Legal Update (Items Posted in February 2026)

Scope: Articles published in February 2026 by attorneys of Nakamura & Partners: Hideki Takaishi (32 articles), Reiko Tonomura (1 article), and Kei Iida (1 article)

Number of Articles Included: 34

Index Page: https://www.nakapat.gr.jp/ja/legal_updates_jp/ (Legal Update; 2 articles); https://www.nakapat.gr.jp/ja/note/2026/02/ (Attorney Takaishi’s IP News; 32 articles)

<Highlights of the Month> Key Points in the February 2026 Intellectual Property and Legal Affairs Update

This month’s legal update addresses 34 judicial decisions and commentaries across a broad range of intellectual property practice, from claim construction, inventive step, inventorship and employee inventions, pharmaceutical patents and standard-essential patents, to expert-appraisal evidence, statutory procedures, and exceptions under copyright law. The particularly noteworthy decisions and practical points are as follows.

1. Scope of Rights Determined by Claim Language and the Specification

The Tokyo District Court Judgment, Reiwa 5 (Wa) No. 70380 [Rod-Shaped Light] <Presiding Judge Takahashi>, found that the accused products, including those using different inputs for storing and emitting a recommended color, did not satisfy the claim elements, and also found a violation of the support requirement because there was no description or suggestion of solving the problem by using the same input method. Reiwa 6 (Ne) No. 10074 [Filler for Electronic Cigarette] <Presiding Judge Masuda> construed “cut” as a slit formed artificially and actively with a blade and found that the linear portions formed by crimping did not satisfy the claim element. By contrast, the Tokyo District Court Judgment, Reiwa 5 (Wa) No. 70594 [Mattress], did not limit “pressure-bonded” to strong compression, construed it as a state in which pressure is applied to the extent that no gap is formed, and found the claim element satisfied. Reiwa 6 (Ne) No. 10080 [Under-Coping Ventilation Structure] <Presiding Judge Nakadaira> held that the ventilation member “itself” must have ventilation and waterproofing performance. It is necessary to take into account the problem, means for solving the problem, effects, and means of formation described in the specification.

2. Common General Technical Knowledge, Predictability, Motivation, and Disincentives that Determine Inventive Step

Reiwa 6 (Gyo-Ke) No. 10037 [Wood Composite Material] <Presiding Judge Hibiki Shimizu> approved separate consideration because no particular synergistic effect was shown for density, dimensions, and random orientation, and treated them as optimization and selection based on well-known art and the like. Reiwa 6 (Ne) No. 10032 [Portable Information Communication Device] <Presiding Judge Hibiki Shimizu> and Reiwa 6 (Ne) No. 10001 [Yarn Color Placement System] <Presiding Judge Hibiki Shimizu> likewise emphasized common general technical knowledge regarding image processing and the fact that the adjustments were substantially included in the cited invention or could readily have been conceived by applying common general technical knowledge. By contrast, Reiwa 6 (Gyo-Ke) No. 10022 [… Antimicrobial Agent] <Presiding Judge Honda> affirmed inventive step because there was no reasonable expectation that the active ingredient would permeate the nail plate and exert a therapeutic effect. Reiwa 6 (Gyo-Ke) No. 10043 [Elasto-Plastic Hysteretic Damper] <Presiding Judge Honda> held that there was no motivation to apply a two-dimensional arrangement to the cited invention premised on unidirectional input and that there was a disincentive, while the Intellectual Property High Court Judgment, Reiwa 6 (Ne) No. 10048 [Battery] <Presiding Judge Nakadaira>, emphasized the close relationship between the position of a member in the prior art and its effect. Common general technical knowledge, predictability, motivation, and disincentives should be argued separately.

3. Inventorship and Employee Inventions Are Determined by Involvement in the Characteristic Portion and Application of the Rules

Reiwa 5 (Gyo-Ke) No. 10078 [Audio Controller] <Presiding Judge Hibiki Shimizu> denied joint inventorship on the ground that persons on the commissioning side had obtained a conception accompanied by a specific means of solution and had completed the invention through the experimental device, while the contractors had merely solved a different problem. Reiwa 6 (Ne) No. 10029 “Claim for Confirmation of the Right to Obtain a Patent” <Presiding Judge Masuda> found the professor who had recorded the problem and solution of the vascular plug in a research notebook to be the inventor, and [Employee Invention] Tokyo District Court Judgment, Reiwa 5 (Wa) No. 70495 <Presiding Judge Nakashima>, likewise denied the plaintiff’s inventorship after finding that other employees had independently conceived and embodied the invention at issue without the plaintiff’s involvement and that the asserted time of completion was also unsubstantiated. The Osaka District Court Judgment, Reiwa 5 (Wa) No. 10217 [Three-Dimensional Network Fiber Assembly] <Presiding Judge Matsuami>, dismissed the claims in light of the procedure for establishing the reward rules and the product’s commercial track record, whereas the Osaka District Court Judgment, Reiwa 4 (Wa) No. 11405 [Heterocyclic Derivative] <Presiding Judge Takemiya>, awarded statutory reasonable remuneration of approximately JPY 94 million because there was no provision or agreement applying the rules. Involvement in the characteristic portion should be documented, and the scope and procedures of the rules should be clarified.

4. Scope of Rights and Remedies for Pharmaceutical Patents and Standard-Essential Patents

Reiwa 5 (Ne) No. 10107 “PCSK9 (Second Litigation)” <Presiding Judge Nakadaira> held that, although “competes” includes competition through steric hindrance, it could not be said that an antibody competing with a reference antibody neutralizes by the same mechanism as the reference antibody, and the specification contained no disclosure at all of the neutralizing activity of antibodies competing through steric hindrance, and found a violation of the support requirement. As to the patentee’s rebuttal based on correction, it rejected that rebuttal without deciding the remaining correction items because Correction Items 1 and 2, which deleted statements from the specification, did not fall within the statutory purposes of correction. The Tokyo District Court Judgment, Reiwa 5 (Wa) No. 70527 [Cyclic Protein Tyrosine Kinase Inhibitor] <Presiding Judge Sugiura>, held that the plaintiff’s product was not substantially identical to Sprycel tablets because there was no reliable evidence sufficient to find that the addition or replacement of excipients, made in light of problems arising from the adoption of the anhydrous form and other factors, was based on well-known or commonly used art, and it rather appeared that the plaintiff had made it on the basis of its own technology. It is also noteworthy that the preliminary-injunction decision (granting an injunction) and this judgment (dismissing the main action as inadmissible and the counterclaim on the merits) by the same presiding judge reached different conclusions. The Tokyo District Court Judgment, Reiwa 4 (Wa) No. 7976 [Communication Equipment] <Presiding Judge Nakashima>, found infringement of an LTE standard-essential patent but held that the claim for an injunction constituted an abuse of rights, apportioned the royalty under FRAND terms, and did not allow an infringement premium because the defendant had been willing to take a license on FRAND terms.

5. Expert-Appraisal Evidence, Statutory Procedures, and Exceptions under Copyright Law

In the [Plant Variety Protection and Seed Act ★] breeder’s-right infringement case, the credibility of the expert appraisal was denied because of the possibility that mycelium had been mixed in advance into test tubes prepared by the plaintiff and because subsequent verification had become impossible owing to disposal of the parent strain. The judgment held that, under the circumstances of this case, at a minimum, preparation of the test tubes by a third-party institution and preservation of the parent strain were indispensable. The Tokyo District Court Judgment, Reiwa 6 (Gyo-U) No. 5001 <Presiding Judge Shibuya>, held that a defect arising from a request for examination made before submission of a translation in a foreign-language patent application was not cured later and that there was no practical benefit in revoking the disposition. Reiwa 6 (Ne) No. 10072 [Draft Difference Measuring Device] <Presiding Judge Nakadaira> held that the opposition to the grant of a patent could not be found to have been unlawful and also held that the other patent-application and maintenance expenses lacked an adequate causal relationship with the conduct. The Intellectual Property High Court Judgment of July 31, 2025 (Reiwa 6 (Ne) No. 10075) [Copyright Act ★] recognized quotation with respect to news photographs found to be related to the purpose of criticism in the text of the posts, and recognized exploitation of incidentally included works with respect to photographs that appeared only slightly on the same newspaper page, adjacent to the criticized article or the masthead. The collection and preservation of evidence, the sequence of statutory procedures, the causal relationship to damages, and each requirement for quotation should be reviewed.

In addition, this issue includes decisions spanning litigation, prosecution, contracts, and internal systems, including a finding of being “objectively unable to pay” under a contract, the denial of a joint tort based on an offer to sell a product under a different name, the technical significance of numerical limitations, and grounds for retrial. This issue should be used to review the organization of issues and the design of evidence.

