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Kim & Chang Successfully Defends Merck's Liquid Crystal Business Against Patent Infringement Action


Kim & Chang's Intellectual Property Practice Group successfully defended the liquid crystal business of Merck KGaA, a German chemical and pharmaceutical company, in a Korean patent infringement lawsuit brought by a Japanese company, "A". 

As a pioneer and frontrunner in the liquid crystal field since Merck first invented liquid crystals in the late 1800s, Merck has continuously developed its know-how and technology to become the leading supplier of liquid crystal mixtures to major display companies worldwide. 

"A", a Japanese competitor, brought a patent infringement action against Merck in 2016 claiming damages and seeking an injunction against the production and sales of related liquid crystal mixtures.

During the court proceedings, the patentee requested court-ordered expert testing of Merck's liquid crystal mixtures delivered to Merck's Korean customer, on the basis that this would help to determine whether Merck's products infringed "A"'s patent in suit. In response, Kim & Chang successfully convinced the Court that no expert testing should be ordered since forcing Merck to disclose information on its liquid crystal compositions or samples would violate trade secrets belonging not only to Merck but to Merck's customers, and that no expert testing was even needed or appropriate until "A"'s patent right was first confirmed to be valid, which was in turn unlikely due to several invalidation grounds against the patent in suit. "A" ultimately voluntarily withdrew the infringement action, which ended the suit and meant that Merck's trade secrets on its liquid crystal compositions were successfully protected.

The defense to "A"'s infringement claim against Merck was focused more on the separate invalidation action Kim & Chang filed against "A"'s patent in suit. The Intellectual Property Trial and Appeal Board (IPTAB) at the first instance decided to invalidate the patent in suit. "A" then filed an appeal of the invalidation decision to the Patent Court, and filed a separate correction action to amend the claims of the patent in suit. 

In response to the correction action, Kim & Chang searched for additional prior art references and argued that "A"'s corrected invention still lacked inventiveness as a selection invention and violated the expanded first-to-file rule. To further bolster Merck's arguments against the validity of "A"'s corrected invention, Kim & Chang searched for a renowned expert in the liquid crystal mixtures field, who then performed independent experiments carefully designed by the Kim & Chang Merck Team. The experimental data were submitted to prove that "A"'s corrected invention had no significant effects. As a result, "A"'s correction action was dismissed.

Thereafter, "A" eventually withdrew the patent infringement action and all the related cases. 

These cases proceeded as part of a global patent dispute over similar liquid crystal mixtures, and the outcomes of these cases were very important to Merck's business in Korea given that the pertinent global display market has been led by Korean companies. The successful resolution of the disputes protecting Merck's liquid crystal business from the Japanese competitor's fierce challenges reflects Kim & Chang's experience and expertise in handling complex global intellectual property litigation.

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#Patent #2021 Issue 3