Legal Update (Items Posted in January 2026)

Scope: The collection supplied as attorney Hideki Takaishi’s January 2026 articles (Nakamura & Partners), including coauthored articles

Number of items included: 34

List page: https://www.nakapat.gr.jp/ja/legal_updates_jp/

All 34 articles, figures, and the English figure descriptions are included. Commentary in the articles should be distinguished from the courts’ holdings.

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

This month’s legal update addresses 34 court decisions and commentaries spanning a broad range of intellectual-property practice, including chains of divisional applications, new grounds for invalidation in appellate proceedings, scientific errors in specifications, claim construction, international jurisdiction, standard-essential patents, and employee inventions. The important decisions and practical points are as follows.

1. The [Vehicle Guidance System] Case, Which Shakes the Chain of Divisional Applications <Presiding Judge Honda>

The Intellectual Property High Court judgment in Reiwa 6 (Gyo-Ke) No. 10086, the [Vehicle Guidance System] case, focused on the configurations that had been indispensable in the fourth-generation specification as originally filed: returning, through a branch lane, a vehicle that could not use ETC, and determining the vehicle subject to return based on whether communication was possible. The fifth-generation divisional application, which did not limit these configurations and also encompassed guidance based on any criterion or method, was held to introduce new technical matter. As a result, retroactive effect of the filing date under Article 44, paragraph 2 of the Patent Act was denied, and the patent at issue, which was of the seventh generation, lacked novelty over the publication of the original application. The Intellectual Property High Court judgment of the same date in Reiwa 7 (Ne) No. 10035, the [Vehicle Guidance System] case <Presiding Judge Honda>, likewise limited “entrance/exit for ordinary vehicles” and “guidance means” in accordance with the specification and found non-infringement. At each generation of a divisional-application tree, the deletion of essential configurations and unrestricted generalization should be examined.

2. An Untimely Allegation Not Saved Even by a Statement of Reasons for Appeal — [Women’s Garment] Case <Presiding Judge Nakadaira>

The Intellectual Property High Court judgment in Reiwa 6 (Ne) No. 10010, the [Women’s Garment] case, held that a ground for invalidation based on U.S. patent documents submitted for the first time in the statement of reasons for appeal was untimely because it could have been asserted in the court of first instance and there were no circumstances making submission difficult. Nevertheless, because the appellee made a rebuttal in the alternative and the appellant made no further rebuttal, the court also ruled on the invalidity issue, finding that the allegation could not be said to delay completion of the litigation. Even an allegation made at the initial stage of an appeal is not necessarily permitted, and arguments in the alternative must also be fully presented in the court of first instance. In addition, the [Smoking-Article Cartridge] case <Presiding Judge Shibuya> denied an interest in obtaining a declaratory judgment of nonexistence after the claim for damages had been waived, while the [Video Viewing Device] case <Presiding Judge Takemiya> held that an infringement report to Amazon constituted an act of unfair competition on the premise of non-infringement. Attention is required both to the timing of submission of claims and defenses and to the manner of exercising rights.

3. Scientific Accuracy of the Specification and the Limits of Supplementation by Common General Technical Knowledge

The Tokyo District Court judgment in Reiwa 5 (Wa) No. 70114, the [Brake Control Device for a Motorcycle] case <Presiding Judge Shibata>, and the appellate judgment <Presiding Judge Honda> held that the only formula for deriving corrected lateral G was a formula that subtracted physical quantities having different dimensions and therefore had no meaning in physics. Although the existence of an error could be understood, the method of correction was not uniquely determined and inconsistencies with other descriptions would also arise; therefore, the assertion that the description contained an error was rejected and a violation of the support requirement was found. By contrast, the Intellectual Property High Court judgment in Reiwa 5 (Gyo-Ke) No. 10147, the [RNA-Dependent Targeted DNA Modification] case <Presiding Judge Hibiki Shimizu>, found substantive disclosure based on the first application documents as a whole and the common general technical knowledge as of the filing date, and upheld the benefit of priority. Common general technical knowledge may supplement a disclosure, but it does not reconstruct an error whose content cannot be uniquely determined. Pre-filing verification of formulas, units, and mechanisms is important.

4. Precisely Reading Claim Language, Flows Between Devices, and the Essence of the Invention

The Intellectual Property High Court judgment in Reiwa 6 (Ne) No. 10012, the [R Badge, Receiving Device] case <Presiding Judge Hibiki Shimizu>, excluded from the determination of the gist of the invention a limitation concerning the counterpart mobile telephone because it did not specify the structure or function of the receiving device itself, and denied inventive step. On the other hand, the interlocutory judgment of the Intellectual Property High Court in Reiwa 6 (Ne) No. 10034, the [Elasto-Plastic Hysteretic Damper] case <Presiding Judge Honda>, did not limit “input” to a horizontal force in a specified direction and found the cause of the damages claim well founded for some products. By contrast, non-infringement was found in the [Remotely Controlled Unmanned Boat] case for lack of a configuration in which one control device determines two conditions; in the [Reservation Management Device] case for lack of direct transmission from the server to the image printing device; in the [Shopping Payment System] case for lack of a camera that acquires images; and in the [Game System and Game Program] case for lack of a configuration that separately stores two types of quantities. Mapping the processing order, information path, and even operations and effects is indispensable to claim drafting and proof of infringement.

5. Cross-Border Enforcement, Standard-Essential Patents, and Employee Inventions

The Osaka District Court judgment in Reiwa 6 (Wa) No. 2705, the [Angle-Adjustable Hinge] case <Presiding Judge Takemiya>, denied Japanese jurisdiction over claims for registration of transfer of German and Chinese patent rights on the ground that the courts of the countries of registration had exclusive jurisdiction. The Tokyo District Court judgment in Reiwa 5 (Wa) No. 70022, the “LEGAL FORCE” case <Presiding Judge Takahashi>, likewise dismissed claims for trademark infringement and other relief on the ground that the website did not target consumers in Japan, while recognizing jurisdiction concerning a Japanese domain name. The Osaka District Court judgment in Reiwa 5 (Wa) No. 7855, the [Method for Mapping a Physical Hybrid Automatic Repeat Request Indicator Channel] case <Presiding Judge Matsuami>, held that Google had indicated willingness to take a license on FRAND terms, had presented counterproposals, and had negotiated sincerely, and therefore held that the injunction claim based on an SEP constituted an abuse of rights. The [Spindle Motor] case denied joint inventorship for lack of contribution to the core of the invention, and the [Article Conveying Facility] case recognized the reasonableness of employee-invention regulations in light of consultation with the labor union, dissemination, solicitation of opinions, and the evaluation system.

Also important are the [Pharmaceutical Composition/Registration of Patent Term Extension] case, which did not regard revision of a package insert as a disposition eligible for patent-term extension; the [Antipruritic Agent] case, which treated the consumption-tax equivalent differently under paragraphs 1 and 3 of Article 102 of the Patent Act; and the [Patent Royalties Relating to a Fulvic Acid Production Method] case, which did not derive a broad exemption from an abstract cautionary clause. The decisions in this issue should be used to review applications, contracts, litigation, and internal corporate systems.

Three-Line Summaries of All Articles

Category	Article Title and Three-Line Summary
Patent	Reiwa 6 (Gyo-Ko) No. 10007 [Pharmaceutical Composition/Registration of Patent Term Extension] <Presiding Judge Nakadaira> ① The issue was whether revision of a pharmaceutical product’s package insert constituted a “disposition” providing a basis for registration of a patent-term extension. ② It was held to be outside the scope of extension registration because the administration rate was not an approved matter, the PMDA’s instruction was merely administrative guidance, and a notification of revision of the package insert was not a disposition changing rights or obligations. ③ This case shows that the dispositions under Article 2, item 2 of the Enforcement Order of the Patent Act are exhaustively enumerated and that a package-insert revision not expressly provided for cannot be extended by analogy to the subject matter of extension registration.
Patent	Reiwa 6 (Ne) No. 10076 [Retractable Temporary Protective Fence] <Presiding Judge Nakadaira> ① The issue was whether the accused product’s “square tube,” a square pipe-shaped post, satisfied or was equivalent to the patented invention’s “pivoting plate-shaped member.” ② Because the configuration of making the member thin as a “plate” and housing it in the web portion of H-shaped steel was the essential part of the invention, literal infringement was denied and Requirement 1 of the doctrine of equivalents was also held not satisfied. ③ This case identified, from the problem and effects stated in the specification, a technical idea not found in the prior art, and determined the essential part for Requirement 1 of the doctrine of equivalents.
Patent	Reiwa 6 (Gyo-Ke) No. 10024 [X-Ray Inspection Device] <Presiding Judge Nakadaira> ① Of the two cooling circulation systems described in Cited Document 2, the issue was whether the decision properly extracted only the sensor section’s “cold-air circulation system” and recognized it as a technical matter. ② Because the cold-air circulation system for the sensor section and the liquid-refrigerant circulation system for the signal-processing circuit section could be understood as separate technical ideas, the decision was held not to have erred in recognizing only the cold-air circulation system. ③ This case shows that where multiple configurations in a cited document can be understood as different technical ideas, only one may be objectively and specifically extracted to identify the cited invention.
Patent	May 27, 2025; Reiwa 3 (Ne) No. 10037 [Antipruritic Agent] <Presiding Judge Hibiki Shimizu> ① In a case in which the court found infringement of the extended patent right, modified the first-instance judgment, and awarded a total of more than JPY 21.7 billion, the issue was whether the consumption-tax equivalent could be added when calculating damages under paragraphs 1 and 3 of Article 102 of the Patent Act. ② Lost profits under paragraph 1 were not consideration for a transfer of assets, etc., and consumption tax could not be added, while the reasonable-royalty amount under paragraph 3 could be regarded as such consideration and the consumption-tax equivalent could be added. ③ This case shows that the consumption-tax treatment of patent-infringement damages differs between lost profits under paragraph 1 and a reasonable royalty under paragraph 3.
Copyright / Trademark	[Copyrighted Works and Trademark Rights] Tokyo District Court, Reiwa 3 (Wa) No. 32244 <Presiding Judge Nakashima> ① The defendant, a skateboarder and artist, disputed with the plaintiff, its licensee, ownership of copyright and registration of transfer of trademark rights. ② Copyright in album cover art and the like belonged to the defendant; the plaintiffs had obligations to return the trademark rights and cooperate in their return; and because use premised on the return obligation lacked an intention to possess for oneself, acquisitive prescription did not arise. ③ This case distinguished, in accordance with the contractual language, transfer of copyright from the grant of an exclusive right of use, and shows that a trademark-return clause also affects whether acquisitive prescription arises.
Patent	Osaka District Court, Reiwa 6 (Wa) No. 2705 [Angle-Adjustable Hinge] <Presiding Judge Takemiya> ① The issue was the lawfulness of an action seeking procedures in a Japanese court for registration of transfer of German and Chinese patent rights. ② Japanese jurisdiction over the transfer-registration claim was denied because of the exclusive jurisdiction of the country of registration. Jurisdiction by appearance was recognized for the alternative claim for a declaration of ownership, but that claim was dismissed for lack of a legal interest in such a declaration. ③ This case shows that when disputing ownership of a foreign patent, it is necessary to consider the exclusive jurisdiction of the country of registration and whether a Japanese judgment would have legal effect there.
Patent	Osaka District Court, Reiwa 5 (Wa) No. 10970 [Video Viewing Device] <Presiding Judge Takemiya> ① The issues were whether the accused device had the “compression” of limitations F and G and whether an infringement report to Amazon constituted an act of unfair competition. ② The limitations were not satisfied because “compression” required temporal shortening of vehicle-travel information so that it fit within a period shorter than the original period, and the damages claim concerning the infringement report was partially granted. ③ This case shows that a patent-infringement report to a sales platform may give rise to damages liability as an act of unfair competition where the targeted product does not satisfy the patented invention.
Patent	Reiwa 7 (Ne) No. 10008 [Method for Deodorizing a Room in Which a Deceased Person and/or an Animal Has Been Left] <Presiding Judge Nakadaira> ① The issue was whether limitation E was satisfied in special cleaning, namely that filth remained at a place exposed by dismantling work and that place was covered with paint. ② The limitation was held not satisfied because an estimate merely predicted the need for coating, and cleaning agents and coating could also be used preventively, so the presence of remaining filth could not be inferred. ③ This case shows that proof of satisfaction requires objective evidence that filth remained at a place exposed after dismantling, not merely an estimate for the work or the fact that chemicals were used.
Patent	Reiwa 6 (Ne) No. 10084 [Remotely Controlled Unmanned Boat] <Presiding Judge Nakadaira> ① The issue was whether the “first control device” in limitation J required a mechanism capable of determining both automatic-return activation conditions: signal loss and low remaining power. ② The flowchart in Figure 8 of the specification and other descriptions required one mechanism that determined both conditions, rather than two inventions separately having each condition; literal infringement was denied, as were Requirements 1 and 5 of the doctrine of equivalents. ③ This case shows that the relationship among multiple conditions is construed not only from claim language but also from flowcharts in the specification, and a configuration separately providing each condition may fail to satisfy the claim.
Patent	Reiwa 6 (Ne) No. 10078 [Porous Air-Permeable Bag Containing Feed for Mites] <Presiding Judge Honda> ① The issue was whether the accused product, in which mite attractant was sandwiched between two nonwoven sheets, gauze, or the like, satisfied the “porous air-permeable bag” in limitation A-3. ② A “bag” required an internal space and an opening that could be closed, retaining its contents and preventing dispersion. The accused product lacked that structure. Limitation A-1 concerning “impregnation” and the first and second requirements for equivalence were also found not satisfied. ③ This case shows that, in determining whether a “bag” limitation is satisfied, not only external form but also the internal space and opening and the function of retaining contents internally and preventing dispersion is a key matter of proof.
Patent	Reiwa 6 (Ne) No. 10012 [R Badge, Receiving Device] <Presiding Judge Hibiki Shimizu> ① The issue was whether the matter concerning the mobile telephone “according to claim 4,” cited in a subcombination claim for a receiving device, should be treated as a matter specifying the receiving-device invention. ② Because the matter had no meaning for specifying the receiving device, it was excluded from the determination of the gist of the invention, and inventive step was denied because applying well-known techniques to the Exhibit Otsu 52 invention would have been easy. ③ This case shows that a description that specifies only the counterpart device of a subcombination and does not specify the structure or function of the claimed device may be excluded from determination of the gist of the invention.
Patent	Reiwa 6 (Gyo-Ke) No. 10042 [Melting Furnace] <Presiding Judge Masuda> ① The issue was whether there was motivation to replace the regenerative burner of the primary-reference invention with a well-known flat-flame burner and further add a heat exchanger. ② Inventive step was affirmed because, despite the existence of the well-known technique, the primary-reference invention deliberately adopted another burner for energy efficiency and other reasons and already included a heat exchanger for waste-heat recovery, so there was no motivation for the replacement or addition. ③ This case shows that even a well-known technique may lack motivation for application where the primary-reference invention intentionally adopts a different configuration and already solves the same problem.
Patent	[Patent ★★★] It was held that, because the fifth-generation divisional application violated the divisional requirements, the seventh-generation patent had a ground for invalidation based on lack of novelty over the publication of the original application. — Intellectual Property High Court, Reiwa 6 (Gyo-Ke) No. 10086 [Vehicle Guidance System] <Presiding Judge Honda> — ① The issue was whether the fifth-generation divisional application satisfied the divisional requirements after removing limitations concerning the cases in which vehicles were returned and the determination method, which the fourth-generation specification as originally filed had treated as indispensable to solving the problem. ② The unrestricted generalization introduced new technical matter and therefore violated the divisional requirements; the seventh-generation application at issue likewise did not receive retroactive effect to the original filing date and lacked novelty over the publication of the original application. ③ This case shows that a violation of the divisional requirements in the middle of a divisional chain can cause subsequent applications to lose the benefit of retroactivity to the original filing date, so it is necessary to confirm at each generation that the invention remains within the disclosure of the immediately preceding specification and drawings.
Patent	[Patent ★★] A case in which, on appeal in a patent-infringement action, a new ground for invalidation asserted in the statement of reasons for appeal was held untimely because it could have been asserted in the court of first instance — Intellectual Property High Court, Reiwa 6 (Ne) No. 10010 [Women’s Garment] <Presiding Judge Nakadaira> — (First Instance: Tokyo District Court, Reiwa 3 (Wa) No. 18262 <Presiding Judge Kokubu>) ① The issue was whether first asserting in the statement of reasons for appeal a new ground for invalidation based on Exhibits Otsu 31 through 33, which could have been submitted in the first instance, constituted an untimely allegation or defense. ② It was held that the late submission involved gross negligence and ordinarily would have had to be dismissed, but because the appellee rebutted it and the oral argument concluded without a further rebuttal, there was no litigation delay; the court therefore ruled on the merits and rejected the ground for invalidation. ③ This case shows that even a ground for invalidation submitted in a statement of reasons for appeal may be deemed untimely if it could have been asserted in the first instance, and therefore invalidity materials and defenses should be submitted as fully as possible at the first-instance stage.
Patent	[Patent ★] A case holding that the configuration and the like of the counterpart of a subcombination were not matters specifying the invention. ⇒ No inventive step — Intellectual Property High Court, July 10, 2025, Reiwa 6 (Ne) No. 10012 [R Badge, Receiving Device] <Presiding Judge Hibiki Shimizu> — ① The issue was the standard for recognizing a feature of the counterpart device stated in a subcombination claim as a matter specifying the claimed device’s invention. ② Matters that specify only the counterpart device and do not specify the structure, function, or the like of the claimed device were excluded from determination of the gist of the invention, and internal circumstances of the mobile telephone and the like were found to produce no difference on the receiving-device side. ③ To make a limitation on the counterpart device a matter specifying the invention, it is useful to reflect corresponding signal processing, physical shape, timing control, or the like in the claim as a structure or function of the claimed device.
Patent	[Patent ★] A case in which the description in the detailed description of the invention concerning the method for deriving a parameter in a claim was erroneous, the assertion that the description contained an error was rejected, and the support requirement was denied — Tokyo District Court, Reiwa 5 (Wa) No. 70114 [Brake Control Device for a Motorcycle] <Presiding Judge Shibata> — (Same holding on appeal: Intellectual Property High Court, Reiwa 6 (Ne) No. 10038 <Presiding Judge Honda>) ① The issues were whether the formula in the specification for deriving corrected lateral G was physically valid and whether the formula could be corrected as an unambiguous error in the description so that the support requirement was satisfied. ② The formula subtracting velocity from acceleration had inconsistent dimensions and no meaning in physics; because there were possible solutions other than the correction asserted by the plaintiff and inconsistencies with other descriptions would arise, it was not found to be an error in the description, and the support requirement was denied. ③ This case shows that calculations and methods for deriving parameters forming the core of problem-solving must be described in the specification with physical consistency and so that a person skilled in the art can understand them unambiguously.
Patent	Reiwa 7 (Ne) No. 10001 “Patent Royalties Relating to a Fulvic Acid Production Method” <Presiding Judge Honda> ① Concerning an agreement intended to transfer an exclusive patent license and sublicense a non-exclusive license, the issues were the validity of termination for breach due to lack of licensing authority and the exemptive effect of Article 7 of the agreement. ② The article was merely a cautionary clause recognizing the possibility that registration might be unavailable in the future, and was not an exemption for a situation in which the licensing obligation could not be performed from the time of contracting; accordingly, the appellee’s termination was held valid. ③ This case shows the distinction between a cautionary clause indicating a future risk of failure to register and an exemption from inability to perform the principal obligation existing from the time of contracting.
Patent	Reiwa 5 (Gyo-Ke) No. 10147 [RNA-Dependent Targeted DNA Modification] <Presiding Judge Hibiki Shimizu> ① The issue was whether the first application documents sufficiently disclosed a PAM sequence, NLS and codon optimization, and application to eukaryotic cells, so that the invention at issue could enjoy the benefit of the priority claim. ② The court found that the existence and role of PAM sequences were common general technical knowledge, that NLS and codon optimization were applicable well-known techniques, and that application to eukaryotic cells did not require undue experimentation. It therefore recognized substantive disclosure and the benefit of priority. ③ This case shows that disclosure serving as the basis for priority is judged not only from the wording of the first application documents but also in light of the common general technical knowledge at the filing date and whether undue experimentation was required.
Patent	Tokyo District Court, Reiwa 7 (Wa) No. 70003 [Smoking-Article Cartridge] <Presiding Judge Shibuya> ① The issue was whether, after the defendant waived its claim for damages following the filing of an action for a declaration that the claim did not exist, there remained an interest in immediate determination while customs procedures and the like were still pending. ② The court denied an interest in immediate determination because there was no actual dispute over nonexistence of the damages claim and a declaratory judgment would not prevent assertion of an injunction claim or the like. ③ This case shows that after a rights holder conclusively waives a claim for damages, a party seeking to dispute an injunction claim must directly seek a declaration that the injunction claim does not exist.
Trademark	[Trademark/Domain] Tokyo District Court, Reiwa 5 (Wa) No. 70022, “Legal Force” Case <Presiding Judge Takahashi> ① The issues were Japan’s international jurisdiction and infringement and the like concerning use of the “LEGAL FORCE” trademark on an English-language website by a U.S. corporation and use of a Japanese domain name. ② The court denied jurisdiction over the trademark-related claims because the website did not target consumers in Japan; although it recognized jurisdiction over the .JP domain, it denied an improper purpose and dismissed the claims. ③ This case shows that, for international jurisdiction over web services, the reality of targeting consumers in Japan is important, while for a domain name the location of the administering organization and the purposes of acquisition and use are separately considered.
Patent	Interlocutory Judgment; Reiwa 6 (Ne) No. 10034 [Elasto-Plastic Hysteretic Damper] <Presiding Judge Honda> ① For an elasto-plastic hysteretic damper, the issues were the direction of “input” in limitation G and whether the “pair of plates” in limitation D was satisfied. ② The Intellectual Property High Court did not limit “input” to a specified direction, held that the two connecting plates or stiffeners of Σ-shaped Dampers 5 and 6 were a “pair of plates,” and held that the cause of the damages claim was well founded with respect to some accused products. ③ This case did not add a directional limitation to “input” where the claims and specification had none, and determined whether there was a “pair” based on the shape, arrangement, and connection relationships of the members.
Patent	Tokyo District Court, Reiwa 6 (Wa) No. 70283 [Reservation Management Device] <Presiding Judge Sugiura> ① The issue was whether “transmission” from the reservation management device to the image printing device included the accused system, which printed image data through a pharmacy terminal. ② The court denied satisfaction by the accused system because neither the claims nor the specification disclosed or suggested a configuration in which the reservation management device transmitted through another device. ③ This case shows that satisfaction of a transmission-path limitation should be determined, based on the claims and specification, by distinguishing direct communication between a server and printer from communication through a terminal.
Patent	Osaka District Court, Reiwa 6 (Wa) No. 4500 [Shopping Payment System] <Presiding Judge Matsuami> ① For a shopping payment system, the issues were whether a barcode scanner was a “camera,” whether it was “associated” with a customer terminal, and whether the “abnormality” detection limitations were satisfied. ② The court found non-infringement because a scanner acquiring a code was not a camera acquiring an image, correspondence with a membership number was not association with a customer terminal, and detection based on a weight change was not an abnormality based on success or failure of image identification. ③ This case shows the need to individually confirm whether the information acquired, the object with which a correspondence relationship is established, and the trigger for abnormality detection match the technical configurations defined in the claim.
Patent	Reiwa 6 (Ne) No. 10068 [Leak-Preventing Sealing Material] <Presiding Judge Hibiki Shimizu> ① The issues were the state in which “diameter” was measured and whether an accused product installed by a third party was an article used exclusively for production of a product infringing the patent at issue. ② The Intellectual Property High Court construed “diameter” as thickness in the original-yarn state and found non-infringement, and denied indirect infringement because there was no proof that Canon installed the product at the prescribed angle or that there was no other economic, commercial, or practical use. ③ This case shows that the measurement state of a term is determined from the specification and common general technical knowledge, and that application of Article 101, item 1 of the Patent Act requires proof of the prescribed actual use and absence of other uses.
Patent	Reiwa 7 (Ne) No. 10005 [Jig for a Lifeline Post] <Presiding Judge Masuda> ① The issues were whether the accused product’s hook was a “bent portion” formed by bending the end of a rectangular plate into a U shape and whether infringement under the doctrine of equivalents was established. ② The Intellectual Property High Court denied literal infringement and infringement under the doctrine of equivalents because the hook was not formed by bending the bottom plate into a U shape and the essential part also differed, and affirmed the first-instance judgment finding notification and dissemination of false facts. ③ This case shows that where not only a member’s shape but also its method of formation is specified in a limitation and relates to the essential part, both literal infringement and infringement under the doctrine of equivalents may be denied.
Patent	Tokyo District Court, Reiwa 6 (Wa) No. 70128 [Box-Shaped Vessel] <Presiding Judge Nakashima> ① The issue was whether maintenance involving replacement of a pH sensor with a one-year service life and other components constituted “production” under Article 2, paragraph 3, item 1 of the Patent Act. ② The court held that the pH sensor was a consumable, was not an essential part of the invention, and had extremely slight economic value compared with the box-shaped vessel as a whole; accordingly, replacement did not destroy the product’s identity and did not constitute “production.” ③ This case shows that whether replacement constitutes “production” is determined from the service life of the replacement part, its relationship to the essential part, its economic value, and the identity of the product as a whole, and that only the act of installation should not be isolated.
Patent	Reiwa 7 (Ne) No. 10004 [Wireless Scuff Plate] <Presiding Judge Nakadaira> ① The issues were the meaning of “a control module that adjustably switches the backlight module on and off with respect to the time interval between the on and off states” and whether the appellee’s products satisfied that limitation. ② The Intellectual Property High Court construed “adjustable” to mean actively varying the light-emission duration, and found non-infringement because the products did not include a control module that variably adjusted it independently of the timing of magnetic detection. ③ This case shows that the functional language “adjustable” is judged not merely by whether switching on and off is possible, but by whether there is a configuration capable of variably controlling the target time.
Patent	Tokyo District Court, Reiwa 6 (Wa) No. 70463 [Connecting Fixture for Faucet Elbows] <Presiding Judge Sugiura> ① The issues were claims for royalties, etc. under a joint-application agreement concerning a patent right co-owned with the defendant, and contractual claims and tort liability concerning a patent application or application invention for a connecting fixture for faucet elbows that had received a decision of rejection. ② The court denied the claims because there were no circumstances showing establishment of a right, the invention was not found to be within the agreement at issue, and the defendant’s involvement in the application process or working of the invention was not found. ③ This case shows that imposing contractual or tort liability based on a rejected application invention requires support for establishment of a right, inclusion within the contractual subject matter, and the other party’s specific involvement.
Design	[Design] Osaka District Court, Reiwa 5 (Wa) No. 2668, “Vegetated Earth-Retaining Sandbag” Case <Presiding Judge Matsuami> ① The issues were identification and similarity of a design for an earth-retaining vegetated sandbag including the natural object “grass,” and infringement under the doctrine of equivalents concerning the configuration fixing the vegetation sheet. ② After specifying the shape of the grass within the range of regularity and reproducibility, the court held that the accused sandbag was dissimilar because, in particular, the manner in which the grass grew differed greatly, and it also denied infringement under the doctrine of equivalents because the fixing configuration was an essential part of the invention. ③ This case shows that similarity of a design including a natural object may be judged as a reproducible shape, and that a distinctive fixing configuration producing operations and effects may be an essential part under the doctrine of equivalents.
Patent	Tokyo District Court, Reiwa 6 (Wa) No. 70223 [Game System and Game Program] <Presiding Judge Nakashima> ① The issues were quantity management and priority consumption of purchased items and in-game acquired items in the game system, and satisfaction of “cumulative number acquired” in the game program. ② The court denied satisfaction of each patent because the accused system did not distinguish the free portion granted upon purchase from the portion acquired in the game and had no priority-consumption function, and because the relevant value also included the number of skill-ticket uses. It also found Invention 2 at issue to lack inventive step. ③ This case shows that whether quantities are managed in aggregate or separately, and whether another element is mixed into the target value, affects satisfaction of a claim specifying a data configuration.
Patent	Osaka District Court, Reiwa 5 (Wa) No. 7855 [Method for Mapping a Physical Hybrid Automatic Repeat Request Indicator Channel] <Presiding Judge Matsuami> ① For an injunction based on a standard-essential patent, the issue was whether Company G’s conduct in license negotiations constituted bad-faith holdout. ② The court held that the time required for NDA negotiations and review of numerous claim charts was unavoidable and that Company G had sincerely negotiated by presenting a reasoned counterproposal and revised proposals; it therefore dismissed the injunction claim as an abuse of rights. ③ This case shows that sincerity in FRAND negotiations is judged not only by the length of the negotiation period but also by the need for confidentiality and patent review, responses to the basis for the royalty rate, and the reasonableness of counterproposals.
Patent	Reiwa 7 (Ne) No. 10035 [Vehicle Guidance System] <Presiding Judge Honda> (PXZ v. East Nippon Expressway Company Limited) ① The issues were the scope of “entrance/exit for ordinary vehicles” and whether there was a “guidance means” for returning a vehicle for which ETC toll collection was impossible to a prescribed route. ② The Intellectual Property High Court found non-infringement because an entrance/exit for ordinary vehicles at a separate adjacent interchange was not included, and a driver’s voluntary U-turn without a sign or the like was not guidance by the facility. ③ This case held that the “entrance/exit for ordinary vehicles” meant an entrance/exit at the same facility where the vehicle guidance system was installed, did not include an entrance/exit at another adjacent interchange, and that a driver’s voluntary U-turn without a sign or the like was not “guidance” by the facility.
Patent	Reiwa 7 (Ne) No. 10025 [Spindle Motor] <Presiding Judge Nakadaira> ⇒ Claim for Employee-Invention Remuneration ① The issue was whether the appellant could claim employee-invention remuneration as a joint inventor of patented inventions in Japan, the United States, and China concerning a spindle motor. ② The Intellectual Property High Court denied joint inventorship and dismissed the claim because the appellant’s explanatory document did not address the specific configuration of the communication hole forming the core of the Japanese invention, and the through-holes of the U.S. and Chinese inventions differed from the appellant’s idea of a groove. ③ This case shows that proof of joint inventorship requires materials showing involvement in the specific configuration forming the core of the invention, and that an explanatory document describing a different problem and solution is insufficient.
Patent	Osaka District Court, Reiwa 6 (Wa) No. 7193 [Article Conveying Facility] <Presiding Judge Matsuami> ⇒ Claim for Employee-Invention Remuneration Dismissed ① The issues were whether the establishment, operation, dissemination, and content of internal employee-invention rules were unreasonable under Article 35, paragraph 5 of the Patent Act and whether a reasonable benefit could be claimed under paragraph 7 of that Article. ② In light of consultation with the labor union, solicitation of opinions from all employees, continuous access and training, performance rewards based on objective indicators, and opportunities to state opinions, the court held that the rules were not unreasonable and dismissed the claim. ③ This case shows that consultation and solicitation of opinions when rules are established, dissemination of the system, objective evaluation, rewards according to performance, and opportunities for inventors to state opinions are emphasized as circumstances supporting the reasonableness of the rules.

