[1] Meaning of Article 451(1)8 of the Civil Procedure Act, which applies mutatis mutandis to a litigation seeking revocation of a trial decision pursuant to Article 8 of the Administrative Litigation Act, provides that “when an administrative disposition based on a judgment has been altered by any other administrative disposition” as grounds for retrial under Article 451(1)8 of the same Act. In a case where a patentee filed a petition for a trial for correction trial, and a trial decision to correct the specification or drawings of a patented invention becomes final and conclusive after the closure of arguments in the litigation seeking revocation of a trial decision on invalidation of a patent, whether there exists a ground for retrial

[2] Method of determining the inventive step of an invention

[1] [Majority Opinion] Where there is a serious defect in which it is impossible to acknowledge the validity of a final and conclusive judgment, a retrial is exceptionally established to realize specific justice by eliminating legal stability based on the final and conclusive judgment and correcting the defect. Article 451(1)8 of the Civil Procedure Act, which applies mutatis mutandis to a litigation seeking revocation of a trial decision pursuant to Article 8 of the Administrative Litigation Act, provides that “when an administrative disposition based on a judgment is modified by any other administrative disposition” is defined as grounds for retrial. This does not refer to an administrative disposition, which is subject to review and determination of a judgment, itself, which is a final and conclusive change by any other administrative disposition. This refers to an administrative disposition, which legally binding force of a final and conclusive judgment, or which has been changed by any other administrative disposition, which is materials for fact-finding in the final and conclusive judgment, is adopted as evidence for fact-finding of the final and conclusive judgment, and thus, may affect the fact-finding of the final and conclusive judgment. According to this, even if a patentee requests a trial for correction, the correction of the specification or drawings of the patented invention, etc.

[Concurring Opinion by Justice Jo Hee-de and Justice Park Jung-hwa] Where a patentee filed a trial for correction and a trial for correction becomes final and conclusive with respect to the specification, etc. of a patented invention after the closure of the arguments in the trial for revocation of the trial decision as to the invalidation trial of the patent, the judgment below should be deemed to have grounds for retrial as stipulated in Article 451(1)8 of the Civil Procedure Act. The Majority Opinion’

[2] In determining the inventive step of an invention, at least the scope and content of prior art, the difference between the invention subject to the determination of inventive step and the prior art, and the level of technology of a person with ordinary skill in the art to which the invention pertains (hereinafter “ordinary technician”), shall be examined based on the evidence and other records. In such cases, even if the invention subject to the determination of inventive step differs from the prior art at the time of patent application, whether the person with ordinary skill can overcome such difference and easily make an invention from the prior art shall not be determined ex post on the assumption that he/she knows of the technology described in the specification of the invention subject to the determination of inventive step.

[1] Article 8(2) of the Administrative Litigation Act, Article 451(1)8 of the Civil Procedure Act, Article 136 and Article 137 of the Patent Act / [2] Article 29(2) of the Patent Act

[1] Supreme Court Decision 91Da45691 delivered on July 24, 1992 (Gong1992, 2527), Supreme Court Decision 94Da33897 delivered on November 25, 1994 (Gong1995Sang, 97), Supreme Court Decision 99Hu598 delivered on October 12, 2001 (Gong2001Ha, 2488), Supreme Court Decision 200Da12679 delivered on December 14, 2001 (Gong202, 276), Supreme Court Decision 200Da69194 delivered on October 28, 2004 (Gong204, 2004Ha, 1915, 204, 2004, 207Hu38419 delivered on October 28, 2004)

Entertainment Tech Co., Ltd. (Patent Attorney Park Young-soo et al., Counsel for the defendant-appellant)

In-depth Co., Ltd. (Patent Attorney Kim Chang-deok, Counsel for defendant-appellant)

Patent Court Decision 2016Heo4542 Decided October 21, 2016

The judgment below is reversed, and the case is remanded to the Patent Court.

The grounds of appeal are examined (to the extent of supplement in case of supplemental appellate briefs not timely filed).

1. Basic factual basis

According to the reasoning of the lower judgment and the record, the following facts are revealed.

