(1) Combination of existing components and recognition of “products essential to solve the problem”
In this judgement, the court held as follows and recognized indirect infringement under Article 101, item 2 of the Patent Act in an invention that combines existing components (“the main body of a programmable display unit” and “its software”), on the grounds that each existing component is an essential product that solve a problem.
“…Although the defendant’s display unit A and the defendant’s product 3 happen to be physically separate products and thus one function is divided into multiple components, the defendant’s display unit A is essentially functionally indivisible from the defendant product, it should constitute a distinctive part, etc., that directly brings about the distinctive technical means of this invention 1. Therefore, the defendant’s display unit A is an essential product that solves the problem of the invention 1.”
(2) Percentage of Direct Infringement and Subjective Requirement of Indirect Infringement (Article 101, Item 2 of the Patent Act)
In this judgement, the court held as follows and recognize indirect infringement under Article 101, Item 2 of the Patent Act at a rate of one-quarter holding that the subject requirement is satisfied if the defendant recognizes and acknowledges that there is high probability that persons within a range of non-exceptional cases will use the accused product to infringe the patent.
“When the number of sales defendant’s product 1-2 is compared with the number of sales of the optional function board, the number of users who can use the monitoring function etc. is at most one-quarter of those who purchased the defendant’s product 1-2. (It cannot be said that a user who purchases an optional function board necessarily uses the circuit monitoring function etc.) This percentage does not prevent from inferring that there is a high probability that an unexceptional range of users who purchased defendant’s products 1-2 will produce products directly infringe the patent right 1.”
In the Intellectual Property High Court Case No.10007 (Ne) 2019 (this case) which is the appeal court of Osaka District Court Case No. 8974 (Wa) 2015 […Device for displaying ladder circuits in the event of an abnormality], the court held the fact that as about one-quarter of users who purchased the accused products use the function, it does not prevent from establishing indirect infringement of the patent right.
In addition, though not using the norms of this decision, in the Tokyo District Court Case No.19874 (Wa) 2008 [Medical Device Case], the court recognize indirect infringement holding that in “approximately 27%” of all applicable medical cases the defendant’s products were used in a manner that infringed the plaintiff’s patents. Osaka District Court Case No.4851 (Wa) 2018 [Clamping Device Case] also infers that the rate was 25% or more.
Considering each of the above court cases, as a guideline, indirect infringement may be established if “approximately 25%” or more of the accused products are recognized or acknowledged to be used for producing products which directly infringe the patent (indirect infringement).
In the sense that the same product may or may not be infringed depending on how it is used, indirect infringement under Article, 101 Item 2 of the Patent Act and use inventions are similar, thus, the three court cases on the subjective requirement for indirect infringement under Article 101, Item 2 of the Patent Act may also be helpful for use invention.
Writer: Hideki TAKAISHI
Supervising editor: Kazuhiko YOSHIDA
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