"The outcome of intellectual property (IP) disputes in the United States hinges on how you use the discovery system."
Attorney Park Hwan-seong and foreign attorney Kang Han-gil of Lee & Ko, experts in global IP disputes, said this in an interview with ChosunBiz on the 9th as a key factor for winning global IP disputes.
The U.S. discovery system is decisive in IP litigation because it allows parties to forcibly obtain evidence held by the other side. Whether a patent is infringed or whether a trade secret was leaked intentionally is hard to verify externally, but discovery discloses internal emails, research materials, and decision-making records, revealing the facts.
In this process, the logic and strategy of the lawsuit may change, or the tide may be settled early in many cases. The fact that courts impose strong sanctions for refusing to produce evidence also supports the system's effectiveness.
Discovery is drawing attention as victims of a recent Coupang personal data breach have filed a class-action lawsuit against Coupang's parent company in the United States. The victims plan to use this system to secure key materials such as Coupang headquarters' board meeting minutes and records of security investment decisions.
Park said, "The biggest reason Korean corporations file lawsuits in the United States is the discovery system," adding, "Evidence that would never have been obtained in Korea can be secured in the United States through procedure, and that evidence often determines the direction of the case." Kang also explained, "The discovery system is not just a stage for collecting evidence; it is a mechanism that exposes the structure and weaknesses of the other side's arguments and reshapes litigation strategy itself," and "if used well, you can take complete control of the case." The following is a Q&A with the two attorneys.
─ What are the current trends in patent and trade secret lawsuits?
Attorney Park Hwan-seong (hereafter Park): "In the United States, after slowing following the patent litigation between Samsung Electronics and Apple, filings began to rise again in 2024. In particular, lawsuits over design patents and those brought by non-practicing entities (NPEs) have increased. Because this area is sensitive to the economic cycle, lawsuits tend to increase as the economy recovers. Trade secret suits are also gaining importance as technology advances, and as damages expand, corporations are responding more actively."
Foreign attorney Kang Han-gil (hereafter Kang): "The biggest change in the 2020s is the rapid rise of 'litigation funds' that generate revenue through lawsuits. Startups and small corporations that struggled with expense burdens can now participate, and lawsuits have become feasible even in highly complex technology fields such as semiconductors. Since the federal law was revised to allow civil lawsuits for trade secret misappropriation, related cases have steadily increased, and corporate participation has also risen."
─ Which industries are seeing a surge in patent infringement lawsuits?
Kang: "As artificial intelligence (AI) has begun to generate revenue in earnest, related lawsuits are increasing. The trend is expanding from the existing focus on IT, telecommunications, life sciences, and pharmaceuticals to industries attracting capital, including AI, Virtual Reality (VR), green technologies, and secondary batteries. Ultimately, lawsuits follow the industries where money flows."
─ Are there cases where Korean corporations have used the discovery system in the United States?
Kang: "In the past, disputes among LG and SK, Medytox and Daewoong, and HUGEL in the secondary battery and biopharmaceutical fields were representative trade secret lawsuits brought in the United States. Many plaintiffs make a strategic choice to use U.S. discovery to obtain evidence that is difficult to secure domestically. Recently, the share of U.S. patent lawsuits filed by Korean corporations as plaintiffs has also been increasing."
─ Why go all the way to the United States to file a lawsuit?
Park: "The biggest reason is the discovery system. In Korea, if the other side refuses to produce evidence, it is hard to compel it. Domestic litigation is a 'structure where you fight with only the evidence you have.' Even if there is an order to produce documents, the other side can refuse if it accepts the disadvantage. In contrast, in the United States, you can compel the other side to produce evidence through discovery. Because it is difficult to secure key evidence in Korea, corporations choose U.S. litigation even if it entails expense."
─ Are there cases where discovery flipped the case?
Park: "A representative case involved a U.S. corporation filing a patent suit over a manufacturing method against a Korean corporation. During discovery, materials emerged showing that, through prior acquisition due diligence, the plaintiff already knew the defendant's manufacturing equipment had been produced before the patent at issue was registered. This suggested the plaintiff filed suit despite knowing of noninfringement. Based on this, the defendant warned of sanctions for bad-faith litigation, and the plaintiff immediately agreed to settle, ending the dispute without damages."
Kang: "Conversely, there are cases where the plaintiff's logic collapsed through discovery. The dispute between Medytox and HUGEL is a representative example. Medytox claimed the botulinum toxin strain was a trade secret and sued, alleging HUGEL stole it to make products. The key issue was whether the two companies' strains shared the same genetic mutation. Analysis showed the two strains had different genetic mutations. As the facts were confirmed through discovery, the entire litigation strategy collapsed."
─ What about discussions on introducing a Korean-style discovery?
Park: "Korea is trying to introduce an 'expert fact-finding system.' An expert checks materials at a designated time and place, but there are limits to securing large volumes of evidence. When you don't know what materials the other side has or where they are hidden, effective investigation is difficult. Ultimately, unless the structure imposes a compelling duty on the defendant to produce evidence, like U.S. discovery, there are limits to turning the tide in real disputes."
Kang: "In the United States, parties secure evidence through various means such as written interrogatories, requests for production, depositions, and requests for admission. In a typical U.S. case, you grasp the case structure and the other side's arguments through written interrogatories and secure core technical and evidentiary materials through document production. You can also view depositions as obtaining confirming testimony on the evidence secured."
Among these, requests for production carry the greatest burden. Because they demand submission of all documents, emails, and reports related to the matter, the volume is massive. The review and production process also takes considerable time and expense. However, this is the most powerful means to secure key evidence. It is an essential step to proceed to depositions. Personally, I question whether a system where evidence production is not compelled can truly be called 'discovery.'"
─ What should Korean corporations prepare for in U.S. IP disputes?
Park: "Pre-dispute management is key. While I cannot name the corporation, there was a case where a Korean chemical corporation faced off against a global chemical corporation in a patent dispute and lost a defense tool due to translation errors in foreign patents. The Korean patent described 'a structure where A is attached to B,' but in the foreign patent, translation changed it to 'a structure where B is attached to A,' altering the technical content.
If you file foreign patents as a formality, they will be useless at critical moments. To both attack and defend in the global market, it is essential to file foreign patents accurately and precisely, even if it entails expense. Corporations must also establish systems to manage former employees and corporate secrets and internal risk materials to protect trade secrets."
Kang: "Internal controls to block the inflow of external confidential information are important, not just preventing technology leaks. A representative case is Apple's 2022 trade secret lawsuit against the startup Rivos. Rivos had internal, clearly defined prohibitions and procedures to prevent former Apple employees from bringing confidential information into the company. The court, based on this, found that Rivos did not intentionally acquire trade secrets. In an environment with frequent movement of technical talent, how clearly a corporation designs its internal control standards can determine the direction of a dispute."