A. On December 24, 2015, the Plaintiff filed for a trial for invalidation of registration (2015Da5713) against the Defendant on the ground that the nonobviousness of the instant patent invention (patent number omitted) under the name of “strawing net” was denied by the Intellectual Property Tribunal. On May 20, 2016, the Intellectual Property Tribunal dismissed the Plaintiff’s petition for a trial on the ground that the instant patent invention cannot be easily claimed by the combinations of Prior Inventions 1, 2, or 1, and 3, and that the nonobviousness is not denied.

B. On June 22, 2016, the Plaintiff filed a lawsuit against the Defendant seeking the revocation of the instant trial decision with the Patent Court. On October 21, 2016, the Patent Court revoked the instant trial decision by deeming that the nonobviousness of the instant patent invention is denied by prior inventions 1 through 3.

C. On November 4, 2016, the Defendant filed an appeal against the foregoing judgment. On November 28, 2016, the Defendant filed a corrective appeal with the Intellectual Property Trial and Appeal Board (No. 2016No. 139) that limited the location of the locking part of the instant Claim No. 1 to “slive order” (No. 2016No. 139). On February 8, 2017, the Intellectual Property Trial and Appeal Board rendered a trial ruling correcting the instant Claim No. 1 with the same content as above, and the corrective trial ruling was served on the Defendant around that time.

2. Judgment on ground of appeal No. 1

A. 1) Reopening of procedure is exceptionally established to realize a specific definition by exceptionally eliminating legal stability based on the final and conclusive judgment and correcting the defect (see Supreme Court Decision 91Da45691, Jul. 24, 1992, etc.). Article 451(1)8 of the Civil Procedure Act, which applies mutatis mutandis to a lawsuit seeking revocation of a trial decision, provides that “when an administrative disposition based on the judgment has been changed by any other administrative disposition” as grounds for retrial under Article 8 of the Administrative Litigation Act. This does not mean cases where an administrative disposition, which becomes the subject of review and determination, has become final and conclusive by any other administrative disposition. This refers to cases where an administrative disposition, which becomes the subject of review and determination, becomes final and conclusive by the final and conclusive judgment, or where an administrative disposition, which became the materials for fact-finding in the final and conclusive judgment, has become final and conclusive by any other administrative disposition (see, e.g., Supreme Court Decision 2001Da1971481, Apr. 19, 197).

2) The reasons are as follows.

A) A trial is an administrative procedure in the Korean Intellectual Property Tribunal and a trial decision constitutes an administrative disposition. A lawsuit seeking revocation of a trial decision, which is an appeal against it, constitutes an appeal litigation and the subject matter of the lawsuit is substantive and procedural illegality of the trial decision (see Supreme Court Decision 2007Hu4410, May 28, 2009, etc.). Article 186(6) of the Patent Act provides that “no lawsuit may be brought unless it is against a decision to revoke a patent or against a decision to revoke a patent, or against a matter for which a request for a trial may be made, shall be filed.” Article 186(1) of the Patent Act provides that “an action against a decision to revoke a patent or a decision to revoke a patent, or against a decision to reject a request for a trial or a request for

An examiner shall make a decision to grant a patent if he/she finds no grounds for rejection after examining the newness, inventive step, etc. of a patent application (see Article 66 of the Patent Act). An examiner who intends to appeal against such decision to grant a patent cannot directly refer to a patent decision itself as the subject matter of a lawsuit due to the above provisions, and may file a lawsuit only against such decision through a trial by the Intellectual Property Trial and Appeal Board. In a lawsuit seeking the revocation of a decision to grant a patent, the parties have to seek the revocation of a trial decision due to the essential administrative appeal doctrine and adjudication doctrine adopted by the Patent Act as above. As can be seen, in relation to a trial decision, a decision to grant a patent that can be seen as a initial decision is only the subject matter to be deliberated and determined in a lawsuit seeking the revocation of a trial decision, and cannot be seen as an administrative disposition that forms the basis of a decision. Therefore, even if the decision to correct the specification, etc. of a patent invention becomes final and conclusive and the registration of a patent right is not deemed to have been changed in accordance with the specification, etc.

B) If the specification, etc. of a patent invention is incomplete after the registration of the grant of the patent, the patentee may request a trial to correct the specification, etc. (Article 136(1) of the Patent Act). The trial to correct the patent registration is established to prevent the invalidation of the patent in advance and to clarify the legal relationship of the patent when it is likely that the patent registration will be invalidated due to the grounds such as excessively widening the claims of the patent or clerical error or unclear description in the specification, etc.

