The Supreme Court recently held that, in a negative patent scope confirmation trial where a petitioner seeks an adjudicative declaration that its invention does not fall within the scope of a patent claim, the subject matter of adjudication should be limited to the invention presented for review by the petitioner, even though it may differ from what is actually practiced by the petitioner (Case No. 2020Hu11813 rendered on January 12, 2023).

▶The Patented Invention

The petitioner filed a negative patent scope confirmation trial with the Board of Trials against the patentee on May 17, 2019, seeking confirmation that the invention defined and presented for review by the petitioner did not fall within the scope of claim 1 of the patent in dispute.

The invention, defined in claim 1 of the patent, is directed to a device for strengthening pelvic floor muscles comprising a device body provided with a seating means for a user, and two or more low-frequency pulse application electrode pads arranged around a position corresponding to the user’s recessed portion of the pelvic floor muscles on the device body, without making contact with the user’s recessed portion. The non-contact feature of the electrode pads to the user’s recessed portion was added to claim 1 during the prosecution of the patent at issue to overcome an art-based rejection.

▶The Petitioner’s Invention Presented for Adjudication

In the negative patent scope confirmation trial, the invention defined and presented by the petitioner for adjudication was directed to a device for treating urinary incontinence by way of strengthening pelvic floor muscles, comprising a device body provided with a seating means for a user, and a first and second electrode formed on an oval-shaped protrusion disposed in the center of the device body, which protrusion could make contact with the user’s recessed portion of the pelvic floor muscles.

▶Trial Board Decision

During the trial, the petitioner contended that, since its device did not include the non-contact feature of the electrode pads, which was a limitation that was added during the prosecution of the patent at issue, its device did not fall within the scope of claim 1 of the patent. On the other hand, the patentee countered that the petitioner’s actual device being marketed did not have the protrusion; and, therefore, the petition had no merit and should be dismissed.

Nevertheless, the Trial Board ruled that the device as defined and presented by the petitioner for adjudication did not fall within the scope of claim 1, since the protrusion was deliberately excluded from the claim scope.

▶Intellectual Property High Court (formerly Patent Court) Decision

On appeal lodged by the patentee, the Intellectual Property High Court agreed with the Trial Board decision that the invention submitted for adjudication did not fall within the scope of rights of claim 1 of the patent.

▶Supreme Court Decision

On appeal to the Supreme Court, the Highest Court made it clear that the subject matter of adjudication in a negative patent scope confirmation trial should be confined to the specific invention defined and presented by the petitioner, even if the technology actually implemented by the petitioner differed from that presented invention (see also Case Nos. 2007Hu2735 rendered on August 19, 2010 and 2019Hu10081 rendered on September 9, 2019).

▶Impact of the Decision

The decision illustrates the limitation and pitfall of a negative patent scope confirmation trial, often employed by an infringer in an attempt to benefit from a cloak of legitimacy.