Intellectual Property High Court Case Nos. 10057 and 10054 (Gyo-ke) 2022, (Presiding Judge Honda)
“… a lamp that satisfies a relationship expressed as 1.09x ≤ y ≤ 1.49x, where y (mm) is the half-width value of a luminance distribution obtained when light from each of the multiple LEDs has passed through the outermost shell boundary, and x (mm) is the interval between the luminance centers of adjacent LED chips.”
“A person skilled in the art who reads this specification will recognize that the parameter may solve the problem suppressing granularity when 1.09 < y/x. On the other hand, the parameters specified in the claims of the present invention, as defined in the corrected patent claims, specify the range 1.09 < y/x, appropriately defining the lower and upper limits of y/x, and further defining the range of values (Claims 5 to 8). Therefore, this invention may be understood to identify a range where luminance uniformity is approximately 85 % or higher.
The plaintiff argues that, based on the fact that the experimental results in Figure 7A of the specification include samples that did not achieve 85% luminance uniformity at the stage of y = 1.09x, a person skilled in the art may not recognize from the experimental results that the problem may be solved. However, a person skilled in the art would recognize each of the inventions since, based on the common technical knowledge at the time of filing, fitting deviations between linear approximation equations and actual measurement data are to be expected, and a person skilled in the art may understand that, based on such technical common knowledge, the samples numbered 10, 13, etc., pointed out by the plaintiff would achieve the approximate desired luminance uniformity, thus solving the problems of the present inventions.”
The prevailing trend in judicial precedents is that, for a parameter invention or numerically limited invention, the entire scope of the invention as claimed must be implementable and supported from one end of the numerical range to the other (i.e., a person skilled in the art must be able to recognize that the invention solves the technical problem).
On the other hand, a considerable number of court precedents have determined that an enablement requirement and a support requirement are satisfied even when the invention described in the claims is not fully implementable from one end of the numerical range to the other, or is unsupported (i.e., a person skilled in the art cannot recognize that the invention solves the technical problem). This judgment can be considered one such precedent.
Given the differing factual backgrounds of each court case, consistent interpretation is difficult. Moreover, if this issue is considered rigidly, enablement requirements and support requirements become excessively stringent. Therefore, considering the technical significance of the invention, the conclusion in judicial precedents – such as that it may be acceptable if the problem cannot be solved “near the lower limit” or “at the extreme of the numerical range” – has merit. On the other hand, if interpreted in this manner, it would be unreasonable for products falling near the lower limit or at the extreme of the numerical range – which are formally included within the scope of such an invention but fail to solve the problem – to be deemed satisfying the patented invention and thus constituting patent infringement. Therefore, if the above interpretation is adopted, it should be considered together with the framework where such alleged infringement products are ultimately deemed not satisfying the claims of patented invention through a defense of lack of effect or a restrictive interpretation of the claims.
Writer: Hideki TAKAISHI
Attorney at Law & Patent Attorney