In order to harmonize the interests of a patentee and a third party, the Patent Act permits correction only in cases where the scope of claims is reduced, ② the correction of any clerical error is made, ③ the correction is made, and the claims are substantially expanded or modified. In such cases, ① the corrected claims are prohibited, and ② the corrected claims are demanded to meet the requirements for patent at the time of filing a patent application (Article 136(1), (4), and (5) of the Patent Act).

However, where a patentee requests a trial to correct the specification, etc. of a patented invention as the other party to the Commissioner of the Korean Intellectual Property Office, the trial decision recognizing a correction may be deemed final and conclusive by serving a claimant with no separate objection procedure. However, it is difficult to present the validity of res judicata as stipulated under Article 163 of the Patent Act on the ground that a trial decision which does not have any trial or determination by a conflict between the parties becomes final and conclusive. In addition, an interested party or an examiner may file a petition for a trial to invalidate a correction against a trial decision which cited a correction after a trial decision to invalidate a correction becomes final and conclusive (Article 137(1) of the Patent Act). If a trial decision invalidating a correction becomes final and conclusive, the correction shall be deemed never to have existed (Article 137(5) of the Patent Act). A trial decision on invalidation of a correction may be filed even after the extinguishment of the patent right (Articles

In light of the relevant provisions and legal principles of the Patent Act, the correction system is based on the premise that the patent is substantially identical to the previous patent invention, and the correction system constitutes the specification, etc. after the correction, and where a trial decision was made before the closure of argument in the trial as a fact-finding court, the corrected specification, etc. is subject to trial and determination by the fact-finding court. A trial decision on the correction becomes final and conclusive upon delivery to a patentee who is the claimant, but an interested party or examiner can file a petition for a trial to invalidate the correction from that time. For this reason, the correction is used as the main defense of the patentee in the invalidation procedure, and the dispute over the invalidation of the patent continues to lead to the trial procedure for the invalidation of the correction. Ultimately, since the invalidation of the patent due to the specification, etc. before the correction remains as the object of the dispute over the invalidation of the patent, it cannot be concluded that the decision on the correction recognition became final and conclusive, and the contents of the patent invention in accordance

In addition, Article 136(10) of the Patent Act provides, “If a trial ruling that the specification or drawings of a patented invention be corrected becomes final and conclusive, it shall be deemed that the patent application, publication, decision or trial ruling of a patent or the registration of establishment of a patent right has been made in accordance with the specification or drawings after the correction.” This provision, even if the specification, etc. are corrected ex post facto, is to ensure the effectiveness of the correction system while maintaining consistency with the patent examination and trial procedures and to ensure that the patentee does not suffer any disadvantage due to the correction, and it is difficult to interpret to the effect that all public and private legal relations arising from the specification, etc. before the correction are retroactively modified.

C) Article 1(1) of the Civil Procedure Act provides that “The court shall endeavor to have litigation procedures progress fairly, rapidly, and economically.” Of them, in order to realize a prompt and economic ideology, a delay in litigation by the parties need to be appropriately prevented. Accordingly, the Plaintiff may alter the purport or cause of the claim until the closure of pleadings to the extent that the basis of the claim is not changed, but is not allowed if the litigation procedures are considerably delayed (see, e.g., Supreme Court Decisions 262(1) of the Civil Procedure Act and Supreme Court Decision 2017Da21146, May 30, 2017). In a patent invalidation trial, a patentee may respond to the assertion of invalidation through a request for correction in the trial proceedings, and in the trial proceedings for revocation of the trial decision, a patentee may make a trial decision at a fact-finding court on the grounds that the cause of the claim is changed following the final and conclusive trial decision after the closure of the arguments at a fact-finding court, as well as the litigation procedures, so doing.

