Prospective of Foreign Prosecution History Estoppel in Korean Patent Litigation (In Re AstraZeneca v. Andrx Pharmaceuticals)

This Article responds to an emerging view, in patent litigation, to employ foreign prosecution history estoppel as a doctrine in claim construction. In this regard, the United States Court of Appeals for the Federal Circuit (hereinafter, referred to as CAFC) has found a representation made during a patent litigation in Korea to be effective as a prosecution history estoppel in a U.S. patent infringement suit, i.e., AstraZeneca v. Andrx Pharmaceuticals (04-1562). This Article reviews the foundation of this decision, such as Doctrine of Equivalents and Prosecution History Estoppel. Subsequently, the present Article examines several important cases to analyze the applicability and limitation of resting on foreign prosecution history. In addition, this Article argues that the Doctrine of Foreign Prosecution History Estoppel may be allowed under Korean Patent Practice by the Korean Supreme Court in view of the “abuse of patent rights” theory. It then explains the effects of adopting foreign estoppel in the aspects of patent holders, accused infringers and courts.