Reiwa 6 (Gyo-Ko) No. 10007 [Pharmaceutical Composition/Registration of Patent Term Extension] <Presiding Judge Nakadaira>

Original Article URL: https://www.nakapat.gr.jp/ja/note/%e4%bb%a4%e5%92%8c6%e5%b9%b4%e8%a1%8c%e3%82%b310007%e3%80%90%e5%8c%bb%e8%96%ac%e7%b5%84%e6%88%90%e7%89%a9-%e5%ad%98%e7%b6%9a%e6%9c%9f%e9%96%93%e5%bb%b6%e9%95%b7%e7%99%bb%e9%8c%b2%e3%80%91%ef%bc%9c/

Reiwa 6 (Gyo-Ko) No. 10007 [Pharmaceutical Composition/Registration of Patent Term Extension] <Presiding Judge Nakadaira>

<Issue> Does a “revision of the package insert” for a pharmaceutical product constitute a “disposition” that provides a basis for registration of a patent-term extension (Article 67, paragraph 4 of the Patent Act and Article 2 of the Enforcement Order of the Patent Act)?

⇒ A revision of a package insert does not constitute a “disposition” eligible for registration of an extension.

(1) Legal Nature of the Revision of the Package Insert (Related to Issue 1)

<Distinction from Approved Matters>

In the marketing approval for the pharmaceutical product at issue, the “administration rate” was not applied for as an approved matter (dosage and administration) and was not subject to review. The PMDA’s instruction concerning the administration rate remained administrative guidance and was not a legally binding disposition.

<Not a Lifting of a Prohibition>

Even before the revision of the package insert, the administration method at issue (administration at a high rate) was not prohibited by law. Accordingly, the revision of the package insert did not lift any prohibition (and thereby make working of the patented invention possible).

<Difference from Partial-Change Approval>

Filing a notification of revision of the package insert is performance of an obligation by the marketing authorization holder, and does not in itself mean that an administrative agency changed rights or obligations (a disposition). It therefore differs in legal nature from “partial-change approval” under the Pharmaceuticals and Medical Devices Act.

(2) Whether the Enforcement Order May Be Applied by Analogy (Related to Issue 2)

The “dispositions” that provide a basis for registration of an extension under Article 2, item 2 of the Enforcement Order of the Patent Act are understood to be an exhaustive enumeration.

Although the Enforcement Order has been amended repeatedly, it has not been amended to include revision of a package insert as a disposition even after introduction of the package-insert revision consultation system.

In view of the foundation of the patent system (the public interest), under which anyone may freely use an invention after expiration of the patent term, a “revision of a package insert,” for which there is no express provision, should not be made eligible for registration of an extension by analogical interpretation.

https://www.courts.go.jp/assets/hanrei/hanrei-pdf-94150.pdf

Reiwa 6 (Ne) No. 10076 [Retractable Temporary Protective Fence] <Presiding Judge Nakadaira>

Original Article URL: https://www.nakapat.gr.jp/ja/note/%e4%bb%a4%e5%92%8c7%e5%b9%b4%e3%83%8d10076%e3%80%90%e8%b5%b7%e4%bc%8f%e5%8f%8e%e5%ae%b9%e5%bc%8f%e4%bb%ae%e8%a8%ad%e9%98%b2%e8%ad%b7%e6%9f%b5%e3%80%91%ef%bc%9c%e4%b8%ad%e5%b9%b3%ef%bc%9e/

Reiwa 6 (Ne) No. 10076 [Retractable Temporary Protective Fence] <Presiding Judge Nakadaira>

The accused product’s “square tube” (a square pipe-shaped post) does not literally satisfy the “pivoting plate-shaped member” of the patented invention.

The problem addressed by the invention is “to provide a raisable and stowable temporary protective fence that can reduce the width of the raising and lowering members of a temporary protective fence and achieve reduced weight, compactness, and the like, while enabling improved efficiency of installation and removal work,” as described in paragraph [0007] of the corrected specification, etc.

⇒ Paragraph [0009] of the corrected specification, etc. states that “because the pivoting plate-shaped member has thickness in the short-side direction, its width in the short-side direction can be made thin” (judgment, p. 12). In summary, the effect described in the holding is that making the pivoting plate-shaped member thin enables the guardrail and the pivoting plate-shaped member to be lowered and housed within the width of the web portion of the base frame (H-shaped steel).

⇒ The configuration of making the post thin by making it “plate-shaped,” so that it fits in the recess (web portion) of the H-shaped steel, is a distinctive technical idea not found in the prior art (= the essential part).

⇒ No infringement under the doctrine of equivalents (Requirement 1 not satisfied).

https://www.courts.go.jp/assets/hanrei/hanrei-pdf-94147.pdf

Reiwa 6 (Gyo-Ke) No. 10024 [X-Ray Inspection Device] <Presiding Judge Nakadaira>

Original Article URL: https://www.nakapat.gr.jp/ja/note/%e4%bb%a4%e5%92%8c6%e5%b9%b4%e8%a1%8c%e3%82%b110024%e3%80%90%ef%bd%98%e7%b7%9a%e6%a4%9c%e6%9f%bb%e8%a3%85%e7%bd%ae%e3%80%91%ef%bc%9c%e4%b8%ad%e5%b9%b3%ef%bc%9e/

Reiwa 6 (Gyo-Ke) No. 10024 [X-Ray Inspection Device] <Presiding Judge Nakadaira>

Cited Document 2 describes a “cold-air circulation system” for the sensor section and a “liquid-refrigerant circulation system” for the signal-processing circuit section, but these can be understood as separate technical ideas in terms of cooling configurations.

⇒ Accordingly, the decision did not err in extracting and finding only the “cold-air circulation system” related to cooling of the sensor section.

(Excerpt from the Holding)

The decision at issue is found to have objectively and specifically identified, as a cooling configuration and on the basis of the above descriptions in Cited Document 2, the cold-air circulation system that removes heat from the sensor section, which is one of the two circulation systems that can be understood as embodying different technical ideas. In light of the foregoing, no error is found in the decision’s identification of the technical matter described in Cited Document 2.

https://www.courts.go.jp/assets/hanrei/hanrei-pdf-94148.pdf

May 27, 2025; Reiwa 3 (Ne) No. 10037 [Antipruritic Agent] <Presiding Judge Hibiki Shimizu>

Original Article URL: https://www.nakapat.gr.jp/ja/note/%e4%bb%a4%e5%92%8c7%e5%b9%b45%e6%9c%8827%e6%97%a5-%e4%bb%a4%e5%92%8c3%e5%b9%b4%e3%83%8d10037%e3%80%90%e6%ad%a2%e7%97%92%e5%89%a4%e3%80%91%ef%bc%9c%e6%b8%85%e6%b0%b4%e9%9f%bf%ef%bc%9e/

May 27, 2025

Reiwa 3 (Ne) No. 10037 [Antipruritic Agent] <Presiding Judge Hibiki Shimizu>

<Damages> Treatment of the Consumption-Tax Equivalent

Article 4 and Article 2, paragraph 1, item 8 of the Consumption Tax Act, and Basic Circular 5-2-5 on the Consumption Tax Act

⇒ Lost profits calculated as “sales quantity × profit per unit” under Article 102, paragraph 1 of the Patent Act cannot be regarded as “consideration for a transfer of assets, etc.,” and consumption tax therefore cannot be added.

On the other hand, the “amount of money the patentee would have been entitled to receive for the working of the patented invention” under Article 102, paragraph 3 of the Patent Act is an amount equivalent to a royalty determined after the fact between the patentee and the infringer, and can be regarded as “consideration for a transfer of assets, etc.”; accordingly, the consumption-tax equivalent may be added to that extent.

Note: The determinations on the grounds for invalidity of the term-extension registration are to the same effect as the judgment of the same date in Reiwa 6 (Gyo-Ke) No. 10033 [Antipruritic Agent (Nalfurafine Hydrochloride/Patent-Term Extension)] <Presiding Judge Hibiki Shimizu>.

https://www.courts.go.jp/assets/hanrei/hanrei-point_pdf-94302.pdf

[Copyrighted Works and Trademark Rights] Tokyo District Court, Reiwa 3 (Wa) No. 32244 <Presiding Judge Nakashima>

Former Nakamura & Partners article URL: https://www.nakapat.gr.jp/ja/legal_updates_jp/%e3%80%90%e8%91%97%e4%bd%9c%e7%89%a9%e3%83%bb%e5%95%86%e6%a8%99%e6%a8%a9%e3%80%91%e6%9d%b1%e4%ba%ac%e5%9c%b0%e5%88%a4%e4%bb%a4%e5%92%8c3%e5%b9%b4%e3%83%af32244%ef%bc%9c%e4%b8%ad%e5%b3%b6%ef%bc%9e/

Sources (author: Hideki Takaishi; article title: [Copyrighted Works and Trademark Rights] Tokyo District Court judgment, Reiwa 3 (Wa) No. 32244 <Nakashima>)
Blog: https://ameblo.jp/hideki-takaishi/entry-12954423597.html
Personal website: https://www.takaishihideki.com/single-post/linkedin-7512399803360694272-ja

[Copyrighted Works and Trademark Rights] Tokyo District Court, Reiwa 3 (Wa) No. 32244 <Presiding Judge Nakashima>

The defendant (AI), a skateboarder and artist, sought registration of transfer of the trademark rights from the plaintiff SI, with which the defendant had entered into a license agreement and conducted business (counterclaim).

① Copyright in each of the copyrighted works at issue belongs to the defendant.

Plaintiff SI asserted that it had acquired the copyright under the 2000 music agreement at issue. Under the proper construction of that agreement, however, musical works and the like were subject to transfer (“shall be transferred”), whereas album cover art and the like were merely subject to the grant of an exclusive right of use for promotional purposes (“shall have the exclusive rights”).

② The plaintiffs are obligated to return each of the trademark rights at issue to the defendant and to cooperate in effecting the return.

Article 11 of the license agreement at issue provides that marks such as “MARK GONZALES” may be registered for protection of the rights, on the condition that the trademark registrations be returned to the defendant upon the defendant’s request.

The plaintiffs asserted acquisitive prescription, but because their use presupposed an obligation to return the rights and no “intention to possess for oneself” was found, acquisitive prescription did not arise.

Note: U.S. and Korean judgments were cited as evidence. Because California law was the governing law, citation of the U.S. judgment is understandable, but citation of the Korean judgment is interesting.

https://www.courts.go.jp/assets/hanrei/hanrei-pdf-93786.pdf

Osaka District Court, Reiwa 6 (Wa) No. 2705 [Angle-Adjustable Hinge] <Presiding Judge 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%8c6%e5%b9%b4%e3%83%af2705%e3%80%90%e8%a7%92%e5%ba%a6%e8%aa%bf%e6%95%b4%e5%8f%af%e8%83%bd%e3%81%aa%e3%83%92%e3%83%b3%e3%82%b8%e3%80%91%ef%bc%9c/

Osaka District Court, Reiwa 6 (Wa) No. 2705 [Angle-Adjustable Hinge] <Presiding Judge Takemiya>

Claims seeking procedures for registration of transfer of German and Chinese patent rights

⇒ Dismissed as inadmissible.

An action concerning patent registration is subject to the exclusive jurisdiction of the courts of “the place where registration is to be made (that country).” Japanese courts have no jurisdiction.

For the alternative claim for a declaration of ownership, jurisdiction by appearance was recognized under Article 3-8 of the Code of Civil Procedure because the Defendant argued the merits without objecting to jurisdiction. The following discussion of litigation in China, Germany, and Japan concerns the legal interest in that declaratory claim.

(China) Because there is no reciprocity for recognition of judgments between Japan and China, a final Chinese judgment in the defendant’s favour would not be recognised in Japan. Therefore, there is no legal interest in obtaining a declaration of ownership of the patent rights in Japan in order to prevent recognition of that Chinese judgment on the ground of inconsistency with an earlier Japanese judgment.

(Germany) No concrete possibility that the plaintiff would conduct business in Germany was shown, and the legal dispute had not matured.

(Risk of Suit in Japan) The judgment examined territoriality and Article 22 of the Act on General Rules for Application of Laws in relation to claims based on instructions or proposals made in Japan. It also recognized that a damages claim could succeed if the actor in China was merely an instrument and the individual Plaintiff was found to be the direct infringer in China. Nevertheless, the dispute was insufficiently mature in this case to justify an abstract declaration of ownership in anticipation of future litigation. The judgment does not generally exclude claims in Japan based on infringement of foreign patents.

https://www.courts.go.jp/assets/hanrei/hanrei-pdf-94374.pdf

Osaka District Court, Reiwa 5 (Wa) No. 10970 [Video Viewing Device] <Presiding Judge 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%8c5%e5%b9%b4%e3%83%af10970%e3%80%90%e6%98%a0%e5%83%8f%e8%a6%96%e8%81%b4%e8%a3%85%e7%bd%ae%e3%80%91%ef%bc%9c%e6%ad%a6%e5%ae%ae%ef%bc%9e/

Osaka District Court, Reiwa 5 (Wa) No. 10970 [Video Viewing Device] <Presiding Judge Takemiya>

For the accused device to have the “compression” of limitations F and G, where vehicle-travel information exists for period T1 (or for “period T2 + period T1”), the vehicle-travel information must be temporally shortened (compressed) so that it fits within period T2, which is shorter than those periods.

⇒ Limitation not satisfied.

⇒ The claim for damages was partially granted (Case B; JPY 10,700,382) on the ground that the infringement report to Amazon constituted an act of unfair competition!!

https://www.courts.go.jp/assets/hanrei/hanrei-pdf-94185.pdf

Reiwa 7 (Ne) No. 10008 [Method for Deodorizing a Room in Which a Deceased Person and/or an Animal Has Been Left] <Presiding Judge Nakadaira>

Original Article URL: https://www.nakapat.gr.jp/ja/note/%e4%bb%a4%e5%92%8c7%e5%b9%b4%e3%83%8d10008%e3%80%90%e6%95%85%e4%ba%ba%e5%8f%8a%e3%81%b3%ef%bc%8f%e5%8f%88%e3%81%af%e5%8b%95%e7%89%a9%e3%81%ae%e6%94%be%e7%bd%ae%e3%81%95%e3%82%8c%e3%81%9f%e9%83%a8/

Reiwa 7 (Ne) No. 10008 [Method for Deodorizing a Room in Which a Deceased Person and/or an Animal Has Been Left] <Presiding Judge Nakadaira>

Court of first instance: Tokyo District Court, Reiwa 5 (Wa) No. 70512

Limitation E: “a coating step of covering with paint a place where filth remains and that was exposed by the dismantling work”

⇒ Limitation not satisfied.

(Summary of the Holding)

<Description in the Estimate>

Inclusion in the estimate merely showed a “prediction” that coating work would probably be necessary, and did not provide a basis for finding the objective fact that filth actually remained at a place exposed after dismantling.

<Use of Chemicals>

Even if a cleaning agent or coating was used in special cleaning, its use was not limited to cases in which filth remained and could have been preventive or merely precautionary.

Accordingly, the fact that such work was performed, by itself, cannot support an inference that filth remained at a place exposed by dismantling.

https://www.courts.go.jp/assets/hanrei/hanrei-pdf-94197.pdf

Reiwa 6 (Ne) No. 10084 [Remotely Controlled Unmanned Boat] <Presiding Judge Nakadaira>

Original Article URL: https://www.nakapat.gr.jp/ja/note/%e4%bb%a4%e5%92%8c6%e5%b9%b4%e3%83%8d10084%e3%80%90%e9%81%a0%e9%9a%94%e6%93%8d%e7%b8%a6%e7%84%a1%e4%ba%ba%e3%83%9c%e3%83%bc%e3%83%88%e3%80%91%ef%bc%9c%e4%b8%ad%e5%b9%b3%ef%bc%9e/

Reiwa 6 (Ne) No. 10084 [Remotely Controlled Unmanned Boat] <Presiding Judge Nakadaira>

The “first control device” in limitation J is a mechanism capable of making determinations concerning both automatic-return activation condition ① (loss of signal) and condition ② (low remaining power). … It is also clear from Figure 8 of the specification—namely, the flowchart provides that automatic return occurs if no signal is received within a prescribed time; if receipt is confirmed, the process proceeds to determine whether the remaining power is at or below a prescribed value; and, if automatic return has not occurred, both conditions are checked—that the specification does not describe two separate inventions, one having condition ① and the other having condition ②.

⇒ No literal infringement.

No infringement under the doctrine of equivalents either; Requirements 1 and 5 not satisfied.

https://www.courts.go.jp/assets/hanrei/hanrei-pdf-94196.pdf

Reiwa 6 (Ne) No. 10078 [Porous Air-Permeable Bag Containing Feed for Mites] <Presiding Judge Honda>

Original Article URL: https://www.nakapat.gr.jp/ja/note/%e4%bb%a4%e5%92%8c6%e5%b9%b4%e3%83%8d10078%e3%80%90%e3%83%80%e3%83%8b%e7%94%a8%e9%a3%9f%e9%a4%8c%e5%85%a5%e3%82%8a%e3%81%ae%e5%a4%9a%e5%ad%94%e8%b3%aa%e9%80%9a%e6%b0%97%e6%80%a7%e8%a2%8b%e3%80%91/

Reiwa 6 (Ne) No. 10078 [Porous Air-Permeable Bag Containing Feed for Mites] <Presiding Judge Honda>

★ The patent is the same as in the court of first instance, Osaka District Court, Reiwa 4 (Wa) No. 11025.

* The invention at issue has a structure capable of retaining the attractant internally.

⇒ The accused product merely sandwiches the mite attractant between two nonwoven fabric sheets, gauze, or the like, and the mite attractant falls out from around the perimeter; therefore, the limitation is not satisfied.

Note: … Is the accused product really like that? Should it have been proved through experiments or the like that the material did not fall out?

Supplement: The preceding question is the author’s observation on proof. The court required the structure of a “bag,” including an internal space and an opening that could be closed; an allegation that more than 80% of the attractant was retained was insufficient. It separately rejected “impregnation” in Limitation A-1 and the first and second requirements for equivalence. Proof that the material did not fall out would therefore not, by itself, change the outcome.

(Court of First Instance — Excerpt from the Holding)

According to the specification, the invention at issue aims to exhibit a high mite-capturing capability. Its means are to attract mites over a broad area by diffusing a mite attractant from a woven sheet impregnated with the mite attractant, and then to arrange inside the mat an adhesive tape for capturing mites and porous air-permeable bags containing mite feed attached to the adhesive tape in a staggered pattern, so that mites attracted by the mite attractant further enter the inside from both the front and back surfaces of the mat, contact the adhesive tape, and are captured there. In addition, because the configuration impregnates a woven sheet with “fragrance” as the substance that attracts mites and arranges the porous air-permeable bags containing “feed” on both the front and back surfaces of the double-sided adhesive tape, thereby luring the mites inside the porous air-permeable cover and bringing them into contact with an unmixed adhesive layer so that they are captured, the “porous air-permeable bag” in the invention is expected to have a function that keeps the feed at the same location and does not reduce the adhesiveness of the adhesive layer. Moreover, the structure of the porous air-permeable bag makes it possible to achieve these results with one bag and to reduce the number of constituent materials.

In light of the foregoing, it is appropriate to construe “porous air-permeable bag” in limitation A-3, both according to its dictionary meaning and the specification, as requiring at least a structure capable of retaining the enclosed material inside and preventing its dispersion. In the accused product sold, by contrast, the mite attractant is merely sandwiched between two nonwoven fabric sheets, gauze, or the like, and falls out from around the perimeter; accordingly, the product cannot be found to have a structure capable of retaining the attractant inside.

https://www.courts.go.jp/assets/hanrei/hanrei-pdf-94224.pdf

Reiwa 6 (Ne) No. 10012 [R Badge, Receiving Device] <Presiding Judge Hibiki Shimizu>

Original Article URL: https://www.nakapat.gr.jp/ja/note/%e4%bb%a4%e5%92%8c%ef%bc%96%e5%b9%b4%e3%83%8d10012%e3%80%90%ef%bd%92%e3%83%90%e3%83%83%e3%82%b8%e3%80%81%e5%8f%97%e4%bf%a1%e8%a3%85%e7%bd%ae%e3%80%91%ef%bc%9c%e6%b8%85%e6%b0%b4%e9%9f%bf%ef%bc%9e/

Reiwa 6 (Ne) No. 10012 [R Badge, Receiving Device] <Presiding Judge Hibiki Shimizu>

* A case in which a subcombination limitation was held not to be a matter specifying the invention.

As of the priority date of the patent at issue, techniques of incorporating smart-card functionality into a mobile telephone and communicating by RFID (Exhibit Otsu 19), and of communicating between a mobile telephone and a receiving terminal instead of using an IC card (Exhibits Otsu 9 and 11), were well-known techniques to a person skilled in the art. The invention of Exhibit Otsu 52 and these well-known techniques shared a technical field, and a person skilled in the art could easily have conceived of adopting a configuration in which the contactless data carrier of the Exhibit Otsu 52 invention was a mobile telephone.

⇒ No inventive step.

(Excerpt from the Holding)

The matter concerning the mobile telephone “according to claim 4,” which is the “other subcombination” in corrected claim 5, can be said to have no meaning for specifying the invention of the “receiving device” in Corrected Invention 5.