3) Such a legal doctrine ought to also be applied to a litigation seeking revocation of a trial decision against a trial decision on the scope of a patent right and a civil litigation on the ground of infringement of a patent right. In particular, in a litigation seeking injunction against infringement or damages based on a patent right-based patent right-based lawsuit where there is a defense that a patent holder’s claim constitutes an abuse of right because it is apparent that the patent will become invalid, the patentee may re-argue the circumstances that the patent holder would have resolved or would have resolved the grounds for invalidation by being recognized through a correction request or correction request. Although the final judgment of a civil lawsuit on the grounds of infringement of a patent right becomes final and conclusive or the patentee did not submit a re-argue of correction before the final and conclusive conclusion of arguments at a trial court

4) A patentee may correct the specification, etc. in the form of a request for correction in addition to a request for a correction trial, and within a patent invalidation trial and a trial for correction invalidation (Articles 133-2 and 137 of the Patent Act). Inasmuch as a trial on a request for correction is conducted in a patent invalidation trial, unlike an independent request for a correction trial, the trial on a request for correction becomes final and conclusive at the time a trial on a trial on invalidation of correction becomes final and conclusive (see, e.g., Supreme Court Decision 2010Hu2698, Feb. 10, 201). The foregoing legal doctrine is equally applicable to cases where a trial on a request for correction becomes final and conclusive (see, e.g., Articles 133-2(4) and 136(10) of the Patent Act). Accordingly, even if a trial on a request for correction becomes final and conclusive in a patent invalidation trial that was conducted separate from a litigation on revocation of a trial on a patent invalidation trial or a trial on the scope of rights.

5) In contrast, Supreme Court Decision 9Hu598 Decided October 12, 2001; Supreme Court Decision 2007Hu852 Decided July 24, 2008; Supreme Court Decision 2010Hu36 Decided September 9, 2010; Supreme Court Decision 2000Da69194 Decided October 28, 2004; Supreme Court Decision 2000Da69194 Decided October 28, 2004; Supreme Court Decision 2004Hu3133 Decided February 24, 2006; Supreme Court Decision 2004Hu3130 Decided February 24, 2006; Supreme Court Decision 2004Hu3130 Decided October 24, 2006, which held that the final and conclusive decision on a correction of a patent invalidation trial constitutes grounds for retrial under Article 451(1)8 of the Civil Procedure Act.

B. According to the factual relations and legal principles as seen earlier, even if the Defendant filed a petition for a trial to correct a correction after the pronouncement of the judgment of the court below and the trial decision was finalized during the final appeal process, this cannot be deemed to constitute grounds for retrial under Article 451(1)8 of the Civil Procedure Act. Furthermore, the circumstance that the final decision on a correction made after the closing of arguments by the court of fact-finding is not subject to the judgment of the court below, and the circumstance that the final decision on a trial is final and conclusive is not subject to the judgment of the court of final appeal, and it cannot be deemed as an ex officio examination of patent requirements

3. Judgment on the second ground for appeal

A. Determination of the inventive step of an invention ought to be made on the basis of the materials indicated in the record, such as evidence, at least on the scope and content of prior art, the difference between the invention subject to the determination of inventive step and prior art, and on the level of technology of a person having ordinary skill in the art to which the invention pertains (hereinafter “ordinary technician”). In such cases, even though an invention subject to the determination of inventive step differs from prior art at the time of patent application, whether an ordinary technician can overcome such difference and easily make an invention from prior art should be examined. In such cases, determination of the inventive step should not be made ex post facto on the premise that the person having ordinary skill knows the technology described in the specification of the invention subject to the determination of inventive step (see Supreme Court Decisions 2014Hu2184, Nov. 25, 2016; 2016Hu1840, Dec. 13, 2018, etc.).

B. We examine the aforementioned legal principles and the evidence duly adopted by the lower court.

1) The instant Claim No. 1 invention is an invention designed to provide “salking structure of rolling net” that can be easily separated as necessary, using a simple structure, by means of a simple structure. The instant Claim No. 1 invention is an invention designed to provide “saling structure of rolling net.” To this end, the instant Claim No. 1 invention has two sides of the slot (44) formed on the side of the frame (10) opened in the front and rear direction, through which slots are installed in the direction of the mobile line (41) formed in the direction of the mobile line (45) formed in the direction of the mobile line (45) and formed in the direction of the mobile line (49) formed in the direction of the mobile line (4) formed in the direction of the mobile line (49) formed in the direction of the mobile line.

