The defendant’s product is a plastic tube on which a sheet for packaging medicine is wound, and in an axial center hollow part of the defendant’s product (the plastic tube), a used hollow core tube of a “roll paper for medicine packaging” manufactured by the plaintiff on which a rubber band is wound is fitted by a user, thereby integrating two products into one product (“integrated product”). In this case, whether the “integrated product” falls under the technical scope of an invention of a “sub-combination” became an issue.
The present invention is a “roll paper for medicine packaging” (constituent feature E) having constituent features B to D, which is used in the “medicine packaging device” specified by constituent feature A.
The wording of “used (in XXX)” in constituent feature A is employed to specify the invention of the sub-combination[i], and use of the “roll paper for medicine packaging” in combination with the “medicine packaging device” having constituent feature A is described as matters specifying the invention.
The questions in this case are whether (i) the roll paper for medicine packaging having constituent features B to D of the present invention needs to be actually used in the “medicine packaging device” having constituent feature A, or (ii) it is sufficient that said roll paper for medicine packaging is capable of being used in the “medicine packaging device” satisfying constituent feature A if the said medicine packaging device exists.
When considering the constitution of a direct infringement of the invention of the sub-combination and the constitution of an indirect infringement of the invention of the sub-combination in parallel, an argument can be made that without another sub-combination, there is no infringement, which is the same as the logic that without direct infringement by one party, there can be no indirect infringement by another. However, without considering the necessity of the integrated product being actually used in another sub-combination and the constitution of indirect infringement under a dependent theory or an independent theory in parallel, the court found that the integrated product does not need to be actually used in another sub-combination. (The “Waste Storage Device” case, Case No. 2012 [Ne] 10015, the IP High Court [Grand Panel] rendered a decision to the same effect.)
Further, when considering whether or not an invention of a sub-combination is infringed and whether or not a certain product falls under the technical scope of a use invention in parallel, an argument can be made that the integrated product is required to be sold as a product to be combined with another sub-combination, which is the same as the logic that a product of a use invention is required to be sold for a specific use. However, the court did not consider the invention of the sub-combination and the use invention in parallel.
Apart from the specific issues in this case, the following points may generally become an issue: (i) in order for an infringement of a patent right of a sub-combination invention to be established, whether or not an accused product is required to be sold for use in combination with another sub-combination (which may give way to the understanding that a sub-combination is required to be actually used in another sub-combination), and, as a relevant issue, (ii) in order for an infringement of a patent right of a use invention to be established, whether or not the product in question is required to always be sold for the specific use.
Writer: Hideki TAKAISHI
Supervising editor: Kazuhiko YOSHIDA
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Hideki TAKAISHI (The person in charge of this Article)
Attorney at Law & Patent Attorney
Nakamura & Partners
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[i] An invention of a “sub-combination” typically refers to an invention of each device which forms an invention of a product comprised of a combination of two or more devices (“combination invention”), and the form of use thereof in combination with another product is described as matters specifying the invention.