Legal Updates

[Patent★] Patent Administrative Litigation “Training Apparatus” Case: A case in which the Intellectual Property High Court recognized an inventive step on the ground that it was not permitted to extract a part of a configuration from an embodiment of a cited reference and recognize it as a cited invention; moreover, it was not easily conceivable to consider removing parts other than the part in question.

Intellectual Property High Court Case No. 10040 (Gyo-ke) 2023, November 16, 2023 “Training Apparatus” Case (Presiding Judge Shimizu) = Case No. 10041 (Ne) 2023 (Presiding Judge Shimizu) (Original Judgment: Osaka District Court Case No. 3847 (Wa) 2022)   Excerpts from the Judgment, and Some Considerations   1. Scope of the Claim (Claim 1) “A pair […]

[Patent★] Patent Administrative Litigation “Gas-System Extinguishment Facility”: A case in which the Intellectual Property High Court reversed a JPO decision on patent opposition in which a sub-citation was excessively abstracted (high-level conceptualization), and recognized inventive step.

Intellectual Property High Court Case No.10009 (Gyo-ke) 2022, March 27, 2023 “Gas-System Extinguishment Facility” Case (Presiding Judge Otaka)   [Excerpts from the Judgment and Some Considerations]  1. Highlights of the Judgment In the judgment, the court reversed the JPO decision on patent opposition, finding that the JPO decision ignored “rupture disk” from the technical matter […]

[Patent★] Patent Infringement Litigation “A composition containing 2,3-dichloro-1,1,1-trifluoropropane, 2-chloro-1,1,1-trifluoropropene, 2-chloro-1,1,1, 2-tetrafluoropropane, or 2,3,3,3-tetrafluoropropene” Case: A case in which the court held that for inventions that identify impurities or byproducts for which there is no description of effects in the specification, support requirements were violated due to the lack of a description of the issue, etc.

Intellectual Property High Court Case No.10094 (Ne) 2022, October 5, 2023 (Presiding Judge Shimizu)   1. Claim 1 of the Patented Invention A composition comprising HFO-1234yf, HFC-143a, and HFC-254eb, wherein the composition contains no more than 0.2 weight percent HFC-143a and no more than 1.9 weight percent HFC-254eb.   2. Excerpts from the Judgment (Judgment […]

[Patent★★] Patent Infringement Litigation “5-aminolevulinic acid phosphate salt” Case: A case in which the Tokyo District Court denied the eligibility of the cited invention yet approved the novelty of the present invention because the substance name of the invention was mentioned in the cited document, even though it was not feasible for a person skilled in the art at the priority date to carry out the invention without trial and error.

Tokyo District Court Case No.9716 (Wa) 2022, July 28, 2023 (Presiding Judge Shibata)   Summary of the Judgment and Some Considerations   1. Scope of the Claim (Claim 1) “5-aminolevulinic acid phosphate salt represented by the formula …”   2. Concerning the Satisfaction of Constituent Requirements for the Patented Invention: Invention of a new substance […]

[Patent★★] Patent Administrative Litigation “Aminosilane” Case: A case in which the Intellectual Property High Court recognized novelty and inventive step on the grounds that the substance name was listed in the cited reference, even though at the time of priority date, it was not possible for a person skilled in the art to manufacture or obtain the substance without trial and error.

Intellectual Property High Court Case No.10097 (Gyo-ke) 2022, January 16, 2024 “Aminosilane” Case (Presiding Judge Honda)   Excerpts from the Judgment, and Some Considerations 1. Scope of the Claim (Claim 1) “Aminosilanes represented by the following formula:” [Chemical formula 1]   2. Excerpts from the Judgment (1)  Novelty “… In the field of chemistry, at […]

［Patent★★] Patent Administrative Litigation “Antigen Binding Proteins to Proprotein Convertase Subtilisin Kesin Type 9 (PCSK9)”: A case in which the Intellectual Property High Court rejected the logic that the support requirement is satisfied by reciting a particular effect in the claim concerning a functionally expressed reach-through claim unlike the final judgment in the previous case.

Intellectual Property High Court Case No.10093 (Gyo-ke) 2022, January 26, 2023 “Antigen Binding Proteins to Proprotein Convertase Subtilisin Kesin Type 9 (PCSK9)” Case (AMGEN v. REGENERON) (Presiding Judge Kanno) (The final judgment in the previous case was Intellectual Property High Court Case No. 10225 (Gyo-ke) 2017 and the petitioner for invalidation trial was Sanofi.)   […]

[Patent★] Patent Administrative Litigation “Marine Vessel” Case: The fourth case in which the Intellectual Property High Court recognizes an inventive step through a “Disclaimer”．

Intellectual Property High Court Case No.10151 (Gyo-ke) 2021, August 23, 2022 “Marine Vessel” Case (Presiding Judge Shoji) = Case No.10150 (Gyo-ke) 2021   Excerpts from the Judgment, and Some Considerations   1. Scope of the Claim (Claim 1) “At least one watertight compartment (excluding tanks)”   2. Concerning “Disclaimer” and Addition of New Matters (Requirements […]

[Patent★] Patent Infringement Litigation “Massage Machine” Case: A case in which the decision of the Osaka District Court was reversed and the alleged infringing products were determined to be included in the technical scope of the patented invention. A case in which the court held that Article 102, Paragraph 2, of the Patent Act is applicable when the patentee’s products and the infringing products compete abroad. A case in which the court indicates the norm regarding the overlapping application of Article 102, Paragraph 3, of the Patent Act in relation to the portion of the presumption overturned by Article 102, Paragraph 2, of the Patent Act.