On the other hand, the border line of the instant Claim No. 1 is formed on the other side of the press, and the combination (38) of the series (38) of the Prior Invention 1 is formed on both sides of the lower part of the boundary line (hereinafter “vehicle No. 1”), and the sludge of the instant Claim No. 1 is combined to be moved before and after the movement within the moving hole formed within the support absence. On the other hand, a copy (21) which is the response structure of the Prior Invention 1 is inserted in the aspect of hand (12), and is not equipped with the aforementioned combined structure (hereinafter “vehicle No. 2”).

2) The instant Claim No. 1 invention is a structure that takes place in the press as it is the shape of the press, and there exists another side of the press, and it is the structure that is inserted into the press home in the slock of the slacker of the slacker. On the other hand, the prior Claim No. 1 is a position corresponding to the other side of the press, and it is difficult to make the slack (24) and the Hands (12) of the previous Claim No. 1 as the slacker, and it is located respectively in the bottom of the press (15) but it cannot be seen as the same structure as the bottom of both sides of the press, such as the instant Claim No. 1, while the other side frame of the instant Claim No. 1 invention is not slacked, the structure of the previous Claim No. 1’s slacker (24) and the slack (12) structure of the instant invention differs from the structure of the previous Claim No. 12.

To overcome the difference 2 from the preceding invention 1, to derive the “slock (20), supporting slock (41), and slock (44),” the structure of the Claim 1 invention of this case should be adopted which combines the channel structure (13) and slock (17) with the length direction from the preceding invention 1 to the channel-type structure (12) and the slock (13) with the slock (17) length direction. The structure of the Claim 1 invention of this case with the slock (20) being fixed to the slock (20) length direction. In addition, the slock (45) of the Claim 1 invention of this case is located below the slock (44) part performing the same function, and is located below the slock (24) structure of the preceding invention 1 to put the slock (24) and the slock (2122) 127 to the same direction as the slock (212127) knock (2127).2).27 to the two Hand.27.2.2.

In the Prior Invention 2 and 3, “the structure in which slots are directed before and after slots by combining 46) and the home (43).” However, in order to combine it with the Prior Invention 1, the connection structure of the Part (21) inserted in the length direction to the Hand (21) must be substantially altered. In this case where there is no such implication and motive for the Prior Invention 1, unless it is determined ex post facto on the premise that the content of the instant Claim 1 was already known, even if a person is an ordinary person, the aforementioned composition of the instant Claim 1 cannot be easily derived through the combination between the Prior Invention 1 and the Prior Invention 2 or the Prior Invention 3. Moreover, even if a combination of the Prior Inventions, it cannot be easily concluded that the simple structure of the stalking is firmly fixed with a simple structure so that it can be locked or released on the other side of the frame, and that it can not be easily concluded that the instant Claim 1 invention has a strong effect.

3) Therefore, it cannot be deemed that differences 1, 2, and 1, and 2 can be easily overcome by combining prior inventions 1 and 2, or prior inventions 3. Thus, the nonobviousness of the instant Claim 1 invention is not denied. Unless the nonobviousness of the instant Claim 1 is denied, the nonobviousness of the instant Claim 3 and 4 inventions, which are dependent claims that limit or add to the instant Claim 1 invention, shall not be denied.

C. Nevertheless, the lower court determined otherwise by prior inventions that the nonobviousness of the instant patent invention is denied. In so doing, it erred by misapprehending the legal doctrine on determination of inventive step of the invention, contrary to what is alleged in the grounds of appeal, thereby failing to exhaust all necessary deliberations, thereby adversely affecting

4. Conclusion

Therefore, 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, except there is a separate opinion by Justice Jo Hee-de and Justice Park Jung-hwa as to the judgment on the ground of appeal No. 1.

5. Concurring Opinion by Justice Jo Hee-de and Justice Park Jung-hwa on the judgment on the ground of appeal No. 1

A. The lower court’s judgment that determined the specification, etc. of a patented invention as the specification, etc. before correction becomes final and conclusive after a trial decision on the invalidation trial of the patent becomes final and conclusive by filing a petition for trial for correction. The Supreme Court’s precedent to the same purport is reasonable, and the Majority Opinion’s logic is contrary to the patent law and the general principles of litigation, and thus it is difficult to agree.

