【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.

February 3,2022

―Tokyo District Court Case No. 2016 (Wa) 25436 of September 24, 2020 (Judge Norio YANO)―

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 inventive step. The Court did not exhibit judgment on the assertion of double standard regarding the third requirement of the doctrine of equivalents.)

The defendant alleges to the effect that the phrase “[a person ordinarily skilled in the art could have] easily conceived of [the idea of replacement]” used in the third requirement should be interpreted to mean that any person ordinarily skilled in the art could have conceived of [the structure of the disputed process] easily to the extent that such person can recognize it as if it were explicitly stated in the scope of claims, and that the defendant’s process could not be easily conceived of.

However, in light of the foregoing circumstances, it should be said that differences 1 and 2 could have been easily conceived by a person skilled in the art, or a person having an average knowledge in the industry of glutamic acid fermentation using bacteria to which the Invention 2 belongs….

(2) The fifth requirement

…[A]t the time of filing an application, an applicant for patent, or the plaintiff, could easily specify a concrete composition using a mutant-type yggB gene derived from corynebacterium callunae, which is capable of solving the problems to be solved by the Invention 2, and describe it in the scope of claims in a manner that would fulfill the support requirement or any other description requirements.

2. Point ② of the decision (regarding the “support requirement” and “enablement requirement”)

Before the correction, the specification for the Invention was found to violate the support requirement because the specification contained descriptions by which the problem cannot be solved.

The plaintiff’s assertion of a re-defense of correction was affirmed, and the support requirement was found to be fulfilled by the Court.

3. Point ③ of the decision (regarding the “offer for transfer”)

The Court found the “offer for transfer” of the defendant’s product is considered to have established, (i) even though the entity which made a transfer of the defendant’s product is different from the entity which made an offer for transfer thereof (if these entities are considered to have a specific relationship to each other), (ii) even under the circumstances where the transfer of the defendant’s product was made outside Japan.

The Court applied Article 102, Paragraph 2 of the Patent Act to the value of damages to be calculated based on the sales amount generated outside Japan. (There are special circumstances where the sales of the defendant’s product outside Japan were made to buyers in Japan, and although the delivery of the defendant’s product itself was made at the time of shipment, the defendant’s product was scheduled to be imported into Japan by the buyers thereafter.)

[It is to be noted that in this case the defendant’s production process is located outside Japan, and the product produced by the defendant’s production process is imported and sold in Japan.]

Writer: Hideki TAKAISHI

Supervising editor: Kazuhiko YOSHIDA

Contact information for inquiries: h_takaishi@nakapat.gr.jp

Hideki TAKAISHI

Attorney at Law & Patent Attorney

Nakamura & Partners

Room No.616, Shin-Tokyo Building,

3-3-1 Marunouchi, Chiyoda-ku,

Tokyo 100-8355, JAPAN

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