Accordingly, in determining the gist of Corrected Invention 5, it is appropriate to exclude the matter “according to claim 4.”

https://www.courts.go.jp/assets/hanrei/hanrei-pdf-94282.pdf

Reiwa 6 (Gyo-Ke) No. 10042 [Melting Furnace] <Presiding Judge Masuda>

Original Article URL: https://www.nakapat.gr.jp/ja/note/%e4%bb%a4%e5%92%8c%ef%bc%96%e5%b9%b4%e8%a1%8c%e3%82%b110042%e3%80%90%e6%ba%b6%e8%a7%a3%e7%82%89%e3%80%91%ef%bc%9c%e5%a2%97%e7%94%b0%ef%bc%9e/

Reiwa 6 (Gyo-Ke) No. 10042 [Melting Furnace] <Presiding Judge Masuda>

① Although flat-flame burners were well known, the primary reference deliberately adopted a regenerative holding burner for reasons including energy efficiency.
② The primary reference already included a heat exchanger for exhaust-heat recovery, and there was no motivation to add another heat exchanger.
⇒ Inventive step affirmed.

(Excerpt from the Holding)

Although flat-flame burners were well known for uses such as aluminum melting when the tower-type nonferrous-metal melting and holding furnace of the Exhibit Ko 3 invention was placed on the market, it can be found that a regenerative burner was deliberately adopted as the holding burner from the standpoint of energy efficiency and the like. Accordingly, it cannot be found that a person skilled in the art who encountered the Exhibit Ko 3 invention would have been motivated to deliberately adopt a flat-flame burner in place of that holding burner.

The holding burner of the Exhibit Ko 3 invention is found to employ a regenerative burner, and a regenerative burner has a self-contained waste-heat recovery function, namely, a function of drawing in exhaust gas, exchanging heat in a heat-storage body, and preheating air, and therefore includes a heat exchanger; … thus, no motivation can be said to exist to additionally provide a further heat exchanger.

https://www.courts.go.jp/assets/hanrei/hanrei-pdf-94212.pdf

[Patent ★★★] It was held that, because the fifth-generation divisional application violated the divisional requirements, the seventh-generation patent had a ground for invalidation based on lack of novelty over the publication of the original application. — Intellectual Property High Court, Reiwa 6 (Gyo-Ke) No. 10086 [Vehicle Guidance System] <Presiding Judge Honda> —

Original Article URL: https://www.nakapat.gr.jp/ja/legal_updates_jp/%e3%80%90%e7%89%b9%e8%a8%b1%e2%98%85%e2%98%85%e2%98%85%e3%80%91%e7%ac%ac%ef%bc%95%e4%b8%96%e4%bb%a3%e5%88%86%e5%89%b2%e5%87%ba%e9%a1%98%e3%81%ab%e3%81%8a%e3%81%91%e3%82%8b%e5%88%86%e5%89%b2%e8%a6%81/

 

◆ Judgment Text

 

[Summary of This Judgment and Some Observations]

1. Overview of the Case

The fourth-generation specification, etc. as originally filed states, as indispensable configurations in the invention of a vehicle guidance system, (i) the matter of causing a vehicle that cannot use ETC to travel on a branch lane and return when that vehicle enters an ETC-only lane, and (ii) the matter of determining whether a vehicle is one to be returned according to whether wireless communication between an ETC on-board unit and a roadside antenna is possible; and it does not disclose a technical concept that does not make items (i) and (ii) above essential configurations.

By contrast, each invention recited in the claims of the fifth-generation divisional application introduces, in a three-way branching lane provided with either a lane that branches from an entrance-side lane extending from an ordinary road toward a parking area or service area of a toll road and returns to the ordinary road, or a lane that branches from an exit-side lane extending from a parking area or service area of a toll road toward an ordinary road and returns to the parking area or service area, a new technical matter whereby, with respect to opening and closing the two barriers on the left and right beyond the branch, no determination means is specified, so that, according to any criterion or method not limited to one involving a determination as to whether an inability or failure of wireless communication has occurred between the roadside antenna and the on-board unit of the ETC system, one of the barriers remains closed while the other opens, thereby guiding a vehicle either to continue traveling on the main lane or to enter the branch lane. Because (i) there is no limitation on the circumstances in which the vehicle is caused to travel on the branch lane and return and (ii) there is no limitation on the method for determining a vehicle to be returned, these two configurations constitute an unlimited generalization of the essential configurations described in the fourth-generation specification, etc. as originally filed

Accordingly, each fifth-generation invention should be regarded as introducing new technical matter in relation to the technical matter derived from all the descriptions in the fourth-generation specification, etc. as originally filed. The fifth-generation divisional application is therefore not entitled to application of the main clause of Article 44(2) of the Patent Act, and its filing date is its actual filing date, December 2, 2014.

It follows that the filing date of the application at issue, which is the seventh-generation divisional application, can relate back only as far as December 2, 2014.

Exhibit Ko 9 (Japanese Unexamined Patent Application Publication No. 2006-79580, which is the publication of the first original application), which was distributed in Japan before December 2, 2014, describes the configuration of a vehicle guidance system installed at a toll-road tollgate that includes the respective configurations of Inventions 1 and 2 at issue, and states that a vehicle guidance system having the same configuration may be installed at a service area or parking area.

Accordingly, each invention at issue is an invention described in Exhibit Ko 9 and cannot be patented under Article 29(1)(iii) of the Patent Act.

 

2. Excerpts from the Holding

According to the wording of the claims, each fifth-generation invention is described as a smart interchange having an ETC-only entrance tollgate, an ETC-only exit tollgate, or both, and including, as its configuration, a three-way branching lane consisting of the lane on which that tollgate is installed (hereinafter the “main lane”) and a lane branching from the main lane on which a vehicle returns (hereinafter the “branch lane”); barriers installed at one location before the branch of the three-way branching lane and at two locations on the left and right beyond the branch; and a vehicle detection device installed on the main lane before the branch of the three-way branching lane. Each invention is further described as opening only one of the barriers installed at the two locations on the left and right beyond the branch when detection of a vehicle by the vehicle detection device serves as the trigger.

By contrast, in each fifth-generation invention, at least (i) the circumstances in which a vehicle is caused to travel on the branch lane and return (Claim 1 of the fourth-generation specification, etc. as originally filed: “when an inability or failure to communicate occurs between the roadside antenna and the on-board unit”) and (ii) the determination, by wireless communication of the ETC system, of whether the vehicle is one that should be returned (a matter such as Claim 3 thereof: “the roadside antenna has a pre-gate antenna for determining whether wireless communication with the on-board unit is possible and an ETC antenna for transmitting and receiving entrance information and toll information”) are not recited as matters specifying the invention.

Accordingly, each fifth-generation invention has (i) no limitation on the circumstances in which a vehicle is caused to travel on the branch lane and return and (ii) no limitation on the method for determining a vehicle to be returned.

…

The fourth-generation specification, etc. as originally filed states, in relation to the problem that, if a vehicle that cannot use ETC enters an ETC-only lane, there is a risk of congestion or collision with a following vehicle, as means for solving that problem, matters such as providing means by which such vehicles that cannot use ETC can leave the ETC-only lane, providing, as the leaving means, a lane branching from the ETC-only lane, and guiding a vehicle by lowering a barrier when entry of the vehicle is detected; and it is recognized that it discloses a vehicle guidance system that, upon detecting a vehicle that cannot use ETC, guides the vehicle so as to cause it to leave the ETC-only lane. In addition, as the method for detecting and identifying a vehicle that cannot use ETC, it is stated, as seen in paragraphs [0010] and [0012], that this is done according to whether there is an “inability or failure to communicate between the roadside antenna and the on-board unit”; and, in the description of the embodiments, paragraphs [0031] to [0053] and [0066] to [0068], Figures 3 to 8, and Figure 12 disclose that this is done according to whether the vehicle is capable of ETC wireless communication. Further, paragraphs [0054] to [0062], Figures 9 and 10, which are an example of an interchange with an enhanced reverse-entry prevention function, and paragraphs [0063] to [0065] and Figure 11, which are an example of a vehicle guidance system for a smart interchange, also state that “Figure 9 is a modified example of Figure 4” ([0055]) and that “except that there are no ordinary-vehicle lanes B and C, the roles of lanes (A→D) and (A→E) at entrance tollgate 12 and the roles of lanes (A→D) and (A→E) at exit tollgate 13 are the same as those in Figures 3, 4, 6 and 7” ([0064]); thus, all of them are premised on guidance according to whether the vehicle is capable of ETC wireless communication. Accordingly, it is recognized that the fourth-generation specification, etc. as originally filed, in the invention of a vehicle guidance system that causes a vehicle unable to use ETC to leave an ETC-only lane in order to solve the problem of congestion and the risk of collision with a following vehicle, respectively describes, as specific means for solving the problem, (i) the matter of causing the vehicle to travel on a branch lane and return when a vehicle unable to use ETC has entered an ETC-only lane, and (ii) the matter of determining whether the vehicle is one to be returned according to whether wireless communication between the ETC on-board unit and the roadside antenna is possible. Moreover, even considering all descriptions in the fourth-generation specification, etc. as originally filed as a whole, there is no other description disclosing or suggesting the circumstances in which a vehicle is caused to travel on a branch lane and return, or a method for determining a vehicle to be returned. Therefore, items (i) and (ii) above should be regarded as indispensable configurations for solving the problem in the invention disclosed in the fourth-generation specification, etc. as originally filed …

By contrast, … each fifth-generation invention introduces, in a three-way branching lane provided with either a lane that branches from an entrance-side lane extending from an ordinary road toward a parking area or service area of a toll road and returns to the ordinary road, or a lane that branches from an exit-side lane extending from a parking area or service area of a toll road toward an ordinary road and returns to the parking area or service area, a new technical matter whereby, with respect to opening and closing the two barriers on the left and right beyond the branch, no determination means is specified, so that, according to any criterion or method not limited to one involving a determination as to whether an inability or failure of wireless communication has occurred between the roadside antenna and the on-board unit of the ETC system, one of the barriers remains closed while the other opens, thereby guiding a vehicle either to continue traveling on the main lane or to enter the branch lane. Because (i) there is no limitation on the circumstances in which a vehicle is caused to travel on the branch lane and return and (ii) there is no limitation on the method for determining a vehicle to be returned, these two configurations constitute an unlimited generalization of the essential configurations described in the fourth-generation specification, etc. Accordingly, each fifth-generation invention should be regarded as introducing a new technical matter in relation to the technical matter derived by considering all descriptions in the fourth-generation specification, etc. as originally filed as a whole. …

The Defendant alleges that Fifth-Generation Invention 1 merely extracts and recites, from among the inventions described in the fourth-generation specification, etc. as originally filed, the invention relating to guidance means that uses a vehicle detection device and barriers to guide a vehicle either to continue traveling on the entrance-side lane or to return to the return road. However, if the invention is one of guidance means that uses a vehicle detection device and barriers to guide a vehicle either to continue traveling on the entrance-side lane or to return to the return road, then, in order to associate the vehicle detection device with the barriers, the guidance means cannot function as such unless there is means or a method for deciding to which lane a detected vehicle is to be guided. Yet, … the fourth-generation specification, etc. as originally filed describes, as the means or method for deciding to which lane a detected vehicle is to be guided, only the method of determining whether wireless communication between the ETC on-board unit and the roadside antenna is possible. It must therefore be said that extracting from the fourth-generation specification, etc. as originally filed an invention of guidance means that uses a vehicle detection device and barriers to guide a vehicle to one of the lanes without specifying the means or method for deciding to which lane the detected vehicle is to be guided introduces a new technical matter in relation to the technical matter described in the fourth-generation specification, etc. as originally filed The Defendant also alleges that, where the invention of the original application is a manufacturing method consisting of a first step and a second step, amending it to an invention of only the first step does not constitute the addition of new matter, and therefore, in this case as well, filing a divisional application directed only to the downstream configuration of the invention described in the fourth-generation specification, etc. as originally filed does not constitute the addition of new matter. However, what is described in the fourth-generation specification as originally filed is a vehicle guidance system having a processing flow such as that shown in Figure 5 below, namely, a system in which the processes of vehicle detection by the vehicle detection device, communication between the pre-gate antenna and the ETC on-board unit, determination of whether ETC toll collection is possible, guidance by the vehicle guidance device, and opening and closing of the barriers are carried out in sequence and achieve the objective as a whole; a system omitting its principal processes (S04, S06, and S07 in the example of Figure 5) cannot function as guidance means. Therefore, it cannot automatically be equated with an invention of a method for manufacturing an article consisting of a first step for obtaining an intermediate product and a second step for obtaining a final product, so as to permit a divisional application directed only to the downstream configuration. Accordingly, the Defendant’s allegation cannot be accepted. ([Figure 5])

The Defendant alleges that Fifth-Generation Invention 1 is an independent invention that has the object of preventing unauthorized vehicles and that prevents unauthorized vehicles from entering in reverse from the lanes by keeping the two barriers installed on the left and right beyond the branch of the three-way branching lane constantly “closed” and opening one of the barriers upon detecting passage of a vehicle. However, in paragraphs [0054] to [0062] of the fourth-generation specification, etc. as originally filed, which refer to preventing entry of unauthorized vehicles, it is stated, as means for solving such a problem, that a new barrier and vehicle detection device are installed in each of the two branched lanes to form a closed section. In addition, it expressly states: “The embodiment described with reference to Figure 4 has the problem that it cannot prevent an unauthorized vehicle, for such a purpose as nonpayment of a toll, from entering an ETC vehicle lane in reverse from the exit of the ETC vehicle lane or the exit of the leaving lane” ([0054]); thus, it is expressly stated that the configuration in which one of the two barriers on the left and right beyond the branch remains closed while the other opens (the configuration described in paragraphs [0034] and [0035] with reference to Figure 4) does not solve the problem alleged by the Defendant. In light of such descriptions, a person skilled in the art could not recognize that the fourth-generation specification, etc. as originally filed describes an invention that has the object, as alleged by the Defendant, of preventing reverse entry of unauthorized vehicles and uses the configurations of the respective fifth-generation inventions as the means for solving that problem. Accordingly, the Defendant’s allegation cannot be accepted. …

 

3. Infringement Judgment of the Same Date (Reiwa 7 (Ne) No. 10035) — Non-Satisfaction Under the Same Logic as This Judgment

(1) Non-Satisfaction of “Entrance/Exit for Ordinary Vehicles” (Limitation 2E)

Based on the description of the specification at issue and other matters, the court held that the term “entrance/exit for ordinary vehicles” does not include the entrance/exit for ordinary vehicles of another interchange adjacent to the toll-road tollgate, service area, parking area, or the like at which the vehicle guidance system according to Invention 2 at issue is installed.

(Excerpt from the Holding)

It cannot be read from the description of the parent-application specification at issue that the use, by a vehicle that could not use the smart interchange because ETC toll collection was impossible, of an entrance/exit for ordinary vehicles at another adjacent interchange is the result of guidance by the guidance means according to Invention 2 at issue. Accordingly, the “entrance/exit for ordinary vehicles” in Limitation 2E cannot be construed as including the entrance/exit for ordinary vehicles of another interchange adjacent to the toll-road tollgate, service area, or parking area at which the vehicle guidance system according to Invention 2 at issue is installed.

 

(2) Non-Satisfaction of “Guidance Means” (Limitation 2E)

The court held that “guidance” means inviting and leading toward a destination and that, where there are no signs or the like (including no sign or the like instructing a U-turn), even if the driver could make a U-turn and return to a point before the ETC-only entrance/exit, this does not constitute “guidance means” for a route returning to a point before the ETC-only entrance/exit.

(Excerpt from the Holding)

“Guidance” means inviting and leading toward a destination. Because no sign or the like instructing a U-turn exists within any of the Plaintiff’s facilities, it cannot be said that the Plaintiff’s facilities invite and lead a vehicle for which ETC toll collection is impossible onto a route returning it again to a point before the ETC-only entrance/exit. Even if it is factually possible for the driver of that vehicle, by the driver’s own choice, to make a U-turn and return again to a point before the ETC-only entrance/exit, it must be said to be unreasonable to characterize such travel of the vehicle based on the driver’s intention as being attributable to guidance means installed at the Plaintiff’s facilities. Accordingly, none of the Plaintiff’s facilities can be said to include guidance means that guide a vehicle for which ETC toll collection is impossible onto a “route returning it again to a point before the ETC-only entrance/exit.”

 

4. Some Observations

At a time when the proportion of divisional applications is increasing, there is concern that instances will increase in which the addition of new matter in a patent application partway through a divisional tree prevents the filing date from relating back to the filing date of the original application, resulting in denial of novelty or inventive step. Although there have previously been few cases in which courts have so held, such cases are expected to increase.

In particular, in 2025 the Japan Patent Office issued a message suggesting revision of the Examination Guidelines in the direction of making the amendment requirements for so-called “excluding claims” stricter. If inventions claimed in issued patents by means of “excluding claims” begin to be held to have a ground for invalidation based on the addition of new matter, the problem described above will surface, and there is concern that patent practice will become confused in the future. (See the materials of the 18th Working Group of the Examination Standards Subcommittee, Patent System Subcommittee, Intellectual Property Committee, Industrial Structure Council.)

https://www.jpo.go.jp/resources/shingikai/sangyo-kouzou/shousai/kijun_wg/18-shiryou.html

Timing and interpretation note: The preceding passage expresses the author’s assessment and forecast as of the original article’s publication in January 2026. The characterization as “stricter” is not a holding of this judgment and does not mean that every disclaimer claim adds new matter or is automatically invalid.

図６　多世代分割出願と補正・取下げの関係

⑤平成28年（行ケ）10263：「分割出願が適法であるための実体的要件としては，①もとの出願の明細書又は図面に二以上の発明が包含されていたこと，②新たな出願に係る発明はもとの出願の明細書又は図面に記載された発明の一部であること，③新たな出願に係る発明は，もとの出願の当初明細書等に記載された事項の範囲内であることを要する。本件出願は，第１出願から数えて５世代目になる分割出願であるため，本件出願が第１出願の出願時にしたものとみなされるには，本件出願，第４出願，第３出願及び第２出願が，それぞれ，もとの出願との関係で，上記①ないし③の分割の要件を満たし，かつ，本件発明が第１出願の出願当初の明細書等に記載した事項の範囲内のものであること，という要件を満たさなければならない。」

同旨：①大阪高判平成14年（ネ）2776＜若林＞、②東京高判平成15年（行ケ）65＜篠原＞。

子出願時は適法でも、子を出願後に補正すると、補正の遡及効により、子出願が分割要件違反となる場合がある。その場合、孫出願日は子出願日までしか遡及しない。

補正後が新規事項追加であると、分割要件違反となる。③東京地判平成16年（ワ）第14649号＜設樂＞。

分割要件＝補正要件：⑧東京地判平成15年（ワ）第9215号＜三村＞。

補正の遡及効：親出願日、子出願日、子の補正、孫の出願日の順序で検討する。補正により分割要件違反（要旨変更）が治癒されると、分割要件違反を免れる。④東京高判昭和50年（行ケ）第75号。

「本件訂正によって請求項の全部が削除されたことにより、本件実用新案登録は、初めから存在しなかったものとみなされる」⑥平成13年（行ケ）421＜山下＞。

子が取り下げられても、孫の出願日は親の出願日に遡及する。⑦平成27年（ワ）8517【畦塗り機事件】＜嶋末＞。同事件では、取下げ前に分割要件違反はなかった。特許法39条5項以外、出願取下げに遡及効はない（平成1年審123号）。

分割出願が新規事項追加のまま拒絶・無効確定すると、孫の出願日が親出願日に遡及しない。拒絶で終わる場合にも、新規事項追加を解消する補正を試みるべきである。

Figure 6, case ③: Tokyo District Court, April 13, 2006, Heisei 16 (Wa) No. 14649 (Telephone Call Control System).

図７　画像形成装置事件と分割出願の新規事項

令和元年（ワ）23164【画像形成装置】＜田中＞。参照：令和2年（行ケ）10131＜大鷹＞。

子出願が分割要件違反であれば、孫出願の出願日は子出願の現実の出願日までしか遡及せず、親出願日まで遡及しない。大阪高判平成14年（ネ）2776、東京高判平成15年（行ケ）65も同旨。

明細書の追加記載が新規事項追加とされた例として、【人工乳首事件】（平成14年（行ケ）539）と比較する。

「本件出願2が分割出願された時点における本件出願1の明細書等…と、本件出願2の明細書等（本件出願2分割時明細書…）とを比較すると、本件出願2分割時明細書は、例えば、指定キープ指示部によって、電源OFF後も加工条件をキープし、次回以降最初に表示される画面に表示することに関する記載が追加されている点（段落【0100】）、倍率を指示する「一つ上」や「一つ下」の表示によって、使用頻度の高い加工条件である倍率の設定数を減らし、メニューの設定数を減らすことに関する記載が追加されている点（段落【0105】）、登録されたメニューを変更不可にロックする手段を設けることによって、安易なメニュー変更による誤指示を防止することに関する記載が追加されている点（段落【0145】）、図7ないし図15及びこれに関連する記載が追加されている点（段落【0041】…）で、本件出願1査定時明細書の記載と相違しており、本件出願2分割時明細書は、本件出願1査定時明細書には存在しない記載事項を含むものであるから、本件出願1査定時明細書に記載された事項の範囲内であるとはいえない…。そうすると、本件出願2は、…②の分割要件を満たさない…」

親出願日後、子出願日前の引用発明に基づき、進歩性欠如とされた。

優先権主張時は「部分優先」が有り得るが、分割出願時の明細書への追記には注意を要する。原明細書等に開示があれば追記は不要であり、開示がなければ新規事項追加となる。

Figure 7, related decision: Intellectual Property High Court, October 13, 2021, Reiwa 2 (Gyo-Ke) No. 10131 (Image Forming Apparatus).

 

[Related Court Decisions (Concerning Divisional Requirements)]

(1) Intellectual Property High Court, Reiwa 6 (Gyo-Ke) No. 10086 [Vehicle Guidance System] <Presiding Judge Honda> (This Judgment)

* The child application violates the divisional requirements ⇒ the filing date of the grandchild application does not relate back to the filing date of the parent application.

<Excerpt from the Holding>

The fourth-generation specification, etc. as originally filed states, in relation to the problem that, if a vehicle that cannot use ETC enters an ETC-only lane, there is a risk of congestion or collision with a following vehicle, as means for solving that problem, matters such as providing means by which such vehicles that cannot use ETC can leave the ETC-only lane, providing, as the leaving means, a lane branching from the ETC-only lane, and guiding a vehicle by lowering a barrier when entry of the vehicle is detected; and it is recognized that it discloses a vehicle guidance system that, upon detecting a vehicle that cannot use ETC, guides the vehicle so as to cause it to leave the ETC-only lane. In addition, as the method for detecting and identifying a vehicle that cannot use ETC, it is stated, as seen in paragraphs [0010] and [0012], that this is done according to whether there is an “inability or failure to communicate between the roadside antenna and the on-board unit”; and, in the description of the embodiments, paragraphs [0031] to [0053] and [0066] to [0068], Figures 3 to 8, and Figure 12 disclose that this is done according to whether the vehicle is capable of ETC wireless communication. Further, paragraphs [0054] to [0062], Figures 9 and 10, which are an example of an interchange with an enhanced reverse-entry prevention function, and paragraphs [0063] to [0065] and Figure 11, which are an example of a vehicle guidance system for a smart interchange, also state that “Figure 9 is a modified example of Figure 4” ([0055]) and that “except that there are no ordinary-vehicle lanes B and C, the roles of lanes (A→D) and (A→E) at entrance tollgate 12 and the roles of lanes (A→D) and (A→E) at exit tollgate 13 are the same as those in Figures 3, 4, 6 and 7” ([0064]); thus, all of them are premised on guidance according to whether the vehicle is capable of ETC wireless communication. Accordingly, it is recognized that the fourth-generation specification, etc. as originally filed, in the invention of a vehicle guidance system that causes a vehicle unable to use ETC to leave an ETC-only lane in order to solve the problem of congestion and the risk of collision with a following vehicle, respectively describes, as specific means for solving the problem, (i) the matter of causing the vehicle to travel on a branch lane and return when a vehicle unable to use ETC has entered an ETC-only lane, and (ii) the matter of determining whether the vehicle is one to be returned according to whether wireless communication between the ETC on-board unit and the roadside antenna is possible. Moreover, even considering all descriptions in the fourth-generation specification, etc. as originally filed as a whole, there is no other description disclosing or suggesting the circumstances in which a vehicle is caused to travel on a branch lane and return, or a method for determining a vehicle to be returned. Therefore, items (i) and (ii) above should be regarded as indispensable configurations for solving the problem in the invention disclosed in the fourth-generation specification, etc. as originally filed …

⇒ Because each fifth-generation invention lacks items (i) and (ii) above (the indispensable configurations for solving the problem), it constitutes the addition of new matter.

 

(2) Tokyo District Court, Reiwa 1 (Wa) No. 23164 [Image Forming Apparatus] <Presiding Judge Tanaka>

Judgment: https://www.courts.go.jp/assets/hanrei/hanrei-pdf-91102.pdf

* The child application violates the divisional requirements ⇒ the filing date of the grandchild application does not relate back to the filing date of the parent application.

* In Reiwa 2 (Gyo-Ke) No. 10131 concerning the same patent, the court held: “Considering together … that there was an opportunity to cure the state in which Application 2 at issue violated the divisional requirements by making an amendment such as deleting the added portion above, it was not appropriate for the examiner of Application 2 at issue to overlook the above violation of the divisional requirements, but …”

Judgment: https://www.courts.go.jp/assets/hanrei/hanrei-pdf-90633.pdf

<Excerpt from the Holding>

… The patent application at issue is a patent application obtained by further dividing Application 3 at issue, which was itself obtained by further dividing Application 2 at issue, which was a divisional application of Application 1 at issue. The Defendant alleges that Application 2 at issue violates the divisional requirements; therefore, the court examines this point.

