Toss, which is in a patent infringement lawsuit with Korea Information & Communication (KICC), said it would "pay royalties to KICC if the court recognizes Toss's patent infringement." KICC claims that Toss infringed on its patent. In a lawsuit disputing whether patent rights were infringed, signaling a willingness to pay royalties instead of asserting "there is no patent infringement" is unusual.
According to ChosunBiz's reporting compiled on the 29th, Toss wrote in a preparatory brief submitted to the Seoul Central District Court that "if the creditor's (KICC) patent is valid and the creditors exercise their patent rights (according to the court's determination), we are willing to pay reasonable and non-discriminatory royalties."
In Oct. last year, KICC filed for an injunction with the Seoul Central District Court to "halt the production and sale of Toss's payment device," alleging patent infringement. KICC claims that Toss's payment device copied the designs of its two patents (electrostatic discharge prevention device and card information encryption device) and is asserting patent infringement.
In the injunction proceedings, the court mainly looks at whether the production and sale of Toss's payment device harms KICC's rights and property. The court's substantive determination on whether there is patent infringement begins with the main suit, which follows the injunction proceedings.
Because of this, at the injunction stage of patent-related lawsuits, the position usually is, "We will contest the substantive patent infringement in the main suit." But Toss took the position that it is willing to pay royalties if it loses, instead of saying it would contest whether there was patent infringement.
A lawyer specializing in patent litigation said, "The willingness to pay royalties carries more meaning than the stock phrase that 'we respect the court's decision.' It appears to be using a workaround in case it loses in a fight over whether it committed patent infringement." Toss's preparatory brief submitted to the court reportedly did not include arguments rebutting whether patent rights were infringed.
In two hearings held so far, Toss reportedly advanced the position that "the patent itself is invalid" instead of arguing there was no patent infringement. Toss argued that "the technology KICC claims is a patent is something any developer with ordinary technical skill could create," and that "the issue is not whether there is patent infringement but the validity of the patent itself."
On the 16th, Toss also filed a petition with the Intellectual Property Trial and Appeal Board to confirm the invalidation of KICC's patent. A Toss official said, "As this is in litigation, we cannot discuss details."
For this lawsuit, Toss retained Kim & Chang attorneys Jang Deok-soon (Judicial Research and Training Institute Class 14) and Jang Hyun-jin (Class 33). Attorney Jang Deok-soon served as an advisor on intellectual property rights to the Trade Commission, head of the intellectual property training institute at the Seoul Bar Association, and is currently a director at the Korea Institute of Intellectual Property (KIIP). Attorney Jang Hyun-jin served at the Seoul Central District Court, the Seoul High Court, and the Intellectual Property High Court, and since 2019 has handled numerous intellectual property lawsuits at Kim & Chang.