[1] The base point of time to determine whether a request for a trial is unlawful in accordance with the principle of res judicata under Article 163 of the former Patent Act (=the time of filing a request for a trial)

[2] In a case where: (a) Company A filed a petition for a registration invalidation trial against Company B, etc. on the ground that the nonobviousness of the patented invention “Internet Address Self Language Service System” was denied; (b) Company C, etc. filed a petition for a registration invalidation trial against Company B, etc. on the patented invention; and (c) the final and conclusive judgment dismissing the petition was rendered, the case holding that Company A’s petition for a trial against Company B, etc. cannot be deemed to violate the doctrine of res judicata

[1] In the past, the Supreme Court interpreted that it constitutes the principle of res judicata under Article 163 of the former Patent Act (amended by Act No. 6411 of Feb. 3, 2001; hereinafter the same) not at the time of a request for a trial but at the time of a trial. According to the previous Supreme Court precedents, where multiple requests for a trial on the same patent are filed based on the same facts and evidence, and where a lawsuit seeking cancellation of a trial decision on a trial (hereinafter referred to as "the first trial decision") becomes final and conclusive while the first trial decision on the same patent becomes final and conclusive, even if the court revokes the first trial decision on the ground that the request for cancellation of the trial decision on the trial is well-grounded, it is inevitable for the Intellectual Property Tribunal to dismiss the request for a trial based on the doctrine of res judicata if the trial decision on the same trial decision becomes final and conclusive after the same time as that on which a request for a trial decision on the patent becomes final and conclusive after the same time of the relevant final and conclusive trial decision. However, it cannot be said that “any person who has another right to request for a trial decision on the same trial cannot be determined retroactively.”

[2] In a case where Gap corporation filed a petition for a registration invalidation trial against Eul et al. on the ground that the nonobviousness of the patented invention "Internet Address Self Language Service System" (hereinafter "the petition for a trial of this case") was denied, and Eul corporation filed a petition for a registration invalidation trial against Eul et al. on the patented invention and received a final and conclusive trial decision dismissing the petition (hereinafter "the petition for a trial of this case") and violated the principle of res judicata under Article 163 of the former Patent Act (amended by Act No. 6411 of Feb. 3, 2001; hereinafter the same), the case held that the petition for a trial of this case and the petition for a trial of Byung corporation et al. which became the object of the non-permanent final and conclusive trial of this case cannot be deemed to violate the principle of res judicata under Article 163 of the former Patent Act, on the ground that the petition for a trial of this case and the final and conclusive trial of this case did not have been registered at the time of the petition for a trial of this case

[1] Article 163 of the former Patent Act (amended by Act No. 6411 of Feb. 3, 2001) / [2] Article 163 of the former Patent Act (amended by Act No. 6411 of Feb. 3, 2001)

[1] Supreme Court Decision 97Hu3661 delivered on June 23, 200 (Gong2000Ha, 1788) (amended) Supreme Court Decision 2003Hu427 delivered on May 26, 2006 (Gong2006Ha, 1190) (amended) (amended)

Agypt Co., Ltd.

Defendant

Netpia.com Co., Ltd.

Supreme Court Decision 2006Hu435 Decided November 13, 2008

Patent Court Decision 2008Heo12968 Decided June 25, 2009

The appeal is dismissed. The costs of appeal are assessed against the defendant.

The grounds of appeal are examined.

1. Article 163 of the former Patent Act (amended by Act No. 6411 of Feb. 3, 2001; hereinafter the same) provides for the principle of res judicata by stating, “When the trial decision becomes final and conclusive or the judgment becomes final and conclusive, no person may file a petition for the trial on the same facts and evidence.”

In the past, the Supreme Court interpreted that the issue of whether it constitutes the principle of res judicata shall be determined at the time of a trial decision rather than at the time of a request for a trial. Accordingly, the principle of res judicata does not apply only to a trial requested after a trial decision of a certain trial becomes final and conclusive or a judgment becomes final and conclusive (in two cases, only to the case where a trial decision becomes final and conclusive and conclusive, and it is applied without asking whether the time of request for a trial has been prior to the registration of a final and conclusive trial decision (see Supreme Court Decisions 97Hu3661 delivered on June 23, 200; 2003Hu427 delivered on May 26, 2006).

According to such precedents of the Supreme Court, where multiple trials on the same patent are filed based on the same facts and evidence, and where a trial decision of the different trial becomes final and conclusive while a lawsuit seeking revocation of the trial decision (hereinafter “the first trial decision”) is pending, even if the court revokes the first trial decision on the relevant trial decision on the grounds that the request for revocation of the trial decision is well-grounded, it is inevitable for the Intellectual Property Trial and Appeal Board to dismiss the trial decision in accordance with the principle of res judicata if the first trial decision is rendered again under Article 189(1) and (2) of the Patent Act with regard to the relevant trial decision on the grounds that the request for revocation of the trial decision is well-grounded. However, this is likely to excessively infringe the citizens’ right to claim a trial, which is guaranteed under the Constitution, because the procedure that the claimant had proceeded for his own own interest retroactively due to an unexpected circumstance, such as the registration of the relevant final and conclusive trial decision, and there

Furthermore, the purport of Article 163 of the former Patent Act is to prevent abuse of a petition for trial, to promote economic efficiency in trial proceedings and to prevent the other party from having to repeatedly respond to the same trial proceedings. However, the above provision provides that “any party to a final and conclusive trial decision or any person other than his/her successor may not file a petition for the same trial based on the same facts and evidence, and thus, the wide scope of the application of the provision would result in restricting the citizens’ exercise of the right to request a trial as above. However, Article 163 of the former Patent Act provides that “it is impossible to file a petition for a new trial based on the same facts and evidence as that of the preceding trial decision after the final and conclusive registration of the trial decision.” Even if the other trial decision has not been registered at the time of filing a petition for a trial beyond this provision, it cannot be deemed that a reasonable interpretation of a petition for a trial can not be made retrospectively by the principle of res judicata.

