Supreme Court 2012 (ju) 1204
The Supreme Court decision on interpretation of Product-by-process claims (Case No. 2012 (ju) 1204; Date of judgement: June 5, 2015) December 16,2016 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 […]
【PATENT ★】IP High Court 2016 (Gyo-Ke) 10278
【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 […]
【PATENT★】IP High Court 2017(Gyo-Ke)10006, 10015
【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 […]
Tokyo District Court Case No. 2017 (Wa) 40337
Tokyo District Court Case No. 2017 (Wa) 40337 of July 22, 2020 (Presiding Judge SATO) 【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 […]
IP High Court Case 2020 (Gyo-ke) 10005 (TAKABE)
IP High Court Case No. 2020 (Gyo-ke 10005) on November 10, 2020 (Presiding Judge TAKABE) [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 […]
Support Requirement (Conclusion) Support Requirement is Not admitted. [Claim 1] recites: “…Solutions with storage stability of at least 24 months…” “The present specification does not describe a paronosetron preparation which satisfies the requirements of 24 months, and in light of the common general knowledge as of the filing, it cannot be said that a person […]
Inventive step (Conclusion) Inventive step is found. It was possible to add a Shirasu Balloon to an alkaline solution containing a surfactant, or to change the timing of such addition to either before or after the addition of a fatty acid as is appropriate. <Writer: Hideki Takaishi (Attorney-at-law licensed in Japan and California)> https://www.ip.courts.go.jp/app/files/hanrei_en/673/002673.pdf
Damages calculated by Article 102, paragraph (2) of the Patent Act (Conclusion) Damages calculated by Article 102, paragraph (2) of the Patent Act. The amount of the Defendants’ expenses that should be deducted from the sales amount of the infringing products is judged. <Writer: Hideki Takaishi (Attorney-at-law licensed in Japan and California)> https://www.ip.courts.go.jp/app/files/hanrei_en/962/002962.pdf
Infringement (Conclusion) Infringement is NOT found. The claim phrase “approximately 1/2” was considered non-infringement. Some of the defendant’s products were within the technical scope of the invention, but were judged to be non-infringing. <Writer: Hideki Takaishi (Attorney-at-law licensed in Japan and California)> https://www.ip.courts.go.jp/app/files/hanrei_en/894/002894.pdf
Damages calculated by Article 102, paragraph (2) of the Patent Act (Conclusion) Damages calculated by Article 102, paragraph (2) of the Patent Act is partially (90%) deducted. The degree of reduction is 90% in consideration of the fact that there is a qualitative difference in demand between the Defendant’s products and Plaintiff’ products. Calculated damages […]
Lack of proper procedure (Conclusion) Lack of proper procedure. The JPO decision does not describe a part of the matters specifying the invention in relation with judgment on clarity requirement and is not evaluated as a substantial judgment. <Writer: Hideki Takaishi (Attorney-at-law licensed in Japan and California)> https://www.ip.courts.go.jp/app/files/hanrei_en/649/002649.pdf
Clarity Requirement (Conclusion) Clarity Requirement is admitted. The claim language “a side wall integrally forming” is interpreted by considering the description in the Description, and it was decided that there was no lack of clarity requirement. <Writer: Hideki Takaishi (Attorney-at-law licensed in Japan and California)> https://www.ip.courts.go.jp/app/files/hanrei_en/650/002650.pdf
Damages (Article 102, paragraph (2) of the Patent Act) (Conclusion) Damages calculated by Article 102, paragraph (2) of the Patent Act is not partially deducted. The court denied the infringer’s assertion that the presumption should be overturned at least by 70% by taking into consideration the percentage of the value of the implementing part of […]
Inventive step (Conclusion) Inventive step is found. It is not easily conceivable to apply well-known techniques which belong to a different technical field from the main cited invention to the main cited invention. <Writer: Hideki Takaishi (Attorney-at-law licensed in Japan and California)> https://www.ip.courts.go.jp/app/files/hanrei_en/675/002675.pdf
A “legitimate reason” prescribed in Article 112-2, paragraph (1) of the Patent Act (Conclusion) A “legitimate reason” prescribed in Article 112-2, paragraph (1) of the Patent Act is NOT found. Plaintiff A could have easily confirmed whether or not the patent fee etc. had been paid by the respective due dates. <Writer: Hideki Takaishi […]