… Where a divisional application is lawful, its filing date relates back to the filing date of the original application (main clause of Article 44(2) of the Patent Act); where a divisional application is unlawful, substantive examination is conducted based on the date on which the divisional application was actually filed. In order for the filing date of a divisional application to relate back to the filing date of the original application, it is reasonable to construe that it is necessary that (i) the matters described in the specification, etc. of the divisional application fall within the scope of matters described in the specification, etc. of the original application as filed, and (ii) the matters described in the specification, etc. of the divisional application fall within the scope of matters described in the specification, etc. of the original application immediately before the division. Where a patent application is divided during a period in which the specification, etc. of the original application may be amended, it is understood that satisfaction of requirement (i) above also satisfies requirement (ii). However, because Application 2 at issue … was not filed during a period in which the specification, etc. of Application 1 at issue could be amended …, it is understood that, as a divisional requirement for Application 2 at issue, requirement (ii) above must also be satisfied separately from requirement (i). …

… Comparing the specification, etc. of Application 1 at issue at the time Application 2 at issue was filed as a divisional application, namely, the specification, etc. of Application 1 at issue at the time of the decision to grant a patent, … with the specification, etc. of Application 2 at issue (the specification at the time of division of Application 2 at issue …), the latter differs from the former in, for example, that it adds a description relating to maintaining machining conditions even after power-off by means of a designated-keep instruction unit and displaying them on the first screen shown on the next and subsequent occasions (paragraph [0100]); that it adds a description relating to reducing the number of settings for the magnification, which is a frequently used machining condition, and reducing the number of menu settings by means of displays indicating magnification, such as “one above” and “one below” (paragraph [0105]); that it adds a description relating to preventing erroneous instructions caused by casual menu changes by providing means for locking a registered menu so that it cannot be changed (paragraph [0145]); and that it adds Figures 7 to 15 and related descriptions (paragraph [0041] …). The specification at the time of division of Application 2 at issue therefore contains matters not present in the specification of Application 1 at issue at the time of the decision to grant a patent and cannot be said to fall within the scope of matters described in the latter specification. … Accordingly, Application 2 at issue fails to satisfy divisional requirement (ii) above and should be regarded as violating the divisional requirements; Article 44(2) of the Patent Act does not apply to Application 2 at issue.

… According to the foregoing, even if the patent application at issue satisfies the divisional requirements in relation to Application 3 at issue and Application 3 at issue satisfies the divisional requirements in relation to Application 2 at issue, Application 2 at issue does not satisfy the divisional requirements in relation to Application 1 at issue. Therefore, the filing date of Application 2 at issue does not relate back to the filing date of Application 1 at issue and is its actual filing date …, and likewise, the filing date to which the patent application at issue relates back is the filing date of Application 2 at issue ….

 

(3) Osaka High Court, Heisei 14 (Ne) No. 2776 [Concrete Embedded Object] (Mirai Kogyo v. Nichido Denko)

Judgment: https://www.courts.go.jp/assets/hanrei/hanrei-pdf-11279.pdf

* The child application came to violate the divisional requirements due to the retroactive effect of a procedural amendment.

⇒ The filing date of the grandchild application does not relate back to the filing date of the parent application.

* The fact that invalidity of the child application became final is unrelated to whether the filing date of the grandchild application relates back to the filing date of the parent application.

<Excerpt from the Holding>

Considering the divisional filing of the child application, the amendment to the child application … included matters neither described in the specification or drawings of the parent application as filed nor described in the specification or drawings of the child application as filed, and the specification of the child application after the amendment contained matters outside the scope of the specification or drawings of the parent application as filed. The child application therefore could not be said to have been lawfully divided from the parent application under Article 44(1) of the Patent Act. The child application was subsequently patented, and the invalidation decision at issue became final; there was therefore no longer any room to correct, by a procedural amendment or a request for correction, … the content of the procedural amendment. Because the content after the amendment had become final, the child application cannot be said to have been lawfully divided from the parent application under Article 44(1) of the Patent Act and is not deemed to have been filed at the time of the parent application. Because it is not deemed to have been filed at the time of the parent application, … the filing date of the child application is deemed to be … the date on which the amendment was submitted …. In this regard, the Plaintiff alleges that the child application was a divisional application lawfully divided under Article 44 of the Patent Act and that, by the amendment in the procedural amendment, its filing date was merely postponed under Article 40 of the Patent Act, and the division of the child application itself did not become unlawful or invalid. However, … it is clear that the division of the child application did not satisfy the divisional requirements and was unlawful in the first place, and the Plaintiff’s allegation above cannot be accepted. …

Application 1 at issue (the grandchild application) may be considered lawful as a divisional application having the child application as its parent application because it may be said to satisfy the other divisional requirements. However, in relation to the parent application, … because the child application cannot be said to have been lawfully divided from the parent application, Application 1 at issue (the grandchild application) likewise is not deemed to have been filed at the time of the parent application, but is deemed to have been filed at the time of the child application, and is deemed to have been filed on the date … deemed to be the filing date of the child application. …

Enjoyment of the benefit of retroactivity of the filing date of the grandchild application is, after all, enjoyment of the benefit of the filing date of the child application, and is premised on the child application satisfying the divisional requirements and having been lawfully divided; the filing date of the grandchild application does not relate back without limitation to the time of the parent application, independently of the child application and removed from the time at which division was originally possible. The Patent Act recognizes … that an amendment has effect retroactive to the beginning of the procedure, and patent procedures are administered on the premise of such retroactive effect of amendments. In fact, with respect to divisional applications as well, where the invention of the original application and the invention of the divisional application were identical at the time of division but subsequently an amendment to the specification or drawings of the original application rendered the two inventions non-identical, the divisional application is deemed lawful; conversely, where the invention of the original application and the invention of the divisional application were not identical at the time of division but subsequently an amendment to the specification or drawings of the original application rendered the two inventions identical, the divisional application is deemed unlawful. Moreover, even if the retroactive effect of such an amendment gives rise to a situation in which a division is unlawful, the person who made the amendment may cure the ground of unlawfulness by making a further amendment correcting it. In light of these points, where a parent application, a child application, and a grandchild application are divided in sequence, even if the division from the child application to the grandchild application had no defect in the divisional requirements, it is unavoidable that whether the division of the child application from the parent application satisfies the requirements may vary depending on whether and how the child application is amended, thereby changing the filing date of the child application and, in turn, changing the filing date of the grandchild application. …

 

(4) Tokyo High Court, Heisei 15 (Gyo-Ke) No. 65 [Concrete Embedded Object] (Mirai Kogyo v. Nichido Denko)

Judgment: https://www.courts.go.jp/assets/hanrei/hanrei-pdf-10885.pdf

* The child application came to violate the divisional requirements due to the retroactive effect of a procedural amendment.

⇒ The filing date of the grandchild application does not relate back to the filing date of the parent application.

<Excerpt from the Holding>

… In this case, the patent application at issue (grandchild application) is a further divisional application of the child application, which was a divisional application from the parent application. Therefore, if each of the divisions of the grandchild application (the patent application at issue) and the child application satisfies the divisional requirements under former Article 44(1) of the Patent Act, and Inventions 1 and 2 at issue fall within the scope of matters described in the original specification, etc. of the parent application, the filing dates of Inventions 1 and 2 at issue relate back to the filing date of the parent application. However, the invention of the child application was amended by the procedural amendment dated October 29, 1993 (Exhibit Ko 17), such that it no longer fell within the scope of matters described in the original specification, etc. of the parent application. After registration of establishment of the patent right, the invalidation decision became final with the invention as so amended, and the patent right for the child application was deemed never to have existed. Accordingly, there is no longer any room to correct the amended invention, and the invention of the child application no longer falls within the scope of matters described in the original specification, etc. of the parent application; it is therefore clear that the child application does not satisfy the substantive requirements for division. Thus, without even examining whether the division of the grandchild application was proper, there is no room for the filing date of the patent application at issue, which is the grandchild application, to relate back to the filing date of the parent application. …

… The amendment to the child application … should originally have been rejected as impermissible, but was not rejected; after registration of establishment of the patent right with the invention as amended, the invalidation decision became final and the patent right relating to the child application was deemed never to have existed. … The child application did not satisfy the divisional requirements and was not lawfully divided. …

… The Plaintiff further alleges that, under the Examination Guidelines prepared by the Japan Patent Office in May 1983 and applicable to the patent application at issue, a divisional application filed on the same date on which the original application was withdrawn or abandoned is lawful, except that, where the original application is withdrawn, abandoned, or invalidated, a divisional application is unlawful if the invention of the original application and the invention of the divisional application are identical at the time of such act; and therefore it is the practice of the Japan Patent Office that invalidation of the right relating to the child application after it has become final does not also invalidate the grandchild application. However, as stated above, the child application was deemed, under former Article 40 of the Patent Act, to have been filed on the date on which the procedural amendment was submitted; it was not deemed withdrawn or abandoned. It is also clear that the decision does not hold that the grandchild application is invalid because the child application became invalid. The Plaintiff’s allegation above merely criticizes the decision at issue based on a misunderstanding of it and cannot be accepted.

 

(5) Tokyo District Court, Heisei 15 (Wa) No. 9215 [Fastener and Cord Fastening Device] (JP3367651) <Presiding Judge Mimura>

Judgment: https://www.courts.go.jp/assets/hanrei/hanrei-pdf-10373.pdf

* Divisional applications and amendments are permitted within the same scope.

= Tokyo District Court, Heisei 10 (Wa) No. 8345 [Ear-Hanging Device for Cultured Shellfish] <Presiding Judge Mimura>

Judgment: https://www.courts.go.jp/assets/hanrei/hanrei-pdf-13449.pdf

<Excerpt from the Holding>

Regarding the division of a patent application, Article 44(1) of the Patent Act provides that “only within the period during which an amendment may be made to the specification or drawings attached to the application, a patent applicant may make a part of a patent application containing two or more inventions into one or more new patent applications.” In order for such a divisional application to be recognized as lawful, the original application must be pending before the Japan Patent Office and must contain two or more inventions; containing two or more inventions is understood not to require that they be contained only in the claims, but is satisfied if the specification contains two or more inventions. A divisional application must also be filed within a period during which an amendment may be made (Article 44(1) of the Patent Act). Further, a divisional application is deemed to have been filed at the time of the original patent application (paragraph (2) of the same Article), and novelty, inventive step, and the like are assessed as of the filing date of the patent application from which the divisional application originated. In light of these matters, division of an application may be said to have a function similar to that of an amendment (Article 17 of the Patent Act); therefore, the permissible scope of a divisional application should likewise be construed as limited to the scope within which the original application may be amended. (If division were permitted even where the requirements for amendment were not satisfied, it would in substance permit circumvention of the amendment requirements by means of the divisional procedure, which would be unreasonable.) Thus, the specification or drawings of a divisional application should be construed not to include anything outside the scope of matters described in the specification or drawings of the original application as filed. …

 

(6) Tokyo District Court, Heisei 16 (Wa) No. 14649 [Telephone Call Control System] <Presiding Judge Shitara>

Judgment: https://www.courts.go.jp/assets/hanrei/hanrei-pdf-32912.pdf

* A case in which the divisional requirements were assessed based on the claims after amendment (retroactive effect of amendment) — the same logic and conclusion as for the amendment requirements

= Tokyo High Court, Heisei 15 (Gyo-Ke) No. 65; cf. Heisei 28 (Gyo-Ke) No. 10114

<Excerpt from the Holding>

… The first and second amendments to Application 2 at issue added a description of an embodiment in which, before a customer pays a deposit, the amount of the deposit and a special code are stored in advance in memory means of a special exchange unit, and should be regarded as additionally describing an invention producing a new operation and effect, “…”, that was not described in the original specification of Application 2 at issue. Accordingly, the first and second amendments to Application 2 at issue cannot be recognized as amendments that increased, decreased, or changed the claims of the original specification of the divisional application within the scope of matters described in the original specification or drawings of Application 2 at issue. Therefore, the divisional application at issue does not satisfy the divisional-application requirements of former Article 44(1) of the Patent Act and is deemed to have been filed on May 7, 1997. Furthermore, because the first and second amendments to Application 2 at issue cannot be recognized as having been made within the scope of matters described in the original specification or drawings of the divisional application at issue, they violate Article 17-2(3) of the Patent Act. …

 

(7) Tokyo High Court, Showa 50 (Gyo-Ke) No. 75

A discussion of the possibility of curing a divisional defect should not be read as a finding that the defect was cured in that case or as an unconditional remedy under current law.

* A violation of the divisional requirements may be cured by an amendment (retroactive effect of amendment).

(Reference) Tokyo High Court, Heisei 15 (Gyo-Ke) No. 65, [Concrete Embedded Object] ⇒ The filing date of a grandchild application divided from a child application does not relate back to the filing date of the parent application where the child application ceases to satisfy the divisional requirements due to an amendment.

⇒ The filing date of the child application is the date on which the procedural amendment was submitted!!

<Excerpt from the Holding>

Insofar as the original specification and drawings of the patent application at issue are concerned, the application does not satisfy, in relation to the original patent application, the divisional requirements concerning the technical matter described above and therefore cannot be regarded as a lawful divisional application. Consequently, retroactivity of the filing date is not recognized, and the application is treated as having been filed on its actual filing date, April 23, 1964.

However, if the divisional requirements above subsequently came to be satisfied by an amendment to the patent application at issue, retroactivity of the filing date may newly be recognized as a result, and therefore the court examines whether the amendment at issue falls within such a case. If the amendment at issue changes the gist of the specification or drawings in relation to the patent application at issue (which is a divisional application and a new application) itself, the amendment is not permitted; not only does the patent application at issue fail, by virtue of the amendment, to satisfy the divisional requirements above, but regardless of whether it falls within the scope of matters described in the original specification or drawings of the original patent application, it cannot be accepted under the former Act and must also be dismissed under the new Act. …

It is recognized that the amendment at issue … does not fall within the scope of matters described in the original specification or drawings of the patent application at issue (and the evidence cited above also establishes that the matter in question is not described in the original specification or drawings of the original patent application). Accordingly, it cannot be said that, by virtue of the amendment at issue, the patent application at issue came to satisfy the divisional requirements above.

 

(8) Tokyo District Court, Heisei 27 (Wa) No. 8517 [Ridge Plastering Machine] <Presiding Judge Shimasue>

Judgment: https://www.courts.go.jp/assets/hanrei/hanrei-pdf-85939.pdf

* A third-generation patent in a sequence of original application ⇒ first generation ⇒ second generation ⇒ third generation.

* The second-generation application had been withdrawn, but whether its filing date could relate back to the first-generation application and the original application was not disputed.

* Tokyo High Court, Heisei 15 (Gyo-Ke) No. 65, and Osaka High Court, Heisei 14 (Ne) No. 2776, held that invalidity of the child application itself was irrelevant.

<Excerpt from the Holding>

[Defendant’s Allegation]

The configuration in Claim 1 that “the connecting piece is fixed to the rear surface of the ridge-forming surface of the ridge-forming plate positioned on the front side in the direction of rotation among the adjacent ridge-forming plates and does not extend to the ridge-forming surface of the ridge-forming plate positioned on the rear side in the direction of rotation” (the configuration added by the amendment at issue), and the configuration of “a connecting piece provided along the boundary portion,” are each outside the scope of matters described in the specification, claims, and drawings immediately before the division (filing of the patent at issue) of the original application for the patent at issue (Japanese Patent Application No. 2014-78397) (hereinafter collectively the “Specification, etc. at the Time of Division of the Original Application”). … Accordingly, the application relating to the patent at issue (the divisional application of Japanese Patent Application No. 2014-78397) is not a lawful divisional application (Article 44(1)(i) of the Patent Act), and its filing date does not relate back to the filing date of the original application. As a result, each invention at issue lacks novelty or inventive step (Article 29(1)(iii) or (2) of the Patent Act) over the published patent application relating to the original application for the patent at issue (Japanese Unexamined Patent Application Publication No. 2014-128287, distributed on July 10, 2014 [Exhibit Otsu 15]).

…

[Court’s Determination]

Of the descriptions in the Specification, etc. at the Time of Division of the Original Application, the description … relating to the configuration that “the connecting piece is fixed to the rear surface of the ridge-forming surface of the ridge-forming plate positioned on the front side in the direction of rotation among the adjacent ridge-forming plates and does not extend to the ridge-forming surface of the ridge-forming plate positioned on the rear side in the direction of rotation” may be inferred to be the same as the description … in the original specification, etc.; therefore, that configuration should be regarded as self-evident from the above description in the Specification, etc. at the Time of Division of the Original Application. The configuration of “a connecting piece provided along the boundary portion” is likewise recognized as self-evident from the description in the specification at the time of division of the original application. … According to the foregoing, the patents for the respective inventions at issue cannot be found not to relate to lawful divisional applications. …

 

(9) Intellectual Property High Court, Heisei 28 (Gyo-Ke) No. 10263 [Wiring Box] (Mirai Kogyo v. Nichido Denko) <Presiding Judge Takabe>

Judgment: https://www.courts.go.jp/assets/hanrei/hanrei-pdf-87087.pdf

* General method for assessing the divisional requirements of a fifth-generation (great-great-grandchild) patent

<Excerpt from the Holding>

The substantive requirements for a divisional application to be lawful are that (i) the specification or drawings of the original application contained two or more inventions, (ii) the invention of the new application is part of an invention described in the specification or drawings of the original application, and (iii) the invention of the new application falls within the scope of matters described in the original specification, etc. of the original application. Because the application at issue is a fifth-generation divisional application counted from the first application, in order for the application at issue to be deemed to have been filed at the time of filing of the first application, the application at issue, the fourth application, the third application, and the second application must each satisfy divisional requirements (i) to (iii) above in relation to their respective original applications, and the invention at issue must fall within the scope of matters described in the original specification, etc. of the first application.

 

End

 

 

(Plaintiff) East Nippon Expressway Company Limited

(Defendant) PXZ Limited Company

[Patent ★★] A case in which, in the appellate instance of a patent infringement action, a new ground for invalidity was alleged in the statement of reasons for appeal, but was held untimely because it could have been alleged in the court of first instance — Intellectual Property High Court, Reiwa 6 (Ne) No. 10010 [Women’s Garment] <Presiding Judge Nakadaira> — (First Instance: Tokyo District Court, Reiwa 3 (Wa) No. 18262 <Presiding Judge Kokubu>)

Original Article URL: https://www.nakapat.gr.jp/ja/legal_updates_jp/%e3%80%90%e7%89%b9%e8%a8%b1%e2%98%85%e2%98%85%e3%80%91%e7%89%b9%e8%a8%b1%e6%a8%a9%e4%be%b5%e5%ae%b3%e8%a8%b4%e8%a8%9f%e3%81%ae%e6%8e%a7%e8%a8%b4%e5%af%a9%e3%81%ab%e3%81%8a%e3%81%84%e3%81%a6%e3%80%81/

 

◆ Judgment Text

 

[Summary of This Judgment and Some Observations]

1. Claims (Claim 1)
2. A women’s garment covering at least the bust portion of a woman, comprising:

   B. a cup member covering at least the bust portion of the woman;

   C. left and right front-body members disposed on the front-surface side of the cup member in a state separated from the cup member,

   the left and right front-body members being provided from the respective left and right underarm portions of the bust portion to a central portion of the lower bust while covering the sides of the bust; and

   D. a plurality of connecting members provided so as both to connect the left and right front-body members to each other near the central portion of the lower bust and to permit adjustment of the connecting width of the left and right front-body members,

   E. the women’s garment being characterized thereby.

 

2. Infringement Analysis (First-Instance Judgment / Tokyo District Court, Reiwa 3 (Wa) No. 18262 [Women’s Garment] <Presiding Judge Kokubu>)

First-instance judgment: https://www.courts.go.jp/assets/hanrei/hanrei-pdf-92632.pdf

The sixth edition of Kojien sets out two meanings of the term “tomoni”: (i) “as one; together; in company; alike” and (ii) “at the same time.”

The Defendant (the alleged infringer) alleged that, when Kojien sets out two meanings, the meaning listed first is the more general meaning, but this allegation was not accepted.

The Tokyo District Court stated: “There is insufficient evidence to establish that the sixth edition of Kojien adopted an editorial policy of listing meanings beginning with those in broad and general use. Further, … the items specifically exemplified as ‘connecting members’ in the specification … are inconsistent with the Defendant’s … construction. …” It construed the claim term “tomoni” in the patented invention to have meaning (ii), “at the same time,” and found infringement. (The patentee prevailed.)

 

(Excerpt from the Holding / First-Instance Judgment)

The Defendant alleges that, with respect to “tomoni” in Limitation D, because, when a dictionary is compiled, the meanings of each word or phrase are listed beginning with those in broad and general use, the term should have the meaning listed first in the sixth edition of Kojien, namely, “as one; together; in company; alike.” However, which meanings of a word or phrase are given priority in the description is considered to depend on the editorial policy of each dictionary, and … there is insufficient evidence to establish that the sixth edition of Kojien adopted an editorial policy of listing meanings beginning with those in broad and general use. Further, … each item specifically exemplified as a “connecting member” in the specification at issue is such that its connecting width cannot be adjusted unless the connecting members are disconnected from each other, and is therefore inconsistent with the Defendant’s proposed construction of “tomoni.” …

 

3. Invalidity Analysis (Although Held Untimely, It Was Nevertheless Considered.)

Grounds for invalidity alleged by the Appellant in the court of first instance

• Lack of novelty and inventive step based on Otsu 8 as the primary reference
• Lack of inventive step based on Otsu 9 and Otsu 10 as secondary references

Grounds for invalidity first alleged by the Appellant on appeal

• Lack of novelty and inventive step based on Otsu 31 to 33 (U.S. patent documents)

 

The Appellee’s Arguments on Untimeliness and the Intellectual Property High Court’s Determination

1. The Appellee’s argument: There was a time at which it should have been alleged in the court of first instance

• On August 31, 2022, at a procedural session, the court disclosed its preliminary view on infringement.
• It was possible to allege the new grounds for invalidity by that time.

2. The Appellee’s argument: They were neither submitted nor alleged at all in the court of first instance

• “The Appellant did not even submit Otsu 31 to 33 through the end of the proceedings.”
• “Nor did it make any allegations of invalidity based on those documents.”

3. The Appellee’s argument: There were no circumstances making the allegation difficult

• “There are no circumstances suggesting that it was difficult to allege an invalidity defense based on the documents Otsu 31 to 33.”

4. The court’s determination: Delay in concluding the proceedings was not established in this case

• A change in the level of court or in counsel did not justify the late submission. However, the Appellee had responded in the alternative, and the proceedings closed without a further response from the Appellant. To that extent, the court did not find that consideration would delay the conclusion of the proceedings.
• Conclusion

The failure to make the allegation in the court of first instance, despite being able to do so, was held “untimely.” However, delay in concluding the proceedings was not established, and the court addressed the invalidity grounds on their merits.

6. “It cannot be said that it would delay completion of the proceedings”

Because a response to the grounds for invalidity had been made and oral argument was concluded without any further response, the court held that it could not be said that consideration of the grounds would delay completion of the proceedings and therefore decided the invalidity issues.

 

(Excerpt from the Holding / Appellate Judgment (This Judgment))

First, in examining whether this constitutes an untimely allegation or defense, the Appellant’s new allegation of grounds for invalidity in this appellate instance was made in the statement of reasons for appeal dated February 6, 2024. In a patent infringement action, an invalidity defense may be alleged without awaiting finalization of an invalidation decision in a patent invalidation trial, in order to resolve a dispute concerning patent infringement as promptly as possible within the patent infringement proceedings. Because the defense is made within civil litigation proceedings, which are separate from a patent invalidation trial, it should be dismissed as an untimely allegation or defense when, in light of the course of the proceedings, it would unduly delay the proceedings.

On that basis, reviewing the course of the proceedings in the court of first instance, the Appellant, which was the first-instance Defendant, denied in its answer dated October 22, 2021 and submitted on October 27, 2021 that the Appellee’s product satisfied the limitations of the invention at issue, and alleged a ground for invalidity based on lack of inventive step, using Otsu 8 as the primary reference and combining it with well-known art or using Otsu 9 as a secondary reference. After receiving the Appellee’s response and other submissions, the Appellant added, in Preparatory Brief (3) dated March 18, 2022, a ground for invalidity based on lack of novelty over Otsu 8. After receiving the Appellee’s further response, it additionally alleged, in Preparatory Brief (4) dated May 27, 2022, a ground for invalidity based on lack of inventive step, using Otsu 8 as the primary reference and Otsu 10 as a secondary reference. In response to the Appellee’s arguments on that point, it further replied in Preparatory Brief (5) dated August 29, 2022.

Then, on the premise that the parties had fully presented their allegations and evidence on infringement, in a preparatory proceeding conducted by web conference on August 31, 2022, the court disclosed its preliminary view that the proceedings would move to damages (the progress table for the preparatory proceeding on August 31, 2022 states in the “result of discussion” column: “Both parties: allegations and proof regarding infringement have been completed”; and “Presiding Judge: hereafter, the proceedings will address damages”). Proceedings on damages then continued. At the oral-argument hearing held on September 22, 2023, the Appellant stated that it had no further allegations or evidence, the oral argument in the court of first instance was concluded, and the original judgment was rendered.

In light of this course of proceedings in the court of first instance, the new allegation of grounds for invalidity in this appellate instance constitutes an untimely allegation or defense, and the Appellant was grossly negligent in delaying its submission. It would therefore ordinarily have to be dismissed. However, the Appellee has, albeit in the alternative, responded to the grounds for invalidity submitted in this appellate instance, and the oral argument in this appellate instance has been concluded without any further responsive allegation by the Appellant. To that extent, it cannot be said that considering the grounds would delay completion of the proceedings; therefore, the court will decide them below. …

 

4. Some Observations

The course of allegations and proof in the court of first instance was ordinary for a patent infringement action. Thus, if, under the reasoning of this judgment, new grounds for invalidity “made in the statement of reasons for appeal” are held untimely, it may in substance become impossible to make any new allegation beginning in the appellate instance.

In the Ichitaro case (discussed below), the assertion of a new ground for invalidity beginning on appeal was permitted because the first-instance proceedings were short and the new primary reference was a foreign-language document. In this case, however, the assertion of a new ground for invalidity using the invention in Otsu 31, an English-language document, as the primary reference was held, in principle, to be untimely.

The Appellee argued that “the Appellant did not even submit Otsu 31 to 33 through the end of the proceedings.” In response to that argument, one might think they should simply have been submitted and alleged even after disclosure of the first-instance court’s preliminary view. Yet another Intellectual Property High Court judgment held an allegation untimely because it had been dismissed as untimely in the first instance; there is therefore no way out.

Separately from whether an allegation is untimely, one possible strategy for obtaining an appellate holding, as in this judgment, that “it cannot be said that it would delay completion of the proceedings” is to make all allegations in the statement of reasons for appeal and then refrain from making a further response to the Appellee’s response. Because the proceedings in this case followed that course, the invalidity issues were decided on the ground that “it cannot be said that it would delay completion of the proceedings.”

