Litigation Cases Represented by KASAN

- Pfizer Inc. v. Ahn-Gook, a Korean Pharmaceutical Company
Kasan IP and Law Firm successfully defended a Korean pharmaceutical company against allegations of infringement of a patent relating to Pfizer’s blockbuster medicine Norvasc® in preliminary injunction and permanent injunction infringement litigation, and successfully represented the Korean company in invalidation proceedings, trial to confirm the scope of a patent right and appeals against the trial decisions before the Korean Patent Court and the Supreme Court.

- Tokyo Electron Limited v. IPS, a Korean semiconductor equipment company
We successfully represented a Korean semiconductor manufacturing equipment company in patent infringement litigation before a civil court, invalidation trials before the IPT in KIPO, appeals against the trial decision before the Korean Patent Court. Also we successfully represented our client in criminal prosecution proceedings relating to trade secret theft allegation against TEL.

- Gilead v. Daewoong, a Korean pharmaceutical company
Our firm successfully defended a Korean pharmaceutical company against allegations of infringement of a patent relating to Gilead’s blockbuster drug Hepsera®, in preliminary injunction case, patent infringement litigation, invalidation trials before the IPT in KIPO and appeal against the trial decision.

- Konami v. a Korean game company 
The firm successfully defended a Korean game company in copyright and trademark infringement litigations and criminal prosecution cases, relating to Konami’s famous characters and trademarks.

- KEC, a Korean electronics company v. ASE
We defended ASE against a Korean electronics company in criminal prosecution and litigation relating to theft of trade secret involving semiconductor packaging technologies.

- P&G v. Wooshin, a Korean pharmaceutical company
We successfully defended a Korean generic company in invalidation trial, trial to confirm the scope of a patent and appeal against the trial decisions before the Korean Patent Court and the Supreme Court relating to developing and marketing of a generic version of P&G’s patented medicine Risedronate Sodium for treating osteoporosis.

- ALCON v. Hanlim, a Korean pharmaceutical company
Kasan successfully represented a Korean generic company in invalidation trial and appeal against the trial decision, relating to developing and marketing of a generic version of ALCON’s patented medicine Patanol® for treating allergic conjunctivitis.

- INNOMTEK v. CDM Bridge
The firm successfully represented INNOMTEK in infringement litigation and preliminary injunction cases involving Bluetooth and USB driver technologies.

- TRY Brands v. a personal business owner
We successfully represented TRY Brands in trademark infringement litigation involving a well-known trademark for clothing.

- Shinwha v. Mirae 
We represented Shinwha in patent infringement litigation and invalidation trial, relating to a patent on diffusion film for LCD.

- Dash v. a Korean consumer goods company
Kasan successfully defended a Korean consumer goods company against allegations of infringement of a patent relating to household goods in preliminary injunction.

- Sports TOTO v. a personal business owner
We successfully represented Sports TOTO in patent infringement litigation, invalidation trial and appeal for the trial decision against a personal business owner.

- Wonik, a Korean semiconductor equipment company v. a former researcher of the company
The firm successfully represented a Korean semiconductor equipment company in a trade secret theft case against a former researcher of the company, throughout criminal prosecution, preliminary injunction and infringement litigation.

- Ace Tech, a Korean electronics company v. Hirose Korea, an electronics joint venture between a Korean company and a Japanese company
Kasan IP and Law Firm successfully represented an electronics joint venture between a Korean company and a Japanese company in a trade secret theft case involving mobile antenna technology against Ace Tech throughout criminal prosecution, preliminary injunction and litigation for damages.

- A Korean construction and engineering company “S” v. a Korean construction and engineering company “I”
The firm successfully represented a Korean construction and engineering company “S” in patent disputes and disputes relating to “New Excellent Technology” certification from Ministry of Land, Infrastructure and Transport.

- National Health Insurance Corporation v. Seoul National University
We successfully defended Seoul National University in insurance benefits refund litigation against National Health Insurance Corporation.

- SK Chemical, a Korean pharmaceutical company v. Dongkuk, a Korean pharmaceutical company
We successfully defended Dongkuk, a Korean pharmaceutical company in patent infringement litigations, trademark infringement litigation, invalidation trial and trial to confirm the scope of a patent before the IPT in KIPO relating to a patented drug of a combination of existing two drugs.

- National Health Insurance Corporation v. Kyungbo, a Korean pharmaceutical company
The firm successfully defended a Korean pharmaceutical company in pharmaceutical expenditure refund litigation, relating to active pharmaceutical ingredients exemption provision.

- Daewoong, a Korean metal working company v. a personal business owner
We successfully represented a Korean metalworking company in patent infringement litigation, invalidation trial and appeal for the trial decision, against a personal business owner.

- Choistech, a Korean electronics startup v. a Korean electronics company
Kasan successfully represented Choistech, a Korean small electronics company in a trade secret theft case relating to electronic accessories for iPhone by obtaining injunctive relief against a Korean electronics company.

- Oy Ajat v. Vatech, a Korean medical device company
We successfully represented a Finnish medical device company Oy Ajat in patent infringement litigation, invalidation trial, post-grant amendment trial and appeal against the trial decisions, relating to a dental instrument.

- Flowmaster Korea v. a Korean software company
Kasan successfully represented Flowmaster Korea, a subsidiary of American software company Flowmaster Inc., in a trade secret theft case relating to computational fluid dynamics simulation software, against a Korean software company.