Prior Art Effect (Article 29-2 of the Patent Act) (Conclusion) Invalidated by Prior Art Effect (Article 29-2 of the Patent Act) *The two differences between the present invention and the cited invention were judged to be substantially the same as the minor differences in design. <Writer: Hideki Takaishi (Attorney-at-law licensed in Japan and California)> […]
Inventive step (Conclusion) Inventive step is found. *The associated numerical limitations shall be collectively determine for feasibility. *The present invention and the cited invention have different problems. ⇒ There is no incentive to replace the values of the cited invention. *The numerical values of the cited inventions are optimized under specific conditions. ⇒ There is […]
Enablement Requirement (Conclusion) Enablement Requirement is admitted. The file wrapper estoppel does not apply to the determination of enablement requirements. <Writer: Hideki Takaishi (Attorney-at-law licensed in Japan and California)> https://www.ip.courts.go.jp/app/files/hanrei_en/677/002677.pdf
Support Requirement (Conclusion) Support Requirement is admitted. *The decision of objection by the Patent Office is incorrect in finding the subject matter of the present invention. *The problem of the invention was grasped abstractly. Optimization was common knowledge in the art. ⇒ Those skilled in the art will recognize that the correct problem of the […]
New matter (Conclusion) Not new matter (Amendment Requirement is admitted) From the disclosure of the present specification, those skilled in the art understand that the change processing is not limited to that in the form performed by the “agreement information generating means”. <Writer: Hideki Takaishi (Attorney-at-law licensed in Japan and California)> https://www.ip.courts.go.jp/app/files/hanrei_en/697/002697.pdf
Novelty, Inventive (Conclusion) Novelty, Inventive step is NOT found. Selected invention The patentability was denied because there was no “significant unique effect”. (This is an unusual decision in recent years.) <Writer: Hideki Takaishi (Attorney-at-law licensed in Japan and California)> https://www.ip.courts.go.jp/app/files/hanrei_en/689/002689.pdf
Enablement Requirement (Conclusion) Enablement Requirement is admitted. The mechanism described in the specification does not actually occur. ⇒ The position of the “upper part of the hot air stream” cannot be specified. ⇒Enablement Requirement is admitted. <Writer: Hideki Takaishi (Attorney-at-law licensed in Japan and California)> https://www.ip.courts.go.jp/app/files/hanrei_en/995/002995.pdf
Jointly owned patent rights (Conclusion) ”Otherwise agree” of Patent act Article 73(2) is admitted. ＜Article 73(2)＞”Where a patent right is jointly owned, unless otherwise agreed upon by contract, each of the joint owners of the patent right may work the patented invention without the consent of the other joint owner(s).” *”Otherwise agree” of Patent act […]
Infringement (Conclusion) Infringement is NOT found. The “use limit” of the Present Invention means the “amount of money usable within a predetermined period of time that is set at the contract and fixed to some degree “, and the usable amount of a prepaid card and the like that, each time electronic money is credited/debited, […]
Inventive step (Conclusion) Inventive step is found. Even if sodium alginate is well known as a thickening agent which constitutes a viscous water-based liquid, there is no sufficient evidence to find that sodium alginate was well known as a thickening agent having a film forming ability. There is no motivation to delay generation of carbon […]
Inventive step (Conclusion) Inventive step is found. Corrections based on examples of components of commercial products and blending of examples etc. described in the specification do not fall under new matters, but the difference between the present invention and the cited invention was considered to have been not easily conceivable by a person skilled in […]
Support Requirement (Conclusion) Support Requirement is admitted. *The problem of the invention was grasped abstractly. The mechanism was common knowledge in the art. ⇒Support Requirement was admitted. In 2017 (Wa) 13797, the support requirement was denied because it could not be recognized that the problem could be solved if 0.8≦L≦1.4. Regarding support requirement, this case […]