Intellectual Property High Court Grand Panel Case No.10024 (Ne) 2020, October 20, 2022   〈phase for examination on damages (Excerpts from the general theory part of the judgement)〉 1. Concerning Application of Article 102, Paragraph 2, of the Patent Act to the sale and export of “competing products” by the patentee (1) The judgment follows […]

[Patent★] Patent Infringement Litigation “Bone Fracture Fixation System” Case: A case in which the Intellectual Property Court approved the application of Article 102, Paragraph 2, of the Patent Act based on the fact that a group company which is a wholly owned subsidiary of a common ultimate parent company embodies the patent right when said group company sells products.

Intellectual Property High Court Case No.10091 (Ne) 2021, April 20, 2022 (Presiding Judge Honda)   1. Summary of the Judgment In the Judgment, with regard to the scope of application of Article 102, Paragraph 2, of the Patent Act, based on the established decisional framework in preceding cases that the provision is applicable “where circumstances […]

[Patent★] Patent Infringement Litigation “Device for displaying ladder circuits in the event of an abnormality in a programmable controller” Case: A case in which the Intellectual Property High Court held that each existing component was considered an essential component for the solving the problem of the invention. A case in which the Intellectual Property High Court held that it is sufficient for the defendant to recognize and acknowledge that there is high probability that persons within the range of non-exceptional cases will use the accused product to infringe the patent.

Intellectual Property High Court Case No.10007 (Ne) 2019, August 8, 2023 (Presiding Judge Kanno)   [Summary of this Judgement] 1. Concerning Indirect Infringement (Article 101, Item 2 of the Patent Act) (1) Combination of existing components and recognition of “products essential to solve the problem” In this judgement, the court held as follows and recognized […]

[Patent★] Patent Infringement Litigation “Electroformed Tube” Case: The first and only lower court case to require “impossible or impractical circumstances” with respect to clarity requirement of a product invention specified by a manufacturing method, and to hold that the clarity requirement was violated.

Intellectual Property High Court Case No.10140 (Gyo-ke) 2021, November 16, 2022 (Presiding Judge Kanno)   [Summary of this Judgement] 1. Excerpts from the Judgement (Clarity requirement for product by process claims (PBP claims)） “Even in the case where a manufacturing method of a thing is described in the claims of a patent for an invention […]

[Patent★★] Patent Infringement Litigation “Image Forming Apparatus” Case (A case in which a divisional application was filed from a parent application to a child application and then to a grandchild application, the court held that the filing date of the grandchild application was retroactive only until to the actual filing date of the child application on the grounds that the child application was illegal for violation of divisional filing requirements and addition of new matter, and denied inventive step based on publicly known documents after the filing date of the parent application but before the actual filing date of the child.)

Tokyo District Court Case No.23164 (Wa) 2019, November 11, 2021 (Presiding Judge Tanaka)   [Summary of this Judgement, and Relevant Court Cases on Incidental Issues] 1. Excerpts from the Judgement (the “Image Forming Apparatus” case Judgement ) （the normative judgement part + the judgement part of application to the case） “Since the specification at the […]

[Patent★★] Grand Panel Decision of the Intellectual Property High Court (foreign server issues and contrast with prior case decisions are included)

―(Following Case) Intellectual Property High Court Case No.10046 (Ne) 2022, May 26, 2023 (Presiding Judge Otaka) A case in which the act of “production” by FC2 in the U.S. of a “(comment distribution) system” that includes servers located outside of Japan was evaluated as an act in Japan. The Patentee prevailed in a reversal.   […]

[Patent★] “Solenoid Actuator” Patent Infringement Injunction Appeal Court Case: The case in which the Intellectual Property High Court changed the claim interpretation of whether the solenoid needs to be “sealed” by the end member itself, and the patentee won a reversal.

Intellectual Property Hight Court Case No. 2018 (Ne) 10034, March 14, 2022 (Presiding Judge Kanno)   [Summary of the Judgement and Comments] 1. Claim 1 “A solenoid stored in a fitting hole provided in a counter housing member, the solenoid comprising: a case member configured to be inserted into the fitting hole; a coil member […]

[Patent★] “Light Source, Backlight Unit Including Light Source and Liquid Crystal Display Device” Case: The case in which the Intellectual Property High Court denied the inventive step on the grounds that it was possible to extract a coherent technical idea from multiple paragraphs in the cited reference and that the numerical limitation without data was a design matter.

Intellectual Property Hight Court Case No. 2021 (Gyo-ke) 10096, June 15, 2022 (Presiding Judge Honda)   [Summary of the Judgement and Comments] 1. Excerpts from the Judgement on inventive step (① It is possible to extract a coherent technical idea from multiple paragraphs in the cited reference.) “…Whereas paragraphs [0012], [0013], and [0015] of the […]

[Patent★] “Retroreflecting sheet having printed layer” Patent Infringement Injunction Case: A case in which the Intellectual Property High Court considered the royalty rate (5%) proposed by the patentee during pre-litigation negotiations as one factor and decided that the royalty rate to be determined ex post facto would be twice that rate (10%).

Intellectual Property Hight Court Case No.1130 (Wa) 2018, August 31, 2021 (Presiding Judge Tanaka)   [Summary of the Judgement, Introduction of the IP High Court’s Grand Panel Case and Some Consideration (Trends After the Grand Panel Case)]   1. Intellectual Property Hight Court Case No.1130 (Wa) 2018, August 31, 2021 (Presiding Judge Tanaka) ～This Judgement～ […]

[Patent★★]“LASER BEAM WORKING MACHINE” Case: A case in which the Intellectual Property High Court found the absence of grooves from the drawings in the specification and allowed the correction of the claims excluding the grooves. A case in which the court found inventive step because the grooves were essential to the cited invention, and therefore, there were grounds for hindrance.

