On March 16, 2016, the Patent Court published its “Guidelines Regarding Appeals of IP Infringement Actions” (“Guidelines”).
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 forward.
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 examining evidence.
Other Notable Aspects Include:
1. New case management conference procedures (similar to U.S. practice)
- 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 case.
- 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 witnesses.
- 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 Korea.
4. Higher threshold for introducing new arguments or evidence on appeal
- 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.