Inventive step (Conclusion) Inventive step is found. The Figure 10 in the Main Cited Invention illustrates only the structure on the front side of the mesh-style tricot structure in which the stitch position where no loop is formed exists and does not illustrate the structures of both the front side and back side. <Writer: […]
Inventive step (Conclusion) Inventive step is NOT found. *Combining a sub-reference solving a problem different from that of the present invention with a main reference is considered to be easy to conceive “by another reason” (by the logic to solve a problem which is different from the problem of the presente invention). ⇒ The inventive […]
Inventive step (Conclusion) Inventive step is found. The inventive step of the numerically limited invention was found. Effect of the invention was also emphasized. (Not Invalidation by Prior Art Effect (Article 29-2 of the Patent Act)) <Writer: Hideki Takaishi (Attorney-at-law licensed in Japan and California)> https://www.ip.courts.go.jp/app/files/hanrei_en/679/002679.pdf
Prior Art Effect (Article 29-2 of the Patent Act) (Conclusion) Invalidated by Prior Art Effect (Article 29-2 of the Patent Act) *Judgement of prior application invention for Prior Art Effect. (Same as inventive step) The patent applicant pointed out inconsistencies in the experimental data of the prior application specification and asserted that the system of […]
Indirect Infringement (Conclusion) Indirect Infringement is NOT admitted. An indirect infringement is not established only by forming a structure which is a prerequisite of the characteristic technical means of the invention. <Writer: Hideki Takaishi (Attorney-at-law licensed in Japan and California)> https://www.ip.courts.go.jp/app/files/hanrei_en/886/002886.pdf
Damages (Article 102, paragraph (1) of the Patent Act) (Conclusion) A damages 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. <Summary of the Judgment> (1) The “products that the patentee could have been sold if […]
Damages (Article 102, paragraph (3) of the Patent Act) (Conclusion) Damages is calculated based on not LED but TV. Caluculating the amount of money based on the Article 102, paragraph (3) of the Patent Act (reasonable royalty) The royalty rate and the amount of damages were determined based on the amount of sales of the […]
Novelty (Conclusion) Novelty is Not found. (Claim 1 and 7 which has been enforced in another Patent Infringement Cases.) The point that the “state capable of sending out” remains after the “certain period of time” in Present Invention 3 is finished and until the “state incapable of sending out” is brought about is a common […]
Clarity Requirement (Conclusion) Clarity Requirement is Not admitted. The method of measuring the claimed “median particle size weighed by mass” is unknown. ⇒Clarity Requirement is Not admitted. <Writer: Hideki Takaishi (Attorney-at-law licensed in Japan and California)> https://www.ip.courts.go.jp/app/files/hanrei_en/681/002681.pdf
Inventive step (Conclusion) Inventive step is NOT found. Even if well-known techniques are applied, there is no description or suggestion in cited invention 1 that mental care should be provided for virtual reality animations, or that a plurality of different virtual reality animation files selected according to the psychological state of a potential customer and […]
Inventive step (Conclusion) Inventive step is found. *Limitation of super-conceptualization of well-known technology (hindsight) To abstract the semiconductor laminated body structure and the technical meanings so as to make them a generic concept from the matters described in each of the cited documents and to introduce the employment of the composition graded layer in which […]
Inventive step (Conclusion) Inventive step is found. *The recognition of cited inventions is sufficient to the extent that it is necessary to carry out the technical matters necessary for comparison with the present invention without excessive examination. ⇒ It is not needed to consider in more detail. *The decision of the Patent Office broadly identified […]
Inventive step (Conclusion) Inventive step is found. *The main cited invention and the secondary cited invention have different purposes. ⇒ When both are combined, the configuration corresponding to the difference in the object of the main invention is changed. ⇒ There are obstructive factors. *Heisei 30 (Wa) 21448, which was pending at the same time, […]
