Supreme Court’s Recent Decision on Res Judicata Effect Emphasises Parties’ Responsibility to Construct and Amend their Claims
Borenius successfully represented ratiopharm Oy and ratiopharm GmbH (“ratiopharm”) in the Supreme Court case concerning the res judicata effect of a final judgement. The Supreme Court rendered its decision in the case on 4 October 2018. The principle of the negative res judicata effect means that a case that has been resolved with a legally valid judgement cannot be brought before a court of law again. In its decision, the Supreme Court considered the matter carefully and scrutinised its prior preliminary rulings on the res judicata effect.
In its final decision in 2010, the Helsinki Court of Appeal ruled that a patent infringement had taken place and resolved the claimants’ original request for compensation for the use of an invention protected by a supplementary protection certificate. The claimant initiated new proceedings in 2012 where it requested additional compensation for the use of the invention based on the patent infringement confirmed in the original case. Ratiopharm, as the respondent, opposed the new request for compensation by arguing that the new case should be dismissed without it being examined because the same case had already been tried before the courts and the outcome of those proceedings was already final and not subject to appeal. Both the District Court and the Court of Appeal dismissed the case due to the res judicata effect of the previous judgement. The question brought before the Supreme Court was whether this new case was, in fact, the same case that had already been resolved with a final judgment in 2010.
The Supreme Court noted now that the claimants’ original request for compensation was not limited to a certain period or to a certain product. On the other hand, the grounds for the additional compensation claim were not based on any new matters or significant changes in circumstances that would have occurred after the final judgment rendered by the Helsinki Court of Appeal in 2010.
Furthermore, the Supreme Court had to decide whether the claimants would have been allowed to present the additional compensation claim already during the original proceedings despite the prohibition to amend a civil action during proceedings arising from the Finnish Code of Judicial Procedure. The Supreme Court concluded that, since the claimants’ additional compensation claim was based on the same circumstances as the original claim and the additional compensation claim could have been examined during the original proceedings, this new case was to be considered the same case that had already been resolved with the final judgement. As such, it was to be dismissed due to the res judicata principle.
Additionally, the Supreme Court underlined the fact that this was a civil case where the principle of party disposition applies. Thus, it is the parties’ responsibility to determine the scope and extent of the case and their claims.
What to keep in mind in future?
For future reference, and especially with regard to lengthy patent disputes, you should take into consideration that when a party to the proceedings has valid grounds to amend its claims during the proceedings, the same party will not have the opportunity to bring forth a new case based on those grounds at a later date. Additionally, the principle of party disposition applies to patent disputes, and therefore the way parties construct their claims – and amend them if need be – determines the scope of the proceedings and the judgement rendered on it.