〈phase for examination on damages (Excerpts from the general theory part of the judgement)〉
1. Concerning Application of Article 102, Paragraph 2, of the Patent Act to the sale and export of “competing products” by the patentee
(1) The judgment follows the framework proposed by the IP High Court Grand Panel Judgment Case No.10015 (Ne) 2012 [Waste Storage Device Case] “Article 102, Paragraph 2, of the Patent Act is applicable when there are circumstances in which the patentee could have obtained profits if there had been no infringement of the patent right by the infringer.” This framework of decision has been established in earlier court cases.
(2) If the patentee sells a “competing product” in Japan or exports it from Japan to other countries, Article 102, Paragraph 2, of the Patent Act is applicable even if the patentee does not sell or export a working product of the patented invention.
(3) Even if the export or sale of a “competing product” by the patentee is subsequently determined to be an infringement of another’s patent rights, the application of Article 102, Paragraph 2, of the Patent Act is not denied.
(4) On the assumption that Article 102, Paragraph 2, of the Patent Act applies even when the “competing product” by the patentee is “competing” outside Japan, whether or not the product is in a “competitive” relationship is to be determined on a destination-market basis.
2. Concerning Application of Article 102, Paragraph 2, of the Patent Act in cases where the patentee does not sell or export the “patented products” / “competing products”
In the case of this judgment, the issue did not come to light because the patentee was exporting “competing products”, but one important issue in recent years is the application of Article 102, Paragraph 2, of the Patent Act when the patentee themselves is not selling or exporting the patented products or competing products. This issue is also determined by the framework “Article 102, Paragraph 2, of the Patent Act is applicable when there are circumstances in which the patentee could have obtained profits if there had been no infringement of the patent right by the infringer.”
3. Concerning the superimposed application of Article 102, Paragraph 3, of the Patent Act in relation to the portion of the presumption overturned under Article 102, Paragraph 2, of the Patent Act
In this decision, the court found that the presumption overturned under paragraph 2 was 90%, so it was further examined whether paragraph 3 could be applied to the overturned portion.
In this decision, the court allowed for the overlapping of paragraph 3, stating “the patentee is found to have been able to license the presumptively covered portion” when the infringer’s production and sales volume exceeds the patentee’s ability to implement the patent, or when the presumption is covered in proportion to the percentage of non-competing shipment destinations. However, the overlapping application of paragraph 3 was not allowed for the overturned portion of the presumption pertaining to the grounds for overturning the presumption, on the grounds that the invention was utilized only in the part relating to the infringing product.
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