Infringement (Conclusion) Infringement is found. Two patent infringements were found. The amount of damages under Article 102, para.2 of the Patent Act was determined to be the amount of damages caused by the infringement of either patent. <Writer: Hideki Takaishi (Attorney-at-law licensed in Japan and California)> https://www.ip.courts.go.jp/app/files/hanrei_en/000/003000.pdf
Support Requirement (Conclusion) Support Requirement is admitted. *The reason why the blank values of the respective examples are different is that they are naturally derived. ⇒ The embodiment is not an error, and it can be understood that a person skilled in the art at the time of filing the present patent application can solve […]
Support Requirement, Enablement Requirement (Conclusion) Support Requirement is Not admitted. Enablement Requirement is admitted. The enablement requirement questioned whether it could be measured under these conditions (hydrolysis). ⇒Enablement Requirement is admitted. For considerring support requirement, the defendant’s assertion that the degree of level-off polymerization was changed by hydrolysis was recognized, and the plaintiff’s assertion that […]
Inventive step (Conclusion) Inventive step is found. “… (omit) …” (Different Feature 2); and “in the Present Amended Invention, a channel for the coolant liquid is formed between the first rotary drum and the bottom member, while in the Cited Invention, it is not known whether or not the channel as above is formed” (Different […]
Infringement (Conclusion) Infringement is NOT found. * The IP High Court overturned the original Tokyo District Court decision. The Tokyo District Court interpreted that the particle size was limited to 10 micrometers or less. The IP High Court interpreted that the particle size was not limited to 10 micrometers or less. <Writer: Hideki Takaishi […]
Support Requirement (Conclusion) Support Requirement is admitted. Support requirement is recognized as being understood by those skilled in the art to be able to solve the problem of the invention, although the examples and the claims are slightly different. <Writer: Hideki Takaishi (Attorney-at-law licensed in Japan and California)> https://www.ip.courts.go.jp/app/files/hanrei_en/737/002737.pdf
Indirect Infringement (Conclusion) Indirect Infringement is admitted. (Patent Act 102(2)) In making a demand under the preceding paragraph, the patentee or exclusive licensee may demand measures necessary for the prevention of such infringement including the disposal of products constituting such act of infringement (including, in the case of a patented invention of a process of producing products, products produced by the act of infringement; the same shall apply in Article 102(1)) and the removal of facilities used for the act of infringement. Indirect Infringement of Patent Act 102 (2) shall be established if a non-exceptional person is aware and accepts that there is a high probability that the product will be used for the […]
Inventive step (Conclusion) Inventive step is NOT found (Claim 1). Inventive step is found (Claim 2). Claim 1 is limited only within the numerical range of the cited invention with the same parameters, and the inventive step is denied. Claim 2, wherein the compound was selected, was admitted to find inventive step. （The purpose of […]
Inventive step (Conclusion) Inventive step is NOT found. In the present case, it was ruled that “arrangements on games” also required logical reasoning using publicly-known technology etc. *The cited prior art was only one YouTube video <Writer: Hideki Takaishi (Attorney-at-law licensed in Japan and California)> https://www.ip.courts.go.jp/app/files/hanrei_en/743/002743.pdf
Support Requirement (Conclusion) Support Requirement is admitted. These effects are based on the structure of the article called the “notch portion” provided on the lead in a specific form, and the structure required for that is specified in the present corrected inventions. <Writer: Hideki Takaishi (Attorney-at-law licensed in Japan and California)> https://www.ip.courts.go.jp/app/files/hanrei_en/764/002764.pdf
Inventive step (Conclusion) Inventive step is NOT found. When determineing inventive step, in finding the different features between the present invention and the main cited invention, it is reasonable to find the integral structure as a unit from a viewpoint of solution of the technical problem of the invention, and determination not considering such viewpoints, […]
