in the world have achieved mass production, and Sanhua ranks first with about half of the market share.

Sanhua has stable cooperation regarding electronic expansion valve sales with a Korean electronics company. A competitor intended to sell electronic expansion valves of similar structure to this Korean company, and these electronic expansion valves will be installed in air conditioners sold by the Korean electronics company to the Middle East. To win over a commercial order of the Korean electronics company, the competitor filed a petition regarding the patent protection scope determination of the self-produced electronic expansion valve and Sanhua's Korea Patents for Invention No. 1455952 and No. 1478777 in early 2019 to the Korean Intellectual Property Tribunal, claiming that its electronic expansion valve does not fall within the patent right protection scopes of the above-mentioned two Korean inventions of Sanhua. After trial, the Korean Intellectual Property Tribunal determined in the judgment of the first instance that the electronic expansion valve product of the competitor falls within the protection scope of patent No. 1478777, but does not fall within the protection scope of patent No. 1455952. In addition, the competitor also submitted a request for invalidation with the Korean Intellectual Property Tribunal against the Korean Patent for Invention No. 1157746 of Sanhua. After trial by the Korean Intellectual Property Tribunal, the patent was maintained valid entirely.

In response to the two first-instance judgments issued by the Korean Intellectual Property Tribunal, the competitor and Sanhua both appealed to the Patent Court in Korea. In September 2021, the Patent Court in Korea issued two second-instance judgments:

(1) Judgment No. 2020he6866: revoking the judgment (No. 2019dang587) made by the Korean Intellectual Property Tribunal, determining that the invention disclosed in the description and drawings of the competitor falls within the scope of claim 1 of Sanhua's Korea Patent for Invention No. 1455952; the litigation costs shall be borne by the competitor.

(2) Judgment No. 2020he6613: upholding the judgment (No. 2019dang588) made by the Korean Intellectual Property Tribunal, rejecting the appeal of the competitor, and determining that the invention disclosed in the description and drawings of the competitor falls within the scopes of claims 1-4 and 7-9 of Sanhua's Korea Patent for Invention No. 1478777 (equivalent); the litigation costs shall be borne by the competitor.

Typical significance:

Unitalen and SHIN & KIM represented Sanhua in the Korean patent litigation and won an overall victory. This is also one of the few important patent litigation cases where a Chinese company has won an overall victory in the Patent Court in Korea. This case is also of great significance to the global intellectual property protection of Sanhua's electronic expansion valves and other products.

 

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