Three-Line Summaries of All Articles

Category	Article Title and Three-Line Summary
Patent	Reiwa 6 (Gyo-Ke) No. 10037 [Wood Composite Material] <Hibiki Shimizu> ① This case concerned whether, with respect to a wood composite material, density, the dimensions of small flakes, and random orientation of the fiber direction should be considered as an integrated difference having a synergistic effect, or whether obviousness should be considered separately for each of them. ② The court approved the separate consideration on the ground that, although the individual effects of each element were recognized, no particular synergistic effect from their combination was recognized, and denied inventive step on the ground that density, dimensions, and random orientation could each be readily selected or optimized on the basis of well-known art and the like. ③ The decision indicates that, unless a particular synergistic effect from the combination is shown in the specification or experimental data, multiple differences may be considered separately.
Patent	Reiwa 6 (Ne) No. 10032 [Portable Information Communication Device] <Shimizu> ① This case concerned, in relation to the inventive step of a portable information communication device, the findings regarding the invention of Exhibit Hei B9 (differences in resolution from an external monitor, storage of dot data in image memory, and the like) and whether the differences relating to processing of received digital signals by the CPU, generation of display data having the same resolution as the display panel, and the like could readily have been conceived. ② The court held that the differences in resolution and the like were disclosed in the Exhibit Hei B9 document and that the differences not described in that document could readily have been conceived by applying common general technical knowledge at the priority date at issue (or were not substantial differences), denied inventive step, affirmed the judgment of the court of first instance dismissing the claims, and dismissed the appeal. ③ The decision indicates that inventive step may be denied where a configuration not described in a publicly known document could readily have been conceived by applying common general technical knowledge at the priority date at issue.
Patent	Reiwa 6 (Ne) No. 10001 [Yarn Color Placement System] <Hibiki Shimizu> ① This case concerned the inventive step of a configuration that, in consideration of yarns hidden by high-low control, sets the actual tufting density higher than the desired apparent density and controls the feed speed of the backing material. ② The court held that the prior art contained a system for controlling yarn supply and substrate feed, that it was self-evident that the desired appearance would not be obtained if the tufting density were set equal to the desired apparent density, and that adjusting the substrate feed speed to increase the tufting density in consideration of the hidden yarns was substantially included in the invention of Exhibit Otsu No. 4 or, even if not, could readily have been conceived by a person skilled in the art by applying common general technical knowledge at the priority date at issue; it therefore denied inventive step, affirmed the judgment of the court of first instance dismissing the claims, and dismissed the appeal (the judgment expressly states that its determination is not based on a matter of design). ③ The decision indicates that expressing, under a different conceptual name, an adjustment that is substantially included in the cited invention or could readily have been conceived by applying common general technical knowledge may not support inventive step.
Patent	Tokyo District Court Judgment, Reiwa 5 (Wa) No. 70079 [Vehicle Guidance System] <Kokubu> ① This case concerned whether vehicle guidance at an SIC by opening and closing barriers and using display devices satisfied claim elements including a “system for guiding vehicles entering and exiting through ETC-only entrances and exits.” ② The court of first instance found that vehicles seeking to use ETC-only entrances and exits were guided to prescribed lanes by start-control devices and roadside display devices, and found satisfaction of the claim elements, including Claim Elements A and F, as well as patent infringement. ③ In the court of first instance, the specific operation by which the start-control devices and roadside display devices guided vehicles to prescribed lanes was used in determining whether the vehicle guidance system satisfied the claim elements. The Intellectual Property High Court judgment of October 20, 2025, Reiwa 7 (Ne) No. 10043, however, denied satisfaction of Claim Element F, set aside the part of the first-instance judgment adverse to the defendant, and dismissed the claim.
Patent	Tokyo District Court Judgment, Reiwa 5 (Wa) No. 70380 [Rod-Shaped Light] <Takahashi> ① This case concerned whether the button inputs used to store and emit the recommended color of a rod-shaped light constituted the same input method prescribed in the claims or detection of the “first predetermined input,” and whether that configuration was supported by the specification. ② The court held that Accused Products 1 and 2 did not satisfy the claim elements because they used different input methods for storage and recall, and that Accused Products 3 and 4 likewise did not satisfy the claim elements because they did not emit light solely upon detection of the first predetermined input; it also found a violation of the support requirement because the specification neither described nor suggested solving the problem by the same input method. ③ The decision indicates that whether the input methods used for storage and emission are identical and whether light is emitted solely upon detection of the predetermined input affect satisfaction of the claim elements, and that claims including the same input method require a corresponding description or suggestion in the specification.
Intellectual Property—General	A Container Capable of Carrying 10 Cubic Centimeters of Liquid and/or Solid ① This article considers, using “a container capable of carrying 10 cubic centimeters of liquid and/or solid” as an example, whether a correction changing “A and/or B” to “B” may constitute an expansion or alteration. ② The article presents an example of a correction deleting an alternative and also refers, as the converse pattern, to a case in which adding the wording “electrically” may constitute an expansion or alteration, but does not itself state a conclusion. ③ The article presents the issue that, when making a correction, the possibility of an expansion or alteration should be considered both for deletion of an alternative and for addition of wording.
Patent	Reiwa 6 (Gyo-Ke) No. 10043 [Elasto-Plastic Hysteretic Damper] <Honda> ① This case concerned lack of inventive step based on a combination of a building damper and a bridge damper and the like, and a violation of the support requirement based on an alleged lack of support although the invention was specified as if it could accommodate a load from any direction, with respect to an elasto-plastic hysteretic damper. ② The court held that there was no motivation to apply a two-dimensional arrangement to the invention of Exhibit Ko No. 1, which was premised on unidirectional input, that there was a disincentive, and that the other cited references likewise did not suggest a pair of shear portions oriented differently from each other; it further denied a violation of the support requirement because the invention at issue did not require maximum energy absorption with respect to loads from all directions. ③ The decision indicates that the direction of load presupposed by a cited invention affects the determination of motivation or disincentive for a combination, and that the support requirement is determined in light of the scope of problem-solving actually required by the claims.
Patent	Intellectual Property High Court Judgment, Reiwa 6 (Ne) No. 10048 [Battery] <Nakadaira> ① In this patent-infringement action concerning a battery, the issues included whether the power-generating element included a stacked type, whether bonding through a member was included in the claims, whether Claim Element A4 could readily have been conceived from the prior art, and whether the appellant’s Product 2 fell within the technical scope of Patent 2 at issue (including under the doctrine of equivalents). ② The court found satisfaction of the claim elements because the power-generating element was not limited to a wound type and included a stacked type, and because bonding through a member was not excluded; on the other hand, it found inventive step because the flange position in the invention of Exhibit Otsu No. 12 was closely related to its effect and the other cited references did not lead to Claim Element A4 either and there was no motivation, and it affirmed the first-instance judgment awarding damages of JPY 529,285,945 and delay damages and dismissing the remaining claims on the ground that the appellant’s Product 2, the subject of the claims for an injunction and disposal, did not fall within the technical scope of Patent 2 at issue, including under the doctrine of equivalents; both the appeal and the incidental appeal were dismissed. ③ The decision indicates that, in claim construction, it is necessary to ascertain from the specification whether there is a structural limitation and, in determining obviousness, to consider the close relationship between the placement of a member in the prior art and the effect of the invention.
Intellectual Property—General	[Plant Variety Protection and Seed Act ★] Case in Which the Plaintiff’s Claims Were Dismissed Because the Credibility of the Expert Appraisal Purporting to Prove Infringement of the Breeder’s Right Was Not Established ① In this breeder’s-right infringement action concerning shiitake mushrooms, the credibility of the subculturing acts, which were conducted using test tubes prepared by the plaintiff itself and after which the parent strain was discarded, and of the expert appraisal premised on those acts was disputed. ② The court denied the credibility of the expert appraisal because the possibility that mycelium of the plaintiff’s variety had been mixed into the test tubes in advance could not be sufficiently ruled out and subsequent verification had become impossible owing to disposal of the parent strain, and dismissed the plaintiff’s claims without needing to determine the remaining points. ③ In separating and subculturing samples used to prove breeder’s-right infringement, it is important to have a fair and neutral third-party institution prepare the test tubes and to preserve, rather than discard, the parent strain after subculturing, thereby ensuring the fairness and transparency of the expert appraisal and the subsequent verifiability of the subculturing acts.
Patent	Reiwa 6 (Ne) No. 10056 [Van-Type Motor Vehicle for Cleaning Work] <Nakadaira> ① This case concerned whether the appellee, which received delivery from KCS of Appellee Product 2 (which the first-instance judgment found to fall within the technical scope, granting an injunction and other relief) and offered it for sale under a name different from that of Appellee Product 1 sold by KCS, was liable in joint tort for KCS’s sale of Appellee Product 1. ② The court denied a joint tort, holding that, even if the appellee offered for sale Appellee Product 2, which bears a name different from that of Appellee Product 1, it could not be found that this assisted or facilitated KCS’s sale of Appellee Product 1. ③ The decision indicates that merely offering for sale, under a different name, a product delivered by another infringer does not, even if the two products have the same structure, amount to assisting or facilitating that other infringer’s sales, and does not constitute a joint tort.
Intellectual Property—General	[New YouTube Video] Infringement Analysis (Other than Typical Literal Satisfaction) (Reading Through the Encyclopedia of Patent Judicial Decisions, 4th Edition) November 5, 2025 ① This article introduces a video covering major judicial decisions concerning the doctrine of equivalents, numerical limitations, use inventions, and the like as infringement analyses other than typical literal satisfaction. ② According to the title, the video is a reading of the Encyclopedia of Patent Judicial Decisions, 4th Edition, and the introductory description states that viewers can grasp together, in a single video, major judicial decisions concerning infringement analysis, including the doctrine of equivalents, numerical limitations, and use inventions. ③ The video serves as a starting point for reviewing, across subject matters, major judicial decisions concerning infringement analyses other than typical literal satisfaction.
Intellectual Property—General	[Contract] Tokyo District Court Judgment, Reiwa 4 (Wa) No. 9422 <Shibuya> ① This case concerned a claim for return of the contract fee of JPY 210 million paid under the contract at issue, a joint development and business alliance agreement, as restitution following termination on the ground of a “state of being objectively unable to pay” under Article 17(2) of the contract (the defendant did not actively dispute the ground for termination). ② Based on the evidence, the court found that the defendant had been in a state of being objectively unable to pay no later than February 7, 2025, held the termination of the contract valid, and granted in full the claim for return of the contract fee of JPY 210 million. ③ This is a case-specific decision in which the defendant did not actively dispute the ground for termination, and it may be referred to as an example in which it was shown by evidence that the counterparty was objectively unable to pay at the time of the declaration of termination.
Patent	Tokyo District Court Judgment, Reiwa 5 (Wa) No. 70449 [Fastening Hardware] <Takahashi> ① This case concerned whether the language “for inducing deformation when an excessive load acts” in the fastening hardware limited the configuration of the invention and whether novelty existed over hardware described in a design gazette. ② The court denied novelty, holding that the language merely indicated the purpose or an operation or effect necessarily obtained by the configuration in which the front portion and rear-edge portion were integrated by multiple branch-like portions, and that the invention of Exhibit Ko No. 5 necessarily obtained the same effect from the same shape. ③ When asserting a difference from the prior art based on claim language indicating a purpose or an operation or effect, it is necessary to consider whether the language limits the configuration and whether that effect necessarily arises from the same configuration.
Patent	Osaka District Court Judgment, Reiwa 5 (Wa) No. 10217 [Three-Dimensional Network Fiber Assembly] <Matsuami> ① This case concerned, with respect to a three-dimensional network fiber assembly that was an employee invention, the unreasonableness of payment of remuneration under internal reward rules and whether there was reasonable remuneration (profits from exclusivity) apart from those rules (the court examined the latter from the standpoint of the reasonableness of the defendant’s determination not to pay an implementation reward). ② The court held that it was not unreasonable to pay remuneration for employee inventions under the reward rules because, in the process of establishing and revising them, general employment rules and the like were referred to, opinions were obtained from persons with knowledge of intellectual property, and the proposed rules were disclosed to employees and their opinions were heard; it further dismissed the claims, holding that there was no unreasonable aspect in the defendant’s determination that the requirements for payment of an implementation reward were not satisfied under circumstances including that the defendant’s product received a low evaluation as a mattress and commercialization had ended. ③ In determining rewards for employee inventions, it is important, in addition to the procedures for establishing and revising the rules, to specifically record and prove the sales performance, evaluation, and contribution to the business of the relevant product.
Patent	[Employee Invention] Tokyo District Court Judgment, Reiwa 5 (Wa) No. 70495 <Nakashima> ① In response to a claim by the plaintiff, a former employee, for JPY 100 million as reasonable remuneration for an employee invention, this case concerned whether the plaintiff was the inventor or a joint inventor of the invention at issue, including the time of completion of the invention and the plaintiff’s involvement in conception and embodiment. ② The court denied the plaintiff’s inventorship and joint inventorship, finding that the invention at issue had been independently conceived and embodied by Bi, Di, and others without the plaintiff’s involvement, in light of the facts that the plaintiff had no contact with Bi and the others, that the plaintiff’s explanatory document was not even circulated to them, and that the Di invention had already been presented before Di received the plaintiff’s explanatory document (the court reached the same conclusion after two rounds of requests for clarification), and holding that there was also no reliable evidence substantiating the time of completion asserted by the plaintiff; it dismissed the claim. ③ To assert inventorship, it is necessary to substantiate, by specific materials, the time of completion of the invention and actual involvement in its conception and embodiment.
Patent	Osaka District Court Judgment, Reiwa 4 (Wa) No. 11405 [Heterocyclic Derivative] <Takemiya> ① This case concerned whether internal employee-invention rules applied to an employee invention relating to a heterocyclic derivative and the amount of reasonable remuneration under the Patent Act before the 2004 amendment. ② The court calculated the statutory reasonable remuneration because there was no provision or agreement applying the employee-invention rules to the invention at issue, and awarded approximately JPY 94 million (after deducting JPY 6,519,000 already paid) after taking into account, for the employer’s own working and third-party working, an employer contribution of 99%, a joint-inventor share of one-third, and other factors. ③ Employee-invention rules should clearly specify their scope of application; where the rules do not apply, excess sales, a hypothetical royalty rate, licensing revenue, the employer’s contribution, the patent’s contribution ratio, and the joint-inventor share should be considered as materials for calculating remuneration.
Patent	Reiwa 5 (Ne) No. 10107 “PCSK9 (Second Litigation)” <Nakadaira> ① This case concerned whether the support requirement was met and the merits of the patentee’s rebuttal based on correction with respect to an antibody invention defined by the functions of neutralizing the binding between PCSK9 and LDLR and competing with a reference antibody. ② The court held that “competes” included direct competition and competition through steric hindrance, but that it could not be said that an antibody competing with a reference antibody neutralizes by the same mechanism as the reference antibody (in the verification experiments, roughly 80% or more of the antibodies competing with the reference antibodies lacked binding-neutralizing activity) and that the specification contained no disclosure at all of the neutralizing activity of antibodies competing through steric hindrance, and found a violation of the support requirement. As to the patentee’s rebuttal based on correction, it rejected that rebuttal without deciding the remaining correction items because Correction Items 1 and 2 did not fall within the statutory purposes of correction. ③ For antibody claims defined by function, it is necessary to confirm whether the entire scope of the claims, including mechanisms of action different from those in the examples, is supported by the specification, and, when asserting correction, to examine separately its admissibility and whether it actually excludes unsupported embodiments. A correction adding conditions concerning neutralization or competition by Fab fragments should be distinguished from a correction limiting the subject matter of the invention to Fab fragments themselves.
Patent	Tokyo District Court Judgment, Reiwa 4 (Wa) No. 7976 [Communication Equipment] <Nakashima> ① This case concerned, in connection with infringement of an LTE standard-essential patent, whether the claim for an injunction constituted an abuse of rights and how damages and an infringement premium based on FRAND terms should be treated. ② While finding patent infringement, the court held that the claim for an injunction constituted an abuse of rights because the failure to reach agreement resulted from the difference in royalty rates and it could not be said that the defendant lacked willingness to obtain a license; it calculated damages by apportioning the royalty rate for the entire standard by the number of patents and, because the defendant had been willing to take a license on FRAND terms, did not allow an increase based on an infringement premium in light of the nature of FRAND terms. ③ In enforcing a standard-essential patent, it is necessary to distinguish a difference of views concerning the royalty rate from an implementer’s willingness to obtain a license, and to consider damages in light of the royalty rate for the entire standard, the number of patents, and the relative contribution of each standard.
Patent	Reiwa 6 (Ne) No. 10074 [Filler for Electronic Cigarette] <Masuda> ① This case concerned the meaning of “cut” in Claim Element B relating to a filler for an electronic cigarette and whether linear portions of the accused product formed by crimping satisfied that claim element. ② Based on dictionary descriptions and examples of means for formation in the specification, the court construed “cut” as meaning a slit or cut formed artificially and actively using a blade, and held that the claim element was not satisfied because the linear portions of the accused product were not formed with a blade. ③ Where the meaning of claim language is unclear, it may be construed restrictively based on dictionary meanings and the means for formation described in the specification (including whether other means are described or suggested); therefore, attention should be paid to the choice of terms that may specify the means for formation and to the description in the specification.
Patent	Reiwa 6 (Gyo-Ke) No. 10109 [Assistance Device] <Honda> ① This case concerned whether the relationship between the original trial decision and the subsequent fourth retrial decision constituted a ground for retrial under Article 338(1)(x) of the Code of Civil Procedure, as applied mutatis mutandis by Article 171(2) of the Patent Act. ② The court rejected the claim, holding that a conflict with the fourth retrial decision, which was issued after the original trial decision that was the subject of the request for retrial, did not constitute a ground for retrial of the original trial decision; even assuming that the fourth retrial decision was the subject, the original trial decision was a decision holding that the request for an appeal against the examiner’s decision of refusal was groundless, whereas the fourth retrial decision was a decision dismissing the request for retrial as inadmissible, and they therefore did not conflict with each other. ③ When asserting a ground for retrial against a trial decision, it is necessary to identify the trial decision that is the subject of the retrial and then consider, from the chronology, operative parts, and legal nature of each decision, whether they actually conflict.
Patent	Tokyo District Court Judgment, Reiwa 6 (Gyo-U) No. 5001 <Shibuya> ① This case sought revocation of the JPO’s disposition dismissing as unlawful a request for examination made, with respect to an international patent application in a foreign language, before submission of the translation. ② The court held that Article 184-17 of the Patent Act made it a procedural requirement to request examination after submission of the translation, that the defect in the order of those procedures was not cured by a later submission of the translation, and that there was no interest in the action because the JPO would have no choice but to dismiss the request again even if the disposition were revoked; it therefore dismissed the action as inadmissible. ③ For a foreign-language patent application, a request for examination must be made after submission of the translation, and attention should be paid to the fact that an error in the order of procedures cannot be cured by submitting the translation afterward.
Patent	Reiwa 6 (Gyo-Ke) No. 10022 [… Antimicrobial Agent] <Honda> ① This case concerned whether the corrected invention relating to a therapeutic agent for onychomycosis using KP-103 could readily have been conceived from each primary cited invention directed to treating tinea pedis (the invention of Exhibit Ko No. 1-1) or dermatomycosis (the invention of Exhibit Ko No. 1-2). ② The court denied obviousness based on the primary cited invention, holding that there was an obstacle making it difficult for an antifungal agent to penetrate and permeate into the nail plate, that a person skilled in the art could not reasonably have expected delivery of KP-103 to the infected site and a therapeutic effect, and that the effect was also difficult to predict. ③ In determining inventive step for a medical-use invention, it is necessary to consider not only commonality of the causative fungus or keratin, but also whether it could reasonably have been expected that the active ingredient would pass through the target tissue, be delivered to the infected site, and exert a therapeutic effect.
Patent	Reiwa 6 (Ne) No. 10029 “Claim for Confirmation of the Right to Obtain a Patent” <Masuda> ① This case concerned who was the inventor who actually participated in completing the characteristic portion of a vascular-plug invention, and whether a dispute seeking confirmation of the right to obtain foreign patents in connection with a PCT application was ripe for adjudication. ② The court found that it was Professor A, who recorded the problem of the invention at issue and the means for solving it in a research notebook, rather than Y1, who was not found to have a background in clinical knowledge, who actually participated in completing the characteristic portion; it further held that, at the present time, when no new filing or national-phase entry had been made in any foreign country and no specific plan therefor had been disclosed, the ripeness of a dispute seeking confirmation of the right to obtain foreign patents was not established. As a result, the court dismissed the appeal of the plaintiff in the first instance and, on the appeal of the defendant company in the first instance, set aside paragraph 1 of the operative part of the first-instance judgment (the part granting Claim 1-2) and dismissed that claim. ③ With respect to inventorship, actual involvement in the characteristic portion of the invention should be proved by specific materials; when seeking confirmation of the right to obtain a foreign patent, the target countries and specific plans for a new filing or national-phase entry and the like must be clarified.
Patent	Reiwa 5 (Gyo-Ke) No. 10078 [Audio Controller] <Shimizu> (Defendant: Pixie Dust) ① This case concerned whether Contractor C and others were joint inventors of the invention at issue and, on that premise, whether misappropriation or violation of the joint-application requirement was established. ② The court held that the invention at issue had already been completed through the experimental device developed by A and B, on the commissioning side (PDT), on the basis of a conception accompanied by specific means for solving the problem, and that the inventors were A and others (A and D) listed in the patent gazette, and that the functions realized by Contractor C and others merely solved a problem different from that of the invention at issue and did not constitute creative involvement in the characteristic portion; it therefore did not find misappropriation or violation of the joint-application requirement. ③ The case indicates that, in determining joint inventorship, it is necessary to consider not contribution in general at the implementation stage, but whether the person embodied the characteristic portion that solves the technical problem of the invention at issue.
Patent	Reiwa 5 (Wa) No. 70563 [Transaction Management System] <Shibuya> (Keysoft v. Sankaku Kikaku) ① This case concerned whether, in the accused system relating to the Furusato Nozei program, a local public body constituted an “intermediate trader” of the invention at issue. ② The court held that Furusato Nozei and the provision of return gifts were not sales transactions and that there was no relationship in which the local public body received an order from the donor and placed an order with a business operator; the local public body therefore did not constitute an “intermediate trader” conducting transactions in goods in stages. ③ The case indicates that satisfaction of a claim element relating to a transaction system must be considered not only from the form of notification but also in light of the actual relationship, including whether the transaction is for consideration and whether order information is received and transmitted in stages.
Patent	Tokyo District Court Judgment, Reiwa 5 (Wa) No. 70594 [Mattress] ① This case concerned the construction of the claim element requiring multiple cushion bodies to be incorporated into a mattress cover in a “pressure-bonded” state and whether the accused product satisfied that claim element. ② The court construed “pressure-bonded” as not requiring a state in which the cushion bodies are strongly compressed and adhere, but as meaning a state in which some pressure is applied to the extent that no gap is formed between the cushion bodies, and found satisfaction because measurement showed that pressure of at least 0.2 MPa was applied between the inner materials of Accused Products 1 and 4 and the same was inferred for the other accused products of the same type; it granted an injunction against manufacture, transfer, and the like and an order for disposal (and dismissed the remaining claims). ③ The case indicates that, in construing claim terms, it is important to consider together not only dictionary meanings but also the embodiments, drawings, and purpose and effects of the invention in the specification, and, with respect to an accused product, to prove by measurement the physical state corresponding to the claim element. The appellate court (Intellectual Property High Court Judgment of November 17, 2025, Reiwa 7 (Ne) No. 10045) dismissed the appeal.
Patent	Reiwa 5 (Ne) No. 10114 [Layered Body Having Cube-Corner Elements, and Retroreflective Sheet] <Nakadaira> ① This case concerned whether the numerical limitation setting the dihedral-angle error of cube-corner elements at 1 to 60 arcminutes had technical significance and supported inventive step. ② The court held that there was no basis in the specification for regarding the numerical range as preferable, that examples below 1 arcminute also produced the operation and effect, and that neither a basis for setting the upper limit at 60 arcminutes nor an operation and effect peculiar to the range was shown; accordingly, the numerical range had no particular technical significance and merely reflected the exercise of ordinary creative ability; it therefore found lack of inventive step over the invention of Exhibit Otsu No. 12, rejected the patentee’s rebuttal based on correction, and dismissed the appeal. ③ The case indicates that, to support inventive step by a numerical limitation, it is important to substantiate in the specification the basis for the numerical range and its upper and lower limits, as well as an operation and effect peculiar to that range.
Patent	Reiwa 5 (Gyo-Ke) No. 10121 [Imaging Device] <Masuda> ① This case concerned whether the support requirement was satisfied in relation to the statement “orthogonal” in the claims and the depiction of Axis A in Figure 4B. ② The court held that “orthogonal” indicated not the angle of intersection between the first axis and the second axis, but the positional relationship in which two sides of the rectangular display intersected at a right angle; it further held that the depiction of Axis A as moving in Figure 4B could not support the assertion because the claims do not state that Axis A can be moved and, even setting that point aside, was an obvious error from which a person skilled in the art could readily understand the correct configuration; it therefore denied a violation of the support requirement (also rejecting the assertions of violations of the clarity and enablement requirements) and dismissed the claim. ③ The case indicates that, even where a drawing contains an error, a violation of the support requirement does not immediately result if a person skilled in the art can readily understand the error and the correct configuration from the claims and the specification as a whole.
Patent	Reiwa 5 (Wa) No. 70004 [Portable Information Communication Device] <Takahashi> ① This case concerned whether, with respect to a portable information communication device, the configurations relating to Difference ① (reception of a radio signal, conversion into a digital signal, and transmission to the CPU) and Difference ② (reading of bitmap data of an image having the same resolution as the screen resolution) could readily have been conceived by applying common general technical knowledge to the invention of Exhibit Otsu No. 6. ② The court denied inventive step, holding that a person skilled in the art at the priority date could readily have conceived, by applying common general technical knowledge to the invention of Exhibit Otsu No. 6, a configuration in which, to import image information from outside, the communication unit received a radio signal, converted it into a digital signal, and transmitted it to the CPU (Difference ①), and a configuration reading bitmap data of an image having the same resolution as the screen resolution (Difference ②); it dismissed the plaintiff’s claim under Article 104-3(1) of the Patent Act. ③ The case indicates that whether a difference from the prior invention can be specifically derived by applying common general technical knowledge at the priority date is an important consideration in determining inventive step.
Patent	Tokyo District Court Decision, Reiwa 5 (Yo) No. 30214, Petition for a Preliminary Injunction <Sugiura> ① The text of the original article does not state the specific facts or issues of the petition for a preliminary injunction and refers to the judgment by the same Presiding Judge Sugiura in the main action and counterclaim (Reiwa 5 (Wa) No. 70527). ② The original article states that the outcome for the patent owner differed between the preliminary injunction and the judgment in the main action and counterclaim; this does not mean that an appellate court set aside a first-instance judgment. The operative part and other particulars of the preliminary-injunction decision can be confirmed in the published copy. Apart from the statement that the creditor’s petition is found to be reasonable, the published copy (certified copy) of the decision contains no detailed statement of reasons. ③ The article indicates that the difference in conclusions between the preliminary-injunction decision (granting an injunction) and the judgment in the main action and counterclaim (dismissing the main action as inadmissible and the counterclaim on the merits) by the same presiding judge should be reviewed together with the article concerning that judgment linked from this article.
Patent	Tokyo District Court Judgment, Reiwa 5 (Wa) No. 70527 [Cyclic Protein Tyrosine Kinase Inhibitor] <Sugiura> ① This case concerned whether the effect of an extended pharmaceutical patent right reached the plaintiff’s product as a product “substantially identical as a pharmaceutical product,” despite differences in the hydrate or anhydrous form of the active ingredient and in the composition of excipients. ② The court held that the plaintiff’s product appeared to have added or replaced excipients (replacement of PEG and addition of carnauba wax) in light of problems arising from the difference in active ingredient (adoption of the anhydrous form) and other factors, that there was no reliable evidence sufficient to find that this was based on well-known or commonly used art, and that it rather appeared that the plaintiff had done so on the basis of its own technology to bring the dissolution behavior closer to that of Sprycel Tablets or to obtain bioequivalence, and therefore held that the plaintiff’s product was not substantially identical to the originator pharmaceutical product and that the extended patent right did not extend to it. ③ If an appeal is filed, a point of practical interest will be whether the logic of this judgment, which treats the problems and technical significance relating to differences in excipients as material, will be maintained, or whether its scope will be limited to cases in which the active ingredient differs. The operative part dismissed as inadmissible the main action for a negative declaration and dismissed on the merits the defendant patentee’s counterclaim for damages.
Patent	Reiwa 6 (Ne) No. 10080 [Under-Coping Ventilation Structure] <Nakadaira> = Court of First Instance: Osaka District Court Judgment, Reiwa 5 (Wa) No. 8403 ① This case concerned whether the plate-shaped portion of the appellee’s product constituted a “ventilation member that exhibits ventilation performance and waterproof performance” and satisfied Claim Element C. ② In light of the claim language and the specification, the court construed the ventilation member itself as being required to have ventilation performance and waterproof performance, and denied satisfaction of Claim Element C because the plate-shaped portion (Sloped Portion ⑤) of the appellee’s product was not found itself to have that performance, the appellant’s “contribution” test lacked a reasonable basis, and, even under that test, Sloped Portion ⑤ reduced ventilation performance and therefore did not contribute to that performance. ③ The case indicates that, for a claim element specifying performance, it should be considered in accordance with the claim language and specification whether the member itself is required to have that performance, and that mere “contribution” to performance cannot be used as the standard without a reasonable basis.
Patent	Reiwa 6 (Ne) No. 10072 [Draft Difference Measuring Device] <Nakadaira> ① This case concerned whether expenses for responding to opposition proceedings and other patent-application and maintenance expenses could be recovered as damages based on the tort of the defendant in the court of first instance. ② The court held that no tort was established because the opposition to the grant of the patent could not be found to have been unlawful, and that the other expenses had been incurred by the plaintiff in the court of first instance on its own judgment and lacked an adequate causal relationship with the conduct of the defendant in the court of first instance. ③ The case indicates that, to claim expenses for responding to a patent opposition or patent-application and maintenance expenses as damages, the unlawfulness of the other party’s conduct and an adequate causal relationship between that conduct and the expenditure must be specifically proved.
Copyright	[Copyright Act ★] Case in Which, Regarding the Appellee’s (Defendant’s) Acts of Photographing, to the Extent Included in a Single Smartphone Photograph, Articles (Headlines, Article Text, and the Photographs at Issue) in a Newspaper Published by the Appellant (Plaintiff), and Posting Them Together with the Text of Posts on Twitter (X) via the Internet on 25 Occasions, the Appellant Alleged Infringement of Copyright (Right of Making Transmittable) in the Photographs at Issue and Sought Damages in Tort, and the Court Held that the Quotation Defense (Article 32(1) of the Copyright Act) or the Defense of Exploitation of Incidentally Included Works (Article 30-2 of the Copyright Act) Applied and that the Appellant’s Claims Should Be Dismissed ① This case concerned whether the quotation defense or the defense of exploitation of incidentally included works applied to infringement of the right of making the photographs transmittable arising from the defendant’s acts of photographing articles and photographs in the Seikyo Shimbun with a smartphone and posting them on Twitter (X), together with the text of posts, on 25 occasions. ② With respect to photographs found to be related to the purpose of criticism in the text of the posts, the Intellectual Property High Court found clear distinguishability from the text of the posts, a principal-subordinate relationship, the ability to recognize the source, relevance to the purpose of quotation, and appropriateness of the scope and quantity, and upheld the quotation defense; with respect to photographs that appeared only slightly on the same newspaper page, adjacent to the criticized article or the masthead (Photographs 10 and 27-29 at issue), it found exploitation within a justifiable extent as incidentally included works, and dismissed the appeal. ③ The decision is practically instructive in that, with respect to quotation when posting newspaper pages containing news photographs, it specifically considered clear distinguishability, the principal-subordinate relationship, fair practice, and the justifiable extent for the purpose, while separately treating slight inclusion of material not subject to criticism as exploitation of incidentally included works.

