Lee & Ko Successfully Obtains Favorable IPTAB Decision for DMB Services of Major Broadcasting Companies including KBS, MBC, SBS and YTN in a Patent Dispute Involving MPEG Standard Essential Patent

Lee & Ko successfully defended KBS, MBC, SBS, YTN, and Korea DMB (“Clients”) in a legal dispute involving MPEG standard essential patent initiated by a United States Non-Practicing Entity (“NPE”), by obtaining invalidation decision.  

Clients are representative broadcasting companies of Korea, and have maintained ground radio wave DMB broadcasting business since 2005. In October 2020, the U.S. NPE, who is a patentee of two MPEG standard essential patents, filed suit against the Clients with a Korean court while asserting that Clients’ DMB broadcasting services infringe the MPEG standard essential patents.

Lee & Ko represented Clients to defend against the patent infringement claim. In particular, Lee & Ko argued that the asserted patents were markedly different from the known standard for MPEG, thus not amounting to standard essential patent, and also that the embodiment practiced by Clients in their DMB broadcasting business was significantly different from the asserted patents and thus not infringing. At the same time, Lee & Ko also filed invalidation action against the patents before the Intellectual Property Trial and Appeal Board (“IPTAB”) to challenge the validity of the patents. Specifically, Lee & Ko emphasized that the asserted patent should be found invalid for lack of novelty or inventiveness, since the same standard content was publicly disclosed in standard documents.

In November 2021, consistent with Lee & Ko’s invalidation argument, IPTAB determined that one of the asserted patents lacked novelty or inventiveness. Thus, Clients secured an advantageous position in the infringement action as well. In particular, one of the legal issues for the invalidation action was whether a standardization document, which seemed to have originated from foreign country, would qualify as prior art. By presenting wide range of precedents and evidence, Lee & Ko was able to convincingly argue and prove that the standardization document should clearly qualify as prior art and that its disclosed date was before the filing date of the assert patent. The invalidation action against the other patent is currently pending. 

Recently, NPEs who would not engage in any productive business activities but rather profit from its patent rights by via litigation and licensing have become many companies’ nightmare. If Clients could not adequately defend against NPE’s exercise of the patent rights, Clients would not have been able to continue providing stable DMB services, which could have harmed public interest in using DMB service. Further, there were chances that, if NPE were successful in exercising its patent rights, then the dispute could have expanded to include other Korean DMB broadcasting companies, threatening the entire broadcasting industry of Korea. Lee & Ko was able to minimize the legal risk threatening the Clients with the team’s thorough analysis of law and factual background, therefore allowing the Clients to maintain their public services without problem.