Intellectual Property Hight Court Case No.10111 (Gyo-ke) 2021, June 22, 2022 (Presiding Judge KANNO)   [Summary of the Judgement and Comments] 1. Scope of the Patent Claims “…A laser processing apparatus comprising a silicon wafer in which the slot along the aforementioned scheduled cutting line is not formed in the silicon single crystal structure portion…” […]

[Patent★★] “Wiring Box” Case: Litigation of Rescinding the Trial Decisions Made by the JPO on a Patent Case.A case in which the Intellectual Property High Court held that when a divisional application was filed with a parent, child, and grandchild applications …, the filing date of the grandchild’s application was not retroactive to the filing date of the parent’s application if the child application violated the divisional requirement/added new matter.

Intellectual Property Hight Court Case No.10263 (Gyo-ke) 2016, September 26, 2017 (Presiding Judge Takabe)   [Summary of the Judgement and Comments]   1. Excerpts from the decision (“Wiring Box” case decision) “The following are the substantive requirements to find the divisional application to be legal: [i] the description or drawing of the original application includes […]

[Patent★] Litigation Seeking of Rescinding the Trial Decision Case: A case in which a general problem that could be recognized by a person skilled in the art on the filing date of the patent application is also applicable to the cited invention, although there is no reference to the cited reference, therefore, the motivation is admitted. A case in which the Intellectual Property High Court denied the inventive step and rescinded the JPO decision.

 Intellectual Property Hight Court Case No.10120 (Gyo-ke) 2019, May 19, 2021 Presiding Judge TSURUOKA   [Summary of the Judgement and Comments] 1. Summary of the Judgement The court held that“the problem of the occurrence of adverse thrust force (adverse thrust load condition)”was not directly mentioned in the primary reference (Ko 1), but was described in […]

[Patent★] “Equol-containing extract, method for production thereof” Patent infringement Appellate Court Case: A case in which the Intellectual Property High Court presumed the method for producing the Appellee’s products by applying Article 104 of the Patent Act. A case in which the Intellectual Property High Court granted a priority claim and determined the Original Filing Date as “the date of the patent application”. A case in which the Patentee won a reversal in the Intellectual Property High Court.

Intellectual Property Hight Court Case No.10059 (Ne) 2020, February 9, 2022 (Presiding Judge Honda)   [Summary of the Judgement and Comments] 1. The biggest issue in this case ~Article 104 of the Patent Act The biggest issue in this case is “whether the Appellee’s material is presumed to have been produced using the method of […]

[Patent★] “Mounting Structure for Circuit Breaker” Case: A case in which the Intellectual Property High Court found that the divisional application in which the specific description in the original specification with respect to a configuration not directly related to the problem of the invention was abstracted and generically conceptualized and added to the scope of the claims does not fall under the addition of new matters. A case in which the Intellectual Property High Court denied the easily-conceived property for one of the reasons that the parts are small.

Intellectual Property Hight Court Case No.2019 (gyo-ke) 10046, July 22, 2020 (Presiding Judge Ohtaka)   1. Concerning Inventive Step Concerning inventive step (easily-conceived property), the Intellectual Property High Court found that “it is difficult to consider that it was easy to conceive of adopting a configuration of small parts such as a leaf spring or […]

[Patent★] “X-ray Fluoroscopic Imaging Apparatus”Case: A case in which the Intellectual Property High Court emphasized that the present invention newly took up a task in question as the problem to be solved, and denied easily-conceived property (recognized inventive step) on the ground of the difference between the problem to be solved by the present invention and the problem to be solved by the main cited invention.

Intellectual High Court Case No. 2019 (Gyo-ke 10159) April 15, 2021 (Presiding Judge Kanno)   1. Difference between the present invention and the main cited invention The claimed invention “comprises an image rotating mechanism, which rotates only the X-ray image displayed on said display part, from among said X-ray images,” whereas the cited invention has […]

[Patent★] Patent Infringement Appellate Court Case demand for injunction: A Case in which, concerning the interpretation of the claim language of a plurality of “chambers”, the Intellectual Property High Court found that the defendant’s products do not satisfy the constituent elements of the patented invention of a product with the limitation “can be communicated with each other”. On the other hand, the defendant’s methods satisfy the constituent elements of the patented invention of a method without limitation. A Case in which the Intellectual Property High Court reversed the prior instance judgement which found that both defendant’s products and defendant’s methods did not satisfy the constituent elements of the patented invention.

 Intellectual Property Hight Court Case No.2021 (Ne) 10007, November 16, 2021 (Presiding Judge Honda) (Prior Instance: Tokyo District Court Case No. 2018 (Wa) 29802, December 24, 2020 (Presiding Judge Tanaka）   1. Interpretation of the claim language in the prior instance judgement: Tokyo District Court Case No. 2018 (Wa) 29802 (Excerpt from summary of the […]

[Patent★★] A Case in which the Intellectual Property Hight Court acknowledged joint direct infringement even if some part of the method invention was worked by another entity.

 Intellectual Property Hight Court Case No.2021 (Ne) 10029, September 21, 2021(Presiding Judge Shoji) （Osaka District Court Case No. 2017 (Wa) 10716, February 18, 2021（Presiding Judge Sugiura), the same conclusion）     1. Excerpt from the Judgements Concerning Theory of Fulfillment of Patentability Conditions among Multiple Entities “…The defendant sold the defendant’s products and carried out […]

[Patent★] “Vinylidene chloride system resin wrap film” Patent infringement Case: A case in which the Tokyo District Court acknowledged inventive step by denying the ease of focusing on the “parameter” when it was not known whether the physical property value was satisfied even if the composition value was satisfied. Moreover, the Tokyo District Court recognized the support requirement and found that the defendant’s products fall within the technical scope of the invention.