Reiwa 6 (Gyo-Ke) No. 10037 [Wood Composite Material] <Hibiki Shimizu>

Original Article URL: https://www.nakapat.gr.jp/ja/note/%e4%bb%a4%e5%92%8c7%e5%b9%b4%e8%a1%8c%e3%82%b110037%e3%80%90%e6%9c%a8%e8%b3%aa%e8%a4%87%e5%90%88%e6%9d%90%e3%80%91%ef%bc%9c%e6%b8%85%e6%b0%b4%e9%9f%bf%ef%bc%9e/

Reiwa 6 (Gyo-Ke) No. 10037 [Wood Composite Material] <Hibiki Shimizu>
Date of judgment: February 20, 2025.

Inventive Step: ×

The plaintiff asserted that the three elements of density, dimensions of small flakes, and orientation (direction) operated together to produce a synergistic effect and therefore should be considered as a single difference. This judgment, however, approved the JPO’s method of considering them separately, holding that, the specification did not show the effects of the density and orientation configurations as effects of the invention at issue, and the experimental results certificate (Exhibit Ko No. 20) showed only the effects of the individual configurations separately and did not establish a synergistic effect resulting from their combination.

(1) Difference 1: Density (400-550 kg/m³)
The invention of Exhibit Ko No. 1 does not specify density, but it was well known in the prior art (Exhibits Otsu Nos. 2-4) that a density of 0.40-0.65 g/cm³ (400-650 kg/m³) was suitable for a wood board.
⇒ A person skilled in the art could readily optimize or select a preferable numerical density range according to the use (a substrate for flooring material).

(2) Difference 2: Dimensions of the Small Wood Flakes (Thickness of 0.2-0.5 mm, etc.)
The invention at issue specifies the flake size in detail, but similar dimensions were disclosed in the prior art (Exhibits Ko Nos. 4 and 5, among others).
⇒ It was common general technical knowledge that making the flakes smaller produces uniformity and smoothness but reduces strength (a trade-off), and optimizing the numerical values within that relationship was within the ordinary creative ability of a person skilled in the art. The absence of “knots” was also a natural result of reducing the material to small pieces.

(3) Difference 3: Random Orientation of the Fiber Direction
In the invention at issue, the flakes are randomly oriented.
⇒ In OSB, imparting orientation or using a random orientation were well-known alternatives, and it was common general technical knowledge that random orientation eliminates variations in strength depending on direction (anisotropy). It was therefore easy to select random orientation according to the use.

[Supplement] The heading of the original article reads “Reiwa 7 (Gyo-Ke) No. 10037,” but the case number of the judgment is Reiwa 6 (Gyo-Ke) No. 10037 (judgment, p. 1, line 2). Further, regarding the statement in the original article that each element individually produces an effect, the judgment held that the effects of the density-related configuration and the orientation-related configuration are not shown as effects of the invention (judgment, p. 22, lines 8-9), and its statement that the effects produced by each configuration alone were merely shown individually concerned the experimental results certificate (Exhibit Ko No. 20) (judgment, p. 22, line 15 to p. 23, line 8).

https://www.courts.go.jp/assets/hanrei/hanrei-pdf-93877.pdf

* This article provides general information and does not include legal advice.
Author: Hideki Takaishi, Attorney-at-Law and Patent Attorney (Daini Tokyo Bar Association)
Contact regarding this matter: h_takaishi☆nakapat.gr.jp (please replace ☆ with @)

 

Reiwa 6 (Ne) No. 10032 [Portable Information Communication Device] <Shimizu>

Original Article URL: https://www.nakapat.gr.jp/ja/note/%e4%bb%a4%e5%92%8c6%e5%b9%b4%e3%83%8d10032%e3%80%90%e6%90%ba%e5%b8%af%e6%83%85%e5%a0%b1%e9%80%9a%e4%bf%a1%e8%a3%85%e7%bd%ae%e3%80%91%ef%bc%9c%e6%b8%85%e6%b0%b4%ef%bc%9e/

Reiwa 6 (Ne) No. 10032 [Portable Information Communication Device] <Shimizu>

Inventive Step: ×
⇒ The judgment of the court of first instance dismissing the claims was affirmed.

At the priority date at issue, it was common general technical knowledge that a mobile telephone receives a radio signal, demodulates it into a digital signal, and that the CPU processes the signal and displays an image.
⇒ The judgment identified Difference 6BDG′ because Exhibit Hei B9 did not describe transmission of a signal from communication unit 12 to CPU 11, and then held that the configuration would have been obvious through application of common general technical knowledge and was not a substantive difference.

In the Exhibit Hei B9 document as well, because data that cannot be fully viewed on the mobile screen is output to an external monitor, there is a “difference in resolution.”

VRAM (image memory) and bitmap data (dot data) were considered in identifying the cited invention, namely how a person skilled in the art would understand Exhibit Hei B9 in light of common general technical knowledge. The court also found that, at the priority date at issue, it was common general technical knowledge to generate and display data having the same resolution as the display panel from display data having a higher resolution, and to view the entire image by scrolling.
Priority date at issue: December 24, 2004.

[Supplement] Regarding the statement in the original article that a person skilled in the art would naturally understand this even if it is not expressly stated in a publicly known document, the judgment found that the Exhibit Hei B9 document contains no statement that any signal is transmitted from communication unit 12 to CPU 11 and recognized Difference 6BDG’ (judgment, p. 12, lines 14-17; p. 18, line 26 to p. 19, line 4), and then held that the configuration could readily have been conceived by applying common general technical knowledge (or that the difference was not substantial in the first place) (judgment, p. 22, lines 13-18). The statement that the use of VRAM and bitmap data was common general technical knowledge was addressed in the judgment as part of the finding of the Exhibit Hei B9 invention, namely how a person skilled in the art would understand the Exhibit Hei B9 document (judgment, p. 15, lines 7-13). The common general technical knowledge found by the judgment is that display data having the same resolution as the display panel is generated from display data larger than the panel resolution and displayed, and the entire image can be viewed by scrolling (judgment, p. 22, lines 20-26); “reducing” is not mentioned in the judgment. The relevant date for the judgment is the priority date at issue (judgment, p. 2, line 15; p. 22, lines 8-12).

https://www.courts.go.jp/assets/hanrei/hanrei-pdf-93879.pdf

* This article provides general information and does not include legal advice.
Author: Hideki Takaishi, Attorney-at-Law and Patent Attorney (Daini Tokyo Bar Association)
Contact regarding this matter: h_takaishi☆nakapat.gr.jp (please replace ☆ with @)

 

 

Reiwa 6 (Ne) No. 10001 [Yarn Color Placement System] <Hibiki Shimizu>

Original Article URL: https://www.nakapat.gr.jp/ja/note/%e4%bb%a4%e5%92%8c6%e5%b9%b4%e3%83%8d10001%e3%80%90%e3%83%a4%e3%83%bc%e3%83%b3%e8%89%b2%e9%85%8d%e7%bd%ae%e3%82%b7%e3%82%b9%e3%83%86%e3%83%a0%e3%80%91%ef%bc%9c%e6%b8%85%e6%b0%b4%e9%9f%bf%ef%bc%9e/

Reiwa 6 (Ne) No. 10001 [Yarn Color Placement System] <Hibiki Shimizu>

Inventive Step: × ⇒ Appeal Dismissed

“High-Low Control” = A conventional technique in which, when creating a pattern, yarns of colors intended to appear on the surface are left high, while yarns of colors intended to be hidden are pulled back low (or pulled out).

The invention at issue = Because some yarns are hidden, the number actually tufted (the effective rate) is set at a “higher density” than the apparent density of the finished product (the desired rate), and the feed speed of the backing material is controlled accordingly.

⇒ In the prior art (the invention of Exhibit Otsu No. 4), a system already existed that controlled the supply of yarn and the feed of the substrate (backing material) to create a desired pattern.
When some yarns are hidden by using “High-Low Control,” it is self-evident that the actual tufting density (stitch rate) must be increased so that gaps are not created by the hidden yarns; otherwise, the desired apparent density cannot be obtained.
⇒ In order to obtain the “desired apparent density,” setting the “actual tufting density” higher in consideration of the hidden yarns and adjusting the feed speed of the substrate was substantially encompassed by the invention of Exhibit Otsu No. 4; alternatively, it would have been obvious through application of common general technical knowledge to that invention.
(The concept of an “effective stitch rate” asserted by the plaintiff was not a new invention, but merely expressed in different words an adjustment that was necessarily made when carrying out conventional “High-Low Control.”)

[Supplement] Regarding the statement in the original article that this was merely a matter of design that a person skilled in the art would naturally implement, the judgment stated that its determination was based on the grounds that the invention of Exhibit Otsu No. 4 substantially included Corrected Invention 3 and, even if not, that Corrected Invention 3 could readily have been conceived by applying common general technical knowledge to that invention, thereby expressly indicating that its determination was not based on a matter of design (judgment, p. 42, lines 14-20). This judgment is an appellate judgment, and its operative part dismisses the appeal (judgment, p. 1, line 26).

https://www.courts.go.jp/assets/hanrei/hanrei-pdf-93894.pdf

* This article provides general information and does not include legal advice.
Author: Hideki Takaishi, Attorney-at-Law and Patent Attorney (Daini Tokyo Bar Association)
Contact regarding this matter: h_takaishi☆nakapat.gr.jp (please replace ☆ with @)

 

 

Tokyo District Court Judgment, Reiwa 5 (Wa) No. 70079 [Vehicle Guidance System] <Kokubu>

Original Article URL: https://www.nakapat.gr.jp/ja/note/%e6%9d%b1%e4%ba%ac%e5%9c%b0%e5%88%a4%e4%bb%a4%e5%92%8c5%e5%b9%b4%e3%83%af70079%e3%80%90%e8%bb%8a%e4%b8%a1%e8%aa%98%e5%b0%8e%e3%82%b7%e3%82%b9%e3%83%86%e3%83%a0%e3%80%91%ef%bc%9c%e5%9c%8b%e5%88%86/

Tokyo District Court Judgment, Reiwa 5 (Wa) No. 70079 [Vehicle Guidance System] <Kokubu>

* The court of first instance found patent infringement. The Intellectual Property High Court judgment of October 20, 2025, Reiwa 7 (Ne) No. 10043, set aside the part of the first-instance judgment adverse to the defendant and dismissed the claim because Claim Element F was not satisfied. The discussion below introduces the reasoning of the court of first instance.

With respect to satisfaction of Claim Element A (a system for guiding vehicles entering and exiting through ETC-only entrances and exits), the court found, in substance, that the claim elements of the invention at issue were satisfied because, at the SIC, vehicles seeking to use an ETC-only entrance or exit were guided, by opening and closing barriers and using display devices, to the entry/exit route (Lane c) or the exit/general-road route (Lane d).
The court also found Claim Element F (guidance means, etc.) and the other claim elements satisfied.

(Excerpt from the Judgment)
Because each accused system can be said to guide a vehicle seeking to pass through an ETC-only entrance in order to enter a toll-road tollgate, service area, or the like, and a vehicle seeking to pass through an ETC-only exit in order to leave a toll-road tollgate, service area, or the like, to either Lane c or Lane d by means of the respective start-control devices and roadside display device ⑧ described above, it falls within a “system for guiding vehicles entering and exiting through ETC-only entrances and exits.”

[Supplement] The original article began with “* Patent infringement was found.” and “⇒ Reversed to non-satisfaction in the appellate judgment,” and, in the excerpt from the judgment, joined the two types of vehicles with “or” where the judgment lists them side by side. The judgment lists the vehicles side by side (judgment, p. 48, line 26 to p. 49, line 6).

https://www.courts.go.jp/assets/hanrei/hanrei-pdf-94081.pdf
Summary of the appellate judgment: https://www.courts.go.jp/assets/hanrei/hanrei-point_pdf-94945.pdf

* This article provides general information and does not include legal advice.
Author: Hideki Takaishi, Attorney-at-Law and Patent Attorney (Daini Tokyo Bar Association)
Contact regarding this matter: h_takaishi☆nakapat.gr.jp (please replace ☆ with @)

 

 

Tokyo District Court Judgment, Reiwa 5 (Wa) No. 70380 [Rod-Shaped Light] <Takahashi>

Original Article URL: https://www.nakapat.gr.jp/ja/note/%e6%9d%b1%e4%ba%ac%e5%9c%b0%e5%88%a4%e4%bb%a4%e5%92%8c5%e5%b9%b4%e3%83%af70380%e3%80%90%e6%a3%92%e7%8a%b6%e3%83%a9%e3%82%a4%e3%83%88%e3%80%91%ef%bc%9c%e9%ab%99%e6%a9%8b%ef%bc%9e/

Tokyo District Court Judgment, Reiwa 5 (Wa) No. 70380 [Rod-Shaped Light] <Takahashi>

Claim Elements Not Satisfied + Violation of the Support Requirement

Accused Products 1 and 2 use a “long press” to store and a “short press” to recall, and therefore do not satisfy Claim Element J4, which requires the same input method.
Accused Products 3 and 4 do not emit light in the recommended color solely upon “detection” of the “aforementioned first predetermined input” on the second button, and therefore do not satisfy the configuration “when the aforementioned first predetermined input is detected, … cause light to be emitted.”

“Although the detailed description of the invention in the specification at issue can be said to state that, with respect to storing the recommended color and emitting light in the recommended color, the problem is solved by a configuration using different input methods for the second button, it neither states nor suggests solving the problem by a configuration using the same input method for storing the recommended color and emitting light in the recommended color.”
⇒ Violation of the support requirement

https://www.courts.go.jp/assets/hanrei/hanrei-pdf-94101.pdf

 

 

* This article provides general information and does not include legal advice.
Author: Hideki Takaishi, Attorney-at-Law and Patent Attorney (Daini Tokyo Bar Association)
Contact regarding this matter: h_takaishi☆nakapat.gr.jp (please replace ☆ with @)

 

 

A Container Capable of Carrying 10 Cubic Centimeters of Liquid and/or Solid

Original Article URL: https://www.nakapat.gr.jp/ja/note/10%e7%ab%8b%e6%96%b9%e3%82%bb%e3%83%b3%e3%83%81%e3%83%a1%e3%83%bc%e3%83%88%e3%83%ab%e3%81%ae%e6%b6%b2%e4%bd%93%e5%8f%8a%e3%81%b3-%e5%8f%88%e3%81%af%e5%9b%ba%e4%bd%93%e3%82%92%e9%81%8b%e6%90%ac/

When A and/or B is changed to B by correction, can that constitute an expansion or alteration?

 

For example:

A container capable of carrying 10 cubic centimeters of liquid and/or solid, perhaps?

 

The reverse pattern is:

A pattern in which adding language constitutes an expansion or alteration.

For example, “electrically” connected …

* This article provides general information and does not include legal advice.
Author: Hideki Takaishi, Attorney-at-Law and Patent Attorney (Daini Tokyo Bar Association)
Contact regarding this matter: h_takaishi☆nakapat.gr.jp (please replace ☆ with @)

 

 

Reiwa 6 (Gyo-Ke) No. 10043 [Elasto-Plastic Hysteretic Damper] <Honda>

Original Article URL: https://www.nakapat.gr.jp/ja/note/%e4%bb%a4%e5%92%8c6%e5%b9%b4%e8%a1%8c%e3%82%b110043%e3%80%90%e5%bc%be%e5%a1%91%e6%80%a7%e5%b1%a5%e6%ad%b4%e5%9e%8b%e3%83%80%e3%83%b3%e3%83%91%e3%80%91%ef%bc%9c%e6%9c%ac%e5%a4%9a%ef%bc%9e/

Reiwa 6 (Gyo-Ke) No. 10043 [Elasto-Plastic Hysteretic Damper] <Honda>

1. <Invention of Exhibit Ko No. 1 + Invention of Exhibit Ko No. 2, etc.>
   The plaintiff asserted that it would have been easy to apply the arrangement of the “invention of Exhibit Ko No. 2 (bridge damper),” which accommodates two-dimensional movement, to the “invention of Exhibit Ko No. 1 (building damper),” which accommodates movement in one direction.
   However, the invention of Exhibit Ko No. 1 is premised on a load from one direction along the plane of a building structure.
   The invention of Exhibit Ko No. 2 is arranged in multiple directions in order to accommodate two-dimensional movement of a bridge.
   There is no motivation to apply the arrangement of the invention of Exhibit Ko No. 2 to the invention of Exhibit Ko No. 1; rather, the premise of the invention of Exhibit Ko No. 1 (unidirectional input) creates a disincentive to arranging the components in different orientations.
2. <Invention of Exhibit Ko No. 12 + Invention of Exhibit Ko No. 13>
   The invention of Exhibit Ko No. 12 does not have a configuration in which a pair of shear portions is arranged with their orientations differing from each other.
   Exhibit Ko No. 13 provides a “recess” in place of a vertical rib, and making only one “recess” results in a configuration in which one portion is recessed and the other is a flat plate; it does not suggest the “pair of shear portions oriented differently from each other” of the invention at issue.
3. <Violation of the Support Requirement>
   The plaintiff asserted that the invention at issue is claimed as if it can accommodate “loads from every direction,” but that the specification lacks support for accommodating all directions.
   ⇒ From the description in the specification, a person skilled in the art can recognize that the problem of a conventional damper having only “one shear portion” (such as being able to accommodate only one direction) can be solved by the invention at issue (arranging two shear portions in different orientations).
   The invention at issue does not require “maximum energy absorption with respect to loads from all directions.”