If so, when a new ground for invalidity is alleged in the statement of reasons for appeal, the Appellee could adopt a strategy of not responding to its substance and alleging only untimeliness. However, although it would ordinarily be difficult to imagine that the appellate court would close oral argument at that point, uphold the invalidity defense, and reverse in favor of the alleged infringer, a strategy of making no response entails risk. In many cases, therefore, the Appellee will likely respond on the merits as a precaution.

Regarding allegations first made on appeal and untimeliness, many prior Intellectual Property High Court judgments did not find an allegation untimely if made in the statement of reasons for appeal, but found it untimely if made in a preparatory brief after that statement; this judgment is extremely strict. A comprehensive strategy should be formulated while bearing in mind that other Intellectual Property High Court judgments have found that new grounds for invalidity alleged beginning on appeal were not untimely.

For example, Heisei 28 (Ne) No. 10100 [Electric Fishing Reel] <Presiding Judge Takabe> involved a correction defense that had been alleged after the court of first instance disclosed its view that the patent was invalid and had been dismissed as untimely. When the correction defense dismissed below was alleged in the statement of reasons for appeal, however, it was not dismissed as untimely.

That judgment held: “In light of the course of proceedings in the court of first instance and this court, it may be said that it would have been desirable to make the correction defense earlier. Nevertheless, because the Appellant, after the original judgment was rendered and advance notice of the trial decision was issued, set out the correction defense in detail in the statement of reasons for appeal and promptly submitted that allegation in this appellate instance, it cannot be said that the Appellant’s submission of the correction defense was untimely.” This is close to practical sensibilities. Where the first-instance judgment contains an unexpected determination, should not an allegation made on the basis of that determination be permitted on appeal, so long as it is made in the statement of reasons for appeal, at the outset of the appellate proceedings?

 

 

[Related Court Decisions Concerning the Timeliness of New Allegations on Appeal]

1. Court decisions addressing the timeliness of allegations made at the outset of the appeal in the statement of reasons for appeal

Intellectual Property High Court, Reiwa 6 (Ne) No. 10010 [Women’s Garment] <Presiding Judge Nakadaira> (This Judgment)

Judgment: https://www.courts.go.jp/assets/hanrei/hanrei-pdf-93355.pdf

* A new invalidity defense alleged in the statement of reasons for appeal was held untimely. (On this reasoning, nothing new could be alleged beginning on appeal …)

Supplement: In this case, delay in concluding the proceedings was not established and the invalidity defense was not dismissed. The parenthetical observation is the author’s criticism; the judgment does not impose a categorical prohibition on new allegations on appeal.

“The Appellant’s new allegation of grounds for invalidity in this appellate instance was made … in the statement of reasons for appeal. …

… After receiving the court’s disclosure of its preliminary view that the proceedings would move to damages, … proceedings on damages continued, and … at the oral-argument hearing, the Appellant stated that it had no further allegations or evidence; the oral argument in the court of first instance was concluded; and the original judgment was rendered. … In light of this course of proceedings in the court of first instance, the new allegation of grounds for invalidity in this appellate instance constitutes an untimely allegation or defense, and the Appellant was grossly negligent in delaying its submission. It would therefore ordinarily have to be dismissed. However, the Appellee has, albeit in the alternative, responded to the grounds for invalidity submitted in this appellate instance, and the oral argument in this appellate instance has been concluded without any further responsive allegation by the Appellant. To that extent, it cannot be said that considering the grounds would delay completion of the proceedings; therefore, the court will decide them below. … The allegation of lack of inventive step is without merit.”

 

Intellectual Property High Court, Heisei 29 (Ne) No. 10055 [Continuous Shellfish Fastening Tool] <Presiding Judge Mori>

Judgment: https://www.courts.go.jp/assets/hanrei/hanrei-pdf-88166.pdf

* Although untimely, the next hearing had been scheduled and completion of the proceedings would not be delayed. ⇒ Not dismissed. ⇒ Lack of novelty.

“It is recognized that the Appellants could have submitted the defense concerning Ground for Invalidity 3 (lack of novelty) no later than January 26, 2017; therefore, it constitutes an ‘allegation or defense submitted untimely’ (Article 157(1) of the Code of Civil Procedure).

However, at the first oral-argument hearing in this appeal, … Appellant Shinwa alleged that, before the date on which the patent at issue was deemed filed, it had sold a product satisfying the limitations of each invention at issue and that the patent at issue therefore lacked novelty. At that hearing, a further hearing was scheduled and additional allegations and proof were contemplated. In those circumstances, there was insufficient basis to find that the allegation at that time would delay completion of the proceedings.” (* January 26, 2017 was the date on which oral argument in the court of first instance was concluded.)

 

Intellectual Property High Court, Reiwa 5 (Ne) No. 10071 [Chip-Type Fuse] <Presiding Judge Miyasaka>

Judgment: https://www.courts.go.jp/assets/hanrei/hanrei-pdf-92795.pdf

* An allegation concerning a different claim that had been dismissed as untimely in the court of first instance was also dismissed as untimely on appeal.

“The facts stated in the attached ‘Course Leading to the Addition of the Cause of Action at Issue’ are recognized as the course of proceedings and other matters in the court of first instance leading to the addition of the cause of action at issue. Specifically, at the answer stage (dated February 28, 2022), the Appellee submitted detailed allegations disputing satisfaction of the fourth requirement of the doctrine of equivalents, specifically identifying such publicly known documents as Otsu 1 and Otsu 3. Thereafter, by November of that year, the Appellant and Appellee exchanged two rounds of briefs containing arguments on that issue and fully presented allegations and proof. During that period, the record of the preparatory proceedings included the Appellee’s procedural position that it would ‘submit a responsive brief focusing on the fourth requirement of the doctrine of equivalents,’ and satisfaction of the fourth requirement was recognized as at least one of the central issues in the case. At a discussion by web conference on November 28, when allegations and proof on infringement had reached a preliminary stopping point (a discussion in written preparatory proceedings; the same applies below), the court disclosed to both parties its preliminary view that the Appellee’s product did not fall within the technical scope of Invention 1 at issue, and the parties were to consider settlement. Settlement negotiations soon failed. At the discussion on January 27, 2023, the Appellant stated that it would submit a preparatory brief setting out a further response concerning the arc-extinguishing action (note: relating to the second requirement of the doctrine of equivalents), supplementation of its prior allegations, and other matters. Nevertheless, in a preparatory brief dated February 27, 2023, the Appellant then alleged the addition of the cause of action at issue. In response, by a preparatory brief dated April 13, 2023, the Appellee moved for dismissal as an untimely method of attack or for a ruling refusing the amendment of the action as one that would substantially delay the proceedings.

… On the basis of the foregoing, first examining whether addition of the cause of action at issue was “untimely,” the Appellant sought that addition because, as long as the issue was whether Invention 1 at issue under Claim 1 fell within the technical scope, it was highly likely, in relation to the publicly known documents submitted by the Appellee, … that the fourth requirement of the doctrine of equivalents (non-equivalence to publicly known art, etc.) would be held unsatisfied; the Appellant therefore attempted to satisfy the fourth requirement by putting at issue Invention 2 under Claim 3, which includes the additional configuration at issue. However, … the Appellee’s allegation disputing the fourth requirement of the doctrine of equivalents had already been submitted in detail and with specificity at the answer stage, and it was possible to consider addition of the cause of action at issue as a countermeasure. Thereafter, the parties exchanged two rounds of briefs over approximately nine months and fully presented allegations and proof on this issue. The Appellant then suddenly added the cause of action at issue after disclosure of the court’s preliminary view and despite having itself stated the procedural position that it contemplated only a supplemental submission. It is clear that this constituted submission of an untimely method of attack.”

 

Intellectual Property High Court, Heisei 29 (Ne) No. 10072 [Personal-Network Relationship Registration System] <Presiding Judge Tsuruoka>

Judgment: https://www.courts.go.jp/assets/hanrei/hanrei-pdf-87419.pdf

* An allegation under the doctrine of equivalents made at the first appellate hearing was dismissed as untimely.

Cf. Heisei 29 (Ne) No. 10029 and Heisei 27 (Ne) No. 10076, in which the allegations were not dismissed.

“At the first oral-argument hearing in this appellate instance, … this Court dismissed the allegation of infringement under the doctrine of equivalents as an untimely allegation or defense. The reasons are as follows. … The Appellant should naturally have anticipated from the outset that the conclusion on satisfaction or non-satisfaction of the limitations could change depending on the claim construction regarding … and the manner of internal processing by the Appellee’s server. Accordingly, the Appellant had ample opportunity, at the issue-organizing stage in the court of first instance, to consider whether to allege infringement under the doctrine of equivalents even in the alternative and to make that allegation as necessary. (In light of the actual use of planned proceedings in patent infringement litigation, it is reasonable to view the matter in this way; and at least no objective circumstances preventing the Appellant from making the allegation are recognized.) Nevertheless, the Appellant did not make the allegation at the issue-organizing stage below, stated that there were ‘no further allegations or proof regarding infringement,’ and allowed the issue-organizing procedure to conclude. In these circumstances, the Appellant’s addition of an allegation of infringement under the doctrine of equivalents in this appellate instance, as stated above, was clearly untimely even though made before the first oral-argument hearing, and the Appellant is found to have acted intentionally or with gross negligence in that regard. …”

 

Cf. Intellectual Property High Court, Heisei 27 (Ne) No. 10076 [Circular Table] <Presiding Judge Takabe>

Judgment: https://www.courts.go.jp/assets/hanrei/hanrei-pdf-85463.pdf

* An allegation under the doctrine of equivalents made at the first appellate hearing was not dismissed as untimely (because the appeal was dismissed at the first hearing, meaning the patentee lost).

“The Appellant’s allegation above was set out in … the preparatory brief stating the reasons for appeal, the Appellee also admitted or denied and responded to it, and it could be decided based on evidence already submitted. This Court then … concluded oral argument at the first appellate oral-argument hearing. Accordingly, the Appellant’s allegation above cannot be found to ‘delay completion of the proceedings’ (Article 157(1) of the Code of Civil Procedure), and therefore should not be dismissed as untimely.”

 

Cf. Intellectual Property High Court, Heisei 26 (Ne) No. 10111 [Method for Mixing Granular Material and Removing Fine Powder] <Presiding Judge Takabe>

Judgment: https://www.courts.go.jp/assets/hanrei/hanrei-pdf-85366.pdf

* An allegation under the doctrine of equivalents made at the first appellate hearing was held untimely, but was decided.

“In light of the course of the proceedings, including that the issues in the first instance concerned exclusively satisfaction of Limitations 2E and 1B; that the notice of appeal did not state reasons for appeal; that the statement of reasons for appeal did not include … an allegation of infringement under the doctrine of equivalents or give notice of such an allegation; and that the Appellant’s first preparatory brief was submitted only five days before … the first oral-argument hearing in this appellate instance, the Appellant’s allegation of infringement under the doctrine of equivalents must be regarded as untimely. However, because the Appellee also admitted or denied and responded to the allegation, the court will decide below whether infringement under the doctrine of equivalents is established.”

 

Cf. Intellectual Property High Court, Reiwa 4 (Ne) No. 10078 [Display Device Capable of One-Handed Support] <Presiding Judge Kanno>

Judgment: https://www.courts.go.jp/assets/hanrei/hanrei-pdf-91824.pdf

* Three correction defenses were alleged in the court of first instance ⇒ a fourth correction defense was alleged in the statement of reasons for appeal; in light of the course of the proceedings, the court stated that it ordinarily would have to be dismissed as untimely. However, because a response had been made, the court decided it.

“Reviewing the course of the proceedings in the court of first instance, after the invalidity defense alleging that the patent at issue lacked novelty and inventive step was made at the first preparatory-hearing date (November 18, 2019) (Defendant’s Preparatory Brief No. 1), the Appellant submitted, by the third preparatory-hearing date (July 27, 2020), Plaintiff’s Preparatory Brief No. 2 concerning a correction defense based on the second correction. In conjunction with correction requests in the patent invalidation trial, it then submitted Plaintiff’s Preparatory Brief No. 5 dated March 3, 2021 and Plaintiff’s Preparatory Brief No. 6 dated May 27, 2021, setting out a correction defense based on the third correction (those briefs, including corrected versions, were stated at the fourth preparatory-hearing date (December 16, 2021)). The original judgment held that neither the correction defense based on the second correction nor that based on the third correction satisfied the correction requirements, and that the patent at issue should be invalidated in a patent invalidation trial. The Appellant then added, in the statement of reasons for appeal, a correction defense based on the fourth correction. In light of this course of proceedings below, the fourth correction constitutes an untimely allegation or defense, and the Appellant was grossly negligent in delaying its submission, so it would ordinarily have to be dismissed. However, the Appellee responded to the correction defense based on the fourth correction, including that the fourth correction does not satisfy the correction requirements. To that extent, it cannot be said that considering the defense would delay completion of the proceedings; therefore, the court will decide it below.”

 

2. Court decisions in which the allegation was not held untimely on appeal (because, for example, an invalidation decision had issued. ⇒ A similar effect may be expected if proceedings have reached advance notice of the trial decision.)

Intellectual Property High Court, Heisei 30 (Ne) No. 10033 [Aerosol Can Product] <Presiding Judge Otaka>

Judgment: https://www.courts.go.jp/assets/hanrei/hanrei-pdf-88388.pdf

* The same ground for invalidity dismissed below was alleged in the statement of reasons for appeal. ⇒ Not dismissed.

“… The commissioned judge in the court of first instance granted the Appellee’s motion above and dismissed the Appellant’s allegations and evidence relating to the invalidity defense above. The Japan Patent Office, … finding a violation of the support requirement … and the existence of the ground for invalidity relating to the invalidity defense at issue, rendered a separate decision invalidating the patent. …

The Appellant’s invalidity defense in this appellate instance is the same in substance as the allegation dismissed below as an untimely allegation or defense because it was submitted after the infringement phase had concluded and the damages phase had begun. However, the Appellant resubmitted it in this appellate instance after a separate decision invalidating the patent at issue had been rendered before conclusion of oral argument below, recognizing the existence of the ground for invalidity relating to the invalidity defense at issue and other matters. It is also recognized that the Appellant set out the invalidity defense at issue in the statement of reasons for appeal and alleged it from the outset of the appellate proceedings. Therefore, submission of the Appellant’s invalidity defense in this appellate instance cannot be said to have been untimely. In light of the course of the appellate proceedings, it is also not recognized that submission of the invalidity defense by the Appellant would delay completion of the proceedings. Accordingly, … the court will not dismiss it as an untimely allegation or defense.”

 

Intellectual Property High Court, Reiwa 1 (Ne) No. 10066 [Information Management Program] <Presiding Judge Mori>

Judgment: https://www.courts.go.jp/assets/hanrei/hanrei-pdf-89631.pdf

* The same ground for invalidity that was dismissed below. ⇒ Not dismissed.

In the court of first instance, an invalidity defense based on lack of novelty over the Otsu 14 invention had been dismissed as untimely.

⇒ The first-instance Defendant reasserted in the statement of reasons for appeal, in light of the invalidation decision, the lack-of-novelty defense based on the Otsu 14 invention that had been dismissed as untimely below. The appellate court addressed that invalidity ground on its merits.

⇒ The patentee lost on reversal based on lack of novelty. (★ Three months earlier, the same Second Division of the Intellectual Property High Court had rendered a judgment in the action to rescind the trial decision, Reiwa 1 (Gyo-Ke) No. 10109, and had upheld the invalidation decision based on lack of novelty.)

 

3. Other Cases

Intellectual Property High Court, Heisei 28 (Ne) No. 10100 [Electric Fishing Reel] <Presiding Judge Takabe>

Judgment: https://www.courts.go.jp/assets/hanrei/hanrei-pdf-86595.pdf

* A correction defense alleged after the court of first instance disclosed its view that the patent was invalid had been dismissed as untimely.

⇒ When the correction defense dismissed below was alleged in the statement of reasons for appeal, it was not dismissed as untimely.

“The Appellant did not submit a correction defense in the court of first instance before conclusion of the preparatory proceedings, but first alleged it in a preparatory brief submitted after those proceedings had concluded, and it was therefore dismissed by the court of first instance as untimely. (The correction alleged below was identical to the correction in this appellate instance, except for the presence or absence of the words ‘with one hand.’) After the original judgment was rendered on September 8, 2016, the Appellant filed an appeal on September 21. On September 30, advance notice of the trial decision was issued in each patent invalidation trial concerning Patents 1 to 3 at issue. The Appellant therefore set out the correction defense in the statement of reasons for appeal submitted on November 10 of that year. In light of the course of proceedings in the court of first instance and this court described above, it may be said that it would have been desirable to make the correction defense earlier. Nevertheless, because the Appellant, after the original judgment was rendered and advance notice of the trial decision was issued, set out the correction defense in detail in the statement of reasons for appeal and promptly submitted that allegation in this appellate instance, it cannot be said that the Appellant’s submission of the correction defense was untimely. In addition, in light of the content of the correction defense at issue, its submission is not recognized as delaying completion of the proceedings. The court therefore will not dismiss the Appellant’s correction defense as untimely.”

 

Intellectual Property High Court (Grand Panel), Heisei 17 (Ne) No. 10040 [Ichitaro Case]

Judgment: https://www.courts.go.jp/ip/vc-files/ip/file/10040.pdf

“Whether an allegation or defense should be dismissed under Article 157 of the Code of Civil Procedure as untimely must be determined, in accordance with the specific progress of the litigation, based on whether there were objective circumstances under which it could have been expected to be submitted earlier than it was. Each of the circumstances alleged by the Appellant merely concerns matters unrelated to the specific progress of this litigation concerning the Appellee’s claim.

In the court of first instance, only slightly more than two months elapsed from the first oral-argument hearing until oral argument was concluded at the third hearing, and less than four months elapsed even from filing of the action. Thus, the first-instance proceedings were conducted extremely quickly over a short period. Except for certain supplemental portions, the Appellant’s new allegations and proof in this appellate instance concerning satisfaction of the limitations and the grounds for invalidity of the patent at issue were basically made together with the statement of the reasons for appeal at the first oral-argument hearing in this appellate instance, and were submitted at the outset of the appellate proceedings. Turning to the substance of the additional allegations and proof above, the part concerning satisfaction of the limitations merely supplemented, from a somewhat different angle, the Appellant’s allegation already made below concerning satisfaction of the limitation (the meaning of ‘icon’). The part concerning the grounds for invalidity of the patent at issue was based on newly added documents, but each was an English-language document distributed abroad and had been distributed before the filing date of the patent at issue, which was nearly fifteen years before this action was filed. It was therefore unavoidable that investigating and searching for such publicly known documents would require a certain amount of time. Considering all these circumstances together, the Appellant’s additional allegations and proof newly submitted in this appellate instance concerning satisfaction of the limitations and the grounds for invalidity of the patent at issue cannot be said to have been untimely.”

 

Intellectual Property High Court, Heisei 30 (Ne) No. 10044 [Optical Information Reading Device] <Presiding Judge Otaka>

Judgment: https://www.courts.go.jp/assets/hanrei/hanrei-pdf-88010.pdf

* A correction defense made four days before the first appellate hearing was dismissed as untimely.

“A correction defense to an invalidity defense should originally be alleged at an appropriate time in the court of first instance. Moreover, although the Appellant could have alleged the correction defense in this appellate instance no later than the deadline for submitting the statement of reasons for appeal, it did not do so and first submitted a preparatory brief setting out the correction defense at issue only four days before the first oral-argument hearing. The correction defense at issue should therefore be regarded as an untimely allegation or defense submitted due at least to the Appellant’s gross negligence.”

 

Intellectual Property High Court, Heisei 30 (Ne) No. 10031 [Lower-Limb Garment] <Presiding Judge Takabe>

Judgment: https://www.courts.go.jp/assets/hanrei/hanrei-pdf-88234.pdf

* An invalidity defense made after the deadline for submitting the statement of reasons for appeal was dismissed as untimely.

“… More than one month after … the deadline for submitting their statement of reasons for appeal, … the first-instance Defendants submitted … ‘Statement of Reasons for Appeal (3).’ … The addition of the invalidity defense and publicly known-art defense should be dismissed as an untimely allegation or defense under Article 157(1) of the Code of Civil Procedure. …

In addition to the circumstances above, … the grounds for invalidity sought to be added in this appellate instance … number at least six. Addition on appeal of an invalidity defense based on such a large number of grounds for invalidity must be regarded as having been submitted for the purpose of unduly delaying the proceedings. Accordingly, the additional invalidity-defense allegations should also be dismissed under Article 104-3(2) of the Patent Act.”

 

Intellectual Property High Court, Reiwa 3 (Ne) No. 10084 [Printed Retroreflective Sheet] <Presiding Judge Miyasaka>

Judgment: https://www.courts.go.jp/assets/hanrei/hanrei-pdf-92685.pdf

* A new invalidity defense at the first appellate hearing was dismissed as untimely.

Allegations (i) and (ii) of lack of inventive step first made on appeal were dismissed as untimely!!

• The primary reference alleged below + other secondary references
• An allegation changing the construction of the primary reference alleged below (the determination of the primary-reference invention)

 

Intellectual Property High Court, Reiwa 4 (Ne) No. 10008 [Information Providing Device] <Presiding Judge Otaka>

Judgment: https://www.courts.go.jp/assets/hanrei/hanrei-pdf-91603.pdf

* Correction defense alleged after conclusion of written preparatory proceedings on appeal ⇒ dismissed as untimely

The court of first instance found lack of novelty, but the patent was maintained in the JPO invalidation trial. The patentee therefore did not allege a correction defense from the outset of the appeal and did not do so during the appellate issue-organizing procedure before conclusion of the written preparatory proceedings, but alleged it after those proceedings had concluded. ⇒ Dismissed as untimely. <Because the sequence was a decision maintaining the patent followed by the original judgment, the correction defense should have been asserted in the alternative.> The alleged infringer changed its comparison with the primary reference so as to cover the decisive difference on which the decision maintaining the patent had found the patent maintainable, and the original judgment found lack of novelty.

 

Intellectual Property High Court, Reiwa 3 (Ne) No. 10094 [… Work Glove] <Presiding Judge Kanno>

Judgment: https://www.courts.go.jp/assets/hanrei/hanrei-pdf-91303.pdf

* A correction defense alleged after the court of first instance disclosed its view that the patent was invalid had been dismissed below as untimely. ⇒ Although the correction defense dismissed below was alleged in the statement of reasons for appeal, it was again dismissed as untimely.

“The Appellant alleges in the statement of reasons for appeal that the invention at issue should be corrected (a correction defense), but this Court dismissed the allegation as an untimely allegation or defense. The reasons are as follows. According to the record, the correction defense was made after the court of first instance disclosed its view that the patent at issue was invalid and was therefore dismissed below as an untimely allegation or defense. No circumstances are found showing that it could not have been alleged at an appropriate time in the court of first instance. The above allegation in this appellate instance is therefore plainly untimely, the Appellant was at least grossly negligent in that regard, and permitting this allegation or defense would plainly cause substantial delay in completion of these proceedings.”

 

Intellectual Property High Court, Reiwa 2 (Ne) No. 10044 [Fluid Supply Device and … Program] <Presiding Judge Tsuruoka>

Judgment: https://www.courts.go.jp/assets/hanrei/hanrei-pdf-90472.pdf

* The invalidity allegation was made after disclosure of the court of first instance’s preliminary view, but there was a problem with the organization of allegations below (whether there was a judicial admission).

⇒ Whether and when an invalidity argument should be submitted must be assessed in light of the course of the allegations and evidence on infringement. In this case, there were deficiencies in the first-instance court’s organization of the issues, and submission after disclosure of the court’s provisional view did not, by itself, make the argument untimely. — Not dismissed.

“Regarding whether the allegations constituted ‘untimely allegations or defenses’: Invalidity Allegations A, B, and D were made after disclosure of the court of first instance’s preliminary view on infringement and were therefore treated below as untimely. However, as already noted in the section concerning infringement, the organization of allegations in the court of first instance concerning satisfaction of Limitation 1C1 (Non-Infringement Allegation (iv)) and satisfaction of Limitations 1A, 1C, 1F3, and 1F4 (Non-Infringement Allegation (v)) was deficient in that issues that should have been treated as disputed were treated as undisputed. The necessity and timing of allegations concerning invalidity cannot be considered separately from the development of allegations and proof on infringement. Therefore, in this case, where further allegations and proof should originally have been presented on infringement, it is not appropriate to characterize the invalidity allegations as untimely merely because they were made after disclosure of the court of first instance’s preliminary view. The invalidity allegations concerning the above grounds for invalidity were also made promptly after appeal. Accordingly, neither from the perspective of viewing the proceedings below and on appeal as a whole nor from the perspective focused on the appellate proceedings can the first-instance Defendant’s invalidity allegations above be characterized as untimely.”

 

End

 

(Appellant) FLORe Co., Ltd.

(Appellee) MIC Co., Ltd.

[Patent ★] A case in which the configuration, etc. of the counterpart subcombination was held not to be a matter specifying the invention. ⇒ No inventive step — Intellectual Property High Court, July 10, 2025; Reiwa 6 (Ne) No. 10012 [R Badge, Receiving Device] <Presiding Judge Hibiki Shimizu> —

Original Article URL: https://www.nakapat.gr.jp/ja/legal_updates_jp/%e3%80%90%e7%89%b9%e8%a8%b1%e2%98%85%e3%80%91%e3%82%b5%e3%83%96%e3%82%b3%e3%83%b3%e3%83%93%e3%83%8d%e3%83%bc%e3%82%b7%e3%83%a7%e3%83%b3%e3%81%ae%e7%9b%b8%e6%89%8b%e6%96%b9%e3%81%ae%e6%a7%8b%e6%88%90/

(1) Criteria for Determining Matters Specifying the Invention in a Subcombination Claim

This judgment has important practical significance because, in determining the gist of a subcombination invention (an invention of a device constituting part of a multifunctional system), it provided guidance on when matters concerning the “other subcombination (counterpart device)” recited in the claim are taken into account as matters specifying the invention (or are ignored).

This judgment confirmed the framework that a description concerning the counterpart device of a subcombination is excluded (ignored) in determining the gist of the invention “where the matters concerning that other subcombination are matters specifying only that other subcombination and do not specify the structure, function, or the like of the subcombination under the claim.”