Claim for Employee’s Invention Compensation The judgment approved the claim to the limit of approximately 170,000 yen. <Writer: Hideki Takaishi (Attorney-at-law licensed in Japan and California)> https://www.ip.courts.go.jp/app/files/hanrei_en/952/002952.pdf
Infringement (Conclusion) Infringement is NOT found. The “means to guide vehicles to the second lane” of the Invention need to be configured to guide a vehicle to the second lane without requiring any further action such as calling an operator via the intercom. <Writer: Hideki Takaishi (Attorney-at-law licensed in Japan and California)> https://www.ip.courts.go.jp/app/files/hanrei_en/953/002953.pdf
Inventive step and “effect” After Supreme Court case 2018(Gyo-Hi)69 (Conclusion) Inventive step is found based on “effect”. Even if the construction of the present unventuin is easily conceivable, inventive step was recognized as having a remarkable effect which cannot be predicted by a person skilled in the art. ⇒ “Effectiveness” is positioned as an “Independent […]
Novelty (Conclusion) Novelty is Not found. The court of the second instance dismissed the defence of lack of novelty based on Otsu-14 on the grounds that the defence had been made at the time. ⇒ The defendant in the first instance, in the second instance did not assert that the defendant in the first instance […]
Patentability (Conclusion) Patentability is Not admitted. This is not an “invention” of Article 2-1 of the Patent Act since its nature is exclusively directed to human-made arrangement itself and does not use the scientific laws established for the phenomena and orders of the nature, and it is not a creation of technical ideas “utilizing the […]
Infringement (Conclusion) Infringement is NOT found. =The original judgement ＜Tokyo District Court＞ 2017(Wa) 35663 The present description clearly distinguishes the “soybean hypocotyl extract” from the “soybean hypocotyl” as raw material for fermentation for producing a “fermented soybean hypocotyl product”, and discloses that the “soybean hypocotyl extract” is not suitable as a raw material for fermentation […]
Claim for Employee’s Invention Compensation (Conclusion) Modification of the prior instance judgment The judgment partially changed the judgment of the prior instance and approved the claim to the limit of approximately 29,590,000 yen. <Writer: Hideki Takaishi (Attorney-at-law licensed in Japan and California)> https://www.ip.courts.go.jp/app/files/hanrei_en/771/002771.pdf
DOE (Doctrine of Equivalence) (Conclusion) DOE (Doctrine of Equivalence) is Not admitted. =Appealed case <IP High Court> 2020 (Ne) 10041 affirmed this. Since the defendant’s system does not transmit one piece of information created on the basis of two pieces of information, i.e., ticket information and ticket issuance information, to the terminal, the defendant’s system […]
Support Requirement (Conclusion) Support Requirement is admitted. It is construed that it is sufficient to state the solution to the problem to the extent that a person ordinarily skilled in the art can reasonably expect that the problem can be solved in light of common general technical knowledge, and it is construed that it is […]
Support Requirement (Conclusion) Support Requirement is admitted. It is construed that it is sufficient to state the solution to the problem to the extent that a person ordinarily skilled in the art can reasonably expect that the problem can be solved in light of common general technical knowledge, and it is construed that it is […]
Inventive step (Conclusion) Inventive step is found *The problems to be solved of the main cited invention and the secondary cited invention were grasped concretely. ⇒ There is no motivation to combine the two cited inventions because their problems to be solved are different. <Writer: Hideki Takaishi (Attorney-at-law licensed in Japan and California)> https://www.ip.courts.go.jp/app/files/hanrei_en/774/002774.pdf
Antimonopoly Act (and Patent Act) (Conclusion) Infringement is NOT found This is the first case in which a Japanese 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 […]
“Working of the patented invention for experimental or research purposes” (Article 69-1 of the Patent Act) (Conclusion) “Working of the patented invention for experimental or research purposes” (Article 69-1 of the Patent Act) is admitted–Patentee lost A case in which the Tokyo District Court found to the effect that experiments or research conducted to obtain […]