1) The court cannot be deemed to have determined the illegality of a trial decision in a lawsuit seeking revocation of a trial decision and cannot be deemed to be a determination of illegality of a patent decision. Therefore, in a lawsuit seeking revocation of a trial decision, a patent decision is merely a disposition that serves as the basis for a trial decision, not the subject of a determination, but as the subject of a determination, and thus, the court shall be bound by a corrected trial decision. If a lawsuit is dismissed on the ground that there is no benefit of legal action on the ground that the determination of the specification, etc. before the correction is not practicable, the trial decision becomes final and conclusive. Considering the characteristics of a lawsuit seeking revocation of a trial decision, returning the case to the court as a fact-finding

2) According to Article 136(10) of the Patent Act, when a trial decision to correct the specification, etc. of a patented invention becomes final and conclusive, it shall be deemed that the patent application, publication, decision or trial decision, or registration of establishment of a patent right has been made in accordance with the specification, etc. after the correction. As such, the effect of the corrective trial decision shall be retroactive to the time of the patent application, and the procedure after the patent application has been made in accordance with the specification, etc. after the correction shall be deemed to have been made in the beginning. Notwithstanding the foregoing provision, the Majority Opinion appears to have deemed that the aforementioned provision does not retroactively modify all public and private legal relations arising from the specification, etc. before the correction, and that the said provision does not retroactively apply to the subject

As the majority opinion states in detail, the trial for correction is a major defense method against a patentee with respect to a trial for invalidation. According to the majority opinion, a patentee who is judged to be invalid in the patent court is unable to eliminate the grounds for invalidation through a trial for correction even though the judgment was not finalized, and thus, would lose an opportunity to defend with legitimate defense. This may lead to a very unfair outcome if harm, such as delay of a lawsuit following a trial for invalidation, is not necessarily attributable to the patentee’s responsibility. In other words, unlike the patentee who filed a lawsuit for revocation of a trial for invalidation of a patent, a patentee who is obliged to defend as the defendant in a litigation for revocation of a trial for revocation of a trial for invalidation upon receipt of a patent invalidation trial decision, may lose the need for correction only due to the assertion of newly submitted evidence or grounds for invalidation during the proceedings of pleadings. When a patentee filed a trial for correction without waiting the trial for correction, a patentee would lose the opportunity to be determined with respect to the corrected specification, etc. if the trial for revocation of a trial for invalidation is concluded without waiting the trial for correction.

3) According to the Majority Opinion, the final appeal shall be subject to a judgment by the lower court on the specification, etc. prior to the correction. However, it is difficult to recognize the practical benefit of the determination on the specification, etc. prior to the correction, etc., even though the final and conclusive trial decision on the correction became final and conclusive, and the final and conclusive decision on the correction becomes final and conclusive after the final final appeal is filed by the patent court that maintained the decision on the invalidation of a patent. According to the Majority Opinion, if the final and conclusive decision by the lower court that reviewed and determined the specification, etc. prior to the correction and dismissed the final and conclusive final appeal, the final decision on the invalidation of a patent becomes final and conclusive, but it is unclear whether the patent itself becomes void or not. This is because a patent based on the specification, etc. after the correction is removed from the grounds for invalidation by the final and conclusive trial decision on the correction, and if the patent itself is deemed invalid only

Ultimately, notwithstanding the confirmation of a trial decision on the invalidation of a patent, a final deprivation of the opportunity to eliminate the invalidation in accordance with the specification, etc. after correction may result in a harsh outcome for a patentee, on the ground that the trial decision on the revocation of a trial decision on the invalidation of a patent has been concluded at the fact-finding court. The purpose of the correction system is not to protect and encourage the invention, but to promote the development of the technology.

4) As stated in the Majority Opinion, in cases where a subsequent disposition to change an existing administrative disposition is entirely replaced with the previous administrative disposition or is a substantial modification of the main part thereof, barring any special circumstance, the previous disposition becomes null and void, and only subsequent disposition becomes an object of appeal litigation (see Supreme Court en banc Decision 2015Du295, Nov. 19, 2015). In light of the legal principles, a lawsuit seeking confirmation of legal relationship or legal relationship in the past is unlawful (see Supreme Court Decision 2001Da64479, Sept. 26, 2003) due to lack of the requirements for protection of rights (see Supreme Court en banc Decision 2001Da6479, Sept. 26, 2003), even if the subject of review and determination was changed by the final decision of a correction, it does not comply with the principles of general litigation as well as an appeal litigation, which is a means of objection against the previous decision of a final decision of a trial. Notwithstanding such principle, the Majority Opinion, however, does not have any grounds for such interpretation.