Quotation source: Judgment, p. 17. Here, the other subcombination refers to the counterpart device, and the subcombination under the claim refers to the claimed device itself.
https://www.courts.go.jp/assets/hanrei/hanrei-pdf-94282.pdf

That is, even if the claim wording merely includes a limitation concerning the counterpart device (for example, a high-function mobile phone, an application-download function, or the like), it is excluded (ignored) from determination of the gist of the invention at issue, which is the premise for assessing novelty and inventive step, if it does not affect the structure, function, or the like of the device under that claim (for example, the receiving device) itself (= if it has no meaning in specifying that device).

 

(2) Whether the Feature Is Reflected in the “Structure, Function, or the Like” (Comparison with Related Court Decisions)

Viewing this judgment together with the [Related Court Decisions] below (affirmative and negative examples), the dividing line for whether a subcombination claim is recognized as stating a matter specifying the invention may be said to be whether the feature of the counterpart device of the subcombination specifies (limits) the “structure, function, or the like” of the claimed device itself.

(i) Cases in Which the Matter Was Not Recognized as a Matter Specifying the Invention (This Judgment, the “Information Processing Device” Judgment, the “Lock and Key” Judgment, etc.)

In this judgment, whether the mobile phone (the counterpart) had “means for downloading an application and adding a function,” a “credit-card function,” or the like caused no difference, from the perspective of the receiving device, in the basic operation of receiving transmitted identification information (ID). In other words, where only the “internal circumstances” of the counterpart device or the “semantic content of the information” handled by it are described, and the signal format or physical shape at the interface between the two devices does not change, that description is excluded from the gist of the invention.

The “Information Processing Device” judgment discussed below held that the statement concerning the “basis” on which the server extracts information did not specify the content of the information-processing device’s publication-notification means. In the “Rotary Disc Tumbler Lock and Key” judgment, the invention was identified by the matters specifying the key itself. Adding limitations concerning the lock did not limit the key itself and therefore did not constitute a correction for narrowing the claims or another permitted purpose. The latter decision thus also concerns the requirements for correction.

(ii) Cases in Which the Matter Was Recognized as a Matter Specifying the Invention (the “Waste Storage Device” Judgment, the “Liquid Container” Judgment, etc.)

By contrast, in the “Waste Storage Device” judgment discussed below, the existence of the rotating device directly determined the engagement structure and the manner in which the cassette was supported. In the “Liquid Container” judgment, the light-emitting portion of the ink container and the light-receiving portion of the printer body cooperated as a system, and one directly controlled or detected the operation of the other.

As the author’s synthesis of these cases, where the configuration of the counterpart device of a subcombination “necessarily defines” the configuration of the claimed device itself (where there is physical fitting or an inseparable interaction as a system), it is recognized as a matter specifying the invention.

 

(3) Practical Guidance

In light of this judgment, in drafting a subcombination claim, merely stating “(the claimed device) communicates with (a counterpart device) having the configuration …” entails a risk that the matter will not be regarded as specifying the invention because it does not specify (limit) the structure, function, or the like of the claimed device itself.

For effective acquisition and enforcement of patent rights, it is useful to claim the “reflection” in the structure and function of the claimed device itself corresponding to the characteristic configuration of the counterpart device, such as “what signal processing is performed (decoding, authentication, etc.),” “what physical shape is required (fitting, arrangement, etc.),” and “how timing control changes.”

Going further, where both the claimed device and the counterpart device are manufactured and sold separately, as with a printer and an ink cartridge, one patent-application strategy would be to design them so that each device’s structure and function are specified (limited) by the other device, allowing subcombination claims to be patented for each, and to consider some technical significance of that structure and function and describe it in the specification.

Judgment in the case under discussion: https://www.courts.go.jp/assets/hanrei/hanrei-pdf-94282.pdf

Related decisions and primary sources

1. Intellectual Property High Court, February 10, 2022, Reiwa 3 (Gyo-Ke) No. 10056, Information Processing Device and Method, and Program
   Judgment pp. 31–36. The court examined whether descriptions of server processing specified the structure or function of the information-processing device and excluded those that did not from the determination of the gist of the invention.
   https://www.courts.go.jp/assets/hanrei/hanrei-pdf-90915.pdf
2. Tokyo District Court, November 25, 2011, Heisei 22 (Wa) No. 24818, Rotary Disc Tumbler Lock and Key
   Judgment pp. 39–41 and 54. The court identified the invention by the shape of the key itself. A correction adding limitations concerning the lock, without limiting the key, did not narrow the claims or serve another permitted correction purpose.
   https://www.courts.go.jp/assets/hanrei/hanrei-pdf-81783.pdf
3. Intellectual Property High Court, Grand Panel, February 1, 2013, Heisei 24 (Ne) No. 10015, Waste Storage Device, and the incorporated first-instance judgment
   Appellate judgment p. 22; Tokyo District Court, December 26, 2011, Heisei 21 (Wa) No. 44391 and related case, pp. 77–85. Satisfaction of the limitations was assessed by reference to the cassette’s structure for engagement with, support and rotation by, and suspension from a rotating device. Requiring a structure suitable for that use is distinct from restricting its actual uses exclusively to that use.
   https://www.courts.go.jp/assets/hanrei/hanrei-pdf-83009.pdf
   https://www.courts.go.jp/assets/hanrei/hanrei-pdf-81995.pdf
4. Intellectual Property High Court, February 8, 2011, Heisei 22 (Gyo-Ke) No. 10056, Liquid Ink Container
   Judgment p. 50. The specific ink container dedicated to the system formed the invention as a pair with the recording apparatus. The limitation requiring projection of light to the light-receiving means limited the container’s light-emitting portion, so the recording apparatus could not be disregarded in the obviousness analysis.
   https://www.courts.go.jp/assets/hanrei/hanrei-pdf-81062.pdf

[Patent ★] A case in which the description in the detailed description of the invention concerning the derivation method for a parameter in the claims was erroneous, the allegation that the description contained an error was also rejected, and the support requirement was denied — Tokyo District Court, Reiwa 5 (Wa) No. 70114 [Brake Control Device for a Motorcycle] <Presiding Judge Shibata> — (Same holding on appeal: Intellectual Property High Court, Reiwa 6 (Ne) No. 10038 <Presiding Judge Honda>)

Original Article URL: https://www.nakapat.gr.jp/ja/legal_updates_jp/%e3%80%90%e7%89%b9%e8%a8%b1%e2%98%85%e3%80%91%e8%ab%8b%e6%b1%82%e9%a0%85%e4%b8%ad%e3%81%ae%e3%83%91%e3%83%a9%e3%83%a1%e3%83%bc%e3%82%bf%e3%81%ae%e5%b0%8e%e5%87%ba%e6%96%b9%e6%b3%95%e3%81%ab%e9%96%a2/

◆ Judgment Text

[Summary of This Judgment and Some Observations]

1. Claims (Claim 1)

1A. A brake control device used in a vehicle that is a so-called motorcycle and has at least two wheels,

1B. the brake control device being composed of a vehicle-speed detection device, a vehicle-behavior detection device, an ECU (control unit), and a braking device;

1C. the vehicle-speed detection device being a wheel-speed sensor and obtaining vehicle traveling speed from a detected signal;

1D. the vehicle-behavior detection device being a sensor that detects states in left and right roll directions and left and right lateral directions relative to the traveling direction, and obtaining bank angular velocity (Ψ) and lateral acceleration (Gken) from the detected signal;

1E. the ECU performing calculation of detected signals, calculation of a target braking force according to vehicle behavior, and issuance of a braking command to the braking device;

1F. as the signal calculation, at least having a method of deriving corrected lateral G (Ghosei), obtained by performing a calculation that removes the effect of roll on an acceleration sensor that detects lateral acceleration;

1G1. the braking device being a mechanism that decelerates the vehicle in response to a braking command from the ECU;

1G2. having means for engine braking and for increasing and decreasing pressure on a brake disk;

1H. in the vehicle, vehicle behavior being determined based on a combination of the bank angular velocity (Ψ) and the corrected lateral G (Ghosei); and

1I. a target braking force according to the vehicle behavior being determined, braking being performed at the wheels, and behavior in the roll direction being suppressed by braking, the vehicle brake control device being characterized thereby.

 

2. This Judgment

(1) Summary of This Judgment

This judgment held that the description in the detailed description of the invention concerning the “method of deriving … lateral G,” a parameter in the claims, was erroneous, rejected the Plaintiff’s (patentee’s) allegation that the description contained a correctable clerical error, and denied compliance with the support requirement.

Paragraph [0073] of the specification states the formula “Ghosei = Gken − (Ψ·Rhsen)” (Formula A). The judgment pointed out that, although Ψ is understood as bank angular velocity and Rhsen as the height of the sensor position, this formula subtracts velocity from acceleration, so the dimensions do not agree and the formula has no meaning in physics. In other words, because Formula A is physically invalid, the court held that a person skilled in the art could not actually use it to derive corrected lateral G.

The Plaintiff alleged that Formula A contained an error and should be corrected to Formula A′ by correcting Ψ in the formula to  (the symbol Ψ with a dot above it), which represents bank angular acceleration. The judgment held, however, that because the specification at issue consistently used bank angular velocity Ψ throughout, and correcting it to acceleration would create portions inconsistent with other descriptions and render them incomprehensible, the specification could not be understood as uniquely supporting the alleged correction of the clerical error; therefore, the correction alleged by the Plaintiff could not be assumed.

 

“Although a person skilled in the art can understand that there is some error because the terms in Formula A have different dimensions, the method of resolving the problem of different dimensions is not limited to the correction alleged by the Plaintiff, and there is insufficient evidence to establish that, from the content of Formula A and other matters, a person skilled in the art would understand that there is no method other than correction to Formula A′ for resolving the problem of different dimensions. Further, if the portions of the specification at issue concerning Formula A are corrected so as to be consistent with the correction of Formula A, it is recognized that the purport of descriptions that previously presented no problem becomes incomprehensible or inconsistent. In light of these circumstances, it cannot be said that the specification at issue would be understood as showing that Formula A is an erroneous description of Formula A′. Accordingly, the Plaintiff’s allegation, which is premised on Formula A being understood as an erroneous description of Formula A′, lacks its premise. … None of the inventions at issue can be said to be an invention described in the specification at issue, and each fails to satisfy the support requirement.”

 

(2) Excerpts from This Judgment Concerning Violation of the Support Requirement

“(1) Invention 1 at Issue

A. Limitation 1F of Invention 1 at issue is: ‘as the signal calculation, at least having a method of deriving corrected lateral G (Ghosei), obtained by performing a calculation that removes the effect of roll on an acceleration sensor that detects lateral acceleration’; Limitation 1H is: ‘in the vehicle, vehicle behavior is determined based on the combination of the bank angular velocity (Ψ) and the corrected lateral G (Ghosei), …’; and Invention 1 at issue is stated to be a vehicle brake control device (Limitation 1I) that appropriately brakes the wheels by means of an ECU using the calculated corrected lateral G (Ghosei), thereby suppressing behavior in the roll direction.

As stated in Section 1 above, Invention 1 at issue solves the problem that conventional control devices for motorcycles and the like could not accurately detect a bank angle, and makes it possible to detect accurate lateral G while the vehicle is traveling. In light of these matters, the ‘lateral G (Ghosei)’ in Limitations 1F and 1H is recognized as accurate lateral G during banked travel of the vehicle, calculated after, among other things, accurately detecting the bank angle, which could not previously be done.

Because the ‘lateral G (Ghosei)’ serving as the premise for a braking command is stated to be one ‘obtained by performing a calculation that removes the effect of roll on an acceleration sensor that detects lateral acceleration’ (Limitation 1F), ‘lateral G (Ghosei)’ may be understood as a value obtained by applying a correction to the detected value of an acceleration sensor that detects lateral acceleration. However, the claims of Invention 1 at issue merely state, regarding ‘lateral G (Ghosei),’ that a ‘calculation that removes the effect of roll’ is performed on the acceleration-sensor value (Limitation 1F), and do not expressly state what calculation is performed. Accordingly, the claims state only that something capable of solving the conventional problem is used, but do not state the configuration for solving that problem.

B. As stated in Section 1 above, the specification at issue describes the significance of the invention at issue as solving the problem that it had not been possible to detect an accurate bank angle and therefore had not been possible to detect accurate lateral G, thereby making it possible to detect accurate lateral G while the vehicle is traveling.

However, the specification at issue contains no description of how to detect the accurate bank angle that previously could not be detected, or what correction is to be performed to calculate accurate lateral G once that bank angle is known.

On the other hand, as a method of correcting a sensor detection result and calculating lateral G, the specification at issue states Ghosei = Gken − (Ψ·Rhsen) (Formula A) ([0073]). Paragraph [0073] of the specification at issue states that ‘Gken’ is detected lateral G detected during actual banked travel, that ‘Ψ’ is bank angular velocity, and that ‘Ghosei’ is lateral G after correction of Gken using Ψ. (Although ‘Rhsen’ is not defined in the specification at issue, there are descriptions suggesting that ‘hsen’ is the distance between the road surface and the sensor ([0050], [0058], [0061], and Figures 8 and 9); a description that ‘R is the height at which G sensor #23 is installed on the actual vehicle (Figure 8 bhsen)’ ([0063]); and, regarding Ψ·Rhsen, after substituting 1 for Rhsen, a description stating ‘provided, however, that the sensor installation height R is 1 m’ ([0074]). It is therefore possible, at least tentatively, to infer that ‘Rhsen’ is the height of the sensor installation position when the vehicle body is upright.) That ‘Ghosei’ may be understood as the ‘accurate lateral G’ referred to as the problem of the invention at issue. Further, from its form, Formula A may be understood as a formula describing a method of calculating ‘accurate lateral G’ using Gken detected by the ‘lateral G sensor’ and Ψ detected by the ‘angular-velocity sensor,’ as stated in the description of the significance of the invention at issue (see Section 1 above).

However, the bank angle is not calculated from ‘Ψ·Rhsen,’ and Formula A cannot be understood as solving, without calculating the bank angle, the ‘various problems caused by the inability to detect an accurate bank angle.’ Further, Ghosei and Gken have the dimension of acceleration (length/time²), whereas Ψ·Rhsen has the dimension of velocity (length/time), and Formula A is therefore plainly meaningless in physics (the entire purport of the oral argument).

The specification at issue contains no description, other than Formula A, of a method for calculating ‘accurate lateral G’ based on values measured by the sensors.

C. According to the specification at issue, the invention at issue states as its problem that acquisition of ‘accurate lateral G’ is necessary for vehicle control, but the value of an acceleration sensor detecting lateral acceleration cannot be used as-is; and that, to calculate accurate lateral G from that value, it is necessary to acquire the bank angle but this cannot be done. The invention at issue is stated to solve that problem by calculating accurate lateral G during banked travel of the vehicle. Thus, the calculation concerning ‘lateral G (Ghosei),’ described as ‘performing a calculation that removes the effect of roll on an acceleration sensor that detects lateral acceleration,’ is the core part of solving the problem of the invention at issue.

However, the claims do not recite, with respect to that calculation, a configuration sufficient to solve the conventional problem. The relevant descriptions in the detailed description of the invention in the specification at issue are also as stated in B above. Formula A in the specification at issue ([0073]) may tentatively be understood as the above calculation, but there is no other relevant description. As stated in B above, Formula A does not calculate the bank angle that is identified as the problem of the invention at issue and is, in the first place, physically meaningless. A person skilled in the art could not understand that lateral G (Ghosei) usable for vehicle control can be calculated using Formula A.

D. (a) The Plaintiff alleges that the descriptions in the specification at issue contain errors in the description as shown in the attached comparison table and should correctly read as stated in the ‘After Correction’ column of that table. With respect to the ‘calculation’ in Limitation 1F, only Formula A could possibly correspond to it. As found in B above, Formula A subtracts physical quantities having different dimensions and is therefore physically meaningless; a person skilled in the art could understand that Formula A contains some error. On this point, if Formula A were understood, as the Plaintiff alleges, to be an error in the description for

Ghosei = Gken − (Ψ̇·Rhsen) (Formula A′)

(where ‘Ψ̇’ is bank angular acceleration),

the problem that the physical quantities being subtracted have different dimensions would be resolved. However, if the sole purpose is to make the dimensions consistent, the method of correction is not limited to changing it to Formula A′; other methods of resolution may be conceived, and there is insufficient evidence to establish that such conceivable methods would be unreasonable in light of physical laws, technical common knowledge based thereon, or the like. Therefore, the wording of Formula A alone does not uniquely determine the nature of the error.

(b) The Plaintiff further proposes, when correcting ‘Ψ’ in Formula A to ‘Ψ̇,’ to correct not only Formula A but also the other references to ‘Ψ’ in paragraph [0073] to ‘Ψ̇,’ and one reference to ‘bank angular velocity’ to ‘bank angular acceleration,’ because otherwise a contradiction would arise with other descriptions in paragraph [0073] explaining Formula A.

However, under the correction alleged by the Plaintiff, corrected paragraph [0073] would include the following description: ‘This corrected lateral G (Ghosei) is a correction of Gken in Formula (0063) using bank angular acceleration (Ψ̇), and, in relation to Formula (0067), is a condition in which the bank angle does not change. That is, because the term “Ψ̇·Rhsen” in the formula becomes zero, organizing and expressing the two formulas gives …’ Yet even if bank angular acceleration (Ψ̇) is zero, when bank angular velocity (Ψ) is not zero (when banking at a constant speed), the bank angle is changing. Therefore, the fact that the term ‘Ψ̇·Rhsen’ relating to bank angular acceleration (Ψ̇) is zero does not immediately mean ‘a condition in which the bank angle does not change.’ If the correction alleged by the Plaintiff is made, the purport of that description becomes incomprehensible. By contrast, if ‘Ψ’ is not corrected to Ψ̇ at that location, the content is comprehensible.

Similarly, with respect to the following description in paragraph [0073] as corrected by the Plaintiff: ‘… In this way, data in which the term “Ψ̇·Rhsen” in the formula is set to zero are sometimes called data obtained during steady-state circular turning. …,’ during steady-state circular turning the bank angle is constant and therefore the ‘bank angular velocity’ is zero. However, even if a term relating to ‘bank angular acceleration’ is zero, the ‘bank angle’ is not necessarily unchanging (a bank angular acceleration of zero also includes banking at a constant speed). Thus, if the correction is made, the purport of that description becomes incomprehensible. On this point as well, the content is comprehensible if the location is not corrected.

Furthermore, Formula A may be regarded as a formula that corrects measured acceleration (Gken) by the value of angular velocity (Ψ), and this most closely follows, as a matter of wording, the method expressly stated in the specification at issue as the basic method for solving the problem, namely, ‘solving various problems caused by the conventional inability to detect an accurate bank angle by associating the lateral G sensor and the angular-velocity sensor during travel’ (Section 1 above). By contrast, if Formula A is corrected to Formula A′, its content no longer, at least directly, most closely follows that wording.

(c) The Plaintiff further alleges that paragraph [0063], after correction of the errors in the description, shows that an acceleration component (Ψ̇·Rhsen), which is the effect of a change in roll velocity, is superimposed on detected lateral G (Gken) detected during banked travel, and that the superimposed acceleration component can be removed by subtracting bank angular acceleration (Ψ̇), which is the change in velocity of the bank angular-velocity sensor.

However, as explained in B above, the only acceleration mentioned in the specification at issue as an acceleration used for control and obtained by correcting an acceleration value acquired by a sensor is the lateral G (Ghosei) in paragraph [0073]; paragraph [0063] does not describe the method for calculating the ‘lateral G (Ghosei)’ of Invention 1 at issue. Even if paragraph [0063] could be evaluated as containing a description suggesting that the ‘calculation that removes the effect of roll on the acceleration sensor’ according to Invention 1 at issue means subtracting ‘Ψ̇·Rhsen,’ paragraph [0073] is more directly a description of a method of calculating corrected acceleration used for control, yet Formula A has the problem explained in B above.

Paragraph [0063] also states the formula

Gken = g·cos Φ·tan ρ − Ψ·Rhen

(after correction, ‘Gken = g·cos Φ·tan ρ + Ψ̇·Rhsen’).

Although the corrected formula contains the term ‘Ψ̇·Rhsen,’ there is insufficient evidence to establish that, as a matter of physics, ‘g·cos Φ·tan ρ,’ obtained by subtracting it (adding it in the corrected formula), corresponds to the ‘accurate lateral G’ that the invention at issue has the problem of calculating, or that knowing this physical quantity would solve the ‘various problems caused by the inability to detect an accurate bank angle.’ Accordingly, even if the description in paragraph [0063] could be found to be an error in the description as alleged by the Plaintiff, it cannot be understood from that formula alone that subtracting ‘Ψ̇·Rhsen’ from ‘Gken,’ the value detected by the sensor, leads to solving the problem and constitutes the ‘calculation that removes the effect of roll’ in Limitation 1F.

The Plaintiff’s allegations also include an assertion that the descriptions in paragraphs [0061] and [0062] before paragraph [0063] make it possible to understand that the description in paragraph [0063] is an error in the description. However, paragraphs [0061] and [0062] also contain numerous errors in the description, including not only errors concerning ‘Ψ’ and ‘Ψ̇’ but also errors concerning ‘−’ and ‘+’; it is difficult to find that which portions are errors in the description can readily be understood. From the beginning of its explanation and throughout, the specification at issue was originally written, basically consistently, on the premise of a formula that adds or subtracts a physical quantity having the dimension of angular velocity (circumferential velocity) to or from a physical quantity having the dimension of acceleration; as explained in D above, even portions not directly related to that formula were written so as not to contradict it. Correcting that formula in such a specification creates contradictions with other portions. In light of these matters, even if a person skilled in the art would understand that there is an error in the specification at issue, it cannot be found that such a person could understand what was originally intended to be written or which portions contain which errors in the description.

(d) As stated above, although a person skilled in the art can understand that there is some error because the terms in Formula A have different dimensions, the method of resolving the problem of different dimensions is not limited to the correction alleged by the Plaintiff, and there is insufficient evidence to establish that, from the content of Formula A and other matters, a person skilled in the art would understand that there is no method other than correction to Formula A′ for resolving the problem of different dimensions. Further, if the portions of the specification at issue concerning Formula A are corrected so as to be consistent with the correction of Formula A, it is recognized that the purport of descriptions that previously presented no problem becomes incomprehensible or inconsistent.

In light of these circumstances, it cannot be said that the specification at issue would be understood as showing that Formula A is an erroneous description of Formula A′. Accordingly, the Plaintiff’s allegation, which is premised on Formula A being understood as an erroneous description of Formula A′, lacks its premise. …”

 

(3) Supplemental Allegations in the Appellate Judgment, Intellectual Property High Court, Reiwa 6 (Ne) No. 10038 <Presiding Judge Honda>

Appellate judgment: https://www.courts.go.jp/assets/hanrei/hanrei-pdf-93712.pdf

“Focusing on the ‘return angle (ρ)’ alleged by the Appellant, the detailed description of the invention states: ‘Hybrid sensor 20 compactly incorporates acceleration sensor 21 for detecting acceleration in the traveling direction, bank angular-velocity sensor 22 for detecting roll velocity in the traveling direction, and acceleration sensor 23 for detecting acceleration in the roll direction, and is arranged near the combined center of gravity including the rider’s weight. In hybrid sensor 20, both the theoretical bank angle (Φ) occurring during banking and the return angle (ρ) arising from a change in the tire’s load-contact point due to banking are present at the same time. (See Figure 8 as well.) A deviation arises between the force generated at sensor 20 (vector A) and the force actually generated (vector A′). Analysis showed that accurate lateral G could be detected from this deviation angle (return angle (ρ)).’ ([0060]); and ‘The formula can be transformed to Gken = g·cos Φ·tan ρ − Ψ·Rhen, yielding a simple formula. Here, Φ represents the theoretical bank angle of the vehicle, which is also the theoretical inclination angle, and is an angle obtained by time-integrating angular velocity Ψ (rad/sec) detected by bank angular-velocity sensor 22; ρ represents the bank-return angle; and R represents the height at which G sensor #23 is installed on the actual vehicle (Figure 8 bhsen).’ ([0063]). However, these descriptions merely show that, as a result of analyzing ‘lateral acceleration (Gken),’ it can be expressed by a formula using bank angle Φ, bank-return angle ρ, bank angular velocity Ψ, and the like. By contrast, although the claims specify that the ‘lateral acceleration (Gken)’ of Invention 1 at issue is detected by an ‘acceleration sensor that detects lateral acceleration,’ they do not specify that it is derived from the calculation Gken = g·cos Φ·tan ρ − Ψ·Rhen based on bank angle Φ, bank-return angle ρ, bank angular velocity Ψ, and Rhen. The Appellant’s allegation therefore lacks its premise.

Further, if the ‘lateral acceleration (Gken)’ detected by the ‘acceleration sensor that detects lateral acceleration’ were accurate lateral G, detection of accurate lateral G would be an inherent function of the ‘acceleration sensor that detects lateral acceleration’ and would be unrelated to detection of an accurate bank angle. That would also contradict the problem alleged by the Appellant, namely, ‘(i) enabling detection of “accurate lateral G” during travel by “associating the lateral G sensor and angular-velocity sensor during travel” and “detecting an accurate bank angle.”’ The Appellant’s allegation is therefore an independent view inconsistent with the specification at issue and cannot be accepted.”

Quotation note: The Japanese version retains the original judgment’s wording “小型に内蔵されおり” as written (sic). Judgment, p. 6.
https://www.courts.go.jp/assets/hanrei/hanrei-pdf-93712.pdf

 

3. Some Observations

The support requirement is determined by examining “whether the invention recited in the claims is an invention described in the detailed description of the invention and falls within the scope in which a person skilled in the art can recognize, based on the detailed description, that the problem of the invention can be solved, or, even without such description or suggestion, within the scope in which a person skilled in the art can recognize, in light of technical common knowledge as of the filing date, that the problem of the invention can be solved.”

Where no specific challenge is made to the specification, the analysis may proceed on the basis of its description. The absence of a challenge does not, however, automatically establish compliance with the support requirement. It remains necessary to consider whether the claimed scope is within the range in which a person skilled in the art could recognize that the problem can be solved, in light of the detailed description and common general technical knowledge at the filing date.

