1. Scope of the Claim (Claim 1)
“A pair of first grip portions which are substantially parallel and opposed to each other, and a pair of second grip portions which connect both end portions of the first grip portions, are narrower than a distance between the first grip portions, and are substantially parallel and opposed to each other, the first grip portions and the second grip portions being formed in an integrated loop shape having a substantially horizontally long rectangular frame as a whole in a plan view. The first grip part is formed in a linear shape or a gently curved shape, and the second grip part is curved in an arcuate shape when viewed from the front, and is formed in a shape slightly narrowed toward the inside of the rectangular frame when viewed from the plane so that the central parts are close to each other.”
2-1. Concerning the logical reasoning for recognizing cited Invention A as a main cited invention. ⇒ An inventive step is recognized. Case No. 10040 (Gyo-ke) 2023
“(Difference Point 3) The present Invention 1 does not have a support and clamp assembly, whereas the invention in Exhibit 1 has such an assembly”.
The following points are described in Exhibit 1:
・the invention described in Exhibit 1 has two main components (a bar and handle assembly, and a support and clamp assembly);
・bar 10 is fixed to weight support platform 26 located in the center;
・in the scope of claims of Exhibit 1, a bar and handle assembly and a support and clamp assembly are described together;
・there is no description of an invention that does not have a support and clamp assembly;
・there is no mention or suggestion that only bar 10 acts as independent exercise equipment ˗ in fact, using only bar 10 does not provide any load-bearing triceps exercise.
According to the above points, in the triceps exercise equipment described in Exhibit 1, bar 10 is a part that is inseparable from the support and clamp assembly, which is composed of the weight support platform 26 and other parts, and it can be said that using only bar 10 as a triceps exercise tool is not intended. Therefore, bar 10 alone, just one of the components of the triceps exercise equipment described in Exhibit 1, cannot be isolated and recognized as independent exercise equipment to be cited as an invention.
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| The present invention | Exhibit 1 invention (28 is a support and clamp assembly) |
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2-2. Concerning the logical reasoning for recognizing cited Invention A as a main cited invention ⇒ An inventive step is recognized. Case No. 10041 (Ne) 2023
In this case, bar 10 alone (Exhibit 7 invention) cannot be recognized as an independent invention, whereas it is reasonable that the invention in Exhibit 7 of the Defendant, which is equipped not only with bar 10 but also with a weight support part, is recognized as a cited invention. When determining the inventive step of each invention in the present case, which refers to an invention described in Exhibit 7 as a cited invention, the issue is whether removing a weight support part from Exhibit 7 invention of the Defendant is something that can be easily conceived. In this context, bar 10 of Exhibit 7 invention is a part of a configuration in Exhibit 7 invention of the Defendant and an inseparable part of the weight support part; therefore, bar 10 alone cannot be recognized as ring-shaped equipment, as the Plaintiff affirms.
3. Recognition of a main cited invention ˗ Concerning “all the components of the present invention are included in the present invention”, as Plaintiff asserts
The Plaintiff asserts that, even if all the components of the present Invention 1 are assumed to be encompassed by Exhibit 1 invention, there are no different features when the present Invention 1 is compared to Exhibit 1 invention recognized in the trial decision. However, according to the description in Exhibit 1 concerning triceps exercise equipment, since it is not possible to isolate only bar 10, which is just one of the components, and recognize it as independent exercise equipment, Exhibit 1 invention must be recognized as an invention in which the support and clamp assembly and bar 10 are inseparably integrated. Therefore, Difference Point 3, which the Defendant affirms as a different feature between the present invention 1 and Exhibit 1 invention, cannot be ignored.
4. Concerning Easily Conceived Property of Removing “support and clamp assembly” from Exhibit 1 Invention
Exhibit 1 invention is an invention for use as a weight-lifting device, in which a weight support part (weight support platform 26, clamp member 28, fixed pillar 38) is fixed to bar 10, and a weight 40 is fixed to the weight support platform 26. In other words, bar 10 is physically integrated with and acts in union with the support and clamp assembly formed by the weight support platform 26. Moreover, there is no mention or suggestion in Exhibit 1 that only bar 10 exerts function and effect as independent equipment. Therefore, it is difficult to recognize that there is motivation for a person skilled in the art and familiar with Exhibit 1 invention to remove the support and clamp assembly from Exhibit 1 invention. On the contrary, it should be said there is a disincentive to remove the support and clamp assembly from Exhibit 1 invention (it should be noted that Exhibit 1 invention does consider the use of only bar 10 with the support and clamp assembly removed). Therefore, it cannot be recognized that a person skilled in the art could easily conceive the configuration of the present Invention 1 pertaining to Difference Point 3.
5. Some Considerations
(1) Concerning recognition of a cited invention, naturally it is not permitted to recognize as a cited invention a part of a configuration from a concrete configuration in a cited reference. In general, it is necessary for the person skilled in the art at the time of application to have been able to recognize the relevant part of the configuration as an invention (a coherent technical idea).
In each judgment, the court has judged “Component A (bar 10)” alone cannot be recognized as a cited invention when an embodiment described in a cited reference was “Component A (bar 10)” + “Component B (support and clamp assembly 26 and 28)”. Each judgment is consistent with numerous past court cases.
(2) Conversely, and from a different point of view, in many of the past cases where the issue of inventive step through combination was raised, after first recognizing the main cited invention by removing part of the specific configuration described in the main cited reference, the issue was then whether the inventive step could be denied by combining the main cited invention with a secondary cited invention.
On the other hand, novelty was under consideration in the present case. One of the issues was whether the main cited invention of “Component A (bar 10)” + “Component B (support and clamp assembly 26 and 28)” was identifiably the present invention of Component A.
Even though the patented invention does not specify not having “Component B” as a invention-specific matter, the issue is why the Plaintiff’s assertion that “even if all the components of the present Invention are assumed to be encompassed by Exhibit 1 invention, there are no different features when the present Invention is compared to Exhibit 1 invention recognized in the trial decision” was dismissed.
If there is a “product in question” with a specific configuration as described in a main cited reference, would the product not fall within the scope of the patented invention based on the fact that it includes “Component B”, even though the device also contains “Component A” of the patented invention?
In this context, this judgment ruled that according to the description of Exhibit 1 relating to the invention of triceps exercise equipment, bar 10, which is just one of the components, cannot be isolated and recognized as an invention of independent exercise equipment. From a different perspective, we have no choice but to understand that the court interpreted the scope of the claims for the patented invention as “an invention of independent exercise equipment that has only bar 10”. Assuming the above, this ruling is consistent with the general theory concerning whether an product in question falls within the scope of the claims for a patented invention (even if another component is added to a component that falls within the scope of the claims, the product in question will in principle fall within the scope of the claims). Moreover, it is understandable that the court recognized that the different feature was the fact that “Component B” was added.
However, the court did not comment on how the claims were interpreted, such as being limited to “Component A” or not having “Component B” added for the patented invention in the judgment, making it a little difficult to understand.
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