Whether a trial decision correction being decided corresponds to a cause for retrial which is decide

Whether a trial decision correction being decided corresponds to a cause for retrial which is decided after the close of defense of a fact-finding proceeding in relation to a lawsuit for cancellation of a trial decision against a patent invalidation trial

Announced by the Supreme Court on January 22, 2020. Announcement 2016hu2522 Supreme Court en banc decision



1. Introduction

In the past, when a correction of a trial decision was decided in the course of a lawsuit for cancellation of a trial decision against a patent invalidation trial which was pending with the Supreme Court, the original verdict would be remanded after reversal due to it being unlawful for an ordinance violation to resultingly affect a verdict since there would be a cause for a retrial under Article 451(1)(Ⅷ) of the Civil Procedure Code (CPC) in a patent court’s verdict which was decided by an invalidity hearing targeting a patent invention before correction. However, the Supreme Court recently made a Supreme Court en banc decision that even if a patentee requested a correction of a trial decision and such is decided after the closing of the defense in a fact-finding proceeding in relation to a lawsuit for cancellation of a trial decision against a patent invalidation trial, it cannot be seen as there being a cause for a retrial in an original verdict which was decided based on a specification before correction under Article 451(1)(Ⅷ) of the CPC, and this changed every previous Supreme Court decision which had been made differently prior to this decision (announced by Supreme Court on January 22, 2020. Announcement 2016hu2522 Supreme Court en banc decision). The following is the meaning of the Supreme Court en banc decision and its effects on upcoming litigation.



2. Outline of the matter

A plaintiff requested a registration invalidation trial against a defendant who is the patentee of the corresponding case by insisting that inventive step of the related patent invention should be denied and filed a lawsuit for cancellation of a trial decision against a decision of dismissal made by the Intellectual Property Tribunal. When the Patent Court canceled the trial decision due to denial of inventive step for the subject patent invention, the defendant appealed to the Supreme Court and requested a correction of the trial to limit the scope of Claim 1 of the subject case with the Intellectual Property Tribunal. After such correction of trial was confirmed, the defendant insisted on there being grounds for appeal, stating that the original verdict had cause for a retrial.


3. Supreme Court Decision

(1) Issue

Whether the matter that a correction of a trial decision is decided after the close of defense in a fact-finding proceeding in relation to a lawsuit for cancellation of a trial decision against in a patent invalidation trial corresponds to ‘a case that an administrative measure which was the basis of a verdict is changed by another administrative measure’, so such matter could become a cause for a retrial under Article 451(1)(Ⅷ) of the CPC.


(2) Essentials of Verdict

Article 451(1)(Ⅷ) of the CPC regulates “in the case that an administrative measure which is a basis of a verdict is changed by another administrative measure” as being a cause for a retrial. This regulation does not indicate a case in which the administrative measure itself is an object of a hearing or in which a verdict decision is afterward changed definitively or retroactively by another administrative measure. It indicates that an administrative measure which had legal binding force towards a final ruling or became fact finding material in a corresponding final ruling is changed definitively or retroactively by another administrative measure. Here, ‘Became fact finding material’ means that the corresponding administrative measure was adopted as evidential materials to fact finding for a final ruling, and it means that such change of an administrative measure has the possibility of affecting fact finding of a final ruling (refer to Supreme Court announcement on November 25, 1994, 94da33897 decision and Supreme Court announcement on December 14, 2001, 2000da12679 decision, etc.)

According to this, even if a patentee requested a correction of a trial and a correction of trial decision is decided which corrects a patent specification or drawings after the closing of defense of a fact-finding proceeding in relation to litigation for cancellation of a trial decision against a patent invalidation trial, under Article 451(1)(Ⅷ) of the CPC, it cannot be seen as there being a cause for retrial in the original verdict since it was decided based on the specification before the correction.


Specifically, the Supreme Court stated that even if a correction of a trial decision is made, allowing conflict with a decision of fact-finding proceedings based on the reasons that ① a decision of patent, which can be seen as an initial administrative action in a relationship with the trial decision and is the object of a hearing or deciding in a lawsuit for cancellation of a trial decision, cannot be seen as an administrative measure which is the basis of a verdict, ② it cannot be concluded that the contents of a patent invention according to the specification before the correction is definitively changed, ③ it is difficult to comprehend the purpose of every public and jurisdictional relation of laws which occurred by a specification before correction is to change said relationship retroactively and ④ a ground for request is changed according to a correction of trial decision which is decided after the close of defense of the fact-finding proceeding, is difficult to be allowed as it would remarkably delay litigation procedures and settlement of disputes. Accordingly, the Supreme Court decided that those do not correspond to a cause for a retrial under Article 451(1)(Ⅷ) of the CPC and with this decision changed precedents having different purposes.


However, the Supreme Court decided inventive step for the related case based on the specification before correction and thereby saw that inventive step of the subject patent invention before the correction is not denied by prior inventions 1, 2 and 3, and thus annulled the original decision which was decided differently.


4. Meaning of Verdict and its Effect

The intention of this Supreme Court en banc decision seems to be to prevent the so called ‘Catch Ball phenomena’ in which patent-related litigations can go on and on due to corrections. Such intention can be deduced from a Supreme Court’s person’s remarks on the Supreme Court en banc decision that “It is expected that intensive hearings will be held in fact finding proceedings for patent-related lawsuits, and patent disputes will be rapidly solved”. Accordingly, this Supreme Court en banc decision is meaningful in the way that the possibility of delay being caused by a patentee requesting correction of a trial after seeing judgment of fact-finding proceedings or after close of defense thereof is ended for Supreme Court trials. Also, this en banc decision is expected to greatly affect existing patent litigation practice in which requests for a correction of trial have been used by patentees as a defensive measure.


However, a few points should be considered in further discussion of this Supreme Court en banc decision i) ‘in the case that an administrative measure itself as an object of a hearing or a decision of a verdict is changed by another administrative measure afterwards’ is discounted in the range of causes for retrial under Article 451(1)(Ⅷ) of the CPC in order to support the conclusion of this en banc decision and thereby cause of trial was interpreted narrowly, ii) it is still unclear what kind of effect patent registration before a correction becoming invalid in a patent nullity case have on the validity or invalidity of a corrected invention, iii) in the case that a trial decision of invalidity of an invention before correction is not finally confirmed as a Supreme Court decision and a case is remanded to a lower court or in the case that an annulment trial against an original trial decision is confirmed so that the Intellectual Property Tribunal makes a trial decision again, there is still a possibility that a hearing or decision can be made for an invention after correction based on the retroactive effect of a trial decision of correction which is confirmed in the meantime.


According to this Supreme Court en banc decision, trial decisions for correction in relation to future patent invalidity-related cases should be requested before “closure of defense for fact-finding proceedings” at the latest, preferably after getting a trial decision from the Intellectual Property Tribunal, or a trial for correction should be requested immediately after appealing a litigation to the Patent Court and then receiving a trial decision for correction before closure of defense.


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