Where an error in a mechanism, mode of action, example, comparative example, or the generalization across the claimed scope is specifically disputed, allegations and proof appropriate to the issue are required. Case law places the burden of proving compliance with the support requirement on the patent applicant or patentee, and some decisions also address the applicant’s allegations and proof concerning enablement (see below). The requirements and the procedural contexts, including refusal, invalidation, and infringement proceedings, must nevertheless be distinguished. They cannot be combined into a single proposition concerning the burden of proof that also encompasses qualification as an invention. The party alleging invalidity for lack of inventive step must substantiate that ground, while a patentee or applicant relying on an unpredictable remarkable effect must address the concrete evidence supporting that effect. What must be alleged and proved about the effect should be considered case by case, separately from the debate between the independent-requirement and overall-consideration theories. There are also decisions in which the reliability of an effect stated in the specification was rejected and inventive step was denied (see below).

An allegation that a description in the detailed description is scientifically erroneous (contrary to a law of nature) is often proved by replication testing, publicly known documents (including documents after the filing date), expert opinions, and the like.

 

 

[Related Court Decisions (Cases in Which Patentability Requirements Were Denied Because a Description in the Detailed Description of the Invention Was Erroneous)]

1. Court Decisions Denying the Support, Enablement, or Other Disclosure Requirements

(1) Intellectual Property High Court, Heisei 17 (Gyo-Ke) No. 10645 [Method for Inspecting Sealed Packages] <Presiding Judge Tsukahara>

Judgment: https://www.courts.go.jp/assets/hanrei/hanrei-pdf-33052.pdf

Classification note: This judgment rejected compliance with enablement and clarity. It should not be classified as a ruling on the support requirement under Article 36(6)(i) of the Patent Act.

“The trial decision’s determination regarding violations of Article 36(4) and (6) of the Patent Act …

Paragraph [0008] states: ‘Accordingly, when electrode 4 from the voltage-output terminal of high-voltage power supply 6 is brought into contact with or close to side portion 31 of sealed package 3, electrically conductive contents 1 in sealed package 3 are charged by the negative or positive potential of the high voltage (0.6 kV to 30 kV) applied to electrode 4, and negative (−) ions or positive (+) ions are generated.’ Figure 1 depicts only negative (−) ions as if generated throughout the contents. However, it is unclear how these ‘negative (−) ions or positive (+) ions’ are generated, and a person skilled in the art cannot readily carry this out. Specifically, if there is no closed circuit and no displacement current flows, or if charge does not move along side portion 31 of sealed package 3, it is unclear from where the charge for generating negative (−) ions or positive (+) ions is supplied. If negative (−) ions or positive (+) ions are generated in the contents without charge being supplied from outside the contents, this violates the law of conservation of charge.

…

Court’s Determination

…

As in the invention of the application, “bringing … a single electrode 4 into contact with or close to side portion 31 of sealed package 3 … and charging contents 1 in sealed package 3 through electrically insulating coating 2” violates the law of conservation of charge and cannot be realized by anyone. Such an invention must therefore be regarded as unclear, and the detailed description of the invention in the specification of the application cannot be said to describe the invention clearly and sufficiently to such an extent that a person skilled in the art can carry it out. …”

 

(2) Intellectual Property High Court, Reiwa 3 (Gyo-Ke) No. 10094 [PCSK9 (Second Litigation)] <Presiding Judge Kanno>

Judgment: https://www.courts.go.jp/assets/hanrei/hanrei-pdf-91751.pdf

* Successfully proved that the technical significance of the invention at issue (as alleged by the patentee) did not hold true!!

⇒ Support requirement not satisfied.

“… The technical significance of the invention at issue lies in specifying that an antibody competing with the 31H4 antibody has the functional characteristic of being an antibody that neutralizes binding between PCSK9 and the LDLR protein by the same mechanism as the 31H4 antibody. … In the absence of any particular explanation of a mechanism supporting that antibodies of this kind in general exhibit functional characteristics similar to the 31H4 antibody, it cannot be said that ‘an antibody that competes with the 31H4 antibody for binding to PCSK9’ in the invention at issue ‘exhibits functional characteristics similar’ to the 31H4 antibody. …

A person skilled in the art would find it difficult to understand that an antibody competing with the 31H4 antibody is a binding-neutralizing antibody.

… Dr. [name omitted] expressed the opinion that “it is certainly erroneous to say that all antibodies competing with the 31H4 antibody … would have the effect of neutralizing binding.” … According to the foregoing, neither Invention 1 nor Invention 5 at issue is recognized as complying with the support requirement.”

 

(3) Intellectual Property High Court, Heisei 28 (Gyo-Ke) No. 10064 [Polyvinyl-Alcohol-Based Polymer Film] <Presiding Judge Mori>

Judgment: https://www.courts.go.jp/assets/hanrei/hanrei-pdf-86905.pdf

* It could not be recognized that the problem could be solved by every substance falling within the invention, regardless of type.

* Although the detailed description stated, “The inventors … found that the above objective is achieved by a PVA-based polymer film having a pH within a certain range when dissolved in water …,” the court held that the mechanism could not be recognized.

“… Even when a person skilled in the art encounters the disclosure that, in an example adopting the lauric-acid diethanolamide mixture at issue as the surfactant, setting the numerical range for the content of the nonionic surfactant at ‘0.3 parts by mass’ and setting the numerical range for the pH of the PVA-based polymer film at ‘3.6 to 6.2’ produced an effect of suppressing yellowing in a 30°C long-term storage test and an 80°C short-term storage test, it cannot be recognized that the person skilled in the art could understand that, for any ‘nonionic surfactant (B)’ of Corrected Invention 1 at issue regardless of its type, setting the numerical range for the content of the nonionic surfactant at ‘0.001 to 1 part by mass’ and setting the numerical range for the pH of the PVA-based polymer film at ‘2.0 to 6.8’ would solve the problem of Corrected Invention 1 at issue, namely, providing a PVA-based polymer film capable of suppressing yellowing during long-term storage at room temperature. Accordingly, Corrected Invention 1 at issue exceeds the scope described in the corrected specification at issue in such a manner that a person skilled in the art having the technical common knowledge as of the filing date could recognize that the problem of Corrected Invention 1 at issue can be solved, and cannot be said to comply with the support requirement prescribed in Article 36(6)(i) of the Patent Act.”

 

(4) Intellectual Property High Court, Heisei 27 (Gyo-Ke) No. 10201 [Beverage in a Container] <Presiding Judge Shimizu>

Judgment: https://www.courts.go.jp/assets/hanrei/hanrei-pdf-86483.pdf

* The problem was specifically identified ⇒ Support requirement not satisfied.

The mechanism for solving the problem could not be read from the examples.

* Although the detailed description stated, “The inventors found that a beverage whose appearance is maintained with little change in color tone even after long-term storage is obtained by causing specified amounts of alcohols to be contained together with isoquercitrin and its sugar adducts and further adjusting the pH within a specified range,” the court held that a person skilled in the art could not recognize that mechanism.

“… It cannot be said that a person skilled in the art would understand that, because isoquercitrin and its sugar adducts were blended in addition to L-ascorbic acid under the conditions of the examples and comparative examples in the specification at issue, browning of L-ascorbic acid did not occur (and therefore that changes in color tone caused by browning of L-ascorbic acid were not included in the changes in color tone of the beverages in the examples and comparative examples of the specification at issue). …

According to the foregoing, in light of the detailed description of the invention in the specification at issue and the technical common knowledge as of the filing date, it cannot be said that a person skilled in the art could recognize that Corrected Inventions 9 to 16 at issue solve the problem of providing a method for suppressing a change in the color tone of a beverage in a container by suppressing changes in the color tone of isoquercitrin and its sugar adducts contained in that beverage.”

 

(5) Tokyo High Court, Heisei 12 (Gyo-Ke) No. 176 [Continuous Forming and Trimming Method]

Judgment: https://www.courts.go.jp/assets/hanrei/hanrei-pdf-11944.pdf

* Burden of proof where the specification contains no description

⇒ The court found a description deficiency because the specification’s disclosure was insufficient.

(Summary of the holding) A party asserting that the technology recited in the claims is such that a person skilled in the art can readily implement it without further explanation must present sufficient allegations and proof for the court to make that finding. Without them, the specification is treated as deficient.

“The detailed description of the invention must describe the above configuration to such an extent that a person skilled in the art can readily carry it out. … However, where the matter stated in the claims is technology of such a degree that a person skilled in the art, merely upon encountering the wording, can readily carry it out without any further particular explanation, it is a reasonable construction, in light of the purpose of the above provision, that exceptionally it is not always necessary to describe that explanation in the specification. Nevertheless, if, in an action to rescind a trial decision, it becomes disputed whether the matter stated in the claims is technology of the above degree, then unless the party asserting that it is technology of that degree presents allegations and proof sufficient for even a court, which is not a person skilled in the art, to make that finding, the court has no choice but to treat the specification as deficient. …”

 

(6) Intellectual Property High Court, Heisei 25 (Gyo-Ke) No. 10250 [Polyimide Film]

Judgment: https://www.courts.go.jp/assets/hanrei/hanrei-pdf-85069.pdf

* The applicant bears the burden of proof regarding the enablement requirement.

⇒ (Summary of the holding) Concerning the enablement requirement: The applicant originally bears the burden of allegation and proof regarding compliance with the enablement requirement. Although the specification at issue lacks specific guidance for reducing the coefficient of thermal expansion, the Defendant (applicant) has presented no specific proof.

“… The specification at issue provides no specific guidance whatsoever on how to control solvent content, temperature conditions, stretching speed, and the like so as to reduce the coefficient of thermal expansion to the level of Invention 9 at issue. Although the burden of allegation and proof regarding the enablement requirement originally rests on the Defendant, which is the applicant, the Defendant makes no specific allegation or proof that a two-component ODA/BPDA polyimide film satisfying the range of coefficients of thermal expansion in Invention 9 at issue can be manufactured. …”

 

2. Court Decision Denying Qualification as an Invention

(1) Tokyo High Court, Heisei 15 (Gyo-Ke) No. 166 [… Topical Agent for Treating Atopic Dermatitis] <Presiding Judge Tsukahara>

Judgment: https://www.courts.go.jp/assets/hanrei/hanrei-pdf-9822.pdf

“Although the specification at issue … describes the results of the clinical trial at issue, it must be said that there is insufficient evidence to establish (i) that the clinical trial at issue was actually conducted, (ii) that the drugs used in the clinical trial were in fact … the topical ointment and topical cream, and (iii) that the results of the clinical trial were accurately stated in the specification at issue. Further, even considering the various points alleged by the Defendant other than the clinical trial at issue, there is insufficient evidence to establish that the drug at issue has a therapeutic effect. It therefore cannot be inferred that the technical content (technical means) of the invention at issue can produce the intended technical effect. The subject matter asserted to be the invention at issue is thus incomplete as an invention, does not constitute an ‘invention’ under the introductory clause of Article 29(1) of the Patent Act, and cannot be patented. …”

 

3. Court Decision Denying Inventive Step (Unlike the First Judgment, the Unpredictable Remarkable Effect Was Denied)

(1) Intellectual Property High Court, Heisei 24 (Gyo-Ke) No. 10419 [Carvedilol (Second Judgment)] <Presiding Judge Shitara>

Judgment: https://www.courts.go.jp/assets/hanrei/hanrei-pdf-83666.pdf

⇒ (Although the holding concerns a remarkable effect for inventive-step purposes,) a case in which the effect stated in the examples in the specification was denied by post-filing documents and other evidence. No inventive step.

“As explained above, the results of the U.S. carvedilol study had low reliability due to the short treatment period and other factors. Accordingly, even though the study was discontinued because an advantageous effect over placebo was confirmed in the U.S. carvedilol study, it cannot be said that the invention at issue has a remarkable effect.”

 

(Plaintiff) Individual

(Defendant) Yamaha Motor Co., Ltd.

Reiwa 7 (Ne) No. 10001 “Patent Royalties Relating to a Fulvic Acid Production Method” <Presiding Judge Honda>

Original Article URL: https://www.nakapat.gr.jp/ja/note/%e4%bb%a4%e5%92%8c7%e5%b9%b4%e3%83%8d10001%e3%80%8e%e3%83%95%e3%83%ab%e3%83%9c%e9%85%b8%e8%a3%bd%e9%80%a0%e6%96%b9%e6%b3%95%e9%96%a2%e9%80%a3%e7%89%b9%e8%a8%b1%e4%bd%bf%e7%94%a8%e6%96%99%e3%80%8f/

Reiwa 7 (Ne) No. 10001 “Patent Royalties Relating to a Fulvic Acid Production Method” <Presiding Judge Honda>

⇒ The Appellee’s termination was valid.

The purpose of Article 7 of the agreement is merely to serve as a cautionary provision stating that the three related companies recognize that “among the patents and patent applications covered by the exclusive patent-license agreement executed today, there may be defects that could prevent preservation of registration at the registration authority in the future.”

⇒ It is a provision recognizing the risk of a future unforeseen event, namely, that registration “may not be obtained / may be refused”; it is not a provision exempting liability for a breach of obligation such as the fact that, as of execution of the agreement, authority to grant a license for Patent Rights 1 and 3 at issue had not been obtained from the co-owners (that is, the obligation to grant the license was impossible to perform from the outset).

The principal purpose of the agreement at issue was “assignment of an exclusive patent license + sublicense of a non-exclusive license.” It would be unnatural to derive from the abstract wording of Article 7 an exemption clause broad enough to mean that even a failure to perform this principal obligation “does not constitute a breach of obligation.”

⇒ The “exemption” effect that the Appellant attempted to read into Article 7 was denied.

https://www.courts.go.jp/assets/hanrei/hanrei-pdf-94268.pdf

Reiwa 5 (Gyo-Ke) No. 10147 [RNA-Dependent Targeted DNA Modification] <Presiding Judge Hibiki Shimizu>

Original Article URL: https://www.nakapat.gr.jp/ja/note/%e4%bb%a4%e5%92%8c%ef%bc%95%e5%b9%b4%e8%a1%8c%e3%82%b110147%e3%80%90%ef%bd%92%ef%bd%8e%ef%bd%81%e4%be%9d%e5%ad%98%e6%80%a7%e6%a8%99%e7%9a%84%ef%bd%84%ef%bd%8e%ef%bd%81%e4%bf%ae%e9%a3%be%e3%80%91/

Reiwa 5 (Gyo-Ke) No. 10147 [RNA-Dependent Targeted DNA Modification] <Presiding Judge Hibiki Shimizu>

 

* Based on the descriptions in the first-application documents as a whole and the technical common knowledge at the filing date, the subject matter should be regarded as having been disclosed in substance; the invention at issue was therefore entitled, under Article 4A of the Paris Convention, to the benefit of the priority claim based on the first application.

 

(Excerpt from the Holding)

That is, it can be said that, as of the priority date at issue, the requirement of a PAM sequence for DNA cleavage using the CRISPR/Cas system of bacteria (prokaryotes) had been described in many documents and was well known to persons skilled in the art. … No circumstances are found suggesting that, as of the priority date at issue, it was ordinarily considered that, where DNA is cleaved using that mechanism, a PAM sequence is required only in prokaryotic cells and becomes unnecessary in eukaryotic cells. Accordingly, the fact that, as of the priority date at issue, a PAM sequence must also be present downstream of the target DNA sequence when DNA is cleaved in a eukaryotic cell using the CRISPR/Cas9 system should be regarded as a matter that a person skilled in the art could easily have predicted and confirmed. … Based on the foregoing, it is reasonable to find that, as of the priority date at issue, the existence and role of PAM sequences in the CRISPR/Cas9 system fell within the scope of the technical common knowledge of persons skilled in the art, and the Plaintiff’s allegation cannot be accepted.

The Plaintiff alleges that, as of the priority date at issue, NLS and codon optimization were not well-known art, among other things. … Accordingly, it is reasonable to find that, as of the priority date at issue, although NLS and codon optimization were not indispensable technologies in the CRISPR/Cas9 system, implementation of each had been reported in many documents, and each was well-known technology applicable also to the CRISPR/Cas9 system.

However, the mere fact that the inventors had not succeeded in their experiments as of the priority date at issue does not make the disclosure of the invention in the first-application documents insufficient. If it is recognized that the invention at issue could be carried out based on the descriptions in the first-application documents without requiring undue experimentation, the disclosure is sufficient. In life-science experiments, finding optimal conditions by changing experimental conditions is considered part of ordinary experimentation. The emails and other materials identified by the Plaintiff merely reflect exchanges of views on hypothetical possibilities or concerns in the course of ordinary experimentation; those materials alone make it difficult to recognize the existence of a barrier that would require undue experimentation by a person skilled in the art. Rather, after the inventors published the CRISPR/Cas9 system relating to the first priority application in a publication (Otsu 12, June 28, 2012), it is found that many researchers reported, during the short period from October 2012 to January 2013, that the CRISPR/Cas9 system had been applied to eukaryotic cells and had enabled genome editing (see 2-4 above). This shows that a person skilled in the art could carry out the invention at issue based on the descriptions in the first-application documents without undue experimentation.

 

hanrei-pdf-94292.pdf

Tokyo District Court, Reiwa 7 (Wa) No. 70003 [Smoking-Article Cartridge] <Presiding Judge Shibuya>

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%8c7%e5%b9%b4%e3%83%af70003%e3%80%90%e5%96%ab%e7%85%99%e5%85%b7%e7%94%a8%e3%82%ab%e3%83%bc%e3%83%88%e3%83%aa%e3%83%83%e3%82%b8%e3%80%91%ef%bc%9c/

Tokyo District Court, Reiwa 7 (Wa) No. 70003 [Smoking-Article Cartridge] <Presiding Judge Shibuya>

* The right to claim damages was waived during the litigation.

⇒ Although customs proceedings concerning an injunction remained, an action seeking a declaration only that the right to claim damages did not exist lacked an interest in immediate determination.

(Excerpt from the Holding)

It is recognized that, on February 27, 2025, after the actions at issue were filed, the Defendant notified the Plaintiffs that it waived the right to claim damages at issue and would not exercise that right; and, at the second oral-argument hearing in these cases held on April 23 of that year, stated that it waived the right to claim damages at issue and would not allege its withdrawal, revocation, or invalidity, whether within or outside the litigation.

Accordingly, the Defendant admits that it has no right to claim damages against the Plaintiffs. There is no present dispute between the parties on that point, nor can it be said that there is uncertainty or danger concerning the Plaintiffs’ rights or legal status. An interest in immediate determination is therefore not recognized.

Each action at issue seeks a declaration that the right to claim damages at issue does not exist. Even if a judgment granting that relief became final, the determination in the reasons concerning whether the patent right at issue was infringed would not become final with res judicata effect; therefore, the Defendant would not be prevented from exercising against the Plaintiffs a right to seek an injunction based on infringement of the patent right at issue or a claim involved in separate litigation. Rather, to dispute the Defendant’s right to seek an injunction against the products at issue based on infringement of the patent right at issue, the Plaintiffs may directly bring an action seeking a declaration that the right to seek the injunction does not exist. Thus, obtaining a declaratory judgment that the right to claim damages at issue does not exist cannot be said to be necessary and appropriate to remove danger or uncertainty concerning the Plaintiffs’ rights or legal status.

The Plaintiffs also allege that there is a difference in the amount of filing fees between a case in which the Defendant brings an action seeking partial damages and a case in which the Plaintiffs bring an action seeking a declaration that the right to seek an injunction does not exist. Such a circumstance does not directly affect the interest in immediate determination and does not alter the determination above.

https://www.courts.go.jp/assets/hanrei/hanrei-pdf-94270.pdf

[Trademark / Domain Name] Tokyo District Court, Reiwa 5 (Wa) No. 70022, “Legal Force” Case <Presiding Judge Takahashi>

Original Article URL: https://www.nakapat.gr.jp/ja/note/%e3%80%90%e5%95%86%e6%a8%99%ef%bc%8f%e3%83%89%e3%83%a1%e3%82%a4%e3%83%b3%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%af70022%e3%80%8elegal-force%e3%80%8f%e4%ba%8b/

[Trademark / Domain Name] Tokyo District Court, Reiwa 5 (Wa) No. 70022, “Legal Force” Case <Presiding Judge Takahashi>

Trademark infringement and other relief were sought with respect to the U.S. corporate Defendant’s provision of services in English under the mark.

⇒ The court denied Japan’s international jurisdiction and dismissed the action on the grounds, among others, that the Defendant’s website was not directed to consumers in Japan.

* Did U.S. attorneys residing in Japan not use it?

— Regarding Japanese customers of the Defendant’s trademark-application services: “It is recognized that the Defendant filed trademark applications for 44 Japanese customers.” The legalforcelaw website stated in English: “LegalForce RAPC represents clients in more than 100 countries worldwide”; “Outside the United States, LegalForce RAPC Trademarkia’s top filing countries are as follows: / (… omitted …) Japan 97 /”; and “LegalForce RAPC has supported trademark filings in 88 countries worldwide since 2009 / (… omitted …) Japan.”

“No evidence was found showing that, with respect to ‘AI-based review of contracts and email accounts’ on the Defendant’s website at issue, services were provided to users in Japan.”

⇒ If there had been a person in Japan using the “AI-based review of contracts and email accounts” on the Defendant’s website at issue, would that have changed the conclusion!?

By contrast, with respect to the claim concerning use of a Japanese domain name (.jp), the court recognized jurisdiction because the domain-name administrator was located in Japan.

However, the Defendant had used the name in the United States before the Plaintiff, and automatically directing the domain name to the Defendant’s business website had a legitimate purpose. The court therefore denied both a “purpose of obtaining an illicit gain” and a “purpose of causing damage to another” under the Unfair Competition Prevention Act and dismissed the claim.

https://www.courts.go.jp/assets/hanrei/hanrei-pdf-93748.pdf

Interlocutory Judgment, Reiwa 6 (Ne) No. 10034 [Elasto-Plastic Hysteretic Damper] <Presiding Judge Honda>

Original Article URL: https://www.nakapat.gr.jp/ja/note/%e4%b8%ad%e9%96%93%e5%88%a4%e6%b1%ba%e3%83%bb%e4%bb%a4%e5%92%8c6%e5%b9%b4%e3%83%8d10034%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/

Interlocutory Judgment, Reiwa 6 (Ne) No. 10034 [Elasto-Plastic Hysteretic Damper] <Presiding Judge Honda>

By interlocutory judgment, the court held that, with respect to houses incorporating the Defendant’s Σ-shaped Dampers 5 and 6, the cause of the claim for damages based on the tort of infringement of the patent right at issue (excluding the amount) is well founded (first instance: Tokyo District Court, Reiwa 3 (Wa) No. 15964).

Limitation G provides that “the shear portion deforms and absorbs energy when it receives a load from an input.” The court of first instance construed “input” as limited to a horizontal force in a specific direction, such as the bridge-axis direction, and found the limitation not satisfied; the Intellectual Property High Court rejected that construction.

According to the corrected claims and corrected specification at issue, Corrected Invention 1 at issue has a configuration in which “a pair of plate-shaped shear portions” are “provided with mutually different orientations” ([0007]) and does not limit the direction of an “input” to the “shear portions” in any way. Accordingly, it is reasonable to construe “input” in Limitation G as encompassing any load externally applied to a “shear portion” and as not being limited to a particular direction.

According to the underlying facts, each web portion included in the Defendant’s dampers “deforms and absorbs energy when it receives a load from an input”; therefore, the Defendant’s dampers satisfy Limitation G.

Limitation D: “a pair of plates”

In Defendant’s Σ-shaped Dampers 1 to 4, one end of each parallel-plate portion and web portion is welded to a vertical plate portion, and the vertical plate portion is bolted to a column constituting a load-bearing panel. By contrast, the other end of each parallel-plate portion and web portion is directly welded to a steel pipe constituting the load-bearing panel (Defendant’s Σ-shaped Dampers 1 to 3) or to channel steel (Defendant’s Σ-shaped Damper 4). A vertical plate portion and a steel pipe or channel steel cannot be said to be two thin, flat pieces of metal constituting one set. Therefore, Defendant’s Σ-shaped Dampers 1 to 4 cannot be recognized as including “a pair of plates.”

The web portion and parallel-plate portion constituting Defendant’s Σ-shaped Damper 5 are arranged between two connecting plates, and both ends of the web portion and parallel-plate portion are directly welded to the respective connecting plates. The two connecting plates are rectangular metal plates of the same shape and are disposed on the left and right sides so as to sandwich the web portion and parallel-plate portion. They are therefore recognized as constituting “a pair of plates.”

In the load-bearing panel in which Defendant’s Σ-shaped Damper 6 is used, the web portion and parallel-plate portion constituting Defendant’s Σ-shaped Damper 6 are arranged between two stiffeners, and both ends of the web portion and parallel-plate portion are directly welded to the respective stiffeners. The two stiffeners are rectangular metal plates of the same shape and are disposed on the left and right sides so as to sandwich the web portion and parallel-plate portion. They are therefore recognized as constituting “a pair of plates.”

https://www.courts.go.jp/assets/hanrei/hanrei-pdf-94603.pdf

Tokyo District Court, Reiwa 6 (Wa) No. 70283 [Reservation Management Device] <Presiding Judge 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%8c6%e5%b9%b4%e3%83%af70283%e3%80%90%e4%ba%88%e7%b4%84%e7%ae%a1%e7%90%86%e8%a3%85%e7%bd%ae%e3%80%91%ef%bc%9c%e6%9d%89%e6%b5%a6%ef%bc%9e/

Tokyo District Court, Reiwa 6 (Wa) No. 70283 [Reservation Management Device] <Presiding Judge Sugiura>

In the patented invention at issue, the reservation management device (server), in response to operation of a store terminal, transmits received image data to an image printing device (printer/fax).

Flow: server → printer

Defendant’s system: the server sends image data to a pharmacy terminal (PC/tablet), and the pharmacy terminal sends the data to a printer for printing. The server does not communicate directly with the printer.

Flow: pharmacy terminal → printer

An expansive construction under which it is sufficient for the reservation management device to send the data “through another device” lacks support in the specification.