Tokyo District Court Case No. 2019 (Wa) 31214, November 5, 2020 (Presiding Judge Tanaka)   Excerpt from the Judgement (Section on the inventive step of the parameter invention) * The Tokyo District Court denied the ease of focusing on the parameters and acknowledged inventive step. * The Tokyo District Court acknowledged the significance of the […]

Amendment to Limit the Scope of the Claim During the Proceedings and Application of the Doctrine of Equivalence (International Trend in Case Law and Overview of Japanese Case Law)

Japanese case law has established the following five requirements for finding patent infringement under the doctrine of equivalents (see Ball Spline Bearing Case, Supreme Court decision of February 24, 1998, and Maxacalcitol Case, Supreme Court decision of March 24, 2017). (1) An element of a patented invention that is different from the alleged infringer’s product […]

【PATENT★】”LEARNING IMPLEMENT” Appeal Case: A case in which the Court found that the plaintiff’s (appellant’s) product merely produces an additional effect in addition to producing the effect of the patented invention, and acknowledged the existence of the second requirement of the doctrine of equivalents.

―Intellectual Property High Court Case No. 2021 (Ne) 10040 of October 14, 2021 (Presiding Judge Masayuki KANNO) [CS related invention] ― (The court of first instance also found that the plaintiff’s product constitutes patent infringement under the doctrine of equivalents [the Osaka District Court Case No. 2019 (Wa) 3273 of March 25, 2021 (Presiding Judge […]

[Patent★★] “LINE Furufuru” Patent Infringement Case: ① A case in which the Tokyo District Court recognized the invention step on the following ground. The court denied the defendant’s logic that only the “GPS search function” should be extracted from the secondary reference and applied to the primary reference. Thus, the court recognized a hindrance to apply the “GPS search function” to the primary reference. ② A case in which the Court found that the defendant’s services which were not examined at the phase for examination on infringement were not subject to the compensation for damages; the defendant’s sales which were regarded as remotely related to the “Furufuru” function have no causal relationship, thus, were not subject to compensation for damages under Article 102, paragraph (3) of the Patent Act.

–Tokyo District Court Case No. 2017 (Wa )36506 May 19, 2021 (Presiding Judge SATO)   1. Excerpt from the Judgement (Part of the judgment on “sales” at the phase for examination on damages) (C)  The defendant’s sales related to the registration of friends and exports to overseas companies other than the “Furufuru” function. The plaintiff […]

Increase in Patent Annuities And Trademark Registration Fees on April 1, 2022　

In accordance with the 2021 amendment to the Patent Act, patent annuities will be increased for the first time in about 30 years. Trademark registration fees, etc., will be also raised. The new fee schedule is effective on April 1, 2022. It may be advisable for you to pay before March 31, 2021 to save […]

【PATENT★★★】”Process for Producing L-glutamic Acid” Case: A case in which (i) patent infringement under the doctrine of equivalents is found to be constituted with respect to a process excluded from the scope of the claims by an amendment which was made in response to a notice of reasons for rejection (lack of an inventive step) (such finding follows a global trend to use a “flexible bar” approach in a flexible way) (ii) under the circumstances where an entity which made a transfer of the defendant’s product is different from an entity which made an offer for the transfer thereof, and the transfer of the defendant’s product was made outside Japan.

―Tokyo District Court Case No. 2016 (Wa) 25436 of September 24, 2020 (Judge Norio YANO)―   ★Main text of the case   1. Point ① of the decision (regarding the “doctrine of equivalents”) (1) The third requirement (the Court recognized the conceivability of the interchange in the same framework as that for the determination of […]

【PATENT★★】”FLUID FEEDING APPARATUS, …AND PROGRAM” Case: A case in which the Court denied the valid admission by the defendant with regard to whether the structure of the defendant’s product meets the constituent features of the Present Invention in the Answer submitted in the original case, and revoked the original decision which found that there are no disputes on the constituent features, finding that the structure of defendant’s product does not cause any problem to be solved by the Present Invention, and thus does not fall within the technical scope of the Present Invention (the defendant’s product does not literally satisfy the constituent features of the Present Invention).

―Intellectual Property High Court Case No. 2020 (Ne) 10044 of June 28, 2021 (Presiding Judge Toshihiko TSURUOKA)―   ◆Main text of the case   1. An excerpt from the decision …[T]here were the following three problems…: (i) …when a prepaid card is inserted into a card reader/writer, the prepaid card cannot be seen from the […]

[Patent★★] “Brunnian Link Making Device and Kit”Case: A case in which the “partial priority” under the Paris Convention was approved

–Intellectual High Court Case No. 2019 (Gyo-ke 10132) November 5, 2020 (Presiding Judge Tsuruoka)   1. Assertion by the Petitioner of trial for patent invalidation = The Plaintiff The Exhibit Ko 1 moving image was posted to a moving-image posting website before the PCT application and after the Present U.S. Provisional Application (during the priority […]

[Patent★] “Cellulose Powder” Case: A case in which the court held different judgements that the enablement requirement is satisfied but the support requirement is not satisfied.

–Tokyo District Court Case No. 2017 (Wa) 24598 on March 26, 2020 (Presiding Judge Shibata)   1. The enablement requirement is satisfied ⇒With regard to the enablement requirement, the issue was whether it is possible to measure an angle of repose and an average particle diameter under the conditions described in the detailed description of […]

【PATENT★★】”ANTIPRURITIC AGENT” Case: A case in which the Court found that there is no motivation for using a compound stated in the cited document as an antipruritic agent on the grounds that description in the cited document is only a “hypothesis which lacks technical grounds”, and “there was plenty of room remaining for a study at the time of the priority date of the Present Invention”. (The patent at issue in this case is the same as that in Intellectual Property High Court Case No. 2020 (Gyo-ke) 10063, in which the court revoked the Japan Patent Office’s decision rejecting an application for the registration of extension of the duration of the patent at issue.)