B. Therefore, the judgment of the court below that deliberated and judged on the existence of a ground for invalidation of a patent based on the specification, etc. prior to the correction of the patented invention of this case constitutes grounds for retrial under Article 451 (1) 8 of the Civil Procedure Act, which affected the conclusion of the judgment.

As seen above, I agree with the majority opinion that the original judgment should be reversed and remanded, but I agree with the majority opinion as to the ground of appeal No. 1, and express my concurring opinion.

6. Concurrence with the Majority by Justice Lee Ki-taik

A. The attitude of the previous precedents, which recognized a final and conclusive trial decision as a ground for retrial under Article 451(1)8 of the Civil Procedure Act after the closing of arguments at a fact-finding court, has resulted in delaying the final settlement of a dispute over the entire area of patent litigation in that not only the litigation for revoking a trial decision on invalidation of a patent but also the litigation for revoking a trial decision on the confirmation of the scope of a patent right and the civil litigation that causes infringement of a patent right. The Patent Act provides that “where the scope of a claim is reduced (Article 136(1)1 of the Patent Act) or erroneous matters are corrected (Article 136(1)2 of the Patent Act), or where ambiguous matters are clarified (Article 136(10) of the Patent Act), the same effect of a trial decision on a correction regardless of the substance and gravity of the corrective grounds shall be equally effective.”

Therefore, a patentee who lost at the fact-finding court of a patent lawsuit filed a petition for correction trial and received a trial decision for correction by asserting the grounds for partial reduction of the claims, etc., and then brought an argument in the final appeal as the grounds for final appeal against the lower judgment in the final appeal. This has been significantly undermined the legal stability and trust in the patent litigation system in that it gives the parties an opportunity to easily reverse the conclusion of the fact-finding court rendered through a long-term trial and has been used as a means to maintain the patented invention with grounds for invalidation for a long time. Moreover, if a patentee repeats a petition for correction trial in the course of reversal and transmission,

B. If a final and conclusive trial decision on a correction becomes final and conclusive as a ground for retrial, there is a problem that ① a trial decision invalidating a correction becomes final and conclusive, ② a request for correction becomes final and conclusive in a separate corrective trial decision or ③ a request for correction in a separate invalidation trial proceeding, or ④ a request for correction in a separate invalidation trial proceeding becomes final and conclusive, and ④ a request for correction in a trial proceeding on a correction becomes final and conclusive, and ④ a request for retrial becomes final and conclusive. Such unlimited recognition of grounds for retrial does not accord with the purport of the retrial system that seeks to realize a specific justice by correcting the defect even if the legal stability in accordance with the final and conclusive judgment is exceptionally set aside, and it is difficult to deem that it is feasible to realize a specific validity through this. Practice according to the previous judgment is very unusual compared with the system of major countries where the patent litigation

C. Article 136(7) of the Patent Act provides, “A patentee may file a petition for correction trial even after the extinguishment of a patent right, except where a trial ruling invalidating a patent becomes final and conclusive.” However, in a case where a trial ruling invalidating a patent invention becomes final and conclusive while a trial ruling dismissing a petition for correction trial becomes final and conclusive, the Supreme Court determined that a lawsuit seeking revocation of a trial ruling on a trial ruling dismissing a petition for correction is unlawful (see, e.g., Supreme Court Decision 2003Hu2294, Mar. 11, 2005). In a lawsuit seeking revocation of a trial ruling on invalidation of a patent, the Supreme Court’s assertion that “the final and conclusive trial ruling on a correction becomes final and conclusive after the closing of arguments in the trial becomes final and conclusive after the issuance of a trial ruling becomes final and conclusive shall be deemed to have been revoked by a lawsuit for retrial.” However, even if the foregoing Supreme Court ruling becomes final and conclusive after a trial ruling invalidating a patent becomes final and conclusive after the final and conclusive judgment becomes final and conclusive, it would be inconsistent with the final and conclusive procedure for retrial.

D. The Concurring Opinion points out that it is difficult for the court of final appeal to recognize the practical benefits to determine the judgment of the court below on the specification, etc. before the correction. However, it can be deemed that the determination of the court below on the specification, etc. before the correction conforms to the single resolution of disputes and the litigation economy.

