Representation of Kolmar Korea in Patent Infringement Lawsuit
In a lawsuit where Korea United Pharm. Inc. (the ‘Counterparty’) accused seven pharmaceutical companies, including Kolmar Korea (the ‘Client’) of patent infringement, Yulchon successfully defended the Client and won on grounds of non-infringement, without hearings on invalidity or compensation of damages.
The patents in question were pelargonium sidoides extract (a treatment for acute bronchitis) and the method of extracting calcium silicate at a certain weight ratio. A loss in the case would have resulted in monopolization by the Counterparty of solid formulations using the above ingredient, as well as causing the Client and other defendants to lose their investments in related facilities and ingredients. The patent in question and the Client’s product had identical core ingredients, the only difference being non-core ingredients and the ratio in which the ingredients were compounded. The Client had difficulty proving non-infringement because it could not disclose the specific ingredients, weight ratio or the manufacturing process of its drug (while such information is stated in the Client’s product notice certificate, the said certificate is a trade secret). Yulchon’s IP Group successfully asserted that Client’s product notice certificate should not be disclosed to the Counterparty, a competitor, based on the asserting party’s burden of proving infringement and other legal bases regarding patent scope. Additionally, Yulchon refuted the Counterparty’s claim by analyzing the technical aspects of the Counterparty’s evidence without revealing the Client’s trade secret, namely the product notice certificate. The court agreed with Yulchon and ruled that no infringement was found, regardless of patent validity.