―Intellectual Property High Court Case No. 2020 (Gyo-ke) 10041 of March 25, 2021 (Presiding Judge Yoshiyuki MORI)―   ◆Main text of the case   【Summary and consideration of the judgment rendered in this case】   1. Patent Claim “An antipruritic agent comprising an opiate K receptor agonist as an effective component, wherein the opiate K […]

【PATENT★】”COMPOSITIONS COMPRISING 2,3-DICHLORO-1,1,1-TRI- FLUOROPROPANE, 2-CHLORO-1,1,1-TRIFLUOROPROPENE, 2-CHLORO-1,1,1,2- TETRAFLUOROPROPANE, OR 2,3,3,3-TETRAFLUOROPROPENE” Case: A case in which the Court found that an amendment is considered to have added new matters (violation of requirements for amendments) on the grounds that there is no description of the reason for the necessity of the specific combination of three types of compounds which are separately described in the specification.

―Tokyo District Court Case No. 2019 (Wa) 30991 of March 3, 2021 (Presiding Judge Koichi TANAKA)   ◆Main text of the case   【Summary and consideration of the judgment rendered in this case】   1. An excerpt from the decision with regard to the addition of new matters (underline added) …[I]n the originally attached specification, […]

【PATENT★】”LEARNING IMPLEMENT” Case: A case in which the Court found that the plaintiff’s product constitutes patent infringement under the doctrine of equivalents and dismissed the plaintiff’s claim for confirmation of absence of right to demand an injunction.

―Osaka District Court Case No. 2019 (Wa) 3273 of March 25, 2021 (Presiding Judge Masaki SUGIURA)   ◆Main Text of the case   1. Patent Claim “A learning implement…includes…a picture selection means for selecting picture data of one set of pictures from picture data of a plurality of sets of pictures recoded on the picture recording […]

[Patent★★] “Interleaving Paper for Glass Plates” Case: A case in which the court deemed that the invention of the prior application falls under an “invention” which is appropriate material as a cited invention (Article 29-2 of the Patent Act). If an invention lacks concreteness, or technical content of an invention is insufficiently disclosed even taking into consideration the common general technical knowledge of a person ordinarily skilled in the art, it does not fall under the “invention” and does not have an effect of excluding the later application provided for in this Article

Intellectual High Court Case No. 2020 (Gyo-ke 10005) on November 10, 2020 (Presiding Judge TAKABE)   Overview   1. The scope of the claim Interleaving paper for glass plates, which is produced from wood pulp as a raw material, wherein an amount of silicone contained in the paper is 0.5 ppm or less　relative to absolute […]

【PATENT★】”BEAUTY INSTRUMENT” Patent Infringement Case: A case in which the Tokyo District Court found that the defendant’s product, even after a design change, constitutes patent infringement under the doctrine of equivalents.

―Tokyo District Court Case No. 2017 (Wa) 32839 of March 19, 2020 (Presiding Judge Koichi TANAKA)   ◆Main text of the case   1. An excerpt from the Judgment (doctrine of equivalents) [Regarding the first and second requirements for equivalence] …it should be said that the technical idea (the principles of the solution of the […]

【PATENT★】”GAME PROGRAM” Case (GREE): A case in which the IP High Court revoked a decision of the Japan Patent Office, finding that it is not appropriate to determine, without specifying the reasoning conducted by using known technology etc., that the invention in question could be easily conceived by a person skilled in the art because the constitution related to the difference is “mere arrangement for a game”.

―IP High Court Case No. 2019 (Gyo-ke) 10085 of June 4, 2020 (Presiding Judge TSURUOKA)   ◆Main text of the case   1. An excerpt from the Judgment When compared with the Present Invention, replenishment of a card in the Cited Invention…is different from that in the Present Invention in the destination of the card […]

【PATENT★】”CELECOXIB COMPOSITIONS” Case: A case in which the IP High Court recognized inventive step of a parameter invention, finding that the parameter could not be easily conceived by a person skilled in the art.

―IP High Court Case No. 2019 (Gyo-ke) 10137 of October 28, 2020 (Presiding Judge OTAKA)   ◆Main text of the case   1. Patent Claim (Patent No. 3563036) “A pharmaceutical composition comprising one or more orally deliverable dose units, each comprising particulate celecoxib in an amount of about 10 mg to about 1000 mg …having […]

【PATENT★★】”Information Storage Device” Patent Infringement Case (Ricoh v. Toner cartridge recycling companies): This is the first case in which the Tokyo District Court recognized the plaintiff’s acts as a violation of the Antimonopoly Act (Article 19 and Article 2, Paragraph 9, Item 6 of the Antimonopoly Act, and Paragraph 14 of the Designation of Unfair Trade Practices) and dismissed the plaintiff’s claims for injunction and compensation for damages on the grounds that said claims constitute an abuse of rights.

Tokyo District Court Case No. 2017 (Wa) 40337 of July 22, 2020 (Presiding Judge SATO)     1.　An excerpt from the Judgment “Article 21 of the Antimonopoly Act provides that the ‘provisions of this Act do not apply to acts found to constitute an exercise of rights under the…Patent Act…’ However, it is understood that […]

【PATENT ★】”VIRUS” Patent Infringement Case: A case in which the Tokyo District Court found to the effect that experiments or research conducted to obtain marketing approval for a new (original) medicinal product also correspond to the “working of the patented invention for experimental or research purposes” set forth in Article 69, Paragraph 1 of the Patent Act. The right of a prior user was acknowledged.