(Excerpt from the Judgment)
The plaintiff asserts that Corrected Invention 1 at issue is specified only as “when a load is received by input, it deforms and absorbs energy,” and is functionally specified as if it could accommodate a load from any direction, whereas the decision at issue, despite recognizing that Corrected Invention 1 at issue cannot absorb energy from all directions, found no violation of the support requirement, and is erroneous in this respect.
However, even in light of the description in the specification at issue, Corrected Invention 1 at issue cannot be found to require maximum energy absorption with respect to loads from all directions. The plaintiff’s assertion is therefore erroneous in its premise and has no merit.

[Supplement] The reason stated in the original article that the corrugated steel plate of Exhibit Ko No. 12 is a single continuous member and therefore differs in configuration is not found in the court’s reasoning. The judgment held that “the shear portion” in Claim 2 refers to one of the “pair of shear portions” in Claim 1, and that the invention of Exhibit Ko No. 12 cannot be found to have a configuration in which a pair (two) of such shear portions are arranged in different orientations (judgment, p. 20, lines 10-14). The expression “loads from every direction” in the original article does not appear in the judgment; the plaintiff’s assertion as stated in the judgment was that Corrected Invention 1 at issue is functionally specified as if it could accommodate a load from any direction (judgment, p. 23, lines 20-24).

https://www.courts.go.jp/assets/hanrei/hanrei-pdf-93912.pdf

* This article provides general information and does not include legal advice.
Author: Hideki Takaishi, Attorney-at-Law and Patent Attorney (Daini Tokyo Bar Association)
Contact regarding this matter: h_takaishi☆nakapat.gr.jp (please replace ☆ with @)

 

 

Intellectual Property High Court Judgment, Reiwa 6 (Ne) No. 10048 [Battery] <Nakadaira>

Original Article URL: https://www.nakapat.gr.jp/ja/note/%e7%9f%a5%e8%b2%a1%e9%ab%98%e5%88%a4%e4%bb%a4%e5%92%8c6%e5%b9%b4%e3%83%8d10048%e3%80%90%e9%9b%bb%e6%b1%a0%e3%80%91%ef%bc%9c%e4%b8%ad%e5%b9%b3%ef%bc%9e/

Intellectual Property High Court Judgment, Reiwa 6 (Ne) No. 10048 [Battery] <Nakadaira>

The judgment of the court of first instance awarding damages of JPY 529,285,945 and delay damages, and dismissing the remaining claims, including the claims for an injunction and disposal, was affirmed.
The operative part states: “Both the appeal and the incidental appeal are dismissed.” JPY 1,277,650,000 was the amount sought in the incidental appeal, not the amount awarded (judgment, p. 1, line 23; p. 2, lines 11-13; p. 3, lines 9-15).

According to the description in the specification at issue, the power-generating element is not limited to a wound type and includes a laminated type. The claim language “outer surface of the uncoated active-material portion” and “the surfaces are joined” likewise does not exclude joining through a member such as a clip.
⇒ Satisfied

The position of the flange in Exhibit Otsu No. 12 is inseparable from the effect of the invention of Exhibit Otsu No. 12, and cannot be construed as not being limited to the specifically disclosed location. … Even if combined, the invention at issue would not be reached.
Exhibit Otsu No. 22 does not lead to Configuration A4, in which terminal-connection members are provided on both the positive and negative electrodes. In Exhibit Otsu No. 23, conductor element 5 cannot be said to be outside the battery casing. Nor was motivation to apply these to the invention of Exhibit Otsu No. 9 found (the same applies to the inventions of Exhibit Otsu No. 10 and Exhibit Otsu No. 11).
⇒ Inventive Step: ○

(Excerpt from the Judgment)
According to the statements in [Claim 1] of the claims of the Exhibit Otsu No. 12 publication and the statements in the detailed description of the invention in the Exhibit Otsu No. 12 publication, it is found that the “flange portion” described in the Exhibit Otsu No. 12 publication is provided on the lower surface of the lid body, and that a rotation-preventing portion engaging an engaging portion of the flange portion is provided on the lower surface of the lid body, thereby producing the effect that the terminal pole does not rotate even when an external force is applied to the terminal pole. …
Further, according to paragraph [0080] of the Exhibit Otsu No. 12 publication, it is also found that an effect of the invention described in that publication is that, by interposing an annular packing between the upper surface of a planar flange portion integrally formed with the terminal pole and the lower surface of the lid body, and by locking an annular compression spring to the pole portion to secure the terminal pole to the lid body, the annular packing is compressed in the vertical direction, thereby allowing the terminal pole to be securely sealed and fixed to the lid plate.
Thus, in the invention described in the Exhibit Otsu No. 12 publication, the provision of the flange portion on the lower surface of the lid body is closely related to the effect of the invention. Accordingly, … the Exhibit Otsu No. 12 publication is found to disclose a configuration in which the flange portion is provided on the lower surface of the lid body; it cannot be said that the Exhibit Otsu No. 12 publication effectively discloses a configuration corresponding to Claim Element A4 of Invention 1 at issue; it also cannot be said that whether to install the flange portion inside or outside the container is a matter of design; and applying the Exhibit Otsu No. 12 configuration to the invention of Exhibit Otsu No. 9 does not reach the configuration of Invention 1 at issue.

[Supplement] The statement in the original article that the court affirmed the first-instance judgment granting an injunction plus JPY 1.27 billion differs from the judgment. The first-instance judgment granted the damages claim to the extent of JPY 529,285,945 and delay damages and dismissed the remaining claims (judgment, p. 3, lines 9-15), and JPY 1,277,650,000 was the amount sought in the incidental appeal (judgment, p. 2, lines 11-13). The claims for an injunction and disposal were directed at the appellant’s Product 2 on the basis of Patent 2 at issue (judgment, p. 2, line 26 to p. 3, line 1), and the appellant’s Product 2 was found not to fall within the technical scope of Invention 2 at issue, with equivalence also rejected (judgment, p. 28, lines 23-25). Further, of the statement in the original article that Exhibits Otsu Nos. 22 and 23 do not reach Configuration A4 in which terminal-connection members are provided on both electrodes, the point concerning both electrodes is a reason relating to Exhibit Otsu No. 22 (judgment, p. 38, lines 19-24); as to Exhibit Otsu No. 23, the judgment held that it could not be found to have a configuration corresponding to Claim Element A4 because conductive element 5 could not be said to be arranged outside the battery casing (judgment, p. 39, lines 13-16; p. 40, lines 2-3).

https://www.courts.go.jp/assets/hanrei/hanrei-pdf-94167.pdf

* This article provides general information and does not include legal advice.
Author: Hideki Takaishi, Attorney-at-Law and Patent Attorney (Daini Tokyo Bar Association)
Contact regarding this matter: h_takaishi☆nakapat.gr.jp (please replace ☆ with @)

 

 

[Plant Variety Protection and Seed Act ★] Case in Which the Plaintiff’s Claims Were Dismissed Because the Credibility of the Expert Appraisal Purporting to Prove Infringement of the Breeder’s Right Was Not Established

Original Article URL: https://www.nakapat.gr.jp/ja/legal_updates_jp/%e3%80%90%e7%a8%ae%e8%8b%97%e6%b3%95%e2%98%85%e3%80%91%e8%82%b2%e6%88%90%e8%80%85%e6%a8%a9%e4%be%b5%e5%ae%b3%e3%82%92%e7%ab%8b%e8%a8%bc%e3%81%99%e3%82%8b%e9%91%91%e5%ae%9a%e3%81%ae%e4%bf%a1%e7%94%a8/

Tokyo District Court Judgment of April 24, 2025 (Reiwa 4 (Wa) No. 2829) (Presiding Judge Motoyuki Nakashima)

◆ Full Text of the Judgment

[Overview of the Case]
The plaintiff held a breeder’s right in a shiitake mushroom variety (Registration No. 17039) and sought, jointly and severally, payment of JPY 55,485,724 in damages and delay damages under Articles 709 and 719(1) of the Civil Code, alleging that the defendants’ importation and transfer of mushroom culture beds and their production and transfer of shiitake mushrooms infringed the plaintiff’s breeder’s right.

The court narrowed the core issues to: (1) whether mycelium could have been mixed in advance into the culture medium in the test tubes prepared by the plaintiff itself; and (2) why the plaintiff disposed of the parent strain and whether that disposal was appropriate. This judgment held that the possibility that the plaintiff had mixed mycelium of the plaintiff’s variety into the test tubes at issue in advance could not be sufficiently excluded, that the results of the expert appraisal premised thereon should be found to lack credibility, and that, without needing to decide the remaining points, the plaintiff’s claims lacked merit; it therefore dismissed the plaintiff’s claims.

 

[Preliminary Explanation Based on Prior Judicial Decisions—Proof of Infringement of a Breeder’s Right under the Plant Variety Protection and Seed Act]
A “variety” protected by the variety-registration system under the Plant Variety Protection and Seed Act means a single grouping of plants that can be distinguished from other groupings of plants by all or part of its characteristics and can be propagated while retaining all of those characteristics (Article 2(2) of the Act). This makes the actually existing grouping of plants itself the object of legal protection. With respect to the scope of a breeder’s right, the Act provides that the holder has the exclusive right to exploit, as a business, “the variety for which variety registration has been obtained (hereinafter referred to as the ‘registered variety’) and any variety that is not clearly distinguishable from the registered variety by its characteristics” (Article 20(1) of the Act). A “variety that is not clearly distinguishable from the registered variety by its characteristics” means a variety that differs in characteristics from the registered variety but lacks a clear difference of a degree sufficient to establish distinctness as a requirement for variety registration. Specifically, it is understood that a variety whose differences in characteristics from the registered variety remain within the class values established for each characteristic (numerical values classifying characteristics by class; for example, where the registered variety is a strawberry, characteristics include the “ratio of fruit length to width,” “fruit size,” and “fruit-skin color”) will often fall within a “variety that is not clearly distinguishable from the registered variety by its characteristics.” Even where the differences in characteristics do not remain within the foregoing range, it has also been held that there may be cases in which a variety can be found to fall within a “variety that is not clearly distinguishable from the registered variety by its characteristics” through comprehensive consideration of the differing items and the degree of difference, the type and nature of the plant, and other matters.
It has also been held that “in order to determine whether a variety is one to which the effect of a breeder’s right extends, it is ultimately necessary to compare the plants themselves and examine whether the variety suspected of infringement is not clearly distinguishable from the registered variety by its characteristics (the actual-object principle)” (Intellectual Property High Court Judgment of June 24, 2015, Heisei 27 (Ne) No. 10002, Appeal in an Action Seeking an Injunction Against Infringement of a Breeder’s Right; court of first instance: Tokyo District Court Judgment of November 28, 2014, Heisei 21 (Wa) No. 47799 / Heisei 25 (Wa) No. 21905). Under the amended Plant Variety Protection and Seed Act effective in 2022, a presumption concerning the scope of a breeder’s right using examination characteristics and a determination system administered by the Minister of Agriculture, Forestry and Fisheries were introduced. The foregoing explains prior judicial decisions and does not mean that only comparison of the actual plants is always permitted under the current system.

 

[Summary of the Judgment]
1. Determination Concerning the Credibility of the Subculturing Acts at Issue and Related Acts
According to the foregoing basic facts, the foregoing findings of fact, and the entire purport of the oral argument, it is found that the expert appraisal at issue was conducted on mycelium that had been separated from each accused product and subcultured through each separation act at issue, each subculturing act at issue, and the multiple subculturing acts subsequently performed (hereinafter collectively referred to as the “Subculturing Acts at Issue and Related Acts”). Accordingly, as a premise for determining the credibility of the expert appraisal at issue, the credibility of the Subculturing Acts at Issue and Related Acts (Issue 1-1) is examined.
… In view of the fact that the plaintiff deliberately prepared the test tubes at issue in advance within its own company, rather than at a third-party institution such as the Center for Seeds and Seedlings, NARO, and therefore had sufficient time to mix in mycelium of the plaintiff’s variety, it must be said that it was fully possible to mix mycelium of the plaintiff’s variety, of a size not visible to the naked eye, into the test tubes at issue in advance. Moreover, according to the foregoing findings of fact and the entire purport of the oral argument, after the Subculturing Acts at Issue and Related Acts, the plaintiff itself disposed of the parent strain at issue or caused the Center for Seeds and Seedlings, NARO to dispose of it, and has not explained any reasonable ground for doing so. It is therefore found that the plaintiff itself made subsequent verification of the Subculturing Acts at Issue and Related Acts impossible. Considering these circumstances as a whole, the possibility that the plaintiff had mixed mycelium of the plaintiff’s variety into the test tubes at issue in advance cannot be sufficiently excluded, and it is appropriate to find that the results of the expert appraisal at issue, which are premised thereon, lack credibility.

2. Other Matters
   The Subculturing Acts at Issue and Related Acts should, by their nature, have been conducted by a fair and neutral third-party institution. Even if circumstances made it unavoidable to conduct them within the plaintiff’s own company, the defendants are correct that conducting them within the plaintiff’s own company inherently created a risk of mixing fungal strains or substituting test tubes. In light also of the matters explained above, when conducting the Subculturing Acts at Issue and Related Acts, it was indispensable, at a minimum, to have a third-party institution such as the Center for Seeds and Seedlings, NARO prepare the test tubes and to preserve the parent strain without disposing of it, given the importance of fairness and transparency in expert appraisals in judicial proceedings. Nevertheless, the plaintiff deliberately failed to take those measures, gave no reasonable explanation of the necessity and appropriateness of preparing the test tubes at issue itself, and, with respect to disposal of the parent strain at issue, merely explained that the parent strain had become unnecessary after the mycelium was subcultured and was therefore disposed of, and that there was no problem. Accordingly, at least the Subculturing Acts at Issue and Related Acts lack credibility, as explained above, and the expert appraisal at issue premised thereon must likewise be said to lack credibility.

 

[Comment]
This is a valuable judicial decision addressing the credibility of an expert appraisal as evidence proving infringement in a breeder’s-right infringement action. In proof under the actual-object principle indicated by prior judicial decisions, an expert appraisal involving comparative cultivation of the registered variety and the variety suspected of infringement is important. The method of proof must be considered according to the case, also taking account of the presumption based on examination characteristics and the determination system effective in 2022. In this regard, the Center for Seeds and Seedlings, NARO (https://www.naro.go.jp/laboratory/ncss/) is an institution that, under Article 15-2(1) of the Plant Variety Protection and Seed Act, conducts “growing tests” to obtain data, such as distinctness between an applied-for variety and existing varieties, necessary for the national government’s examination of variety registration, and has an extremely high level of expertise in comparative growing tests. Litigation parties are therefore thought often to request an expert appraisal from the Center for Seeds and Seedlings, NARO as a fair and neutral third-party institution. This judgment demonstrates the importance, in doing so, of conducting the expert appraisal with extreme care, including asking the institution conducting the expert appraisal to prepare the test tubes and asking a third party to preserve the parent strain after the expert appraisal.
[Supplement] Reference: Ministry of Agriculture, Forestry and Fisheries, Overview of the Act Partially Amending the Plant Variety Protection and Seed Act: https://www.maff.go.jp/j/shokusan/attach/pdf/shubyoho-22.pdf

[Supplement] The Act Partially Amending the Plant Variety Protection and Seed Act (Act No. 74 of 2020) introduced a provision presuming that a variety not clearly distinguishable by the examination characteristics of a registered variety recorded in the variety registry is a variety not clearly distinguishable from that registered variety by its characteristics (Article 35-2 of the Act) and a system of determination by the Minister of Agriculture, Forestry and Fisheries (Article 35-3 of the Act), both effective April 1, 2022. These provisions provide means of proof other than an expert appraisal involving comparative cultivation. This judgment does not refer to these provisions. Since April 1, 2022, the provision under which NARO (the Center for Seeds and Seedlings) conducts growing tests has been Article 15-2(1) of the Act. Further, what the judgment held to be indispensable was, when conducting the Subculturing Acts at Issue and Related Acts, to have a third-party institution prepare the test tubes and to preserve the parent strain without disposing of it (judgment, p. 22, lines 15-19), and preservation of the parent strain was required for subsequent verification of the subculturing acts (judgment, p. 22, lines 3-7).

 

[Keywords] Breeder’s Right, Credibility of an Expert Appraisal, Actual-Object Principle

* This article provides general information and does not include legal advice.
Author: Reiko Tonomura, Attorney-at-Law and Patent Attorney (Daini Tokyo Bar Association)
Contact regarding this matter: r_tonomura☆nakapat.gr.jp (please replace ☆ with @)

Reiwa 6 (Ne) No. 10056 [Van-Type Motor Vehicle for Cleaning Work] <Nakadaira>

Original Article URL: https://www.nakapat.gr.jp/ja/note/%e4%bb%a4%e5%92%8c6%e5%b9%b4%e3%83%8d10056%e3%80%90%e6%b4%97%e6%b5%84%e4%bd%9c%e6%a5%ad%e7%94%a8%e3%83%90%e3%83%b3%e5%9e%8b%e8%87%aa%e5%8b%95%e8%bb%8a%e3%80%91%ef%bc%9c%e4%b8%ad%e5%b9%b3%ef%bc%9e/

Reiwa 6 (Ne) No. 10056 [Van-Type Motor Vehicle for Cleaning Work] <Nakadaira>

* The appellee offered for sale Product 2, which differed from Product 1 sold by KCS. Product 2 was also found infringing at first instance, and an injunction and disposal were ordered; the appellee did not appeal. ⇒ The offer for sale was not found to have assisted or facilitated KCS’s sales of Product 1, and a joint tort was denied.

(Excerpt from the Judgment)
Even if the appellee received delivery of Appellee Product 2 from KCS and offered it for sale under the name “ECO ACE JET,” which differs from the name of Appellee Product 1 sold by KCS, it cannot be found that this assisted or facilitated KCS’s sale of Appellee Product 1.