If the lower court reversed and remanded the original judgment that made a substantive judgment on the specification, etc. before correction as in the instant case, the lower court, after remanding the case, will render a new judgment after re-examination of the specification, etc. In this case, if the Supreme Court has made a substantive judgment on the specification, etc. before correction, it would be a great help in resolving the dispute

On the other hand, the final appeal against the patent court’s decision that maintained the patent invalidation trial decision became final and conclusive, but if the Supreme Court dismisses the final appeal filed by the patentee as it is reasonable to have the lower court’s substantive determination on the specification, etc. before the correction, the trial decision on the specification before the correction becomes final and conclusive, and the invalidation of a patent specified as a patent number regardless of whether the final and conclusive trial decision is corrected or not pursuant to the order of the final and conclusive trial decision.

In this case, the Korean Intellectual Property Tribunal and the Patent Court ruled that the specification, etc. prior to the correction was null and void, and the patentee could not make a request for correction in the patent invalidation trial, and the patentee was given an opportunity to file a request for correction trial at the fact-finding court in the litigation seeking revocation of the trial decision, and thus, the patentee cannot be deemed harsh even if the patentee did not give an additional opportunity for correction after the closing of argument. This is more true in light of the circumstances that the parties can assert and prove the reason why the trial decision is unlawful until the closing of arguments at the fact-finding court (see Supreme Court Decision 2000Hu1290, Jun. 25

Ultimately, in any case, the Supreme Court's decision on the specification before the correction will be very helpful in resolving the final dispute and in resolving the litigation economy.

E. We cannot agree with the Concurring Opinion that the Majority Opinion goes against the principles of appeal litigation or general litigation.

The Supreme Court en banc Decision 2015Du295 Decided November 19, 2015 cited by the Concurring Opinion held as the basis for the separate opinion that “where an administrative disposition that changes the existing administrative disposition is followed, the previous disposition shall lose its validity, unless there are special circumstances where a subsequent disposition is completely replaced or substantially changes the main part thereof, and only a subsequent disposition shall be subject to appeal litigation. However, where the contents of a subsequent disposition are added, withdrawn, and changed on the premise that the previous disposition is valid, and the addition, withdrawal, and change are not indivisible with the remaining parts in its nature, the previous disposition shall be deemed as still subject to appeal litigation notwithstanding the subsequent disposition.”

According to Article 136(1) of the Patent Act, the grounds for a petition for correction trial may be deemed to have partially withdrawn or modified a part of the contents under the premise of validity of the previous patent decision. In general, the part withdrawn or modified by a correction trial decision cannot be deemed to be indivisible with the specification, etc. prior to correction, which is the remainder of the correction, due to its content and nature. Therefore, even if following the legal principles of the above judgment, the specification, etc. prior to the correction decision ought to be deemed to be subject to a lawsuit seeking revocation of the trial decision, regardless of the correction trial decision. Moreover, the Supreme Court Decision 2001Da64479 Decided September 26, 2003, which is based on the separate opinion, cannot be deemed to have been applied as it is to a lawsuit seeking revocation of the trial decision, which is an appeal litigation, by a judgment on

F. It is difficult to deny that the previous precedents have contributed to the protection of a patentee by guaranteeing to the maximum extent possible the opportunity for correction to a patentee. The Patent Court is the sole fact-finding court in a lawsuit seeking revocation of a trial decision, and according to the Majority Opinion, a patentee cannot assert “reasons for the confirmation of a corrective trial after the closing of argument in the fact-finding trial” as the grounds for final appeal. Therefore, a fact-finding court should ensure that procedural guarantees suitable for the litigation procedures are made by properly granting

In addition, where a patentee requests a trial for correction to determine the details, etc. after correction while filing a petition for the trial for correction before the closing of arguments at a fact-finding court, the fact-finding court shall have a reasonable decision as to whether to close the pleadings, comprehensively taking into account the specific contents of the grounds for correction, whether the amendment affects the conclusion of the litigation for cancellation of the trial decision if the correction is accepted, the details of the past correction, whether the opportunity for correction is guaranteed, and whether

For the foregoing reasons, I would like to supplement the reasoning of the Majority Opinion.

Justices Jo Hee-de (Presiding Justice)