―Tokyo District Court Case No. 2019 (Wa) 1409 of July 22, 2020 (Presiding Judge SATO)     (1)  Article 69, Paragraph 1 of the Patent Act It is provided that: “A patent right is not effective against the working of the patented invention for experimental or research purposes.”   (2)  The Supreme Court Decision of […]

【PATENT ★★】”PIT CONSTRUCTING MACHINE” Case: A case in which the IP High Court found that (i) since the purposes of a primary cited invention and a secondary cited invention are different, the structure of the primary cited invention needs to be changed correspondingly to the difference in the purposes in order to be combined with the secondary cited invention (there is a factor teaching away from combining the secondary cited invention with the primary cited invention), and (ii) a part of a structure of a cited invention is not allowed to be extracted independently (the limitations of specifying technical contents as generic concepts). The Court acknowledged an inventive step of the Present Invention.

―IP High Court Case No. 2019 (Gyo-ke) 10102 of May 24, 2020 (Presiding Judge TAKABE)     【Summary and Consideration of the Present Decision】 1. Motivation to combine the secondary cited invention with the primary cited invention, and a factor teaching away from combining the two inventions (an inventive step of the Present Invention was […]

【PATENT ★★】”Topical Ophthalmic Formulation for Treating Allergic Eye Diseases” Case: A case in which the IP High Court, to which the case was remanded by the Supreme Court, found that an inventive step was acknowledged because the Present Invention has an unpredictable and remarkable effect, although the previous lawsuit judgment which determined that the different feature (the use) in the Present Invention would have been easily conceivable became final and binding.

―IP High Court Case No. 2019 (Gyo-ke) 10118 of June 17, 2020 (Presiding Judge MORI)  <※Case Remanded to the IP High Court by the Supreme Court (Supreme Court Case No. 2018 [Gyo-hi] 69 of August 27, 2019)>     Issue ① ― Regarding an “unpredictable and remarkable effect” to be taken into consideration in determining […]

[Patent★] “System Operating Method” Case（CAPCOM Co., Ltd. v. Koei Tecmo Games Co., Ltd.）; A case in which the judgement of IP court held that indirect infringement of method invention (Article 101, paragraph (4) of the Patent Act) includes an article working the patent invention in combination with other articles. It is not necessary to possess the article actually.

–Intellectual Property Court Case No. 2018 (Ne) 10006 on September 11, 2019 (Presiding Judge Tsuruoka)   Overview Indirect infringement of method invention (Article 101, paragraph (4) of the Patent Act) includes an article working the patent invention in combination with other articles. It is not necessary to possess the article actually. Indirect infringement of method […]

【PATENT ★】Tokyo District Court Case No. 2018 (Wa) 13400; September 11, 2019 (Presiding Judge SATO)

“ANTENNA” Case: A case in which the Court found that the wording of the “cylindrical portion for power feeding” in the claims of the plaintiff’s patent is interpreted to mean that the cylindrical portion is actually used for power feeding, and that the defendant’s product is not found to fulfill the constituent feature of the […]

【PATENT ★】IP High Court Case No. 2019 (Gyo-ke) 10095; March 12, 2020 (Presiding Judge TAKABE)

“METHOD FOR CRUSHING POLYCRYSTALLINE SILICON FRAGMENTS AND POLYCRYSTALLINE SILICON RODS” Case: A case in which the Court found that the measuring method for the “median particle size which is measured by mass” of the tungsten carbide particle is not described in the patent specification, and therefore, the invention fails to fulfill the clarity requirements.   […]

[Patent★] “Laminated Body of Sheet-like Objects（wet tissue）”
Case: A case in which the court held that the products did not satisfy the claim recitation “approximately in a width of 1/2” when a deviation rate was larger than around 10% of “1/2” in consideration of the problem to be solved by the invention.

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 […]

【PATENT ★★】IP High Court Grand Panel Case No. 2019 (Ne) 10003; February 28, 2020 (Presiding Judge TAKABE)

“Beauty Instrument” Case: A case in which the Court made a decision on a calculation method of an amount of damages based on Article 102, Paragraph 1 of the Patent Act and the circumstances to be taken into account in the calculation.   【Regarding Summary of the Judgment Rendered by the IP High Court Grand […]

【PATENT ★】IP High Court Case No. 2019 (Gyo-ke) 10026; December 11, 2019 (Presiding Judge TSURUOKA)

“Fluid Pressure Cylinder and Clamp Device” Case: A case in which the Court found that new technical matters were added by an amendment (such an amendment was not permitted). ―The matter deleted by the amendment was a main means of solving the problem to be solved by the invention.   【Comments】 With regard to an […]

【PATENT ★★】IP High Court Case No. 2018 (Gyo-ke) 10110; November 14, 2019 (Presiding Judge OTAKA)

“Celecoxib Compositions” Case: A case in which, with respect to an invention with numerical limitations, the Court denied compliance with the support requirement for specifications stating that the description of the invention in the specification is required to contain descriptions such that those skilled in the art can recognize how to solve the problem of […]

【PATENT ★】IP High Court Case No. 2018 (Gyo-ke) 10151; September 18, 2019 (Presiding Judge TSURUOKA)

“Mattress for Gatch Bed” Case: A case in which the Court found that it is sufficient for a cited invention to be recognizable as a set of features or technical ideas disclosed in a cited reference. The Court identified one example of use as a cited invention among the four examples of use disclosed by […]

[Patent*] “Roll paper for packaging medicine” (Court of Second Instance) – A case in which 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 No. 2019 (Ne) 10009 on June 27, 2019 (Presiding Judge OTAKA) –   ＜Judgement of Prior Instance Osaka District Court, 2016（Wa）6494＞   ◆ Judgement   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 […]

