【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 […]
“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 […]
“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 […]
“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 […]
“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 […]
“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 […]
“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 […]
“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 […]
“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. […]
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 […]
“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 […]
“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, […]
“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 […]
“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
“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 […]
“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 […]
“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 […]
“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 […]
“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 […]
“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, […]
“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 […]
“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, […]
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 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 […]
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 […]
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. […]
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, […]
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 […]
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 […]
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 […]
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 […]
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 […]
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 […]
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 […]