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Title

Determination of Infringement by Applying Estoppel

Author 

KH

Post Date 

2010-05-14

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I. Trial for Confirmation of Scope of Right of Patent Registration
No. 353229

Patent Court’s Decision No. 2006HEO8774 published on Jul. 11, 2007

1. Gist of the present patented invention

(1) Original claims

Claim 1.

An insulin automatic injector capable of measuring blood sugar in an automatic injector capable of injecting for a long time, comprising:
a blood sugar measurement unit for measuring a blood sugar level, formed in a single body at one side of an injector housing;
a control unit for controlling output of the blood sugar measurement unit and the automatic injector simultaneously; and
a display unit for outputting an injection amount condition of the injector and the measured blood sugar level simultaneously.

Claim 2.

The automatic injector of claim 1 wherein the blood sugar measurement comprises:
a control board for controlling a measurement lamp and converting the measured level through the measurement lamp so as to be perceived by the control unit;
a measurement housing including a measurement lamp opening to receive and reveal the measurement lamp, and an insertion opening to be fitted and connected with a
measurement probe; and
a fixing protrusion elastically installed at the measurement housing, to fix the
measurement probe as fitted and connected.

(2) Patented claims

Claim 1.

An insulin automatic injector capable of measuring blood sugar in an automatic injector capable of injecting for a long time, comprising:
a blood sugar measurement unit (200) for measuring a blood sugar level, formed in a single body at one side of an injector housing (hereinafter, referred to as ‘constituent 1’);
a control unit (170) for controlling output of the blood sugar measurement unit and the automatic injector simultaneously; and

a display unit (124) for outputting an injection amount condition of the injector and the measured blood sugar level simultaneously (hereinafter, referred to as ‘constituent 2’),
wherein the blood sugar measurement unit (200) comprises:
a control board (210) for controlling a measurement lamp (211) and converting the measured level through the measurement lamp so as to be perceived by the control unit;
a measurement housing (223) including a measurement limp opening (221) to receive the measurement lamp to be revealed, and an insertion opening (222) to be fitted and connected with a measurement probe (230); and
a fixing protrusion (224) elastically installed at the measurement housing, to fix the measurement probe as fitted and connected (hereinafter, referred to as ‘constituent 3’).

Claim 2.

(deleted)

Claim 3.

The insulin automatic injector of claim 1, wherein the blood sugar measurement unit (200) is installed at the side of the insulin automatic injector housing (120).

(3) Prosecution history

The plaintiff did not describe the detailed constitution of the blood sugar measurement unit in claim 1 in the original specification attached to the application of the present invention and defined the detailed constitution of the blood sugar measurement unit by an optical method in claim 2 as the dependent claim of claim 1. After that, when the plaintiff received the notice of reasons for rejection stating that the invention described in claims 1 and 3 (another dependent claim referring back to claim 1, which defines the position where the blood sugar measurement unit is installed) has no inventive step, (s)he deleted claim 2 and amended claim 1 to additionally include the detailed constitution of the blood sugar measurement unit defined in claim 2. As the result, the present invention described in claims 1 and 3 was registered.

2. Patent Court’s decision (2006HEO8774)

(1) Criteria for determination

To consider an invention compared with the registered invention as being within the scope of the right of the registered invention, the compared invention shall include the interactional relationship of the constituents of the registered invention as they are. But, even though the compared invention includes a substituted or changed part of the constituent of the patented invention, where the problem solution principle is the same in the two inventions, the compared invention by the substitution achieves the same purpose as the registered invention or has substantially the same acting effect, the substitution is obvious so that it can be easily made by any person skilled in the art, the compared invention falls under the art which can be easily invented by any person skilled in the art from the already publicly known art or the public art at the time of filing the application of the registered invention, or there is no special reason that the substituted constituent(s) of the compared invention is intentionally excluded from the claims through the procedures of filing the application of the registered invention, the substituted constituent of the compared invention is considered as having an equivalent relation to the corresponding constituent of the registered invention and therefore it shall be considered as being within the scope of the right of the registered invention.

Where an applicant or a patentee is considered as intentionally excluding certain constitution from the claims in the process of filing the patent application or of registering the patented invention, the assertion that the invention having the intentionally excluded constitution or a product obtained by working the invention is within the scope of protection of the registered invention and thus it infringes the right of the registered invention is against estoppel and therefore it is not allowed. The question as to whether the constitution is intentionally excluded shall be determined by considering the specification, the opinion raised by an examiner of the Korean Intellectual Property Office during the period from the filing of the application to the grant of the patent, and the intention of the applicant shown in the amendment, argument and the like as submitted.

(2) Decision

Constituent 3 is the constitution of specifically defining the blood sugar measurement unit and it is based on the optical method. A blood sugar measurement unit according to a subject invention for confirmation is based on an electrical and chemical method, and a biosensor strip has the structure in that a lower base, a middle base and an upper base are stacked sequentially, wherein ① the lower base includes a mobility sensing electrode, an actuating electrode coated with an electron transfer medium and oxidase, a biosensor identifying electrode and an electrode connection unit, ② the middle base includes a sample introducing path unit, a vent unit, and a sample introducing unit structured to have an extra space at the point where the sample introducing path unit and the vent unit intersect; and ③ the upper base includes a reference electrode with auxiliary electrode, and an electrode connection unit formed thereunder. The blood sugar measurement unit has the internal constitution comprising: a connector connected to the electrode of the biosensor strip and receiving an electrical signal of a voltage or current value, an amplifier for amplifying the electrical signal, and an AD converter for converting the electrical signal amplified by the amplifier from an analogue signal to a digital signal. As reviewed above, constituent 3 of the registered invention is different from the blood sugar measurement unit of the subject invention for confirmation, in the terms of structure and effects.

Against the above, the plaintiff argues that, ‘constituent 3 and the blood sugar measurement unit are substantially identical with each other (with respect to the principle for solving a problem, the action and the effect), having only a difference, with respect to the method of measuring a blood sugar level, i.e., optical method or electrical and che  

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