1. The biggest issue in this case ~Article 104 of the Patent Act
The biggest issue in this case is “whether the Appellee’s material is presumed to have been produced using the method of the Corrected Invention under Article 104 of the Patent Act (Issue 1-1) “.
Article 104 of Patent Act provides “if a patent is granted on an invention that is a process for producing a product and the product was not publicly known in Japan prior to the filing of the patent application, any article identical to that product is presumed to have been produced using the patented process”.
The judgement considered each of the requirements of Article 104 of the Patent Act as follows.
2. Concerning the Requirement “the product was not publicly known”
As for “the product was not publicly known”, the Intellectual High Court decided as follows.
“In order for a product to have been ‘publicly known’ as referred to in Article 104 of the Patent Act, there should at least be a fact that was sufficiently known to enable a person skilled in the art to acquire clues for producing that product as of the reference date. However, it cannot be said that the product of the Corrected Invention was stated in Exhibit Otsu B16 and Exhibit Otsu B24, which were publicly known as of the Priority Date, and hence a person skilled in the art could not have easily conceived of the Corrected Invention from Exhibit Otsu B16 or Exhibit Otsu B24…. It follows that a person skilled in the art who read Exhibit Otsu B16 or Exhibit Otsu B24 could not have been able to acquire clues for producing the product of the Corrected Invention as of the Priority Date.
The Appellees allege that the product of the Corrected Invention was ‘publicly known’ as it is merely a product made by adding ‘8 mg’ of ornithine of ‘97.48%’ purity, which is a nutrition enhancing additive, (International Publication (WO2006/051940) of Exhibit Otsu B67) to ‘992 mg’ of fermented substance wherein ‘1 mg to 3 mg of equol is produced per gram by dry weight’ as referred to in ‘Example 1’ of Exhibit Otsu B16. However, … the product of the Corrected Invention is ‘fermented powder containing ornithine and equol, wherein not less than 8 mg ornithine and not less than 1 mg equol are produced per gram by dry weight of said fermented substance, and which is used as a food material.’ Thus, even if Exhibit Otsu B16 is combined with Exhibit Otsu B67, the product of the Corrected Invention does not constitute ‘a product wherein not less than 8 mg ornithine and not less than 1 mg equol are produced per gram by dry weight of said fermented substance,’ and hence the Appellees’ allegations mentioned above are unacceptable.”
3. Date of “application for the patent in question”—Whether the priority claim can be made
The Intellectual Property High Court held that the “the date of the patent application” (even in relation to the defendant’s method) was retroactive to the priority date.
“It should be said that a person skilled in the art who read the abovementioned statements of Basic Applications A and B could have recognized the following, by also taking into account the abovementioned common general technical knowledge as of the Priority Date: even in the case of using a ‘material containing daidzein compounds’ other than a ‘soybean hypocotyl’ as a fermenting material, if a microorganism having the ability to produce equol and ornithine, such as a Lactococcus 20-92 strain, is used to cause the ‘daidzein compounds’ in the fermenting material to be metabolized together with arginine, it is possible to produce fermented powder which contains not less than 8 mg ornithine and not less than 1 mg equol per gram by dry weight of the fermented substance, and which is used as a food material. Therefore, a person skilled in the art is found to have been able to understand the Corrected Invention from the statements in Basic Applications A and B.
Consequently, the Corrected Invention is at least found to be an invention stated or equivalent to have been stated in Basic Applications A and B, and should be regarded to be able to enjoy the effect of the priority claim based on Basic Applications A and B.
It follows that, with regard to application of the provisions of Article 104 of the Patent Act, the patent application for the Patent is deemed to have been filed on June 13, 2007, which is the Priority Date. Accordingly, when examining whether the product of the Corrected Invention was ‘not publicly known’ in Japan prior to the filing of the patent application as referred to in that Article, Exhibit Otsu B3 (International Publication No. 2007/066655; the international publication date: June 14, 2007), which was published after the Priority Date, cannot be taken into consideration.”
4. Some Consideration
This Court of Appeals decision is a rare case in which the presumption of a method of producing a new product under Article 104 of the Patent Act was recognized, and the patentee won the case.
The Intellectual Property Hight Court held that, in applying “publicly known” as referred to in Article 104 of the Patent Act, “the product of the Corrected Invention is ‘fermented powder containing ornithine and equol, wherein not less than 8 mg ornithine and not less than 1 mg equol are produced per gram by dry weight of said fermented substance, and which is used as a food material.’ Thus, even if Exhibit Otsu B16 is combined with Exhibit Otsu B67, the product of the Corrected Invention does not constitute ‘a product wherein not less than 8 mg ornithine and not less than 1 mg equol are produced per gram by dry weight of said fermented substance,’ and hence the Appellees’ allegations mentioned above are unacceptable.” According to this logic, if the claim language is reduced by amendment or revision to “just barely include the accused product”, regardless of invention step, it would be difficult to include past publicly known products in the “publicly known” under Article 104 of the Patent Act. The above should be kept in mind when enforcing a patented invention right of a method of producing a new product. On the contrary, for the defendant’s side, it should be kept in mind that the Intellectual Property High Court does not deny that a combination of products described in two references can be alleged as a “publicly known” product. In other words, a “publicly known” product under Article 104 of the Patent Act can include a product that can be realized by combining two publicly known products as in inventive step, even if the product in question itself is not known to lack novelty. In this sense, based on this decision, it can be said that a “publicly known” product under Article 104 of the Patent Act is a concept that includes an argument similar to that on inventive step, both from the patentee’s side and the alleged infringer’s side. Therefore, the pros and cons of such an approach would require further study.
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