[Patent★★] “LINE Furufuru” Patent Infringement Case: ① A case in which the Tokyo District Court recognized the invention step on the following ground. The court denied the defendant’s logic that only the “GPS search function” should be extracted from the secondary reference and applied to the primary reference. Thus, the court recognized a hindrance to apply the “GPS search function” to the primary reference. ② A case in which the Court found that the defendant’s services which were not examined at the phase for examination on infringement were not subject to the compensation for damages; the defendant’s sales which were regarded as remotely related to the “Furufuru” function have no causal relationship, thus, were not subject to compensation for damages under Article 102, paragraph (3) of the Patent Act.

–Tokyo District Court Case No. 2017 (Wa )36506 May 19, 2021 (Presiding Judge SATO)

1. Excerpt from the Judgement (Part of the judgment on “sales” at the phase for examination on damages)

2. Some Consideration

In general, the presumption under Article 102, paragraph 3 of the Patent Act only extends to the presumption of the amount of damages, therefore, the patentee bears the burden of proof of the existence of damages.

Moreover, “the amount … to receive for the working of the patented invention” is calculated by the formula “sales” × “equivalent royalty rate” relating to the working of the patented invention. The court found the scope of the “sales” under paragraph three (3) to be limited to “sales within a causal relation” with the working of the patented invention (the registration of friends by the “Furufuru” function). Based on the above, the court found and determine the scope of the “sales” for each of the defendant’s services.

In this case, there were two main issues, and both were judged in favor of the defendant.
 
(2-1) First, the plaintiff asserted that the scope of damages should not be limited to the registration of friends by the “Furufuru” function and the subsequent interactions with users who have become friends by the above function, but they should include the registration of friends by other functions such as QR Codes or ID searches, and moreover, should cover consolidated sales including overseas companies.

However, in this judgement, the court found “since the filing of this present case, the plaintiff has consistently insisted that the registration of friends by the ‘Furufuru’ function and the subsequent interactions falls within the technical scope of the inventions”, therefore, “the registration of friends by other means of friends registration etc.” was not considered to be subject to compensation for damages as long as the issue was not examined at the phase for examination on infringement.
 
(2-2) Second, the court found that sales of “account advertisements” and sales of “LINE Out” communications were not subject to compensation for damages with regard to “a scope of a causal relation with the registration of friends by ‘Furufuru’ function”. (With regard to the sales of Accounts Advertising, the court pointed out that the issue had not been adequately examined at the phase for examination on infringement. Moreover, apart from the above, the court found “unrelated to or remotely related to” in the same way as “LINE Out”).

In the text of this judgement, the expression “unrelated to or remotely related to” was used. It is extremely important in future patent practice to find the boundary line that is regarded as “remotely related to” (or the boundary line that “causal relation” is denied and is not regarded as to be subject to compensation for damages”.

In this respect, we were interested in how the appellate court would judge this case, but it is said that a settlement was reached before a judgment could be rendered by the appellate court.

 
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