[Supplement] Regarding the statement in the original article that the appellee offered for sale a product different from the infringing product, the first-instance judgment also found Appellee Product 2 to fall within the technical scope of the invention and granted an injunction against its transfer and the like and an order for its disposal against the appellee (judgment, p. 2, line 26 to p. 3, line 4), and the appellee did not appeal (judgment, p. 4, lines 2-3). In the judgment, the excerpt above is followed by a parenthetical stating that this conclusion would not change even if the structure, performance, and the like of the vehicle and cleaning device of Appellee Product 2 were the same as those of Appellee Product 1 (judgment, p. 11, lines 7-9).

https://www.courts.go.jp/assets/hanrei/hanrei-pdf-93950.pdf

* This article provides general information and does not include legal advice.
Author: Hideki Takaishi, Attorney-at-Law and Patent Attorney (Daini Tokyo Bar Association)
Contact regarding this matter: h_takaishi☆nakapat.gr.jp (please replace ☆ with @)

 

 

[New YouTube Video] Infringement Analysis (Other than Typical Literal Satisfaction) (Reading Through the Encyclopedia of Patent Judicial Decisions, 4th Edition) November 5, 2025

Original Article URL: https://www.nakapat.gr.jp/ja/note/%e3%80%90%e6%96%b0%e7%9d%80youtube%e3%80%91%e5%85%85%e8%b6%b3%e8%ab%96%ef%bc%88%e5%85%b8%e5%9e%8b%e7%9a%84%e3%81%aa%e6%96%87%e8%a8%80%e5%85%85%e8%b6%b3%e4%bb%a5%e5%a4%96%ef%bc%89%ef%bc%88%e7%89%b9/

[New YouTube Video] Infringement Analysis (Other than Typical Literal Satisfaction) (Reading Through the Encyclopedia of Patent Judicial Decisions, 4th Edition) November 5, 2025

<Catch up at once, in this single video, on the principal judicial decisions concerning infringement analysis, including the doctrine of equivalents, numerical limitations, and use inventions.>

https://youtu.be/IxWjTUBHpGQ

* This article provides general information and does not include legal advice.
Author: Hideki Takaishi, Attorney-at-Law and Patent Attorney (Daini Tokyo Bar Association)
Contact regarding this matter: h_takaishi☆nakapat.gr.jp (please replace ☆ with @)

 

 

[Contract] Tokyo District Court Judgment, Reiwa 4 (Wa) No. 9422 <Shibuya>

Original Article URL: https://www.nakapat.gr.jp/ja/note/%e3%80%90%e5%a5%91%e7%b4%84%e3%80%91%e6%9d%b1%e4%ba%ac%e5%9c%b0%e5%88%a4%e4%bb%a4%e5%92%8c4%e5%b9%b4%e3%83%af9422%ef%bc%9c%e6%be%81%e8%b0%b7%ef%bc%9e/

[Contract] Tokyo District Court Judgment, Reiwa 4 (Wa) No. 9422 <Shibuya>

The defendant was found to have been in a “state of being objectively unable to pay” (Article 17(2) of the contract at issue), and the termination was held valid.

“According to the evidence (Exhibits Ko Nos. 27, 28, and 30), it can be found that, no later than February 7, 2025, the defendant was in a state of being objectively unable to pay.”

[Supplement] The defendant stated that it did not actively dispute the ground for termination (judgment, p. 3, line 3). The judgment held that the contract at issue, a joint development and business alliance agreement, ended upon termination on February 7, 2025, and ordered payment of the contract fee of JPY 210 million and interest (judgment, p. 1, lines 10-11; p. 2, lines 1-2; p. 3, lines 7-10).

https://www.courts.go.jp/assets/hanrei/hanrei-pdf-94059.pdf

* This article provides general information and does not include legal advice.
Author: Hideki Takaishi, Attorney-at-Law and Patent Attorney (Daini Tokyo Bar Association)
Contact regarding this matter: h_takaishi☆nakapat.gr.jp (please replace ☆ with @)

 

 

Tokyo District Court Judgment, Reiwa 5 (Wa) No. 70449 [Fastening Hardware] <Takahashi>

Original Article URL: https://www.nakapat.gr.jp/ja/note/%e6%9d%b1%e4%ba%ac%e5%9c%b0%e5%88%a4%e4%bb%a4%e5%92%8c5%e5%b9%b4%e3%83%af70449%e3%80%90%e7%b7%a0%e7%b5%90%e9%87%91%e7%89%a9%e3%80%91%ef%bc%9c%e9%ab%99%e6%a9%8b%ef%bc%9e/

Tokyo District Court Judgment, Reiwa 5 (Wa) No. 70449 [Fastening Hardware] <Takahashi>

The claim language “in order to induce deformation when an excessive load acts” does not limit the configuration of the invention.
(“It merely indicates the purpose sought to be achieved, or an action or effect necessarily obtained, by the configuration in which the front portion and the rear-edge portion are integrated by a plurality of branch-shaped portions, and has no meaning that limits the configuration of the invention.”)

⇒ Novelty: × based on the design publication
(“Because the plurality of narrow plate portions of the column-member connecting fitting of the invention of Exhibit Ko No. 5 have a configuration identical in shape to the plurality of branch-shaped portions of the fastening hardware of the invention at issue, they necessarily obtain the action or effect expressed as ‘in order to induce deformation when an excessive load acts.’ …”

https://www.courts.go.jp/assets/hanrei/hanrei-pdf-94135.pdf

* This article provides general information and does not include legal advice.
Author: Hideki Takaishi, Attorney-at-Law and Patent Attorney (Daini Tokyo Bar Association)
Contact regarding this matter: h_takaishi☆nakapat.gr.jp (please replace ☆ with @)

 

 

Osaka District Court Judgment, Reiwa 5 (Wa) No. 10217 [Three-Dimensional Network Fiber Assembly] <Matsuami>

Original Article URL: https://www.nakapat.gr.jp/ja/note/%e5%a4%a7%e9%98%aa%e5%9c%b0%e5%88%a4%e4%bb%a4%e5%92%8c5%e5%b9%b4%e3%83%af10217%e3%80%90%e7%ab%8b%e4%bd%93%e7%b6%b2%e7%8a%b6%e7%b9%8a%e7%b6%ad%e9%9b%86%e5%90%88%e4%bd%93%e3%80%91%ef%bc%9c%e6%9d%be/

Osaka District Court Judgment, Reiwa 5 (Wa) No. 10217 [Three-Dimensional Network Fiber Assembly] <Matsuami>

Action Seeking Remuneration for an Employee Invention
⇒ Dismissed

(Excerpt from the Judgment)
Because the reward rules at issue were established after, in the course of their establishment and amendment, general employment rules and the like had been referred to, opinions had been obtained from persons knowledgeable about intellectual property, drafts had been disclosed to employees and others, and opinions had been heard, it cannot be found unreasonable for the defendant to pay remuneration for employee inventions made at the defendant in accordance with the reward rules at issue, which were established through lawful procedures. …
Although it appears that the defendant’s product had some possibility of being used as a cushioning material or the like as a general-purpose three-dimensional network fiber assembly, in the application as a bedding mattress asserted by the plaintiffs as the basis for excess sales, the product was once commercialized and achieved sales for a certain period, but appears to have received a low evaluation for its performance as a mattress, and commercialization was terminated. …
Under these circumstances, there is nothing unreasonable in the defendant’s determination that the condition for payment of an implementation reward—”when, through the exercise of an industrial property right, a major contribution has been made to the company”—was not met and that no implementation reward should be paid for the inventions at issue.

https://www.courts.go.jp/assets/hanrei/hanrei-pdf-94104.pdf

* This article provides general information and does not include legal advice.
Author: Hideki Takaishi, Attorney-at-Law and Patent Attorney (Daini Tokyo Bar Association)
Contact regarding this matter: h_takaishi☆nakapat.gr.jp (please replace ☆ with @)

 

 

[Employee Invention] Tokyo District Court Judgment, Reiwa 5 (Wa) No. 70495 <Nakashima>

Original Article URL: https://www.nakapat.gr.jp/ja/note/%e3%80%90%e8%81%b7%e5%8b%99%e7%99%ba%e6%98%8e%e3%80%91%e6%9d%b1%e4%ba%ac%e5%9c%b0%e5%88%a4%e4%bb%a4%e5%92%8c5%e5%b9%b4%e3%83%af70495%ef%bc%9c%e4%b8%ad%e5%b3%b6%ef%bc%9e/

[Employee Invention] Tokyo District Court Judgment, Reiwa 5 (Wa) No. 70495 <Nakashima>

* The plaintiff was not recognized as a joint inventor.
—There was no reliable evidence substantiating the time of completion asserted by the plaintiff.

(Excerpt from the Judgment)
Although the plaintiff asserts that the plaintiff’s invention was completed before the plaintiff prepared the plaintiff’s explanatory document, there is no reliable evidence substantiating that assertion, and the invention at issue was, in the first place, conceived and reduced to a specific form without the plaintiff’s involvement. …
In addition, even after two rounds of assertions and evidence by both parties, the Court found that the actual nature of the plaintiff’s involvement in the invention at issue remained unclear and repeatedly sought clarification … from both parties on two occasions. Even after fully considering the results, in view of the actual nature of the plaintiff’s involvement and other circumstances, the invention at issue was conceived and reduced to a specific form without the plaintiff’s involvement, and the plaintiff cannot be found to be an inventor or joint inventor of the invention at issue.

[Supplement] According to the judgment, the plaintiff asserted the time of completion of the invention (judgment, p. 15, lines 17-18). However, the main reason in the judgment is the finding that the invention at issue had been independently conceived and embodied by Bi, Di, and others without the plaintiff’s involvement (judgment, p. 14, lines 21-23).

https://www.courts.go.jp/assets/hanrei/hanrei-pdf-94170.pdf

* This article provides general information and does not include legal advice.
Author: Hideki Takaishi, Attorney-at-Law and Patent Attorney (Daini Tokyo Bar Association)
Contact regarding this matter: h_takaishi☆nakapat.gr.jp (please replace ☆ with @)

 

 

Osaka District Court Judgment, Reiwa 4 (Wa) No. 11405 [Heterocyclic Derivative] <Takemiya>

Original Article URL: https://www.nakapat.gr.jp/ja/note/%e5%a4%a7%e9%98%aa%e5%9c%b0%e5%88%a4%e4%bb%a4%e5%92%8c4%e5%b9%b4%e3%83%af11405%e3%80%90%e8%a4%87%e7%b4%a0%e7%92%b0%e8%aa%98%e5%b0%8e%e4%bd%93%e3%80%91%ef%bc%9c%e6%ad%a6%e5%ae%ae%ef%bc%9e/

Osaka District Court Judgment, Reiwa 4 (Wa) No. 11405 [Heterocyclic Derivative] <Takemiya>

[Claim for Remuneration for an Employee Invention] Approximately JPY 94 million awarded.
* The employee-invention rules are redacted and unclear, but they were not applied to this invention.
⇒ Patent Act prior to the Heisei 16 amendment
(Reason) Although the defendant had employee-invention rules, no agreement to apply them to a case such as the invention at issue was found, and the statutory “reasonable remuneration” was to be calculated.

Employer’s own working portion (the calculation base includes domestic sales and amounts relating to Actelion):
(Excess sales) × (hypothetical royalty rate of 5.9%) × (1 − employer contribution rate of 99%) × (co-inventor’s share of 1/3)

Third-party working portion (license revenue):
(License revenue) × (1 − employer contribution rate of 99%) × (patent contribution rate of 25%*) × (co-inventor’s share of 1/3)
<* Considering the subject matter of the agreement and other circumstances, the court held that the contribution of the patent at issue did not exceed 25%. Part of the agreement’s contents is redacted in the published judgment.>

(Excerpt from the Judgment)
The employee-invention rules at issue provide that ●●●●●●●●●●●●●●●● ●●●●●●●●●●●●●●●●●●●
However, the employee-invention rules at issue contain no provision stating that the rules also apply to inventions, such as the invention at issue, that do not fall within the inventions described in the foregoing provision, and the record contains no evidence sufficient to find that an agreement was reached between the plaintiff and the defendant to apply the employee-invention rules at issue to such an invention.

[Supplement] Regarding “Employer’s own working portion (domestic sales)” in the original article, the judgment held that, in addition to sales of the pharmaceutical at issue in Japan, the amount relating to Actelion (the content of which is redacted in the judgment) should also be included in the sales on which reasonable remuneration is calculated (judgment, p. 30, lines 17-21; p. 31, lines 6-7). The specific subject matter of the license agreement is redacted in the judgment, and the published judgment does not identify that subject matter as know-how and data provision. The judgment held that the patent’s contribution ratio did not exceed 25%, taking into account the technical information at issue, securing of a safety-monitoring system, and other matters (judgment, p. 35, lines 2-24). The awarded amount of approximately JPY 94 million is after deducting JPY 6,519,000 already paid (judgment, p. 36, lines 7-12).

https://t.co/fG0Rvflzyf

* This article provides general information and does not include legal advice.
Author: Hideki Takaishi, Attorney-at-Law and Patent Attorney (Daini Tokyo Bar Association)
Contact regarding this matter: h_takaishi☆nakapat.gr.jp (please replace ☆ with @)

 

 

Reiwa 5 (Ne) No. 10107 “PCSK9 (Second Litigation)” <Nakadaira>

Original Article URL: https://www.nakapat.gr.jp/ja/note/%e4%bb%a4%e5%92%8c%ef%bc%95%e5%b9%b4%e3%83%8d10107%e3%80%8epcsk9%ef%bc%88%e4%ba%8c%e6%ac%a1%e8%a8%b4%e8%a8%9f%ef%bc%89%e3%80%8f%ef%bc%9c%e4%b8%ad%e5%b9%b3%ef%bc%9e/

Reiwa 5 (Ne) No. 10107 “PCSK9 (Second Litigation)” <Nakadaira>

* In the second litigation, declarations and empirical experiments by Dr B and Dr C and other materials were newly submitted, resulting in a finding of violation of the support requirement.

Amgen’s patented invention does not limit the specific structure of the antibody (amino-acid sequence), but is an antibody defined by the following functions:
1. Neutralizes: inhibits binding between PCSK9 and LDLR.
2. Competes: competes for binding to PCSK9 with a specified “reference antibody (such as 21B12)” created by Amgen.

The court found that “competes” includes the following two patterns:
1. Direct competition (Direct Blocking): binds to the “same site” as the reference antibody and interferes with it.
2. Competition through steric hindrance (Steric Hindrance): binds to a “different site” from the reference antibody, but, because of the antibody’s large size, physically interferes with and inhibits binding.

The specification at issue described “antibodies that bind to the same site (1 above),” but did not contain sufficient disclosure (support) as to whether “antibodies that bind to a different site and interfere through steric hindrance (2 above)” actually have a neutralizing action.
⇒ Violation of the support requirement

[Appellee’s submission] The appellee submitted that, even if conditions concerning neutralization or competition by Fab fragments were added, the possibility of including antibodies that compete through steric hindrance and bind to different sites would remain (judgment, p. 41, line 19 to p. 44, line 2). [Supplement] Correction Items 3 and 4 add conditions concerning neutralization and competition, respectively, by the Fab fragments of the antibody; they do not limit the subject matter of the invention to Fab fragments themselves (judgment, p. 12, line 20 to p. 13, line 3).
[Court’s holding] The court held that Correction Items 1 and 2 did not fall within the purposes of correction specified in the proviso to Article 134-2(1) of the Patent Act and stated: “Without needing to decide the remaining correction items, the appellant’s rebuttal based on correction is without merit” (judgment, p. 67, lines 5-8 and 17-19). Accordingly, the court did not individually examine Correction Items 3 and 4 concerning Fab fragments and then decide a violation of the support requirement after those corrections.

[Supplement] The original article stated that, even if limited to Fab fragments by the correction, the possibility of including antibodies that compete through steric hindrance but bind to different sites would remain. That sentence presented the appellee’s submission (judgment, p. 41, line 19 to p. 44, line 2) as if it were the court’s holding and summarized Correction Items 3 and 4 as limiting the invention to Fab fragments. Further, regarding the professor’s technical opinion mentioned in the original article, the judgment relied on the statements (verification experiments) of Dr. B and Dr. C (judgment, p. 54, line 25 to p. 55, line 10), and the published judgment does not state that they were professors. The “same site” in the original article is, in the judgment, a site on PCSK9 that is identical to or overlaps with the site at which the reference antibody binds to PCSK9 (judgment, p. 49, lines 10-11). The main reasons for the violation of the support requirement are that an antibody competing with a reference antibody cannot be said to neutralize by the same mechanism as the reference antibody (judgment, p. 53, line 13 to p. 54, line 4) and that, in the verification experiments, roughly 80% or more of the antibodies competing with the reference antibodies lacked binding-neutralizing activity (judgment, p. 55, lines 2-10).

https://www.courts.go.jp/assets/hanrei/hanrei-pdf-94092.pdf

* This article provides general information and does not include legal advice.
Author: Hideki Takaishi, Attorney-at-Law and Patent Attorney (Daini Tokyo Bar Association)
Contact regarding this matter: h_takaishi☆nakapat.gr.jp (please replace ☆ with @)

 

 

Tokyo District Court Judgment, Reiwa 4 (Wa) No. 7976 [Communication Equipment] <Nakashima>

Original Article URL: https://www.nakapat.gr.jp/ja/note/%e6%9d%b1%e4%ba%ac%e5%9c%b0%e5%88%a4%e4%bb%a4%e5%92%8c4%e5%b9%b4%e3%83%af7976%e5%8f%b7%e3%80%90%e9%80%9a%e4%bf%a1%e6%a9%9f%e5%99%a8%e3%80%91%ef%bc%9c%e4%b8%ad%e5%b3%b6%ef%bc%9e/

Tokyo District Court Judgment, Reiwa 4 (Wa) No. 7976 [Communication Equipment] <Nakashima>

* Standard-essential patent—infringement.
⇒ The claim for an injunction constituted an abuse of rights (the parties failed to reach agreement because of the difference in royalty rates, and it could not be said that the defendant lacked willingness to obtain a license).

⇒ Damages were calculated as: “Sales of the accused products × aggregate royalty rate for the entire LTE standard ÷ total number of patents for the entire LTE standard (1,300 patents) × number of patents at issue (two patents counted as one because they belong to the same patent family).”
As to the “aggregate royalty rate for the entire LTE standard,” the rate was 9% for products supporting LTE only and 8% for 5G-compatible products (because LTE’s relative contribution is lower).
An increase based on an infringement premium (Article 102(4) of the Patent Act) was not allowed because the defendant was willing to obtain a licence on FRAND terms.

