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| TITLE | Supreme Court Decision 2023Da280358 Decided October 25, 2024 【Technology Royalty, etc.】 [full Text] |
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| Summary | |
| 【Main Issues and Holdings】 [1] Method of interpreting an expression of intent Limitation of the principle of free evaluation of evidence [2] In a case where a patent right holder, when granting a nonexclusive license on the patent right, has a nonfeasance obligation not to grant a nonexclusive license to a third party other than the person who has the right to practice the patent, whether the person who has the right to practice the patent is considered to have exclusive possession of a nonexclusive license (affirmative), and whether this legal doctrine likewise applies to utility model, design, and trademark rights (affirmative) [3] In a case where: (a) Party A, who possesses technological know-how and patent, design, and trademark rights of a natural stone-shaped concrete block product (Sansoo block product), granted Incorporated Company B the right to sublicense to a third party the foregoing technological know-how and patent right, etc. conferred thereupon; (b) Incorporated Company B signed a royalty agreement with Incorporated Company C, under which Company C promised to pay Company B royalties calculated by multiplying the agreed royalty rate by the net sales of the foregoing product, while manufacturing and selling the Sansoo block products using the technical know-how and patent right, etc. so conferred; (c) Company B subsequently notified Company C of the rescission of the agreement on the grounds of default on the payment of royalties, but Company C continued to manufacture and sell the Sansoo block products even after the notification of contract rescission; (d) Company B filed a damages claim against Company C on the grounds of nonpayment of royalties during a contract period and infringement of trade secrets after the termination of the royalty agreement and infringement of the exclusive licenses to use the patent, design, and trademark rights, in addition to a damages claim on the grounds of infringement of a proprietary nonexclusive license combined in parallel therewith, the case holding that the lower court, which held that Company C infringed on Company B’s proprietary nonexclusive license right by readily concluding, without separate deliberation, that Company B was in possession of the “proprietary nonexclusive license of the Sansoo block product,” misapprehended the legal doctrine and thereby erred in its judgment, even though the lower court should have properly exercised the authority to demand elucidation from Company B with regard to what the “proprietary nonexclusive license” exactly refers to, given that the term and scope of the “proprietary nonexclusive license” varies depending on whether it pertains to patent, design, or trademark rights, and based on the accurate definition thereof, examined whether the right, as alleged by Company B, was actually conferred upon from Party A, and determined whether to admit the damages claim [4] Method of calculating a specific damage amount pursuant to Article 110(6) of the Trademark Act in litigation on the act of infringement of a trademark or an exclusive license, where the occurrence of the damage is acknowledged but the amount of the damage is difficult to prove [5] In a case where the creditor seeks payment on a number of damages claims with a different time of occurrence and cause of action against the same debtor by means of a lawsuit, whether the amount sought and amount awarded should be specified on a claim-by-claim basis (affirmative), and whether this likewise applies to a case where the creditor seeks payment on only some of the claims from a number of damages claims (affirmative) | |
