1 Restriction on “Defense of Invalidity” in the lawsuits under the principle of faith
In the Court of Second Instance in this case, in addition to the above points, the appellants of an infringement lawsuit other than a claimant or an intervenor of an invalidation trial who did not file a suit for revocation of the trial decision of dismissing the request for the invalidation trial are restricted from making a defense of invalidity based on the same fact and the same evidence.
IP High Court Case 2017 (Ne) No. 10086 “Skin Beautifying Roller” was a case in which a claimant who did not file a suit for revocation of a trial decision of dismissing the request for the invalidation trial was restricted from making a defense of invalidity. However, this judgment broadened the subjective scope of the above judgement in which the defense of invalidity is restricted to persons other than the claimant and the intervenor.
Thus, if an interested person files a request for a trial for invalidation and does not file a suit for revocation of the trial decision of dismissing the request for the invalidation trial, the defense of invalidity in the infringement lawsuit can be restricted.
The argument of this judgement is not limited to the case where an interested person filed a request for a trial for invalidation and did not file a suit for revocation of a trial decision dismissing the request for the invalidation trial, but the appellant filed a suit for revocation of the trial decision but it was dismissed and the decision became final. Therefore, in any case, it is necessary to pay close attention to the case where the alleged infringers make a defense jointly.
2 Satisfaction of “Used for ●●●●”
The defendant’s product is made by winding a medicine packaging sheet around a plastic cylindrical portion, and the user inserts the used hollow core tube of the medicine packaging roll paper made by the plaintiff in a state where the ring rubber is wound around the shaft core hollow portion of the cylindrical portion so that the two are integrated (=”integrated product”). In this case, the issue was whether or not this “integrated product” fell under the technical scope of a “subcombination claim” invention.
The judgment of the second instance admitted (indirect) infringement of the “subcombination claim” on the ground that the claim term “●● is used for ●●●” is a matter of specifying an invention which specifies the structure, function, etc. of the invention of the product, and means “capable of being used”, thus whether or not the integrated product is actually used in ●●●●● does not influence the decision of satisfying the requirements. (The conclusion was the same as that of the prior instance, but this judgement clearly found that ●●● satisfies the term if it is “capable of being used”.)
In addition, since the integration is carried out by the user, the patentee alleged indirect infringement (an “only” requirement was established). Other issues were violation of clarity requirements, lack of inventive step, and the amount of damages (omitted).
Writer: Hideki TAKAISHI
Supervising editor: Kazuhiko YOSHIDA
Contact information for inquiries: firstname.lastname@example.org
Hideki TAKAISHI (The person in charge of this article)
Attorney at Law & Patent Attorney
Nakamura & Partners
Room No. 616, Shin-Tokyo Building,
3-3-1 Marunouchi, Chiyoda-ku
Tokyo 100-8355, JAPAN