March 9,2021
Tokyo District Court Case No. 2017 (Wa) 28189; January 17, 2020 (Presiding Judge Sato)
Overview
1. The invention
Relating to each sheet of the laminated body of the sheet-like objects, the scope of claims in the invention specifies that “the first intermediate piece” is formed substantially as the same length as a width dimension of a desired laminate (Element B), “the second intermediate piece” is formed approximately in a width of 1/2 of the first intermediate piece (Element C), and “the first folded piece” is formed substantially in the same width of the second intermediate piece (Element D).
As can be seen from the figure attached to the description of the defendant’s products which the plaintiff created, “the first intermediate piece”, “the second intermediate piece”, and “the first folded piece” are as follows:
2. Issue
(Satisfaction of Element C: “the second intermediate piece” is formed in a width of 1/2 of the first intermediate piece)
- Judgement of the court on the interpretation of “approximately”
“Approximately” (hobo in Japanese) described in Element C etc. generally means “almost or nearly” when used in relation to numerical values. The word implies that one numerical value approximates the other value to an equal degree, even though the two values do not exactly or completely coincide with each other.
Therefore, it is natural that “approximately” as a matter specifying the invention relating to its dimensions is also understood as mentioned above.
- Plaintiff’s assertion
In consideration of the problem to be solved by the invention, the means for solving the problem and the effect of the invention, …it should be interpreted that “approximately in a width of 1/2” does not include widths larger than 1/2, but includes a wide range of widths smaller than 1/2 prescribed in “the above a” (“the above a” = “widths smaller than widths prescribed in a”: For example, if the width of a laminated body is approximately 200 mm and the width of a desired laminate (the width of the first intermediate piece) is approximately 100 mm, the allowed ranges of widths which satisfy the conditions that “the width of the second folded piece is smaller than 1/2 of the width of the first intermediate piece and smaller than the width of the first folded piece” prescribed in the scope of claims limited in the corrected invention are 50-34 mm for the second intermediate piece, 50-34 mm for the first folded piece and 0-32 mm for the second folded piece. Therefore, “approximately in a width of 1/2” should be interpreted to include the above range of widths in consideration of the problem to be solved by the invention, the means for solving the problem, and the effect of the invention.
- Defendant’s assertion
When the defendant’s products fall under any of the following: a) the width of the second intermediate piece is smaller than 90% of 1/2 width of the first intermediate piece or larger than 110% of the said width; and b) each of the defendant’s products obtain no effect of the invention, it is reasonable to consider that the second intermediate piece of the defendant’s products does not satisfy “approximately in a width of 1/2”, and thus, the defendant’s products do not satisfy Element C.
- Judgement of the court on the interpretation of “approximately”
≪Literal interpretation of the claim recitation “approximately in a width of 1/2”≫
In consideration of the problem to be solved by the invention, the general meaning of “approximately”, and the technical significance of the width dimension of the second intermediate piece prescribed in Element C, the recitation “approximately in a width of 1/2” in the said Element is said to be assumed that the width is set as close to 1/2 as possible even though it is not necessary that the width is set at exactly 1/2. Therefore, when a deviation rate between the width of the second intermediate piece and the 1/2 width of the first intermediate piece is larger than 10%, it is reasonable to interpret that the width of the second intermediate piece does not satisfy “approximately in a width of 1/2” even after taking into consideration various errors or elasticity of the sheet-like objects etc.
≪Whether or not the defendant’s products satisfy Element C (when only a small number of sheets satisfy a deviation rate smaller than 10%, the products do not satisfy Element C)≫
With regard to [the defendant product ②], …there are only three (3) sheets out of all the eighty (80) sheets which satisfy the ratio of the width of the second intermediate sheet to 1/2 width of the first intermediate sheet in the range from 90% to 100% and the average ratio remains 83%. Furthermore, according to the measurement results by the defendant PPJ, there are thirty (30) sheets of all eighty (80) sheets which satisfy the said ratio within 90% to 100%, however, all the sheets which satisfy the said ratio are even numbered sheets; conversely, there are no odd numbered sheets which satisfy the said ratio, and moreover, the overall average ratio remains 84%. ⇒ The defendant’s products ② do not satisfy Element C.
With regard to [the defendant product ③], …there are six (6) sheets which satisfy the said ratio in the range from 90% to 100% and the average ratio is 82%. According to the measurement results by the defendant PPJ, there was one (1) sheet which satisfies said ratio and the average ratio is 81%. ⇒ The defendant’s products ③ do not satisfy Element C.
- Some considerations
With regard to the literal interpretation of the claim recitation “approximately in a width of 1/2”, it could be interpreted that the plaintiff’s assertion was groundless. However, it cannot be said that the assertion itself was groundless (with the doctrine of equivalents which the plaintiff did not assert in mind), aside from whether the claim recitation is good or bad, since the plaintiff asserted that in view of the problem to be solved by the invention, the problem could be solved by setting the width of the second intermediate sheet smaller than 1/2 width of the first intermediate sheet even though the ratio was smaller than 90%. Therefore, it was enough to interpret that approximately in a width of 1/2” meant “smaller than a width of 1/2”. The judgement dismissed the plaintiff’s assertion on the grounds that the problem which the plaintiff asserted was not described in the patent specification etc. Conversely, however, it is considered that the plaintiff tried every possible assertion since the plaintiff brought up the issue of what was found as the problem to be solved by the invention for discussion.
According to the patent specification, the problems to be solved by the invention relating to the recitation “approximately in a width of 1/2” in Element C are “to provide ① a structure capable of stacking a sheet-like object having a larger size while a size of a package is equal to a size of a conventional one, and ② a laminated body of a sheet-like object having a stable feeling when a package is stacked”. In this regard, the judgement deemed as follows: “The width of the first intermediate piece prescribed in the patent specification is formed substantially in the same width of the laminated body of the sheet like object. Therefore, if the width of the second intermediate piece and the first folded piece having the same width are set smaller than 1/2 width of the first intermediate piece, even if the second folded piece is formed, the total size of the sheet-like object is smaller than the size of a conventional one. Eventually, problem ① cannot be solved and the effect of the invention cannot be obtained. On the contrary, if the width of the second intermediate piece is set larger than 1/2 width of the first intermediate piece, the second intermediate pieces overlap each other. Consequently, the bulky sheets become unstable, and thus, problem ② cannot be solved. For the above reasons, in order to solve problems ① and ② of the invention mentioned above and obtain the desired effect, it is desirable that the width of the second intermediate piece is set as close to 1/2 width of the first intermediate piece as possible within the range not exceeding 1/2 width.”
On the premise of the above literal interpretation of the claim recitation, however, there were several sheets of all the eighty (80) sheets of one defendant’s product which satisfied the deviation rates smaller than 10% of 1/2. The plaintiff did not assert that the said several sheets infringed the patent right. Furthermore, since the patent is a “Laminated Body of Sheet-like Objects”, even if the plaintiff asserted said infringement, the plaintiff’s assertion would not be founded. Unlike this case, in the case that the patent is “each sheet of the laminated body” and each sheet of the defendant’s products can be divided, patent infringement can be constituted at least as far as relating to said each divided sheet which satisfies the element, by specifying said each sheet as one defendant’s product.
In this context, particularly with regard to an invention where a numerical limitation has a technical significance, it is necessary to consider for what product as an invention we should obtain a patent right and what product we should specify as a defendant’s product.
Writer: Hideki TAKAISHI
Supervising editor: Kazuhiko YOSHIDA
Contact information for inquiries: h_takaishi@nakapat.gr.jp
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