Therefore, the standard point of determining whether a request for a trial is unlawful pursuant to the principle of res judicata shall be deemed to be the time when the request for a trial was filed, and where another trial decision based on the same facts and evidence becomes final and conclusive and registered after the request for a trial, the relevant request for a trial cannot be deemed unlawful by the principle of res

The purport of Supreme Court Decision 97Hu3661 Decided June 23, 200 and Supreme Court Decision 2003Hu427 Decided May 26, 2006, which held that the issue of whether a person constitutes the principle of res judicata under Article 163 of the former Patent Act shall be determined at the time of the trial decision rather than at the request of the trial, is to be modified to the extent that it conflicts with this.

2. Review of the reasoning of the lower judgment after remand and the record reveals the following facts.

On December 2, 2003, the Plaintiff filed a petition for adjudication on invalidation of the patent (hereinafter “instant petition for adjudication”) against the Defendants on the grounds that inventive step, etc. is denied by the evidence Nos. 7 and 8’s evidence Nos. 1 and 2 (the remaining documentary evidence No. 317059) (hereinafter “instant petition for adjudication”). On October 30, 2004, the Korean Intellectual Property Tribunal dismissed the Plaintiff’s request on January 12, 2006, and the lower court dismissed the Plaintiff’s request on November 13, 2008. On the grounds that the Plaintiff’s appeal against this, on November 13, 2008, the Supreme Court reversed the judgment below’s determination that the inventive step of the instant patent invention is not denied by the evidence No. 7(1)(hereinafter “instant Claim No. 1”) and No. 8(the remaining claim No. 1).

On the other hand, on February 17, 2006, small macroscis Co., Ltd. (hereinafter “non-party company”) filed a petition for a trial for invalidation of the registration of the instant Claim Nos. 1, 3, 6, and 7 (hereinafter “instant Claim Nos. 1, etc.”) with the Defendants. On July 25, 2006, the Intellectual Property Tribunal rendered a trial ruling accepting the said request on the grounds that the nonobviousness is denied by evidence Nos. 7, 8, and 20 and 23. However, on May 4, 2007, the Patent Court revoked the trial ruling on the grounds that the instant Claim Nos. 1 and 23 were not denied by evidence Nos. 7 and 8 (no evidence No. 20 and 23 were submitted) and the above decision became final and conclusive on the grounds that the patent court’s trial ruling No. 2007, Aug. 1, 207, 2007.

3. Meanwhile, the lower court determined as follows after remand.

The trial decision of this case was not registered on October 30, 204, which was at the time of the trial decision of this case, and the evidence Nos. 20 and 23 of this case constitutes a flexible evidence that can reverse the trial decision of this case and thus does not constitute "same evidence" under Article 163 of the former Patent Act. Thus, the trial decision of this case does not violate the principle of res judicata, and further, the nonobviousness of the patented invention of this case is denied by evidence Nos. 7, 8, 20 and 23 of this case.

4. We examine the above circumstances in light of the above legal principles.

Since the instant petition for a trial and the instant petition for a trial filed by the non-party company, which is the subject of the instant petition for a trial, sought a trial that the nonobviousness of the invention is denied by the evidence Nos. 7 and 8 of this case, the part concerning the said invention constitutes a petition for a trial based on “the same facts and identical evidence” under Article 163 of the former Patent Act. Meanwhile, as the judgment of remanding the instant petition for a trial was rendered by only the evidence Nos. 7 and 8 of this case, the nonobviousness is denied by the above judgment of remanding the invention, and thus, the evidence Nos. 20 and 23 of this case cannot be deemed as a valuable evidence to reverse the instant petition for a trial. However, since the other final judgment was not registered on December 2, 2003, which was at the time of the instant petition for a trial, the instant petition for a trial cannot be deemed to violate the principle of res judicata under Article 163 of the former Patent Act.

Therefore, the court below erred in finding that the time point of determination of the principle of res judicata is the time of trial decision, and that the evidence Nos. 20 and 23 of the above Act does not constitute "same evidence" under Article 163 of the former Patent Act, but it is therefore justifiable to determine that the petition of this case is not contrary to the principle of res judicata and the non-obviousness of the patented invention of this case. There is no error of law that affected the conclusion of the judgment by misunderstanding the legal principles on the principle of res judicata, as alleged

5. Therefore, the appeal is dismissed, and the costs of appeal are assessed against the losing party. It is so decided as per Disposition by the assent of all participating Justices on the bench.

Justices Yang Sung-tae (Presiding Justice)