Attorney Jeon-jin et al., Counsel for the defendant-appellant

Law Firm (Law Firm LLC et al., Counsel for the plaintiff-appellant)

1. Article 163 of the Patent Act on the doctrine against double Jeopardy provides that "where a trial ruling rendered under this Act becomes final and conclusive, no person may request a trial again on the same facts and evidence: Provided, That this shall not apply where the final and conclusive trial ruling is a rejection trial ruling: Provided, That this shall not apply where the final and conclusive trial ruling is a rejection trial ruling." Therefore, where the final and conclusive trial ruling fails to meet the legitimate requirements of the request for a trial and thus

Considering the following points, the foregoing proviso shall be equally applied to a case where the new evidence submitted was examined and determined as to whether it was a valuable evidence to the extent that it can reverse the previous final and conclusive trial decision, and where the new evidence was rejected on the ground that it was an appeal for a trial by the same evidence as the previous final and conclusive trial

A. Although there was a disagreement as to the validity of the res judicata in a case where a trial decision, which failed to meet the legal requirements of the previous request for a trial, became final and conclusive, the said proviso was newly inserted in the Patent Act amended by Act No. 6411 on February 3, 2001, and made clear that the rejection does not have the validity of the res judicata.

B. The term “same evidence” under Article 163 of the Patent Act includes not only the same evidence as the evidence of a trial ruling previously finalized but also the addition of not-fit evidence to the extent that it can reverse the trial ruling (see, e.g., Supreme Court Decision 2004Hu42, Mar. 11, 2005). Accordingly, in order to determine whether a new evidence is the same as the evidence of a trial ruling rendered in a subsequent trial, it is necessary to examine and determine whether to reverse the prior final and conclusive trial ruling, and the same result as prior to the judgment on the merits in the process can occur. However, even in the above case, the principle of res judicata is only a legitimate requirement of a trial request, and therefore, it is beyond the permissible scope of interpretation of the text to treat the trial ruling dismissed as identical to the trial ruling rendered in a substantive trial as to the merits, in violation of the principle of res judicata.

C. Even in consideration of the purport of the res judicata system in order to prevent abuse of a petition for trial and prevent the inconsistency and conflict of trial decisions, the guarantee of the right to request for a trial is also an important value, and Article 163 of the current Patent Act provides that the effect of the res judicata shall be limited to a third party, and it is difficult to justify the extension of the scope of application by recognizing exceptions to the proviso of Article 163 of the Patent Act.

2. Nevertheless, in the final and conclusive trial decision dismissed on the ground of violating the principle of res judicata, where a claimant based on the same evidence makes a substantive determination as to whether the non-obviousness has been denied, the court below determined that the trial decision in this case was unlawful in accordance with the validity of res judicata of the final and conclusive trial decision. In so determining, the court below erred by misapprehending the legal principles as to the doctrine of res judicata, thereby adversely affecting the conclusion of the judgment, and the ground of appeal assigning

3. Therefore, without further proceeding to decide on the remaining grounds of appeal, the lower judgment is reversed, and the case is remanded to the lower court for further proceedings consistent with this Opinion. It is so decided as per Disposition by the assent of all participating Justices on the bench.

Justices Lee Ki-taik

Justices Noh Tae-ok