Inventive step (Conclusion) Inventive step is found In the cited invention, there is no motivation to change the rear door because it is located in a position where it is easy to perform maintenance. <Writer: Hideki Takaishi (Attorney-at-law licensed in Japan and California)> https://www.ip.courts.go.jp/app/files/hanrei_en/767/002767.pdf
Inventive step (Conclusion) Inventive step is NOT found Under the Japanese Patent Law in 2020, a correction had to be filed by all co-owners. In this case, the co-owner of the Patent was the appellant of an invalidation trial. Naturally, the other co-owner who was the requester of the invalidation trial did not consent to […]
Requset to transfer a share of the Patent Right (Conclusion) Requset to transfer the whole of Defendant 1’s co-ownership share of the Patent Right is denied As a natural premise of the Business Collaboration Agreement, Defendant 1 would use the Patent Right as long as it holds a co-ownership interest in it. <Writer: Hideki Takaishi […]
Inventorship (Conclusion) Plaintiff’s inventorship is not admitted When finding inventorship, the person’s contribution to the followings are considered: (1) conceiving of the technical ideas of the Invention; (2) preparing and selecting the anti-PD-L1 antibody; and (3) designing and constructing the experimental system necessary for the demonstration of the hypothesis, and the degree of the person’s […]
Support Requirement (Conclusion) Support Requirement is admitted *The judgment of the IP High Court Grand Panel case (2006(Gyo-ke)10563) is only applied to a so-called parametric invention, and therefore it is outside the range or claimed up parameter. *Even if the effect is reduced by a configuration change, support requirement is recognized because it is within […]
(Conclusion) Inventive step is NOT found The Cited Invention was interpreted broadly. In the explanation of FIG. 1, even if the lower purity oxygen is withdrawn as liquid, whereby a large amount of higher purity oxygen is obtained, it only illustrates the most preferred embodiment, and it cannot be considered that the withdrawal of lower […]
A “legitimate reason” prescribed in Article 184-4, paragraph (4) of the Patent Act (Conclusion) A “legitimate reason” prescribed in Article 184-4, paragraph (4) of the Patent Act is NOT found The lawyer of the law firm cannot be found to have taken due care to avoid failing to meet the deadline for the procedure for […]
Infringement (Conclusion) Infringement is NOT found. The constituent component “a culture solution containing arginine” is not included in a fermentation raw material, but corresponds to a nutritional component for the purpose of promoting fermentation efficiency and the like, which is mixed with the above-mentioned fermentation raw material and the like in a fermentation treatment step. […]
DOE (Doctrine of Equivalence) (Conclusion) DOE (Doctrine of Equivalence) is admitted *Equivalent infringement was found on the requirements due to a method removed in an amendment. *An equal infringement was established on the method removed by an amendment corresponding to a notice of reasons for refusal of lack of inventive step. (Along with global trends […]
Support Requirement (Conclusion) Support Requirement is admitted The plaintiff asserted that the examples were results obtained under certain conditions and cannot be generalized. The court judged that the mechanism could be generalized through detailed analysis. <Writer: Hideki Takaishi (Attorney-at-law licensed in Japan and California)> https://www.ip.courts.go.jp/app/files/hanrei_en/929/002929.pdf
Inventive step (Conclusion) Inventive step is found Differences with respect to the same configuration shall not be separated, and feasibility shall not be judged independently as separate differences. <Writer: Hideki Takaishi (Attorney-at-law licensed in Japan and California)> https://www.ip.courts.go.jp/app/files/hanrei_en/842/002842.pdf
Inventive step (Conclusion) Inventive step is NOT found The common general knowledge and well-known matters at the time of filing of the original application were verified, and it was judged that it was only a design change that the work could be carried out in a normal state even in the case of 400mm. ⇒ […]