[Supplement] The patents at issue are two patents, Patent 1 and Patent 2 at issue (judgment, p. 2, lines 9-10); because they belong to the same patent family, the court held that they should be counted as one patent to match the unit of the 1,300 patents (judgment, p. 115, lines 18-22). An increase based on an infringement premium was not allowed because the defendant had been willing to take a license on FRAND terms (judgment, p. 112, lines 18-22).

https://www.courts.go.jp/assets/hanrei/hanrei-pdf-94200.pdf

* This article provides general information and does not include legal advice.
Author: Hideki Takaishi, Attorney-at-Law and Patent Attorney (Daini Tokyo Bar Association)
Contact regarding this matter: h_takaishi☆nakapat.gr.jp (please replace ☆ with @)

 

 

Reiwa 6 (Ne) No. 10074 [Filler for Electronic Cigarette] <Masuda>

Original Article URL: https://www.nakapat.gr.jp/ja/note/%e4%bb%a4%e5%92%8c6%e5%b9%b4%e3%83%8d10074%e3%80%90%e9%9b%bb%e5%ad%90%e3%82%bf%e3%83%90%e3%82%b3%e7%94%a8%e5%85%85%e5%a1%ab%e7%89%a9%e3%80%91%ef%bc%9c%e5%a2%97%e7%94%b0%ef%bc%9e/

Reiwa 6 (Ne) No. 10074 [Filler for Electronic Cigarette] <Masuda>

 

A review of the entries in various dictionaries on the meaning of “cut” (kirikomi) (Claim Element B) shows that they contemplate the active acts of “cutting into,” “making a score,” and “cutting,” and several examples expressly state that the act is performed with a blade.

 

Accordingly, “cut” (kirikomi) means a structure or state in which a “score” or “slit” (kirime/kireme) has been artificially and actively formed using a blade.

 

The specification at issue merely gives examples such as a cutter blade, razor blade, and rotary cutter as means for forming the cuts, and contains no description or suggestion of any means of formation other than a blade.

⇒ Turning to the accused product, the three streak-like portions formed on the surface of the tobacco substrate, substantially parallel to one another, along the longitudinal direction of the tobacco stick (rod) were formed by controlling crimping conditions in the crimping process and were not formed by a blade.

⇒ Claim Element Not Satisfied (for the same reasons as the court of first instance, Tokyo District Court Judgment, Reiwa 5 (Wa) No. 70407)

 

hanrei-pdf-93997.pdf

* This article provides general information and does not include legal advice.
Author: Hideki Takaishi, Attorney-at-Law and Patent Attorney (Daini Tokyo Bar Association)
Contact regarding this matter: h_takaishi☆nakapat.gr.jp (please replace ☆ with @)

 

 

Reiwa 6 (Gyo-Ke) No. 10109 [Assistance Device] <Honda>

Original Article URL: https://www.nakapat.gr.jp/ja/note/%e4%bb%a4%e5%92%8c6%e5%b9%b4%e8%a1%8c%e3%82%b110109%e3%80%90%e4%bb%8b%e5%8a%a9%e6%a9%9f%e3%80%91%ef%bc%9c%e6%9c%ac%e5%a4%9a%ef%bc%9e/

Reiwa 6 (Gyo-Ke) No. 10109 [Assistance Device] <Honda>

The subject of the petition for retrial is understood to be the original decision. The fact that the original decision, which became final before the fourth retrial decision, conflicts with the fourth retrial decision does not constitute a ground for retrial of the original decision under Article 338(1)(x) of the Code of Civil Procedure, as applied mutatis mutandis by Article 171(2) of the Patent Act.
Even assuming that the plaintiff’s position is construed as making the fourth retrial decision the subject of the petition for retrial and asserting, as a ground for retrial, that it conflicts with the original decision, the original decision was a decision finding the appeal against the examiner’s decision of refusal unsuccessful, whereas the fourth retrial decision was a decision dismissing the petition for retrial as unlawful. The fourth retrial decision therefore does not conflict with the original decision, and the plaintiff’s claim has no merit.

https://www.courts.go.jp/assets/hanrei/hanrei-pdf-94030.pdf

* This article provides general information and does not include legal advice.
Author: Hideki Takaishi, Attorney-at-Law and Patent Attorney (Daini Tokyo Bar Association)
Contact regarding this matter: h_takaishi☆nakapat.gr.jp (please replace ☆ with @)

 

 

Tokyo District Court Judgment, Reiwa 6 (Gyo-U) No. 5001 <Shibuya>

Original Article URL: https://www.nakapat.gr.jp/ja/note/%e6%9d%b1%e4%ba%ac%e5%9c%b0%e6%b1%ba%e4%bb%a4%e5%92%8c6%e5%b9%b4%e8%a1%8c%e3%82%a65001%ef%bc%9c%e6%be%81%e8%b0%b7%ef%bc%9e/

Tokyo District Court Judgment, Reiwa 6 (Gyo-U) No. 5001 <Shibuya>
Date of judgment: April 18, 2025.

The plaintiff, having filed an international patent application (PCT application), made a “request for examination” before submitting the “translation” prescribed by the Patent Act. The JPO dismissed the request as unlawful, and the plaintiff sought revocation of that disposition.
⇒ Action dismissed as inadmissible.

Article 184-17 of the Patent Act provides that, for a foreign-language patent application, a request for examination may not be made until “after” procedures such as submission of a translation have been completed.
This provision makes submission of a translation before a request for examination a procedural requirement, and a defect (error) in that sequence is not cured by subsequently submitting the translation.
In this case, it is clear that the translation had not been submitted when examination was requested.
Even if the court were to revoke the disposition at issue, the fact that the request for examination violated the Act would remain unchanged, and there would be no possibility of curing the defect. The JPO would therefore have no choice but to dismiss the request again. Revocation of the disposition at issue would accordingly provide no practical benefit to the plaintiff, and there is no legal interest in bringing the action.

[Supplement] The heading of the original article describes this case as a decision (kettei), but it is a judgment, rendered on April 18, 2025 (judgment, p. 1, line 1).

https://www.courts.go.jp/assets/hanrei/hanrei-pdf-94034.pdf

* This article provides general information and does not include legal advice.
Author: Hideki Takaishi, Attorney-at-Law and Patent Attorney (Daini Tokyo Bar Association)
Contact regarding this matter: h_takaishi☆nakapat.gr.jp (please replace ☆ with @)

 

 

Reiwa 6 (Gyo-Ke) No. 10022 [… Antimicrobial Agent] <Honda>

Original Article URL: https://www.nakapat.gr.jp/ja/note/%e4%bb%a4%e5%92%8c6%e5%b9%b4%e8%a1%8c%e3%82%b110022%e3%80%90%e6%8a%97%e5%be%ae%e7%94%9f%e7%89%a9%e5%89%a4%e3%80%91%ef%bc%9c%e6%9c%ac%e5%a4%9a%ef%bc%9e/

Reiwa 6 (Gyo-Ke) No. 10022 [… Antimicrobial Agent] <Honda>

In order for it to have been obvious to change the treatment target of the primary cited invention (from tinea pedis or a cutaneous fungal disease) to “onychomycosis” and thereby adopt the configuration relating to the difference,
in light of the technical level at the filing date of the application at issue,
it is necessary that, when the therapeutic agent is simply applied to the nail plate, it could reasonably have been expected that the active ingredient KP-103 would penetrate and permeate into the interior of the nail plate, be delivered to the lower layer of the nail plate and the nail bed, which are the infected sites, and exert a therapeutic effect.
⇒ Inventive Step of the Medical-Use Invention: ○

(Summary of the Judgment)
(1) As common general technical knowledge at the filing date of the application at issue, it is found that: (i) Trichophyton rubrum and Trichophyton mentagrophytes accounted for most of the causative fungi of onychomycosis, as they did for tinea pedis; (ii) in order to treat onychomycosis effectively with a topical agent, it was necessary to cause the antifungal agent to penetrate the keratin of the nail plate and deliver it to the infected site, but, because of the nature of the nail plate, there was an obstacle in that antifungal agents did not readily penetrate or permeate into its interior, and treatment of onychomycosis with a topical agent was considered extremely difficult, while oral agents also presented problems of side effects and development of a topical agent was awaited; and (iii) both nails and hair contain hard keratin and have mutually similar amino-acid compositions.

(2) As technical findings known at the filing date of the application at issue, it is found that: (iv) attempts to deliver a topical antifungal agent to the infected site included development of nail-lacquer preparations and treatments involving chemical or surgical removal of the nail plate, application of an antifungal agent, and use in combination with occlusive dressing therapy (ODT); (v) the Exhibit Ko No. 6 study evaluating the antifungal agent tioconazole as a topical therapeutic agent for onychomycosis had been conducted; (vi) KP-103 had properties such as low adsorption to keratin and high release, without reduction of its anti-Trichophyton mentagrophytes activity even when human hair (keratin) was added; and (vii) there had been research using human hair to evaluate adsorption of antifungal drugs to keratin and reduction in activity upon adsorption to keratin.

(3) (Summary of the judgment) In order for a person skilled in the art to have readily conceived of changing the treatment target of the topical fungal-disease therapeutic agent of the primary cited invention (the invention of Exhibit Ko No. 1-1) to “onychomycosis” and adopting the configuration of the corrected invention at issue relating to the difference, in light of the technical level at the filing date of the application at issue, it is necessary that, when the therapeutic agent is simply applied to the nail plate, it could reasonably have been expected that the active ingredient KP-103 would penetrate and permeate into the interior of the nail plate, be delivered to the lower layer of the nail plate and the nail bed, which are the infected sites, and exert a therapeutic effect. Considering the common general technical knowledge and technical findings in (1) and (2) above as a whole, it cannot be said that a person skilled in the art could reasonably have had such an expectation at the filing date of the application at issue. Further, in light of the common general technical knowledge at the filing date of the application at issue, it would have been difficult for a person skilled in the art to predict the effects of the corrected invention at issue shown in the specification at issue and the like. Accordingly, at the filing date of the application at issue, a person skilled in the art could not readily have made the corrected invention at issue based on the invention of Exhibit Ko No. 1-1.

[Supplement] The second and subsequent sentences of (3) summarize the judgment rather than quote its original text. Further, regarding “external dermatomycosis” in the original article, the treatment target of the invention of Exhibit Ko No. 1-2 is dermatomycosis (judgment, p. 34, lines 4-5).

https://www.courts.go.jp/assets/hanrei/hanrei-pdf-94078.pdf

* This article provides general information and does not include legal advice.
Author: Hideki Takaishi, Attorney-at-Law and Patent Attorney (Daini Tokyo Bar Association)
Contact regarding this matter: h_takaishi☆nakapat.gr.jp (please replace ☆ with @)

 

 

Reiwa 6 (Ne) No. 10029 “Claim for Confirmation of the Right to Obtain a Patent” <Masuda>

Original Article URL: https://www.nakapat.gr.jp/ja/note/%e4%bb%a4%e5%92%8c7%e5%b9%b4%e3%83%8d10029%e3%80%8e%e7%89%b9%e8%a8%b1%e3%82%92%e5%8f%97%e3%81%91%e3%82%8b%e6%a8%a9%e5%88%a9%e3%81%ae%e7%a2%ba%e8%aa%8d%e8%ab%8b%e6%b1%82%e3%80%8f%ef%bc%9c%e5%a2%97/

Reiwa 6 (Ne) No. 10029 “Claim for Confirmation of the Right to Obtain a Patent” <Masuda>
Date of judgment: April 24, 2025.

* Y1 graduated from the Faculty of Environment and Information Studies at Keio University and started a business, but had no clinical knowledge.
⇒ Inventorship: ×
(The cooperating professor was the inventor.)

<Inventorship (Employee Invention)>
It is necessary to have actually participated in the creative act concerning the technical idea of the invention, particularly in completing the characteristic portion of the invention relating to the means for solving the prior technical problem.
The characteristic portion of Invention 1-3 at issue lies in the following: in a vascular plug comprising a pusher wire and a mesh portion for embolizing an aneurysm in order to prevent rupture of an aneurysm within a blood vessel, there were problems in that multiple vascular plugs of different sizes had to be prepared and that rapid expansion of the mesh portion risked damaging the aneurysm; therefore, a configuration was adopted in which, when not housed, the distal end of the stent is pushed out from the distal end of the catheter and expands while curling outward; this provides a high degree of freedom in size with respect to the aneurysm and does not damage a bifurcation aneurysm.
Y1 graduated from a humanities faculty and, after working for a financial institution, established the plaintiff company in the first instance together with Y1’s elder brother, who held a doctorate in science; Y1, however, had no clinical knowledge.
By contrast, Professor A, who was a cooperating party, had extensive clinical experience, and Professor A’s research notebook clearly described the problems and means for solving them in Invention 1-3 at issue. It is therefore appropriate to find that Professor A actually participated in completing the characteristic portion of Invention 1-3 at issue.

<Claim for Confirmation of the Right to Obtain a Patent Relating to a PCT Application>
The plaintiff in the first instance states that, after obtaining a judgment in this action confirming the right to obtain a patent, it will select, from among the Contracting States to the Patent Cooperation Treaty, the countries or regions in which it actually wishes to obtain patents and pursue new applications or procedures for restoration of rights. However, in light of the principle of territoriality, how a right to obtain a patent is treated and what effect it has in foreign countries are understood to be determined by the law of the country in which a patent right is registered on the basis of that right to obtain a patent. At present, no new application, national-phase entry, or the like has been made for the invention in any foreign country, and no specific plan has been disclosed. Accordingly, ripeness of the dispute cannot be found with respect to confirmation of the right to obtain a patent for the invention.

[Supplement] The heading of the original article reads “Reiwa 7 (Ne) No. 10029,” but the case number of the judgment is Reiwa 6 (Ne) No. 10029 (judgment, p. 1, line 2). The reference to a humanities faculty in the original article does not appear in the judgment. The judgment found that Y1 graduated from the Faculty of Environment and Information Studies of Keio University and, after working at a bank, started a business (judgment, p. 23, lines 11-13), and held that Y1 could not be found to have such a background (judgment, p. 25, lines 17-21).

https://www.courts.go.jp/assets/hanrei/hanrei-pdf-94055.pdf

* This article provides general information and does not include legal advice.
Author: Hideki Takaishi, Attorney-at-Law and Patent Attorney (Daini Tokyo Bar Association)
Contact regarding this matter: h_takaishi☆nakapat.gr.jp (please replace ☆ with @)

 

 

Reiwa 5 (Gyo-Ke) No. 10078 [Audio Controller] <Shimizu> (Defendant: Pixie Dust)

Original Article URL: https://www.nakapat.gr.jp/ja/note/%e4%bb%a4%e5%92%8c5%e5%b9%b4%e8%a1%8c%e3%82%b110078%e3%80%90%e3%82%aa%e3%83%bc%e3%83%87%e3%82%a3%e3%82%aa%e3%82%b3%e3%83%b3%e3%83%88%e3%83%ad%e3%83%bc%e3%83%a9%e3%80%91%ef%bc%9c%e6%b8%85%e6%b0%b4/

Reiwa 5 (Gyo-Ke) No. 10078 [Audio Controller] <Shimizu> (Defendant: Pixie Dust)

C (the contractor) merely solved a problem different from that of the invention at issue.
⇒ Neither misappropriation nor violation of the joint-application requirement was established.

(Supplement: A and B were on the commissioning side (PDT).) (Excerpt from the Judgment)
It is found that A and B had conceived of a “phased-array speaker” before PDT placed an order with the plaintiff for the prototype at issue. … A and B were researchers in ultrasound and are found to have understood the basic principle of the conventional parametric speaker. They had also developed the experimental device at issue, which, although subject to certain limitations, could generate audible sound at a focal position. Accordingly, the conception of A and B was not at the level of a mere idea, as the plaintiff asserts, but was a conception accompanied by a specific means of solution. … …

However, among the functions of the prototype at issue described in (3) A above, the function of emitting the audible-sound waveform with a phase difference such that it converges at the focal position and aligning the audible-sound waveform at the focal position … improves the sound quality of the audible sound. However, the technical problem of the invention at issue is removal of restrictions on the environment of use, not improvement of the sound quality of audible sound. Therefore, that function of the prototype at issue does not constitute the characteristic portion of the invention at issue.
The remaining points are also merely one specific and objective mode of implementing the characteristic portion of the invention at issue. Depending on their content, they may be said to solve a problem different from that of the invention at issue, but cannot be said to solve the problem of the invention at issue.
In other words, the functions of the prototype at issue do not affect the foregoing finding that, through development of the experimental device at issue, the characteristic portion of the invention at issue had been configured in a sufficiently specific and objective manner to enable a person skilled in the art to implement it, and that the invention at issue had been completed.

Accordingly, C and the others cannot be said to be persons who configured the characteristic portion of the invention at issue in a sufficiently specific and objective manner to enable a person skilled in the art to implement it, and they are not inventors (joint inventors) of the invention at issue. …

[Supplement] The persons whom the judgment found to be the inventors of the invention at issue are “A and others” (A and D) listed in the patent gazette (judgment, p. 3, lines 15-16; p. 7, lines 5-7; p. 45, lines 11-13). Further, the passage in the excerpt beginning “Accordingly, among the functions provided in the prototype at issue, …” begins with “However” in the original text of the judgment (judgment, p. 44, line 22).

https://www.courts.go.jp/assets/hanrei/hanrei-pdf-94070.pdf

* This article provides general information and does not include legal advice.
Author: Hideki Takaishi, Attorney-at-Law and Patent Attorney (Daini Tokyo Bar Association)
Contact regarding this matter: h_takaishi☆nakapat.gr.jp (please replace ☆ with @)

 

 

Reiwa 5 (Wa) No. 70563 [Transaction Management System] <Shibuya> (Keysoft v. Sankaku Kikaku)

Original Article URL: https://www.nakapat.gr.jp/ja/note/%e4%bb%a4%e5%92%8c5%e5%b9%b4%e3%83%af70563%e3%80%90%e5%8f%96%e5%bc%95%e7%ae%a1%e7%90%86%e3%82%b7%e3%82%b9%e3%83%86%e3%83%a0%e3%80%91%ef%bc%9c%e6%be%81%e8%b0%b7%ef%bc%9e-%ef%bc%88%e3%82%ad%e3%83%bc/

Reiwa 5 (Wa) No. 70563 [Transaction Management System] <Shibuya>
(Keysoft v. Sankaku Kikaku)

In the invention at issue, an “intermediary trader” means a person situated between a “downstream trader,” which is the recipient of goods, and an “upstream trader,” which is the shipper of goods, and who conducts stepwise sales transactions for specified goods—that is, a person who receives from the downstream trader an order concerning the sale of the subject goods and, based thereon, places with the upstream trader an order concerning the sale of those goods.

The accused system concerns the “Furusato Nozei system.” Furusato Nozei is a gratuitous provision of an economic benefit (a donation), and provision of a return gift is likewise a gratuitous act of gratitude for the donation and has no relationship of consideration with the donation.
Accordingly, no sales transaction (transaction for consideration) with the donor can be found, and the local government does not qualify as an “intermediary trader.”