【PATENT ★★★】Supreme Court Case No. 2018 (Gyo-hi) 69; August 27, 2019

“Topical Ophthalmic Formulation for Treating Allergic Eye Diseases” Case: A case in which the Supreme Court found that, when determining an inventive step of an invention, an “unpredictable and outstanding effect” should be considered based on whether or not a person skilled in the art could have predicted such effect based on a structure of […]

【PATENT ★★】IP High Court Case No. 2018 (Gyo-ke) 10036; March 19, 2019 (Presiding Judge MORI)

“Inhibition of IL-17 Production” Case: A case in which, regarding an invention related to a pharmaceutical composition which contains a publicly known active ingredient and is for publicly known therapeutic use, the Court identified a newly discovered mechanism of action as “intended use” of the invention and affirmed novelty and inventive step of the invention. […]

【PATENT ★】Japanese Evidence Collection Procedures in Patent Infringement Case

The Japanese Patent Act provides a “Document Production Order” for proving infringement and damages. Though such Document Production Order has been issued sometimes for proving damages after the Court found infringement, there has been only a few cases in which the Order was issued for proving infringement. Considering such difficulty to prove patent infringement, a […]

【PATENT ★★】IP High Court Grand Panel Case No. 2018 (Ne) 10063; June 7, 2019 (Presiding Judge TAKABE)

“Carbon Dioxide-Containing Viscous Composition” Case: A case in which the Court determined the calculation of damages under Article 102, Paragraphs 2 and 3 of the Patent Act and the elements to be considered therefor.   【Comments】 In this case, the Court determined the calculation of damages based on Article 102, Paragraph 2 (an amount corresponding […]

【PATENT ★】IP High Court Case No. 2017 (Gyo-ke) 10117; November 6, 2018 (Presiding Judge TSURUOKA)

“Immunochromatography test device and kit for mycoplasma pneumoniae detection” Case: A case in which the Court denied the eligibility for a cited reference on the grounds that the cited reference does not contain the description of a cited invention in such a manner as to enable a person skilled in the art to manufacture it, […]

【PATENT ★★】Osaka District Court Case No. 2016 (Wa) 6494; December 18, 2018 (Presiding Judge TANI)

“Roll Paper for Medicine Packaging” Case: A case in which the court found, regarding the wording of “(a product) used in XXX” in the claims, that whether or not the product is actually used in XXX does not influence the decision on whether or not the product belongs to the technical scope of a patented […]

【Patent ★★★】 In the “Beauty Instrument” case, the Grand Panel of the IP High Court determined the appropriateness and approach of considering the contribution rate of the patented invention for the calculation of damages under Article 102, Paragraph 1 of the Patent Act in the case where a characteristic part of the patented invention is implemented for part of the patentee’s product.

The Intellectual Property High Court Grand Panel Decision of February 28, 2020 (Case No. 2019 (Ne) 10003 — Presiding Judge TAKABE)   ◆ Main text of the case   【Summary of the Judgment】 1.  The phrase “articles which would have been sold by the patentee…if there had been no such act of infringement” set forth in […]

【PATENT ★】IP High Court Case No. 2017 (Gyo-ke) 10200; February 18, 2019 (Presiding Judge TSURUOKA)

“Power transmitting device comprising rotation-number adaptive type dynamic vibration reducer” Case: A case in which conformity with the support requirement was denied since the claims contain a statement from which the problems of the invention cannot be solved.   【Summary of the Judgment】 The detailed description of the present invention … states to the effect […]

【PATENT ★】Tokyo District Court Case No. 2017 (Gyo-ke) 16468; January 17, 2019 (Presiding Judge SHIBATA)
＊(Intellectual High Court Case No. 2017 (Gyo-ke) 10226; December 27, 2018 in which the court rendered the decision to the same effect)

“ANTIGEN BINDING PROTEINS TO PROPROTEIN CONVERTASE SUBTILISIN KEXIN TYPE (PCSK)” Case: Infringement, inventive-step, and support requirements in the case of reach-through claims in which an invention is defined in functional terms.   (1) Infringement (technical scope of the invention) In this case, the court found that “… each of the present patent specifications state a […]

【PATENT ★★】IP High Court Case No. 2017 (Gyo-Ke) 10121; February 14, 2018 (Presiding Judge Mori)

“Solder Alloy” Case:　A case in which the court found that the dependent claims do not involve an inventive step; however, the independent claim involves an inventive step because a person skilled in the art could not easily conceive the idea of changing an essential component of the cited invention to an optional component of the […]

IP High Court Case No. 2017 (Gyo-Ke) 10210; September 6, 2018 (Presiding Judge Tsuruoka)
First Judgment: IP High Court Case No. 2016 (Gyo-Ke) 10005; January 18, 2017 (Presiding Judge Shidara)

“REFRESHING COMPOSITION FOR OPHTHALMOLOGY” Case [Second Judgment]:　A case in which the court affirmed conformance of clarity requirement by the correction to delete the statement which was found to be in non-compliance with the clarity requirement for claims.     In the first judgment, with regard to the statement of claims before the correction “a refreshing […]

【PATENT ★★】IP High Court Case No. 2017 (Ne) 10090; April 4, 2018 (Presiding Judge Takabe)

“MEDICINE” Case [Towa Pharmaceutical v. Kowa]:　A case in which the court denied the establishment of a prior user right, stating that even if a content of a sample drug fells within a numerical range of the invention, there would be no technical idea that the sample drug should contain the content in a limited numerical […]

【PATENT ★】IP High Court Case No. 2017 (Gyo-Ke) 10129; May 24, 2018

“Foods comprising a rice saccharified material and a rice oil and/or inositol (rice milk)” Case:　A case in which the court suggested that a “problem to be solved by the invention” could be interpreted differently in the case of determination of support requirement and in the case of determination of inventive step.   This is a […]