New matter (Amendment Requirement) (Conclusion) Not new matter (Amendment Requirement is admitted) *The material claimed up has translucency unless it is a special manufacturing method or material. ⇒ Specific manufacturing methods and materials are not described in the specification. ⇒ Not new matter ⇒ After remand, inventive step was found at the Patent Office (after […]
The effect of “partial” priority claim on the basis of the Paris Convention (Conclusion) The effect of “partial” priority claim on the basis of the Paris Convention is found Concept of partial priority A standard was determined as to whether the failure of the (retroactive) priority claim would result in the lack of novelty and […]
(Conclusion) Invalidated by Prior Art Effect (Article 29-2 of the Patent Act) The “invention” of the prior application (Patent Act 29-2) was admitted as an “invention” of Prior Art Effect . “An invention which is ‘abstract’ or which insufficiently discloses technical content even after taking into consideration the common general knowledge of a person skilled […]
Damages (Article 102, paragraph (3) of the Patent Act) (Conclusion) Damages is calculated based on not the LED but on the TV Caluculating the amount of money based on the Article 102, paragraph (3) of the Patent Act (reasonable royalty) The royalty rate and the amount of damages were determined based on the amount of […]
Jointly owned patent rights (Conclusion) ”Otherwise agree” of Patent act Article 73(2) is admitted. ＜Article 73(2)＞”Where a patent right is jointly owned, unless otherwise agreed upon by contract, each of the joint owners of the patent right may work the patented invention without the consent of the other joint owner(s).” *”Otherwise agree” of Patent act Article 73(2) is admitted. The joint owner won. <Writer: Hideki Takaishi (Attorney-at-law licensed in Japan and California)> https://www.ip.courts.go.jp/app/files/hanrei_en/930/002930.pdf
Support Requirement (Conclusion) Support Requirement is Not admitted. Unclaimed composition/numerical values were considered for Support Requirement. (There are rare cases where an invention in the electric/mechanical field was judged to be a violation of Support Requirement.) “Including the invention of an antenna device in which the distance between the lower edge of the antenna element […]
New matter (Amendment Requirement) (Conclusion) Not new matter (Amendment Requirement is admitted) The interpretation of the language itself does not include the extent that it is not enforceable. ⇒Not new matter (Amendment Requirement is admitted) “The “safety confirmation execution position” refers to a position where safety confirmation can be carried out, and does not include […]
Registration of Patent Term Extension (Pharmaceuticals and Medical Devices) (Conclusion) Patent Term Extension is admitted. The content of the Disposition was recognized to be different from the content of the “active ingredient” in the written approval, and the patent term extension was approved. *In another case, the same patent was judged to be noninfringing. (Tokyo […]
Inventive step (Conclusion) Inventive step is found (Claim 2). There is no incentive to apply only a part of the secondary cited invention to the main cited invention. <Writer: Hideki Takaishi (Attorney-at-law licensed in Japan and California)> https://www.ip.courts.go.jp/app/files/hanrei_en/931/002931.pdf
Inventive step (Conclusion) Inventive step is found. The present invention and the cited invention have different problems to be solved. There is no motivation to change the numerical value of the cited invention, and the ease of conceivability is denied. In Japan, when the problems to be solved of the present invention and the cited […]
“Working of the patented invention for experimental or research purposes” as referred to in Article 69, paragraph (1) of the Patent Act (Conclusion) Patent infringement is denied. Conducting necessary tests for filing an application as prescribed in Article 14, paragraph (1) etc. of the Act on Securing Quality, Efficacy and Safety of Products Including Pharmaceuticals […]
Enablement requirement (Conclusion) Enablement requirement is admitted. In view of the significance of the present invention, in order to realize the constituent element G, it is necessary that force is required to bounce up the apron as its angle increases to such an extent that a general worker can feel gradual decreases of the apron […]