- Saerom v. a Korean cable TV company 
We successfully represented Saerom in design right infringement litigation and related criminal prosecution against a Korean cable TV company.

 

Work Experience

- Kasan IP and Law Firm successfully advised SL, a Korean automotive parts supplier for GM, Hyundai and Kia, on the strategies to settle IP and licensing disputes related to automotive brake system against a Spanish automotive parts supplier.

- The firm advised a Korean software company on trademark, trade name, matters related to setting up franchise business operations and legal disputes with franchisees.

- We advised Ahn-Gook, a Korean pharmaceutical company on licensing trademark to a Vietnamese pharmaceutical company and matters related to international arbitration.

- The firm has advised Lie Sangbong, a famous designer and a Korean clothing brand on licensing and enforcement of the company’s design rights, trademarks and patents.

- We advised a bio venture company on a wide range of matters including Pharmaceutical Affairs Act, Medical Service Act, legal protection of technology and IP licensing and strategies.

- Kasan advised a Korean fabless semiconductor company on matters relating to trade secret theft and covenant-not-to-compete of retired researchers.

- We have advised healthcare, medical device and u-healthcare companies on matters relating to standard-essential patents.

- The firm has advised a famous designer brand regarding legal protection of copyright and design right, brand licensing, setting up international business and strategy against unauthorized copying.

- The firm advised a Korean pharmaceutical company on obtaining import drug license from SFDA China.

- We have advised smart grid companies on patenting strategies.

- Kasan advised a Korean set-top box manufacturer on establishing counterstrategies to international patent disputes and provided a patent map for set-top box related technologies.

- Kasan advised a Korean electronics company on drafting co-development contract with an American electronics company.

- The firm has advised a Korean metalworking company on IP strategy.

- We have advised a Korean construction and engineering company on matters relating to “New Excellent Technology” certification from Ministry of Land, Infrastructure and Transport.

- The firm has advised a Korean clothing company on drafting advertising contracts with celebrities.

- We advised a Korean cosmetics, dietary supplement and functional food company on Fair Labeling an Advertising Act, Fair Trade Act, Pharmaceutical Affairs Act and Health Functional Food Act.

Clients Represented by KASAN

Samsung Electronics

• Semiconductor Division
• Digital Appliance Division
• Mobile Display Division

                          

Other Companies within Samsung Group

• Samsung Advanced Institute of Technology
• Samsung Heavy Industries
• Techwin
• Samsung Electro-Mechanics
• SDI
• Cheil Industries
• Semes

Research Institutes and Universities

• Electronics and Telecommunications Research Institute (ETRI)
• Center of Nanostructured Materials Technology (CNMT)
• Korea Institute of Materials Science, Changwon
• Gwangju Institute of Science and Technology
• Yonsei University
• Chungang University
• Soongsil University
• Hanyang University
• Seoul National University
• Kyungpook National University
• Jeju National University
• Gangneung-Wonju National University

• POSCO
• Mando Machinery
• KT
• SL
• Wonik IPS
• Hana Micron
• Shinwha Intertek
• Partron
• Hirose Korea
• Oy AJAT
• Daewoong Pharmaceutical
• Hanlim Pharmaceutical
• Korea Prime Pharmaceutical
• Wooshin Medics
• Lie Sang Bong
• Egoist
• InnoMTek
• Ace Technology
• Sports TOTO

Litigation Agent Lacks the Standing to Sue for Infringement Lawsuit in Korea

Like SPH decision in USA, the same or similar rule is applicable in Korea too. Under Korean law, a licensee lacks the standing to bring an infringement lawsuit in case the licensee is just a litigation agent rather than a real licensee. Because the SPH decision of an American court is interesting to license practitioners, the points are summarized as follows:

1.      Facts

The patentee is a national research institute, Electronics and Telecommunications Research Institute (“ETRI”) and granted an exclusive patent license to SPH, a Korean-based entity. SPH then transferred to SPH America, LLC (“SPH America”) rights under the license to use the licensed patents, grant sublicenses to third parties, and to bring infringement actions.

SPH America sued Huawei in USA but the American court dismissed the case, finding that SPH America does not have standing to sue for infringement of the patents.

Under the agreements, the title to the patents remained with ETRI, and SPH America was required to receive the consent of ETRI before transferring any of its rights or obligations. The license agreement also required SPH America to use its best efforts to make licensing and litigation decisions that were in the best interest of ETRI, though SPH was responsible for all litigation costs. Large guaranteed minimum payments were required yearly if the proceeds from royalties and litigation proceeds did not meet the minimums. And all the license rights were to revert to ETRI if SPH America breached the contract.

2.      Court Decision in USA

The American court found that the license agreement create was a relationship where SPH America was an agent of ETRI for licensing and litigation in USA. The agreement did not transfer substantial ownership of the patents to SPH America.

Furth ETRI’s management of the negotiation without any direction or input from SPH America with Samsung also showed that SPH America did not actually have substantial rights in the patents.

The court found that despite the labels used in the agreement, SPH America was not an exclusive licensee, but merely ETRI’s agent to enter into licenses and litigate on its behalf. This “hunting license,” did not grant SPH America a proprietary interest or exclusive license in the patents.

3.      Comments on Practical Point

The same or similar rule explained in the SPH decision of an American court shall be applicable in Korea, too. Despite of a license agreement, in case the licensee is regarded as a litigation agent rather than a real licensee, the licensee lacks the standing to bring an infringement lawsuit in Korea.