1. Interpretation of the claim language in the prior instance judgement: Tokyo District Court Case No. 2018 (Wa) 29802 (Excerpt from summary of the prior instance judgement)
The first instance judgement considered “whether the defendant’s products and defendant’s methods have the configuration of ‘trace metal elements storage containers…are stored in…chambers’ described in the constituent elements 1C and 10C”, and concluded the defendant’s products and the defendant’s methods do not satisfy the constituent elements of the patented invention on the following grounds: The “chamber” of the patented invention is structured to be stored by filling different infusions “on the assumption that the infusion container has a plurality of chambers partitioned by partition means which can be communicated with each other”. Therefore, the “chamber” of the patented invention is interpreted to resolve “the technical problem that a solution containing a trace amount of metal elements becomes unstable when an amino acid infusion solution containing a sulfur-containing amino acid is filled into a single chamber and a trace metal element storage container is accommodated in the same chamber, even though the amino acid infusion solution and the trace metal element are isolated”. However, the middle chamber and the small chamber V of the defendant’s products and the defendant’s methods do not communicate with each other at the time of use.
2. Interpretation of the claim language in the appellate court judgement: Intellectual Property Hight Court Case No.2021 (Ne) 10007 (Excerpt from summary of the prior instance judgement)
On the other hand, as opposed to the first instance judgement, the appellate court found that the problem to be solved by the patented invention is “to provide an infusion preparation having a solution containing a sulfur-containing compound characterized in that a trace metal element is stably present” without the assumption that a plurality of chambers can communicate with each other, and concluded as follows: Concerning the constituent elements 1A (the patented invention of a product), “An infusion container has a plurality of chambers” is specified by “partitioned by partition means which can be communicated by external pressure”, therefore, the defendant’s products which do not have chambers that “can communicate with each other” do not satisfy the constituent elements of the patented invention of a product. On the other hand, concerning the constituent elements 10A (the patented invention of a method), “chambers” are not required to be those that “can communicate with each other.” Therefore, the defendant’s methods which do not have chambers that “can communicate with each other” satisfy the constituent elements of the patented invention of a method.
3. Points that reversed the conclusions of the first instance judgement and the appellate court judgement
As described above, the difference between the first instance judgement and the appellate court judgement is as follows: Although the constituent elements 10A (the patented invention of a method) does not require that “chambers” “can communicate with each other”, the first instance judgement interpreted “chambers” as “on the assumption that the infusion container has a plurality of chambers partitioned by partition means which can communicate with each other” and made a limiting interpretation with a limitation of “can communicate with each other” that is not included in the claim language. On the other hand, the appellate court judgement pointed out that Claim 1 (the patented invention of a product) has the matters to specify the invention as being “can communicate with each other”, but Claim 10 (the patented invention of a method) does not have such matters, and did not make a limiting interpretation. It is understood that this case is different from a typical claim differentiation, yet related to it.
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