Novelty, Inventive step (Conclusion) Inventive step is NOT found. *The purpose of use (how to use) was decied as the matter specifying the invention. *Novelty is found. *Inventive step is not found. “In the publicly used invention before the application date, it is not clear whether the purpose of ’making the frame partially replaceable by […]
Inventive step (Conclusion) Inventive step is found. Since the main cited invention and the secondary cited invention have little commonality in both the problem to be solved and its method of solution, there is no motivation to apply the secondary cited invention to the main cited invention. <Writer: Hideki Takaishi (Attorney-at-law licensed in Japan and […]
Inventive step (Conclusion) “Electronic mail address” was admitted as a Disclosure of Identification Information of the Sender. The “electronic mail address” registered at the registration falls under “identification information of the sender” to be disclosed based on Article 4, paragraph (1) of the Act on the Limitation of Liability for Damages of Specified Telecommunications Service […]
Inventive step (Conclusion) Inventive step is found Critical significance is admitted, but it is not decisive. It is not admitted by the evidence that the problem of the present invention was known. “In Comparative Examples, all of which exceed an upper limit value of 1.5% of the heat loss of the Invention 1, the evaluation […]
Standing to be sued as a “petitioner” (Conclusion) The court determined that an intervener a trial for invalidation under Article 148, paragraph (1) of the Patent Act has a standing to be sued as a “petitioner” under Article 179, paragraph (1) of the Patent Act. A participant for a demandant in an invalidation trial before […]
Eligibility (Conclusion) The claimed invention is eligible. In the case where a claim refers to some technical means, if the essence of a claimed invention is found to be directed to human activity itself, considering the recitation in the claim as a whole, then the claimed invention is not eligible. On the other hand, in […]
＜IP High Court, Second Division＞ 2016(Gyo-Ke)10147 (June 8, 2017) “Tomato Drink” Case
Description Requirement (Conclusion) Effect of the claimed invention is not sufficiently disclosed in the specification by working examples (patent should be invalidated). The patented invention relates to a tomato drink having (i) a sugar content of 7.0 to 13.0, (ii) a sugar-acid ratio of 19.0 to 30.0, and (iii) a total content of glutamic acid […]
＜IP High Court＞ 2006(Ne)10077 (May 30, 2007) ”Ink tank for ink jet recording device” case
Requirements for Divisional Applications (1) If a divisional application is not properly divided from its parent application, there is no retroactive effect for the filing date of the divisional application. (2) If a specification of a parent application describes a feature as essential or describes or suggests that the invention without such feature does not […]
Jurisdiction and Others (Conclusion) Even if a patent owner has granted an exclusive license under their patent right, which is registered under Article 77 of Japanese Patent Act, the patent owner may enforce the patent right to seek an injunctive relief on their own accord. According to the concept of “exclusive license,” which is registered […]
＜IP High Court, Grand Panel＞2015 (Ne) 10014 (March 25, 2016) ”Maxacalcitol” Case
Burden of Proof and 1st Requirement for Doctrine of Equivalets (Conclusion) A patentee and an alleged infringer owe the burden of proof for the requirements (1) to (3) and (4) and (5) respectively for the doctrine of equivalents, and the essential part of a patented invention in the requirement (1) means a unique technical idea […]
＜IP High Court, Grand Panel＞2012 (Ne) 10015 (February 1, 2013) “Waste Storage Device” Case
Presumption of Patentee’s Damages by Infringer’s Profits (Conclusion) Patentee’s working of a patented invention is not required to presume patentee’s damages by infringer’s profits under Article 102, paragraph (2) of the Patent Act, and the application thereof should be allowed when there are any circumstances suggesting that the patentee could have gained profits if no […]
＜Supreme Court＞ 1994(O)1083 (February 24, 1998)
“Ball Spline Bearing” Case
(Conclusion) Patent infringement may be found under the doctrine of equivalents with the requirements (1) – (5). Patent infringement may be found, even if the literal difference is found between the claim of the patented invention and the subject product, etc., under the the doctrine of equivalets, if (1) the different part is not […]