Attorneys Jeon Ha-yun and Kang I-gang of Lee & Ko met with ChosunBiz in Sogong-dong, Jung-gu, Seoul, on the 11th and explained that the patent dispute between Japanese semiconductor equipment company A and domestic company B has this meaning for the domestic equipment industry.
In 2024, A sued, claiming that B's atomic layer deposition (ALD) equipment infringed four of its patents. ▲ A "gas supply patent" on the order of putting in and removing gas ▲ A "nozzle arrangement patent" on the positions of process and inert gas nozzles ▲ A "plasma electrode patent" on the structure of plasma-generating electrodes ▲ An "equipment layout patent" on arranging reaction chambers and other parts to secure maintenance space.
Representing domestic company B, Lee & Ko argued noninfringement and simultaneously filed invalidation trials for all four. In this case, a key issue was how much of its equipment structure and process recipes B had to disclose to the competitor. A argued that under the Patent Act at the time, including the "duty to present specific modes of act," B had to specify the structure and operation of the equipment in detail.
Lee & Ko said that during the invalidation proceedings, A repeatedly narrowed and amended the claim scope, which kept changing the corresponding equipment configuration, and accordingly the timing of demands for B's technical data submissions was also delayed. For an advanced equipment company, it is important not only to win the case but also to reduce the risk of exposing core technology to competitors.
Rulings on the four patents are currently split. The gas supply and nozzle arrangement patents have reached the Intellectual Property High Court but are not final, and the equipment layout patent is being contested at the Intellectual Property High Court. The plasma electrode patent was found valid by the Intellectual Property Trial and Appeal Board. All infringement suits on the merits are ongoing. The following is a Q&A with Attorneys Jeon and Kang.
―What is the significance of this case?
(Attorney Jeon Ha-yun) "It is significant that a Japanese company filed suit against a Korean competitor. In the process, we are defending by contesting the patents' validity."
(Attorney Kang I-gang) "It is rare to bring four patents at once. As Korea's semiconductor industry grows and equipment companies increase overseas exports, the likelihood of becoming a target of patent attacks is also rising."
―Did the invalidation trial also have the effect of delaying disclosure of technical information?
(Jeon) "An invalidation trial is a conventional defense in a patent infringement case. We expected the infringement court to wait until the invalidation process was sorted out, and it was effective to some extent. When the other side amends the claim scope, the infringement assertions must be restructured accordingly. It was not filed solely to delay disclosure from the start, but it ended up having that effect."
(Kang) "Amending the claim scope also means it is hard to maintain the existing scope of rights as is. There is meaning in having induced amendments that narrowed the scope of rights, and furthermore we obtained invalidity findings for some patents."
―How did you contest the gas supply patent?
(Kang) "The phenomenon that appears when gas is introduced at a specific temperature is a naturally occurring chemical phenomenon, and we argued it is improper to monopolize that by patent. To prove this, we searched a great many related papers. It was also important to do a kind of 'translation' work—unpacking complex papers so the court could understand them easily."
―What about the nozzle arrangement patent?
(Jeon) "We found materials through internet and patent searches, and we also received materials from B's in-house engineers. Each time the other side amended the claim scope, we re-investigated prior art tailored to the newly added features."
Prior art is existing technology that was already disclosed before the patent application and is key material for determining inventiveness by examining whether the patent can be easily derived from existing technology. Lee & Ko assigned attorneys and patent attorneys with majors in chemistry for the gas supply patent and in electrical, electronic, and mechanical fields for patents related to equipment structure. B's engineers and legal and IP teams also joined in technology analysis and litigation response.
―The plasma electrode patent was found valid.
(Jeon) "It was more technically complex than the other patents, and A significantly reduced the claim scope through multiple amendments. The characteristics of the patent also changed a lot. We are considering whether to contest further, but we think it is meaningful in itself that we narrowed the scope of rights through the invalidation trial."
―If a Korean-style discovery system is introduced?
(Jeon) "I understand the need to make evidence collection easier. However, in the United States, attorney-client privilege and protective orders, and mechanisms that allow only representatives rather than the parties to review materials, work together. If Korea also makes evidence collection easier, trade secret protection systems must be strengthened in tandem to keep balance."
Attorney-client privilege is a system that protects from disclosure the contents secretly exchanged between an attorney and a client for legal consultation. A protective order is a mechanism that limits the scope of viewing and use of confidential materials submitted during litigation.
―What should domestic corporations prepare?
(Jeon) "To maintain market superiority, you must be able to assert IP proactively. When the other side attacks with patents, we also need weapons to respond in kind so we can end the dispute through negotiation."
(Kang) "Even if only one among several patents survives, it can be a heavy burden on corporations. When new technology emerges, the legal and IP teams should swiftly decide whether to file, and a patent portfolio should be prepared in advance so that, if a dispute arises, you know what you can use to defend and to attack."
The two attorneys stressed that as overseas sales and technological competitiveness grow, domestic corporations are more likely to be exposed to patent disputes, and that from the product development stage, prior art searches, patent filings, trade secret management, and dispute response should be bundled and managed as a single business strategy.