Further, as to the operation of the accused system, although an application by a donor causes email notifications to be sent to the local government and the business operator, the system does not contemplate that the local government will receive order information and then notify the business operator, and there is no relationship in which the local government, based on an email from the donor, places an order for goods with the business operator.
Accordingly, the local government cannot be said to be a stepwise trader in goods and, on this ground as well, does not qualify as an “intermediary trader.”

https://www.courts.go.jp/assets/hanrei/hanrei-pdf-94153.pdf

* This article provides general information and does not include legal advice.
Author: Hideki Takaishi, Attorney-at-Law and Patent Attorney (Daini Tokyo Bar Association)
Contact regarding this matter: h_takaishi☆nakapat.gr.jp (please replace ☆ with @)

 

 

Tokyo District Court Judgment, Reiwa 5 (Wa) No. 70594 [Mattress]

Original Article URL: https://www.nakapat.gr.jp/ja/note/%e6%9d%b1%e4%ba%ac%e5%9c%b0%e5%88%a4%e4%bb%a4%e5%92%8c5%e5%b9%b4%e3%83%af70594%e3%80%90%e3%83%9e%e3%83%83%e3%83%88%e3%83%ac%e3%82%b9%e3%80%91%ef%bc%9c%e5%8b%9d%e5%8f%88%ef%bc%9e/

Tokyo District Court Judgment, Reiwa 5 (Wa) No. 70594 [Mattress]

In the invention at issue, “pressure-bonded” does not require that the cushion bodies be strongly compressed and stuck together. In light of the purpose of preventing hands, feet, and the like from falling into a gap, it is construed to mean “a state in which some pressure is mutually applied to the cushion bodies to the extent that no gap is formed between them.”
The plaintiff’s measurements established that pressure of at least 0.2 MPa was applied between the inner materials of accused Products 1 and 4, and the same was inferred for the other accused products; accordingly, the accused product satisfies the requirement of being “pressure-bonded.”
⇒ Satisfied

(Excerpt from the Judgment)
A. In the invention at issue, the mattress cover is defined as having a bottomed tubular cover member into which a plurality of cushion bodies can be fitted while being pressure-bonded (Claim Element G), and the plurality of cushion bodies are defined as being incorporated into the mattress cover in a pressure-bonded state (Claim Element H).
The term “pressure-bond” means “to strongly compress and stick together” (Kojien, 7th ed.; Exhibit Otsu No. 1). However, because “pressure” means “to hold down; to press so that something cannot move” (Appendix to Kojien, 7th ed.; Exhibit Ko No. 15), “pressure-bond” can also be said to have a meaning on the order of “to hold down and stick together.”
B. Next, the specification at issue contains, with respect to “pressure-bonding,” the statement: “For example, when incorporating three cushion bodies, first press the respective side surfaces of two cushion bodies against the inner surfaces on both longitudinal sides of the bottom-side cover, and then press the remaining cushion body (which may be mountain-folded) downward between those cushion bodies, thereby making it possible to readily incorporate all of the cushion bodies into the mattress cover in a pressure-bonded state” ([0017]); the statement: “Figure 5 is a conceptual diagram showing an example of the manner in which cushion bodies 21 to 23 are accommodated in the bottom-side cover 10b while being pressure-bonded, with respect to mattress 1” ([0050]); and the statement: “Figure 5 illustrates, as a method of incorporating a plurality of cushion bodies 21 to 23 into mattress cover 10, a method using side portions 13 on both longitudinal sides of bottom-side cover 10b (the front and rear sides of side portion 13). In this method, first, the side surfaces of two cushion bodies 21 and 23 are respectively pressed against the front and rear sides of side portion 13, and cushion body 22 is thereafter pressed vertically downward. By this method, the plurality of cushion bodies 21 to 23 can be readily incorporated into mattress cover 10 in a pressure-bonded state” ([0051]). Figure 5, concerning a method of incorporating a plurality of cushion bodies into the mattress cover, depicts another cushion body being pressed downward between two cushion bodies, with the three cushion bodies installed in contact with one another without gaps inside the mattress cover, but does not express that the cushion bodies mutually exert strong pressure in the left-right direction.
In addition, as stated in 1(2) above, the invention at issue produces the effect of providing a mattress in which hands, feet, and the like are less likely to fall into grooves. According to the specification at issue, that effect results from the fact that “a stretch-preventing member is provided on the peripheral surface portion (side portion) of the mattress cover” ([0011]), and is not stated to result from the cushion bodies being strongly compressed and stuck together. Considering these matters as a whole, although the invention at issue can be said to contemplate that no gap into which hands, feet, and the like may fall is formed at the boundaries between the cushion bodies, so that hands, feet, and the like are less likely to fall in, it cannot be found to contemplate a state in which the cushion bodies are strongly compressed and stuck together.
Accordingly, it is appropriate to construe “pressure-bonded” in the invention at issue as meaning a state in which some pressure is mutually applied to the cushion bodies to the extent that no gap is formed between them.

[Supplement] The heading of the original article reads “<Katsumata>,” but according to the judgment, Judge Katsumata is an associate judge, as shown by the statement that Judge Katsumata was unable to sign and seal owing to transfer and Judge Yoshikawa owing to retirement (judgment, p. 55). Further, regarding the statement in the original article that pressure of 0.2 MPa or more is applied between the inner materials of the accused product, the measurements were made on Accused Products 1 and 4, and the same was inferred for the other accused products (judgment, p. 37, lines 8-15). The appellate court (Intellectual Property High Court Judgment of November 17, 2025, Reiwa 7 (Ne) No. 10045) dismissed the appeal (that judgment, p. 1, lines 1-3 and 21). Appellate judgment: https://www.courts.go.jp/assets/hanrei/hanrei-pdf-95075.pdf

https://www.courts.go.jp/assets/hanrei/hanrei-pdf-94144.pdf

* This article provides general information and does not include legal advice.
Author: Hideki Takaishi, Attorney-at-Law and Patent Attorney (Daini Tokyo Bar Association)
Contact regarding this matter: h_takaishi☆nakapat.gr.jp (please replace ☆ with @)

 

 

Reiwa 5 (Ne) No. 10114 [Layered Body Having Cube-Corner Elements, and Retroreflective Sheet] <Nakadaira>

Original Article URL: https://www.nakapat.gr.jp/ja/note/%e4%bb%a4%e5%92%8c5%e5%b9%b4%e3%83%8d10114%e3%80%90%e3%82%ad%e3%83%a5%e3%83%bc%e3%83%96%e3%82%b3%e3%83%bc%e3%83%8a%e3%83%bc%e7%b4%a0%e5%ad%90%e3%82%92%e6%9c%89%e3%81%99%e3%82%8b%e5%b1%a4%e7%8a%b6/

Reiwa 5 (Ne) No. 10114 [Layered Body Having Cube-Corner Elements, and Retroreflective Sheet] <Nakadaira>

= Reiwa 5 (Gyo-Ke) No. 10102

 

* The technical significance of the numerical limitation is not stated in the specification.

⇒ Matter of design

 

(Excerpt from the Judgment)

The specification at issue states that “the elements preferably have a dihedral-angle error of 1 to 60 arcminutes” …, but contains no statement whatsoever of the basis for describing that range as preferable.

On the other hand, all of the examples described in the specification at issue … include examples having dihedral-angle errors of less than 1 arcminute, such as 0.1 arcminute, −0.5 arcminute, and 0.8 arcminute, and each of those examples is stated to have a uniformly distributed spot pattern and to produce the action and effects of the inventions at issue. With respect to the upper limit as well, Claim Elements 1-C4 and 4C-1 set it at 60 arcminutes, as stated above, whereas the maximum dihedral-angle error shown in the examples is −19.8 arcminutes …, and there is no statement of any basis for setting the upper limit at 60 arcminutes. Moreover, even if spot patterns consisting only of values within the numerical range stated in the foregoing claim elements were extracted from the examples described in the specification at issue and compared, there is no example showing that the action and effect of uniform distribution of the spot pattern is produced. …

Accordingly, it must be said that the numerical range of the foregoing dihedral-angle error stated in the claim elements of the inventions at issue has no particular technical significance, and it is found to be no more than an exercise of the ordinary creative ability of a person skilled in the art.

courts.go.jp/assets/hanrei/hanrei-pdf-94132.pdf?fbclid=IwY2xjawPuQg1leHRuA2FlbQIxMQBzcnRjBmFwcF9pZBAyMjIwMzkxNzg4MjAwODkyAAEegjztdni-hA9B68ybThlUwz0jZmfaQnMZKGrk-q2mzvspjovtVNX8KIk-vTw_aem_owvKftxWnemJdJR6czUekg

* This article provides general information and does not include legal advice.
Author: Hideki Takaishi, Attorney-at-Law and Patent Attorney (Daini Tokyo Bar Association)
Contact regarding this matter: h_takaishi☆nakapat.gr.jp (please replace ☆ with @)

 

 

Reiwa 5 (Gyo-Ke) No. 10121 [Imaging Device] <Masuda>

Original Article URL: https://www.nakapat.gr.jp/ja/note/%e4%bb%a4%e5%92%8c5%e5%b9%b4%e8%a1%8c%e3%82%b110121%e3%80%90%e6%92%ae%e5%83%8f%e8%a3%85%e7%bd%ae%e3%80%91%ef%bc%9c%e5%a2%97%e7%94%b0%ef%bc%9e/

Reiwa 5 (Gyo-Ke) No. 10121 [Imaging Device] <Masuda>

The statement “orthogonal” in the claim does not define the angle of intersection between the first axis and the second axis, but indicates the positional relationship in which two sides of the rectangular display meet at a right angle at a corner.
The depiction in Figure 4B as if Axis A moves is an obvious error, and a person skilled in the art can readily understand the correct configuration (Axis A does not track the movement).

⇒ Support Requirement: ○

https://www.courts.go.jp/assets/hanrei/hanrei-pdf-94108.pdf

* This article provides general information and does not include legal advice.
Author: Hideki Takaishi, Attorney-at-Law and Patent Attorney (Daini Tokyo Bar Association)
Contact regarding this matter: h_takaishi☆nakapat.gr.jp (please replace ☆ with @)

 

 

Reiwa 5 (Wa) No. 70004 [Portable Information Communication Device] <Takahashi>

Original Article URL: https://www.nakapat.gr.jp/ja/note/%e4%bb%a4%e5%92%8c5%e5%b9%b4%e3%83%af70004%e3%80%90%e6%90%ba%e5%b8%af%e6%83%85%e5%a0%b1%e9%80%9a%e4%bf%a1%e8%a3%85%e7%bd%ae%e3%80%91%ef%bc%9c%e9%ab%99%e6%a9%8b%ef%bc%9e/

Reiwa 5 (Wa) No. 70004 [Portable Information Communication Device] <Takahashi>
 (Related cases: Reiwa 5 (Wa) No. 70035
 and Reiwa 4 (Wa) No. 70131)

At the priority date of the patent at issue, a person skilled in the art who encountered the invention of Exhibit Otsu No. 6 could readily have conceived of applying the common general technical knowledge described in A above to that invention and adopting the configuration relating to Difference (1), in which, as a configuration for externally importing image information that could not be clearly displayed on simplified liquid-crystal display panel 23, communication unit 12 receives a radio signal transmitting that image information, converts it into a digital signal, and transmits it to CPU 11, and CPU 11 receives that digital signal.
⇒ Inventive Step: ×

[Supplement] The excerpt in the original article omits, without an ellipsis, the words referring to a person skilled in the art who had access to the invention of Exhibit Otsu No. 6 (judgment, p. 81, lines 16-17). The judgment also held that Difference (2) (reading of bitmap data of an image having the same resolution as the screen resolution) could readily have been conceived (judgment, p. 83, lines 15-20), and dismissed the claim under Article 104-3(1) of the Patent Act because the patent lacked inventive step (judgment, p. 83, lines 22-25). The related case numbers “= Reiwa 5 (Wa) No. 70035” and “= Reiwa 4 (Wa) No. 70131” in the original article do not appear in the judgment.

https://www.courts.go.jp/assets/hanrei/hanrei-pdf-94112.pdf

* This article provides general information and does not include legal advice.
Author: Hideki Takaishi, Attorney-at-Law and Patent Attorney (Daini Tokyo Bar Association)
Contact regarding this matter: h_takaishi☆nakapat.gr.jp (please replace ☆ with @)

 

 

Tokyo District Court Decision, Reiwa 5 (Yo) No. 30214, Petition for a Preliminary Injunction <Sugiura>

Original Article URL: https://www.nakapat.gr.jp/ja/note/%e6%9d%b1%e4%ba%ac%e5%9c%b0%e6%b1%ba%e4%bb%a4%e5%92%8c5%e5%b9%b4%ef%bc%88%e3%83%a8%ef%bc%89%e7%ac%ac30214%e5%8f%b7%e4%bb%ae%e5%87%a6%e5%88%86%e5%91%bd%e4%bb%a4%e7%94%b3%e7%ab%8b%e4%ba%8b%e4%bb%b6/

Tokyo District Court Decision, Reiwa 5 (Yo) No. 30214, Petition for a Preliminary Injunction <Sugiura>

 

[Supplement] The original article states: “★ Same Presiding Judge Sugiura; in the main action, the patentee lost on reversal.” This means that the preliminary-injunction decision (granting an injunction) and the judgment in the main action and counterclaim (Reiwa 5 (Wa) No. 70527; main action dismissed as inadmissible and counterclaim dismissed on the merits) by the same Presiding Judge Sugiura reached different conclusions. This does not mean that an appellate court set aside a first-instance judgment.
Tokyo District Court Judgment, Reiwa 5 (Wa) No. 70527 [Cyclic Protein Tyrosine Kinase Inhibitor] <Sugiura> | Attorney Hideki Takaishi’s Patent Channel (Attorney-at-Law / Patent Attorney / California Attorney; Passed the Patent Agent Examination)
[Text of the decision] Apart from the statement that the creditor’s petition is found to be reasonable, the published copy (certified copy) of the decision contains no detailed statement of reasons. Copy of the decision: https://www.bms.com/assets/bms/japan/pressrelease/20231129-pdf.pdf

* This article provides general information and does not include legal advice.
Author: Hideki Takaishi, Attorney-at-Law and Patent Attorney (Daini Tokyo Bar Association)
Contact regarding this matter: h_takaishi☆nakapat.gr.jp (please replace ☆ with @)

 

 

Tokyo District Court Judgment, Reiwa 5 (Wa) No. 70527 [Cyclic Protein Tyrosine Kinase Inhibitor] <Sugiura>

Original Article URL: https://www.nakapat.gr.jp/ja/note/%e6%9d%b1%e4%ba%ac%e5%9c%b0%e5%88%a4%e4%bb%a4%e5%92%8c5%e5%b9%b4%e3%83%af70527%e3%80%90%e7%92%b0%e7%8a%b6%e3%82%bf%e3%83%b3%e3%83%91%e3%82%af%e8%b3%aa%e3%83%81%e3%83%ad%e3%82%b7%e3%83%b3%e3%82%ad/

Tokyo District Court Judgment, Reiwa 5 (Wa) No. 70527 [Cyclic Protein Tyrosine Kinase Inhibitor] <Sugiura>

The “scope of effect of an extended patent right” extends to the product that was the subject of the disposition designated by Cabinet Order (the originator drug “Sprycel Tablets”) and to products “substantially identical thereto as pharmaceuticals.”
For a patented invention characterized only by the active ingredient of a pharmaceutical product, where the subject product differs in components other than the active ingredient, it is included within substantial identity if the change is based on “well-known and commonly used art.”

In this case, the “Sprycel Tablets” that were the subject of the disposition contained “dasatinib hydrate” as the active ingredient and PEG as an excipient, whereas the plaintiff’s product contained “dasatinib (anhydrous)” as the active ingredient, did not contain PEG, and added carnauba wax and other substances.
The court held that this difference appeared to be based on the plaintiff’s own technology or other measures addressing problems of stability and dissolution properties arising from adoption of the anhydrous form (for example, its lower photostability and higher solubility than the hydrate).
Specifically, replacing PEG with HPC and adjusting the components of the coating agent (including addition of carnauba wax) was not supported by reliable evidence sufficient to find that it was based on well-known or commonly used art, and appeared to be based on the plaintiff’s own technology or other measures.
Accordingly, the plaintiff’s product was not found to be “substantially identical as a pharmaceutical” to Sprycel Tablets, and the effect of the extended patent right at issue did not extend to the plaintiff’s product.
⇒ The court dismissed as inadmissible all claims in Sawai Pharmaceutical’s main action for a negative declaration and dismissed on the merits the defendant patentee’s counterclaim for damages.

[Supplement] The operative part of the judgment dismissed the main action as inadmissible and dismissed the defendant’s counterclaim (judgment, p. 1, lines 8-9). Regarding the statements in the original article that the difference resulted from the plaintiff’s own measures and is inferred to have resulted from active formulation design, the judgment held that there was no reliable evidence sufficient to find that the addition or replacement of excipients was based on well-known or commonly used art and that it appeared that the plaintiff had made it on the basis of its own technology (judgment, p. 38, lines 16-24). Further, regarding the statement in the original article that a change based on well-known or commonly used art falls within substantial identity, the judgment cited, as one category falling within substantial identity, a case in which the target product adds or replaces some different components on the basis of well-known or commonly used art at the time of the application for the cabinet-order disposition (judgment, p. 24, lines 18-23).

[Comment at the time the original article was written] ★ The same Presiding Judge Sugiura reached a different conclusion from the preliminary injunction proceeding (Reiwa 5 (Yo) No. 30214, Petition for a Preliminary Injunction)!!
⇒ The appeal requires close attention.
Many practitioners and academics have expressed the view that, in light of the Oxaliplatin Intellectual Property High Court judgment, the generic product may well fall within the scope of the extended patent right (i.e., the claim elements are satisfied), and I have not heard the contrary view, so the appeal is noteworthy.
Looking at Remitch as well, the Intellectual Property High Court is pro-patent when it comes to pharmaceuticals.
Even if the conclusion of the dasatinib judgment at first instance does not change, it is also important to watch whether the court maintains the logic of treating the technical significance associated with the problem arising from the difference in excipients as an issue, or whether the scope of the judgment is limited to cases in which the active ingredient differs. If the former is maintained as it stands, a generic company could readily place its product outside the scope of effect by formulating a problem + using different excipients + obtaining a patent.
https://www.bms.com/assets/bms/japan/pressrelease/20231129-pdf.pdf

https://www.courts.go.jp/assets/hanrei/hanrei-pdf-94154.pdf

* This article provides general information and does not include legal advice.
Author: Hideki Takaishi, Attorney-at-Law and Patent Attorney (Daini Tokyo Bar Association)
Contact regarding this matter: h_takaishi☆nakapat.gr.jp (please replace ☆ with @)

 

 

Reiwa 6 (Ne) No. 10080 [Under-Coping Ventilation Structure] <Nakadaira> = Court of First Instance: Osaka District Court Judgment, Reiwa 5 (Wa) No. 8403

Original Article URL: https://www.nakapat.gr.jp/ja/note/%e4%bb%a4%e5%92%8c6%e5%b9%b4%e3%83%8d10080%e3%80%90%e7%ac%a0%e6%9c%a8%e4%b8%8b%e6%8f%9b%e6%b0%97%e6%a7%8b%e9%80%a0%e4%bd%93%e3%80%91%ef%bc%9c%e4%b8%ad%e5%b9%b3%ef%bc%9e-%ef%bc%9d%e5%8e%9f%e5%af%a9/

Reiwa 6 (Ne) No. 10080 [Under-Coping Ventilation Structure] <Nakadaira>
= Court of First Instance: Osaka District Court Judgment, Reiwa 5 (Wa) No. 8403

In light of the language “a ventilation member that exhibits ventilation performance and waterproofing performance” and the description in the specification at issue (the problem, means for solving the problem, and effects), it is natural to construe the claim as requiring the ventilation member “itself” to have ventilation performance and waterproofing performance.
⇒ The plate-shaped portion of the appellee’s product cannot be found, by itself, to satisfy the requirement.