【PATENT ★】IP High Court Case No. 2017 (Ne) 10033; May 24, 2018

“Repair sliding door device” Case:　A case in which interpretation of the phrase “substantially the same height” in claims became an issue in relation to the determination of fulfillment of the constituent features of the plaintiff’s invention. The court of first instance held that the defendant’s product fulfills the constituent feature of the plaintiff’s invention, however, […]

【PATENT ★】IP High Court Case No. 2017 (Gyo-Ke) 10006, 10015; August 22, 2017

“Run-flat tire” Case:　A case in which (i) numerical limitations on temperature was not found to be in breach of the clarity requirement even if difference of 1℃ is caused depending on how it is measured, and (ii) an invention of a particular type of tire was found to have an inventive step by placing importance […]

【PATENT ★】IP High Court Case No. 2016 (Gyo-Ke) 10278; January 15, 2018 (Presiding Judge Takabe)

“Novel crystalline form of Pitavastatin calcium” Case:　A case in which, by understanding the problem to be solved by the invention abstractly and conceptually, the support requirement for specifications was found to be satisfied. In order for a grandchild application to be deemed as having been filed at the time of filling of a parent application, […]

Recent Trends in Japan relating to SEPs

Since last year the commissioner Ms. Naoko Munakata of the Japan Patent Office (“JPO”) has engaged in discussions of a rapid and effective means of international dispute resolutions and model licensing negotiation processes regarding the standard essential patents (“SEPs”). In consideration with the discussions and the opinions of key industry organization, (1) the JPO has […]

“Steel Pole” Case (Patent)

“Steel Pole” Case Case No.  Heisei 29 (gyo-ke) 10001 Decision date:  August 29, 2017 Court:  IP High Court (http://www.courts.go.jp/app/files/hanrei_jp/077/087077_hanrei.pdf) 1. Background The plaintiff filed a patent application (2014-116674), but received a decision of rejection from the Examiner. The plaintiff filed an appeal against the Examiner’s decision of rejection, but the Japanese Patent Office (JPO) decided […]

Recent Developments on Software-related Patents in Japan

1. Outline The Ministry of International and Economics and the JPO (Japan Patent Office) have been developing an intellectual property system in response to innovations such as IoT (Internet of Things) and AI (Artificial Intelligence). As part of the development, the JPO published case examples on technologies relating to IoT, AI, 3D printing, etc. in […]

The Supreme Court decision on interpretation of Product-by-process claims (Case No. 2012 (ju) 1204; Date of judgement: June 5, 2015)

1. In Japan, a product invention can be identified in a claim by its production process (product-by-process claim). In this case, the Supreme Court judged an interpretation of a technical scope of the product-by-process claim in patent-infringement litigation. Furthermore, the Supreme court decision had an important impact on the prosecution of the product-by-process claim. 2. […]

Recent Progress for Introducing a Registration System for Non-traditional Marks in Japan

Adoption of Non-traditional Marks (i) Current Situation The Bill for partial amendment of the Trademark Act, which enables non-traditional marks to be registered, was just enacted by the Diet on April 25, 2014. It is likely that the date when trademark applications for the non-traditional marks are accepted under the amended new Trademark Act (hereafter, […]

Patent Term Extensions: Grand Panel Decisions of Intellectual Property High Court Contrary to the Examination Guidelines

Under the Examination Guidelines of the Japan Patent Office (JPO), an application for patent term extension based on a drug approval will be rejected when the drug product that is the subject of the drug approval is not different from that of the prior approval in elements (features) recited in the patented claim. The English […]

FRAND defense (Apple v. Samsung)

On May 16, 2014, the Intellectual Property High Court rendered a decision regarding “FRAND defense” in the Apple v. Samsung case , numbered Heisei 25 (Ne) No. 10043. The following gist of the judgment is regarding the part of FRAND defense. (1) A license agreement has NOT been concluded by the relevant FRAND declaration “ It […]

Fifth requirement of the doctrine of equivalents

On December 27, 2013, the Intellectual Property high court rendered a decision, numbered Heisei 25 (Ne) No. 10002, regarding doctrine of equivalents using the basis sentenced by the Supreme Court in 1998. The first decision by the Supreme Court regarding doctrine of equivalents (The Ball Spline Bearing case), at present, makes up the basis of […]

Decision of the Tokyo District Court in the FRAND Defense Case

On February 28, 2013, the Tokyo District court held that an alleged infringer of a standard essential patent may provoke FRAND defense according to Article1(3) of Japanese Civil Code which provides prohibition of abuse of right and therefore may block exercise of such patent. This case is between Apple Japan Godo Gaisha, a Japanese subsidiary […]

Decisions of the Tokyo and Osaka District Courts in the Drug Combination Patent Cases

Both Tokyo and Osaka District Court denied indirect infringement of a patent provided under Japanese Patent Act by pharmaceutical companies who manufactured and sold compound A where a patent at issue claimed the combination of compounds A and B. Patents at issue here are JP 3148973 and 3973280 (“Subject Patents”). Representative claim is Claim 1 […]

Decision of IP High Court of Japan in Case of “A GLUCOSAMINE-CONTAINING CATAPLASM”

The specific problems to be solved by cited inventions influence the decision for lack of an inventive step differently depending on the circumstances in each case. The IP High Court provided a judgment as to whether it is obvious for a person skilled in the art to replace an essential feature which causes the specific […]

Grand Panel Decision of IP High Court of Japan in Case of “Waste Storage Device”

It is difficult for a patentee to prove the amount of damage caused by infringement in a patent infringement case. In Japanese Patent Law, Article 102 is provided to reduce the patentee’s burden of proof for the amount of damage. Article 102 (2)1 provides for rebuttable presumption of the amount of damage as “profits gained […]