The appellant also asserted that the determination should be based on whether the member “contributes” to waterproofing and ventilation, but the court held that there was neither assertion nor proof of common general technical knowledge or other circumstances supporting the reasonableness of that method.
 Even if that method were used, Inclined Portion ⑤ of the appellee’s product narrows the ventilation passage and reduces ventilation performance compared with the case in which it is absent. It therefore cannot be said to contribute to ventilation performance, and Claim Element C is not satisfied.

[Supplement] Regarding the statement in the original article concerning the absence of a reasonable basis for that method, the judgment held that there was neither assertion nor proof of common general technical knowledge or other circumstances supporting the reasonableness of the appellant’s “second determination method” (judgment, p. 14, lines 11-13), and that, even if that method were used, satisfaction of Claim Element C could not be found (judgment, p. 14, lines 21-23). The judgment also held that, although a ventilation passage (ventilation gap) exists, Inclined Portion ⑤ itself narrows the area through which ventilation is possible (judgment, p. 14, lines 14-20).

https://www.courts.go.jp/assets/hanrei/hanrei-pdf-94137.pdf

* This article provides general information and does not include legal advice.
Author: Hideki Takaishi, Attorney-at-Law and Patent Attorney (Daini Tokyo Bar Association)
Contact regarding this matter: h_takaishi☆nakapat.gr.jp (please replace ☆ with @)

 

 

Reiwa 6 (Ne) No. 10072 [Draft Difference Measuring Device] <Nakadaira>

Original Article URL: https://www.nakapat.gr.jp/ja/note/%e4%bb%a4%e5%92%8c6%e5%b9%b4%e3%83%8d10072%e3%80%90%e3%83%89%e3%83%a9%e3%83%95%e3%83%88%e5%b7%ae%e6%b8%ac%e5%ae%9a%e8%a3%85%e7%bd%ae%e3%80%91%ef%bc%9c%e4%b8%ad%e5%b9%b3%ef%bc%9e/

Reiwa 6 (Ne) No. 10072 [Draft Difference Measuring Device] <Nakadaira>

“Of the patent maintenance expenses and other expenses at issue, the expenses incurred for the opposition proceedings were expenses for responding to oppositions to the grant of the patent at issue filed by the defendant in the first instance and Nippon Steel (Exhibit Ko No. 10). However, because the foregoing oppositions to the grant of the patent cannot be found to have been unlawful, no tort by the defendant in the first instance can be found.
As to the expenses other than those for the opposition proceedings among the patent maintenance expenses and other expenses at issue, the plaintiff in the first instance incurred them, at its own discretion, in applying for and maintaining the patent at issue. In the first place, the conduct of the defendant in the first instance did not cause the plaintiff in the first instance to have to incur those expenses. Accordingly, no adequate causal relationship can be found between the conduct of the defendant in the first instance and the expenditures of the plaintiff in the first instance.”

[Supplement] The original text of the judgment includes “(Exhibit Ko No. 10)” (judgment, p. 6, line 4). In the original text of the judgment, the quoted passage begins with “Further,” and the two sentences form a single paragraph (judgment, p. 6, lines 2-10).

https://www.courts.go.jp/assets/hanrei/hanrei-pdf-94136.pdf

* This article provides general information and does not include legal advice.
Author: Hideki Takaishi, Attorney-at-Law and Patent Attorney (Daini Tokyo Bar Association)
Contact regarding this matter: h_takaishi☆nakapat.gr.jp (please replace ☆ with @)

 

 

[Copyright Act ★] Case in Which, Regarding the Appellee’s (Defendant’s) Acts of Photographing, to the Extent Included in a Single Smartphone Photograph, Articles (Headlines, Article Text, and the Photographs at Issue) in a Newspaper Published by the Appellant (Plaintiff), and Posting Them Together with the Text of Posts on Twitter (X) via the Internet on 25 Occasions, the Appellant Alleged Infringement of Copyright (Right of Making Transmittable) in the Photographs at Issue and Sought Damages in Tort, and the Court Held that the Quotation Defense (Article 32(1) of the Copyright Act) or the Defense of Exploitation of Incidentally Included Works (Article 30-2 of the Copyright Act) Applied and that the Appellant’s Claims Should Be Dismissed

Original Article URL: https://www.nakapat.gr.jp/ja/legal_updates_jp/%e3%80%90%e8%91%97%e4%bd%9c%e6%a8%a9%e6%b3%95%e2%98%85%e3%80%91%e8%a2%ab%e6%8e%a7%e8%a8%b4%e4%ba%ba%ef%bc%88%e8%a2%ab%e5%91%8a%ef%bc%89%e3%81%8c%e3%80%81%e6%8e%a7%e8%a8%b4%e4%ba%ba%ef%bc%88%e5%8e%9f/

Intellectual Property High Court Judgment of July 31, Reiwa 7 (Reiwa 6 (Ne) No. 10075) (Presiding Judge Hibiki Shimizu)

 

◆ Full Text of the Judgment

 

 

[Overview of the Case]

 

This case concerns the appellee (the “defendant”), a member of the plaintiff, photographing, to the extent that they were captured in a single smartphone photograph, articles appearing in the Seikyo Shimbun newspaper issued by the appellant, a religious corporation (the “plaintiff”)—including the headlines, article text, and the photographs at issue (Photographs 1-37 at issue)—and posting them on Twitter (X), together with the text of the posts, on 25 occasions via the Internet. The plaintiff alleges infringement of copyright in the photographs at issue (the right of making transmittable, Article 23 of the Copyright Act) and seeks damages in tort (Article 709 of the Civil Code and Article 114(3) of the Copyright Act).

The court of first instance (Tokyo District Court, Reiwa 5 (Wa) No. 70388) upheld the quotation defense (Article 32(1) of the Copyright Act) with respect to the photographs at issue and dismissed the plaintiff’s claims. The plaintiff filed this appeal.

This judgment held that the quotation defense or the defense of exploitation of incidentally included works (Article 30-2(1) of the Copyright Act) applied to the photographs at issue, that the plaintiff’s claims should be dismissed, and dismissed the appeal.

 

 

[Summary of the Judgment]

 

1. Quotation Defense (Article 32(1) of the Copyright Act)

(1) Requirements for the Quotation Defense and Their Construction

According to the language of Article 32(1) of the Copyright Act, in order to include and use all or part of a work in one’s own creation without the consent of the copyright owner, each of the following requirements must be satisfied: (i) the work being used has been made public; (ii) the use of that work constitutes quotation; (iii) the quotation is consistent with fair practices; and (iv) the quotation is made within a scope justified by the purpose of news reporting, critique, study, or other purposes of quotation.

Considering the purpose of the Copyright Act—to protect the rights of authors and others while giving due regard to the fair exploitation of cultural products such as works, and thereby to contribute to the development of culture (see Article 1 of the Copyright Act)—and the purpose of Article 32(1) of the Copyright Act, which enables fair exploitation of works and other cultural products while protecting copyright, it is appropriate to construe requirement (ii), “quotation,” as generally requiring that the work being used be clearly distinguishable and recognizable from the creation in which it is used, and that there be a principal-subordinate relationship between them, with the using creation being principal and the work being used being subordinate. However, this principal-subordinate relationship should not be determined formally based solely on a quantitative comparison; rather, after considering various factors such as the nature of the using creation and of the work being used, the purpose of the quotation, and the method and manner of quotation, it should be determined substantively in light of social conventions. In that event, the determination will partly overlap with the determination under requirement (iv), whether the use is “within a scope justified by the purpose of the quotation.”

As to whether the quotation under requirement (iii) is “consistent with fair practices,” if fair practices concerning quotation exist in the relevant field, publication medium, or the like, the determination is made based on whether the method and manner of use by quotation are found to conform to those practices. If no such practices exist, the determination is made based on whether the method and the like are found to be reasonable under social conventions. In this connection, disclosure of the source of the work being used may be considered as one factor in determining compliance with the fair practices or with a method that is reasonable under social conventions.

Further, as to whether the quotation under requirement (iv) is made “within a scope justified by the purpose of news reporting, critique, study, or other purposes of quotation,” the matter must be comprehensively assessed, in light of the foregoing purpose of the Copyright Act and the purpose of the provision, by considering the content and legitimacy of the purpose of the quotation, the relationship between the purpose of the quotation and the work being used, the nature of the work being used, the scope and quantity quoted, the method and manner of quotation, the benefit obtained by the user, the degree of disadvantage suffered by the person whose work is used, and other matters.

 

(2) Application

1. Introduction

The Photographs at Issue (Quotation) (Photographs 1-9, 11-26, and 30-37 at issue) are news photographs published on the same newspaper pages together with the articles in order to report events as an integrated whole. Accordingly, even if they are themselves photographic works, if the purpose of the quotation has a certain relationship to the events reported by the articles, a similar relationship is recognized with respect to the news photographs forming part of those articles. Further, since the language of Article 32(1) of the Copyright Act does not go so far as to require inevitability or strict necessity of quotation, in light of the nature of articles and news photographs, which are intended broadly to inform readers of current events and contribute to the formation of readers’ opinions and the like, from the standpoint of harmonizing copyright protection and exploitation, where a relationship is found between the events reported by the articles and news photographs and the purpose of the quotation, the court is not precluded from finding that quotation of the Photographs at Issue (Quotation) is “within a scope justified by the purpose of the quotation,” after considering whether there was commercial use, whether the principal-subordinate relationship requirement was satisfied, and other circumstances.

1. Constituting Quotation

The portions consisting of the text of the posts at issue and the quoted portions containing the Photographs at Issue (Quotation) can be clearly distinguished and recognized. Further, in light of the content of the posts at issue, the nature of the photographs at issue and other materials, the purpose of the quotation, the method and manner of expression of the quotation, and other matters, it is found, under social conventions, that the portions posted as the body text on Twitter are principal and the Photographs at Issue (Quotation) are subordinate.

1. Consistency with Fair Practices

The defendant, by stating in the text of the posts at issue that the material was quoted from Seikyo Shimbun, by publishing a photograph in which the “Seikyo Shimbun” masthead was captured, or the like, generally continued to post materials, all in a similar format consisting of a photograph of a newspaper page and text criticizing it. In light of this and of the fact that many readers of the posts at issue are thought to have been members of the plaintiff or related persons, the source of the published Photographs at Issue (Quotation) could readily be understood by referring to the content of the post and the preceding and following posts, and the manner of use conforms to a method that is reasonable under social conventions.

1. Within a Scope Justified by the Purpose of the Quotation

Each post at issue consisted of the text of the post and a photograph taken to the extent that the article and the Photographs at Issue (Quotation) on a page of the Seikyo Shimbun were captured in a single smartphone photograph. The purpose of each post at issue is found to have been to criticize the plaintiff’s activities and the like as perceived by the defendant through the article text or the Photographs at Issue (Quotation) in Seikyo Shimbun, the plaintiff’s organ newspaper, and no unreasonable or inappropriate aspect is found in that purpose. Each of the Photographs at Issue (Quotation) is found to be related to the purpose of the quotation. It cannot be found that including the Photographs at Issue (Quotation) appearing on the newspaper pages, to the extent captured in a single smartphone photograph, was excessive in scope as quotations for the purpose of enabling the criticism in the posts at issue to be understood. The scope and quantity of the works used through the quotation at issue must therefore be regarded as reasonable. Further, there is no finding that the defendant obtained any commercial benefit from the posts at issue, and there is no evidence sufficient to find that allowing quotation of the Photographs at Issue (Quotation) would cause the plaintiff any economic disadvantage, such as a reduction in circulation.

1. Conclusion

Accordingly, the quotation defense (Article 32(1) of the Copyright Act) applies to the Photographs at Issue (Quotation) published in the posts at issue.

 

2. Defense of Exploitation of Incidentally Included Works (Article 30-2(1) of the Copyright Act)

With respect to the defense of exploitation of incidentally included works concerning the Photographs at Issue (Incidental) (Photographs 10 and 27-29 at issue), in light of the absence of transitional provisions, the history and purpose of the statutory amendment, and other matters, it is appropriate to construe Article 30-2 of the Copyright Act, as amended by the Reiwa 2 Amendment Act, as also applying to acts performed before the Reiwa 2 Amendment Act entered into force.

Based on the proportion occupied by the Photographs at Issue (Incidental) in the photographs of the newspaper pages (the creation/transmission materials) published in the posts at issue, the Photographs at Issue (Incidental) are found to be minor constituent portions (incidentally included works). Further, the defendant had no purpose of obtaining a benefit through their use; because they were adjacent to the newspaper articles that were the subject of criticism, it was difficult to photograph them separately; and they played no particular role in the creation/transmission materials. In light of these and other circumstances, they can be said to have been used, as incidentally included works and within a justified scope, in connection with the reproduction/transmission acts.

Accordingly, the defense of exploitation of incidentally included works applies to the Photographs at Issue (Incidental).

 

 

[Comment]

 

1. Regarding Summary of the Judgment 1(1)

The Supreme Court Judgment of March 28, Showa 55, Minshu Vol. 34, No. 3, p. 244 [Mad Amano Case], held that requirements (i) and (ii) below were necessary for the quotation defense under the former Copyright Act.

(i) The quoted work must be clearly distinguishable from the work quoting it.

(ii) The quoted work must be subordinate to the work quoting it.

By contrast, Article 32(1) of the current Copyright Act provides as follows concerning the quotation defense:

“It is permissible to quote and thereby exploit a work that has been made public. In such a case, the quotation must be consistent with fair practices and must be made within a scope that is justified for the purpose of news reporting, critique, study, or other purposes of quotation.”

Further, with respect to the obligation to indicate the source of a quoted work, Article 48(1) of the current Copyright Act requires the source of the quoted work to be indicated in a manner and to the extent considered reasonable.
[Supplement] The original article begins the preceding sentence with “Further, with respect to the quotation defense,” instead. However, this obligation is distinguished from the requirements for lawful quotation under Article 32(1) of the Copyright Act. This judgment states that “indication of the source is not made a direct requirement for lawful quotation” and considers the fact that the source is made clear as one factor of the fair practices or of a method or the like that is reasonable under social conventions (judgment, p. 19, lines 6-9 and 12-15).

It is generally considered that the Supreme Court judgment in the Mad Amano Case, which construed the former Copyright Act, may also be applied to the construction of Article 32(1) of the current Copyright Act. Accordingly, concerning the relationship between requirements (i) and (ii) above and the quotation defense under Article 32(1) of the current Copyright Act, there are many divided judicial decisions and academic views, including the following:

1. A) Requirements (i) and (ii) above are necessary and sufficient requirements (Tokyo High Court Judgment of October 17, Showa 60, Mutai-shu Vol. 17, No. 3, p. 462 [Tsuguharu Foujita Case], among others).
2. B) Requirements (i) and (ii) above may be important factors for consideration, but other important factors may also exist, and the determination is made through comprehensive consideration according to the case (Intellectual Property High Court Judgment of October 13, Heisei 22, Hanrei Jiho No. 2092, p. 135 [Painting Appraisal Certificate Case], among others).
3. C) Requirements (i) and (ii) above are necessary requirements, and other requirements also exist. (Intellectual Property High Court Judgment of March 29, Reiwa 4 (Reiwa 3 (Ne) No. 10060), Courts Website [KuToo Case], among others.)

There are also many divided judicial decisions and academic views concerning the relationship between requirements (i) and (ii) above and each of the terms “quotation,” “consistent with fair practices,” and “within a scope justified by the purpose” in Article 32(1) of the current Copyright Act, including the following:

1. a) Requirements (i) and (ii) above may relate to each of the phrases “quotation,” “consistent with fair practices,” and “within a scope justified by the purpose” (Tokyo High Court Judgment of October 17, Showa 60, Mutai-shu Vol. 17, No. 3, p. 462 [Tsuguharu Foujita Case]; Intellectual Property High Court Judgment of October 13, Heisei 22, Hanrei Jiho No. 2092, p. 135 [Painting Appraisal Certificate Case], among others).
2. b) Requirements (i) and (ii) above relate to the term “quotation” (Intellectual Property High Court Judgment of March 29, Reiwa 4 (Reiwa 3 (Ne) No. 10060), Courts Website [KuToo Case]).
3. c) Requirement (i) above relates to the term “quotation,” and requirement (ii) above relates to the term “within a scope justified by the purpose” (Tamotsu Shoji, “The Quotation Defense,” in Makiko Takabe (ed.), Intellectual Property Litigation II: Latest Court Practice Series 11 (Seirin Shoin, 2018), pp. 713-714).

The Intellectual Property High Court Judgment of October 13, Heisei 22, Hanrei Jiho No. 2092, p. 135 [Painting Appraisal Certificate Case], held that the material on the quoting side need not itself be a work.

Against this background of judicial decisions and academic views, Summary of the Judgment 1(1) is understood to have basically adopted C) and b) above.

 

2. Regarding Summary of the Judgment 1(2)

With respect to whether the quotation defense applies, Summary of the Judgment 1(2) carefully applies to the facts of this case not only the requirements for constituting quotation—clear distinguishability and the principal-subordinate relationship—but also the other requirements of consistency with fair practices and being within a scope justified by the purpose of quotation, under the specific constructions of those requirements stated in Summary of the Judgment 1(1), and is useful in practice.

 

3. Regarding Summary of the Judgment 2

Whereas the court of first instance upheld the quotation defense with respect to all of the photographs at issue, the appellate court upheld the quotation defense, as stated in Summary of the Judgment 1(2), only with respect to the Photographs at Issue (Quotation) (Photographs 1-9, 11-26, and 30-37 at issue), and upheld the defense of exploitation of incidentally included works, as stated in Summary of the Judgment 2, with respect to the Photographs at Issue (Incidental) (Photographs 10 and 27-29 at issue). On this point, it is inferred that the appellate court considered it difficult to uphold the quotation defense with respect to the Photographs at Issue (Incidental) (Photographs 10 and 27-29 at issue) because they were not the subject of criticism in the text of the defendant’s posts and were unrelated to that text.

[Supplement] According to the judgment, the classification into the Photographs at Issue (Quotation) and the Photographs at Issue (Incidental) depends on which defense the defendant asserted (judgment, p. 2, lines 7-13; p. 12, lines 14-15), and the judgment did not decide whether the quotation defense would be established for the Photographs at Issue (Incidental). The finding that they were unrelated to the text of the posts was made in determining the defense of exploitation of incidentally included works (judgment, p. 39, lines 9-10).

 

 

[Keywords] Soka Gakkai, Seikyo Shimbun, Quotation Defense, Clear Distinguishability, Principal-Subordinate Relationship, Defense of Exploitation of Incidentally Included Works

* This article provides general information and does not include legal advice.
Author: Kei Iida, Attorney-at-Law and Patent Attorney (Daini Tokyo Bar Association)
Contact regarding this matter: k_iida☆nakapat.gr.jp (please replace ☆ with @)

WORD: Articles_Published_in_February_2026

文責

• 

  Hideki TAKAISHI

  • Attorney at Law and Patent Attorney
    Admitted to the California Bar
    Passed the US Patent Agent Exam
  • Legal