(Excerpt from the Holding)

“According to the wording of the claims, there is no description suggesting that the reservation management device may transmit image data to the image printing device through another device. The specification at issue likewise contains no description disclosing or suggesting inclusion of a configuration in which, at a store terminal that has received prescription image data from the reservation management device and displays the image data, the image data are printed by the image printing device directly from the store terminal through a user’s operation of the store terminal, without transmitting a legibility instruction or the like to the reservation management device.”

https://www.courts.go.jp/assets/hanrei/hanrei-pdf-94951.pdf

Osaka District Court, Reiwa 6 (Wa) No. 4500 [Shopping Payment System] <Presiding Judge 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%8c6%e5%b9%b4%e3%83%af4500%e3%80%90%e8%b2%b7%e7%89%a9%e6%b1%ba%e6%b8%88%e3%82%b7%e3%82%b9%e3%83%86%e3%83%a0%e3%80%91%ef%bc%9c%e6%9d%be%e9%98%bf/

Osaka District Court, Reiwa 6 (Wa) No. 4500 [Shopping Payment System] <Presiding Judge Matsuami>

The “camera” of the patented invention at issue acquires an image (video image) in order to identify a product.

By contrast, the “barcode scanner” in the Defendant’s product acquires barcode information (a code), not an image, and performs a different function.

⇒ Limitation not satisfied.

The patented invention at issue requires linking the camera and a “customer terminal” by means of a specific ID or the like.

However, the Defendant’s product establishes a correspondence between the store terminal (cart) and only a membership number (customer identification information), and does not technically “link” the customer terminal itself.

⇒ Limitation not satisfied.

The patented invention at issue treats as an “abnormality” a case in which a product cannot be identified from a camera image.

By contrast, the Defendant’s product detects an abnormality based on a “change in the weight sensor” when an item is placed in the basket without scanning, not based on success or failure of image identification.

⇒ Limitation not satisfied.

(Excerpt from the Holding)

According to the description in the specification at issue and the ordinary understanding of a person skilled in the art, the “camera” of the invention at issue is recognized as a device that uses an optical system to form an image of a subject on the surface of an imaging element or the like (see Kojien, seventh edition). With respect to the barcode scanner in the Defendant’s product, there is insufficient evidence to establish that it performs such a function. Further, in general, a barcode scanner acquires “information” embodied in a barcode and does not acquire an “image,” that is, does not perform imaging. The barcode scanner in the Defendant’s product therefore does not constitute the “camera” in Limitation B.

…

The Plaintiff’s allegation concerning the technical significance of “linking” in Limitation D is unclear. Invention 1 at issue includes as elements that the camera transmits imaging information concerning a product to be purchased to the management server (Limitation E), and that the management server notifies the customer terminal of the product-identification result (Limitation F). “Linking” is therefore construed as establishing, as a premise, a correspondence between the camera and the customer terminal. On this point, the Plaintiff does not dispute that, in the Defendant’s product, the processing under Limitation F is performed by the “store terminal” (and is not performed by the customer terminal). Further considering, as stated above, that shopping can be completed normally in the Defendant’s product even without a customer terminal (that the customer terminal is not an indispensable configuration for realizing the technical concept of the Defendant’s product), it is recognized that the store terminal establishes a correspondence only with customer identification information (the membership number). Beyond that, the “customer terminal” and the barcode scanner of the store terminal are not recognized as being “linked” in the sense described above.

https://www.courts.go.jp/assets/hanrei/hanrei-pdf-94493.pdf

Reiwa 6 (Ne) No. 10068 [Leak-Preventing Sealing Material] <Presiding Judge Hibiki Shimizu>

Original Article URL: https://www.nakapat.gr.jp/ja/note/%e4%bb%a4%e5%92%8c6%e5%b9%b4%e3%83%8d10068%e3%80%90%e3%82%82%e3%82%8c%e9%98%b2%e6%ad%a2%e7%94%a8%e3%82%b7%e3%83%bc%e3%83%ab%e6%9d%90%e3%80%91%ef%bc%9c%e6%b8%85%e6%b0%b4%e9%9f%bf%ef%bc%9e/

Reiwa 6 (Ne) No. 10068 [Leak-Preventing Sealing Material] <Presiding Judge Hibiki Shimizu>

<The same issues and the same conclusion as in the first-instance judgments, Osaka District Court, Reiwa 4 (Wa) Nos. 9112 and 11173 <Presiding Judge Matsuami>.>

“The diameter of the warp or weft of the ground yarn is made smaller than the diameter of the pile yarn” (Limitation 1C)

⇒ “Diameter” is measured in the original-yarn state, not in the product state.

⇒ Limitation not satisfied.

“In the state of use, the direction of the arrangement is inclined relative to the rotational direction of the rotating body such that the direction of the arrangement forms, relative to the rotational direction, an angle φ greater than the predetermined angle θ” (Limitation 1E)

The Defendants were not involved in how the Defendant’s product was installed in toner cartridges manufactured by Canon or its affiliates; the installation position and method were determined by Canon. There was insufficient evidence to establish that Canon installed the Defendant’s product at angle θ < angle φ, and there was no proof that installation by a different method or use was not economic, commercial, or practical.

Accordingly, there was insufficient proof that the Defendant’s product was an article used exclusively for the production of an article infringing the patent at issue (Article 101(i) of the Patent Act), and the Plaintiff’s allegation of indirect infringement could not be accepted.

(Excerpt from the Holding)

The specification at issue includes descriptions concerning the “diameter” of yarn in the original-yarn state and the relative magnitudes thereof, such as: “Figures 4 and 5 each schematically show an example in which yarn having a larger diameter than ground warp yarn 21 and ground weft yarn 22 is used as pile yarn 4 …” (paragraphs [0043], [0033], [0050], and [0052]). As discussed below, it is reasonable to construe “diameter” as synonymous with “thickness” indicated by methods generally used to refer to the “thickness” of fibers. Because the “diameter” of each yarn in the original-yarn state is uniform, the meaning of the “diameter” of each yarn can be understood unequivocally, and on that basis the relative “magnitudes” of the “diameters” of the respective yarns can also be compared. Accordingly, it is reasonable to construe “diameter” and the relative “magnitudes” thereof in Limitation 1C of Corrected Invention 1 at issue as meaning the “diameter” and relative “magnitudes” of yarn in the original-yarn state. D. According to the technical common knowledge in paragraph (3) above, with respect to “thickness,” an important property of fibers, methods indicating fiber thickness by weight per unit length, such as denier, are generally used. Where fibers are made of different materials and have different specific gravities (densities), their thicknesses cannot immediately be compared using denier values, but it is recognized as technical common knowledge that cross-sectional areas can readily be calculated and compared from the fibers’ specific gravities and denier values.

Accordingly, “diameter” of the ground-yarn warp and weft and pile yarn in Limitation 1C of Corrected Invention 1 at issue means the “thickness” of each yarn in the original-yarn state as indicated by a generally used method. It is reasonable, in light of the technical common knowledge of a person skilled in the art at the filing date, to construe the relative “magnitudes” as meaning that the cross-sectional areas of the fibers of the yarns in the original-yarn state are calculated on the premise of that method and the relative magnitudes of the “diameters” are determined. (According to the foregoing, Limitation 1C also cannot be said to be unclear.)

As stated in the original judgment, the Defendants were not involved in how the Defendant’s product was installed in toner cartridges manufactured by Canon or its affiliates; the installation position and method were determined by Canon. There was insufficient evidence to establish that Canon installed the Defendant’s product at angle θ < angle φ, and there was no proof that installation by a different method or use was not economic, commercial, or practical. Accordingly, there was insufficient proof that the Defendant’s product was an article used exclusively for the production of an article infringing the patent at issue (Article 101(1)(i) of the Patent Act), and the Plaintiff’s allegation of indirect infringement could not be accepted.

Quotation note: “Article 101(1)(i)” in the preceding translated excerpt reproduces the judgment’s own citation. The correct statutory reference is Article 101(i) of the Patent Act.

https://www.courts.go.jp/assets/hanrei/hanrei-pdf-94232.pdf

Reiwa 7 (Ne) No. 10005 [Jig for a Lifeline Post] <Presiding Judge Masuda>

Original Article URL: https://www.nakapat.gr.jp/ja/note/%e4%bb%a4%e5%92%8c7%e5%b9%b4%e3%83%8d10005%e3%80%90%e8%a6%aa%e7%b6%b1%e6%94%af%e6%9f%b1%e7%94%a8%e6%b2%bb%e5%85%b7%e3%80%91%ef%bc%9c%e5%a2%97%e7%94%b0%ef%bc%9e/

Reiwa 7 (Ne) No. 10005 [Jig for a Lifeline Post] <Presiding Judge Masuda>

Because the hook formed on the side plate of the Defendant’s product was not formed by bending the bottom plate into a U shape, the Defendant’s product did not include the “bent portions bent into a U shape at vertically spaced intervals at an end of the rectangular plate in the first direction” in Limitation C.

⇒ No literal infringement.

Difference in the essential part

⇒ No infringement under the doctrine of equivalents.

⇒ The court affirmed the original judgment, which found notification and dissemination of false facts.

https://www.courts.go.jp/assets/hanrei/hanrei-pdf-94223.pdf

Tokyo District Court, Reiwa 6 (Wa) No. 70128 [Box-Shaped Vessel] <Presiding Judge 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%8c6%e5%b9%b4%e3%83%af70128%e3%80%90%e7%ae%b1%e5%9e%8b%e8%88%b9%e3%80%91%ef%bc%9c%e4%b8%ad%e5%b3%b6%ef%bc%9e/

Tokyo District Court, Reiwa 6 (Wa) No. 70128 [Box-Shaped Vessel] <Presiding Judge Nakashima>

* Replacement of a pH sensor having a one-year service life did not constitute manufacture of a new product.

⇒ No infringement by that maintenance activity.

The judgment as a whole found patent infringement with respect to other conduct and awarded JPY 932,500 in damages. The statement of “no infringement” here concerns the replacement activity described above.

(Excerpt from the Holding)

No particular service life was specified for the box-shaped vessel itself in the Defendant’s product. Among the components subject to the maintenance at issue, only the pH sensor had a specified service life of one year and was therefore replaced with a new one during the annual maintenance. …

Because the maintenance at issue replaced only the pH sensor, whose service life was one year, out of the entire box-shaped vessel, it may be said merely to replace, in accordance with ordinary use, the pH sensor, which is a consumable component of the box-shaped vessel. Moreover, as to the technical function of the pH sensor, Otsu 4 discloses a box-shaped vessel including a stock-solution supply device that automatically adjusts the supply amount of an acid stock solution based on a value detected by a pH sensor. The pH sensor therefore cannot be said to be a configuration relating to the essential part of the invention at issue. In addition, the economic value of the pH sensor is … extremely small compared with the value of the entire box-shaped vessel falling within the technical scope of the invention at issue. Under these circumstances, the maintenance at issue cannot be said to restore satisfaction of a configuration relating to the essential part of the invention after the product came to lack that configuration. Accordingly, the maintenance at issue cannot be regarded as newly manufacturing a box-shaped vessel lacking identity with the Defendant’s box-shaped vessel, and cannot be construed as constituting “production” under Article 2(3)(i) of the Patent Act.

In response, the Plaintiff alleges that the maintenance at issue changes a product outside the technical scope of the invention at issue (one lacking a pH sensor and therefore lacking Limitation F) into a product within the technical scope, and therefore constitutes “production” under the same item.

However, as explained above, whether an act constitutes “production” should be assessed by considering the circumstances stated above from the perspective of whether the act may be said to restore satisfaction of a configuration relating to the essential part of the invention after the product came to lack that configuration. It is therefore inappropriate to isolate and assess only the act of newly installing a pH sensor after it was absent; the same reasoning applies to the tube alleged by the Plaintiff.

From the foregoing perspective, replacement of the pH sensor alleged by the Plaintiff and replacement of a tube due to deterioration or damage are acts that should be regarded as repair or maintenance itself, and cannot be said to newly manufacture a box-shaped vessel lacking identity. The maintenance at issue therefore cannot be construed as constituting “production” of the invention at issue.

In the first place, the box-shaped vessel alleged by the Plaintiff should be regarded as having already been manufactured before registration of the patent at issue. Even if the Plaintiff did not obtain a benefit relating to that box-shaped vessel, because it predates registration of the patent at issue, the result is not unreasonable as alleged by the Plaintiff.

https://patent-law.hatenablog.com/entry/2025/07/19/230000

Reiwa 7 (Ne) No. 10004 [Wireless Scuff Plate] <Presiding Judge Nakadaira>

Original Article URL: https://www.nakapat.gr.jp/ja/note/%e4%bb%a4%e5%92%8c7%e5%b9%b4%e3%83%8d10004%e3%80%90%e3%83%af%e3%82%a4%e3%83%a4%e3%83%ac%e3%82%b9%e3%82%b9%e3%82%ab%e3%83%83%e3%83%95%e3%83%97%e3%83%ac%e3%83%bc%e3%83%88%e3%80%91%ef%bc%9c%e4%b8%ad/

Reiwa 7 (Ne) No. 10004 [Wireless Scuff Plate] <Presiding Judge Nakadaira>

= First instance: Tokyo District Court, Reiwa 5 (Wa) No. 70346 <Presiding Judge Nakashima>

* “Adjustable” means capable of being actively varied.

⇒ Limitation not satisfied.

The “control module that, in accordance with the sensing signal, opens and closes the backlight module with the time interval between its on and off states being adjustable” in Limitation F is construed as meaning a control module that can turn the backlight module on and off in accordance with the sensing signal and can also vary the interval after it is turned on in accordance with the sensing signal until it is turned off after a certain time even without another sensing signal, namely, the duration of illumination.

⇒ None of the Appellee’s products was recognized as including a control module that variably adjusts and controls the illumination duration independently of the timing at which magnetism relating to opening or closing is sensed.

https://www.courts.go.jp/assets/hanrei/hanrei-pdf-94237.pdf

Tokyo District Court, Reiwa 6 (Wa) No. 70463 [Connecting Fixture for Faucet Elbows] <Presiding Judge 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%8c6%e5%b9%b4%e3%83%af70463%e3%80%90%e6%b0%b4%e6%a0%93%e3%82%a8%e3%83%ab%e3%83%9c%e9%80%a3%e7%b5%90%e5%9b%ba%e5%ae%9a%e5%85%b7%e3%80%91%ef%bc%9c/

Tokyo District Court, Reiwa 6 (Wa) No. 70463 [Connecting Fixture for Faucet Elbows] <Presiding Judge Sugiura>

The patent application at issue received a decision of refusal, and no specific circumstances suggest that any right was thereafter established for the invention of the application at issue.

Nor can the invention of the application at issue be regarded as included in the subject matter of the agreement at issue.

Further, no specific circumstances suggest any involvement by the Defendant in the patent application at issue or in practicing the invention of the application at issue. Therefore, no tort by the Defendant against the Plaintiff can be found in connection with the application process or practice of the invention. …

https://www.courts.go.jp/assets/hanrei/hanrei-pdf-94920.pdf

[Design] Osaka District Court, Reiwa 5 (Wa) No. 2668, “Vegetated Earth-Retaining Sandbag” Case <Presiding Judge Matsuami>

Original Article URL: https://www.nakapat.gr.jp/ja/note/%e3%80%90%e6%84%8f%e5%8c%a0%e3%80%91%e5%a4%a7%e9%98%aa%e5%9c%b0%e5%88%a4%e4%bb%a4%e5%92%8c5%e5%b9%b4%e3%83%af2668%e3%80%8e%e5%9c%9f%e7%95%99%e3%82%81%e6%a4%8d%e7%94%9f%e5%9c%9f%e5%9a%a2%e3%80%8f/

[Design] Osaka District Court, Reiwa 5 (Wa) No. 2668, “Vegetated Earth-Retaining Sandbag” Case <Presiding Judge Matsuami>

The shape of the “grass” in Registered Design 1 at issue should be identified, even though grass is a natural object, to the extent that it has regularity and reproducibility as a design.

⇒ The appearance of the Defendant’s sandbag, particularly the manner in which the grass grew, differed substantially from Registered Design 1 at issue and was therefore dissimilar.

* With respect to patent infringement (infringement under the doctrine of equivalents) as well, the configuration in which the vegetation sheet is detachably fixed to the bag body “only at the opening-edge portion” is a characteristic part constituting a distinctive technical concept for producing the operation and effect of preventing deformation of the vegetation sheet and the like, and constitutes an essential part of the invention.

⇒ No infringement under the doctrine of equivalents.

https://www.courts.go.jp/assets/hanrei/hanrei-pdf-93781.pdf

Tokyo District Court, Reiwa 6 (Wa) No. 70223 [Game System and Game Program] <Presiding Judge 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%8c6%e5%b9%b4%e3%83%af70223%e3%80%90%e3%82%b2%e3%83%bc%e3%83%a0%e3%82%b7%e3%82%b9%e3%83%86%e3%83%a0%e5%8f%8a%e3%81%b3%e3%82%b2%e3%83%bc%e3%83%a0/

Tokyo District Court, Reiwa 6 (Wa) No. 70223 [Game System and Game Program] <Presiding Judge Nakashima>

<Non-Satisfaction ((i) Game System)>

Patent 1 at issue requires a configuration that separately stores the quantities of purchased items (first items) and items acquired in the game (second items), and preferentially consumes the first items.

However, in the Defendant’s system (LINE: Disney Tsum Tsum), free portions received at purchase and portions acquired in the game are not distinguished but are managed in the aggregate, and the quantity of the second items alone is not stored.

Further, because the two are not distinguished, the system does not have a function of preferentially consuming the first items. It therefore does not satisfy Limitations 1B and 1C.

<Non-Satisfaction ((ii) Game Program)>

Patent 2 at issue is an invention that changes data according to the “cumulative number acquired” of the same item.

However, the relevant value in the Defendant’s program (the value relating to an increase in skill level) includes not only the number of items themselves acquired but also another element, namely, the “number of skill tickets used.” This differs from the pure “cumulative number acquired” specified by the patent.

Supplement: In addition to rejecting literal satisfaction of the limitations, the court found Invention 2 at issue to lack inventive step based on the Otsu 6 and Otsu 39 inventions. This invalidity determination should not be extended to Invention 1 at issue.

https://www.courts.go.jp/assets/hanrei/hanrei-pdf-94988.pdf

Osaka District Court, Reiwa 5 (Wa) No. 7855 [Method for Mapping a Physical Hybrid Automatic Repeat Request Indicator Channel] <Presiding Judge 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%af7855%e3%80%90%e7%89%a9%e7%90%86%e3%83%8f%e3%82%a4%e3%83%96%e3%83%aa%e3%83%83%e3%83%89%e8%87%aa%e5%8b%95%e5%86%8d%e9%80%81/

Osaka District Court, Reiwa 5 (Wa) No. 7855 [Method for Mapping a Physical Hybrid Automatic Repeat Request Indicator Channel] <Presiding Judge Matsuami>

* Standard-essential patent (SEP) — abuse of rights

⇒ Claim for injunction dismissed.

1. Defendant’s Negotiating Conduct

   The Plaintiff proposed license negotiations on June 12, 2020, and Company G (Google) expressed its willingness on July 7 of that year to take a license on FRAND terms.

   The NDA negotiations took a total of five months, and review of 22 claim charts took approximately eight months. However, an NDA accompanies disclosure of trade secrets, and the time required was unavoidable as a period for reviewing numerous patents.

   Company G presented a counterproposal (Company G’s First Proposal) and subsequent revised proposals in response to the Plaintiff’s proposal. As of the end of November 2023, no lack of good faith in the negotiations was recognized.

2. Proposals of the Plaintiff and Company G
   With respect to the Plaintiff’s First Proposal (0.75%), Company G questioned, among other matters, the age of the underlying information, but the Plaintiff did not respond sufficiently. The premise that aggregate royalties should be capped at 27% formed part of the calculation underlying the Plaintiff’s First Proposal, not Company G’s counterproposal. As to Company G’s counterproposal, the court did not regard its calculation method as one that should automatically be excluded from consideration of FRAND terms. It also considered that Company G could not simply be criticized for giving weight to the fact that smartphone prices depend heavily on performance other than communications. The judgment did not, however, determine that 27%, or the royalty rate in Company G’s counterproposal, was the proper FRAND rate.

Calculation note: The Plaintiff’s First Proposal, using aggregate royalties and its share of SEPs, can be characterized as following a top-down approach. The published judgment redacts parts of the specific calculation underlying Company G’s proposals. Those proposals should therefore not be characterized as a top-down calculation using a 27% cap.

⇒ The court found that, even at the relevant time, the end of November 2023, Company G continued sincerely to negotiate toward concluding a license agreement and held that its conduct could not be characterized as bad-faith holdout.

https://www.courts.go.jp/assets/hanrei/hanrei-pdf-94591.pdf

Reiwa 7 (Ne) No. 10035 [Vehicle Guidance System] <Presiding Judge Honda> (PXZ v. East Nippon Expressway Company Limited)

Original Article URL: https://www.nakapat.gr.jp/ja/note/%e4%bb%a4%e5%92%8c7%e5%b9%b4%e3%83%8d10035%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%e6%9c%ac%e5%a4%9a%ef%bc%9e-%ef%bc%88pxz-v-%e6%9d%b1/

Reiwa 7 (Ne) No. 10035 [Vehicle Guidance System] <Presiding Judge Honda>

(PXZ v. East Nippon Expressway Company Limited)

* On the same substantive reasoning by which Reiwa 6 (Gyo-Ke) No. 10086 found a violation of the divisional requirements in the grandparent application, this judgment found the limitation not satisfied.

“It cannot be construed that the ‘entrance/exit for ordinary vehicles’ in Limitation 2E includes an entrance/exit for ordinary vehicles of another interchange adjacent to the toll-road tollgate, service area, or parking area at which the vehicle guidance system according to Invention 2 at issue is installed.”

⇒ Limitation not satisfied.

“Guidance” means inviting and leading toward a destination. Where no signs or the like instructing a U-turn exist, a U-turn voluntarily made by the driver cannot be characterized as guidance by the function of the facility.

⇒ “It cannot be said that the Plaintiff’s facilities invite and lead vehicles for which ETC toll collection is impossible onto the route returning them again to a point before the ETC-only entrance/exit.”

⇒ Limitation not satisfied.

https://www.courts.go.jp/assets/hanrei/hanrei-pdf-94616.pdf

Reiwa 7 (Ne) No. 10025 [Spindle Motor] <Presiding Judge Nakadaira> ⇒ Claim for Employee-Invention Remuneration

Original Article URL: https://www.nakapat.gr.jp/ja/note/%e4%bb%a4%e5%92%8c7%e5%b9%b4%e3%83%8d10025%e3%80%90%e3%82%b9%e3%83%94%e3%83%b3%e3%83%89%e3%83%ab%e3%83%a2%e3%83%bc%e3%82%bf%e3%80%91%ef%bc%9c%e4%b8%ad%e5%b9%b3%ef%bc%9e-%e2%87%92%e8%81%b7%e5%8b%99/

Reiwa 7 (Ne) No. 10025 [Spindle Motor] <Presiding Judge Nakadaira>

⇒ Claim for employee-invention remuneration dismissed

(Status as a joint inventor denied)

The core of the Japanese invention at issue lay in forming a particular “communication hole,” but the written explanation submitted by the Appellant did not mention that specific configuration and explained a completely different problem and solution. The Appellant’s idea therefore did not show the characteristics of the Japanese invention at issue.

(The “Invention/Utility Model Explanation” submitted by the Appellant to the employer merely described a different problem and solution and did not address the specific configuration of the communication hole.)

The U.S. and Chinese patented inventions were based on “Invention A,” which provides a through-hole in a sleeve. Because this configuration clearly differs from the Appellant’s idea of providing a groove between the sleeve and the housing, they were different from the Appellant’s invention.

https://www.courts.go.jp/assets/hanrei/hanrei-pdf-94960.pdf

Osaka District Court, Reiwa 6 (Wa) No. 7193 [Article Conveying Facility] <Presiding Judge Matsuami> ⇒ Claim for Employee-Invention Remuneration Dismissed

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%8c7%e5%b9%b4%e3%83%af7193%e5%8f%b7%e3%80%90%e7%89%a9%e5%93%81%e6%90%ac%e9%80%81%e8%a8%ad%e5%82%99%e3%80%91%ef%bc%9c%e6%9d%be%e9%98%bf%e5%bd%8c/

Osaka District Court, Reiwa 6 (Wa) No. 7193 [Article Conveying Facility] <Presiding Judge Matsuami>

⇒ Claim for employee-invention remuneration dismissed.

(i) Process for Establishing and Operating the Rules

Following the 2016 amendment to the Patent Act and publication of the Guidelines, the Defendant consulted with the labor union and explained the reward system and calculation method. When revising the rules, it also solicited opinions from all employees and responded to the Plaintiff’s opinion, following a careful and sincere process. These measures were reasonable.

(ii) Dissemination of the Rules

The rules were available for viewing at all times on the internal system and were also explained during new-employee training. The Plaintiff received rewards while employed and was in a position to understand the system.

(iii) Content of the Rules

Under the system, the business division and intellectual-property division evaluated performance rewards based on objective indicators and determined grades, and inventors were given an opportunity to state their views. The rules were therefore not unreasonable.

(Excerpt from the Holding) “It is questionable whether the reasonableness of the amount of compensation, which in itself might be regarded as entrusted to private autonomy, is naturally included in the viewpoints for determining unreasonableness under Article 35(5) of the Patent Act. Even if it could be one factor for consideration, the matter might be different where, for example, rules provide only small lump-sum filing and registration rewards and do not distribute any of the profits subsequently obtained by the company through practice of the patent right. The Detailed Rules at issue, however, evaluate the economic value of practiced patent rights and the like from various perspectives, including contribution to profits and exclusion of competitors, and pay commensurate performance rewards in stages. No basis for finding them unreasonable can be identified.”

In conclusion, because the rules at issue were not unreasonable, the statutory claim for reasonable benefits under Article 35(7) of the Patent Act, premised on non-application of the rules, was without merit.

https://www.courts.go.jp/assets/hanrei/hanrei-pdf-95035.pdf

 

 

Appendix: English Translations of Text Embedded in Figures

This appendix provides English translations of the Japanese text in Figures 1–7.

Embedded Figure 1 — Example in Which Inventive Step Is Denied Even When an Essential Configuration Is Excluded

• Even where an amendment has been made to exclude a configuration described as essential in the cited invention, a person skilled in the art may ordinarily carry out design changes to some configuration other than that configuration for the purpose of further improving the invention. Such work may constitute the ordinary exercise of creative ability by a person skilled in the art.
• Further, even if the configuration is described as essential in the cited invention, unless an impediment is recognized that is strong enough to prevent replacement with any of various other configurations, there may be cases in which excluding that configuration in the claimed invention cannot be said to produce an advantageous effect.
• In such cases, under the current approach of the Examination Guidelines, inventive step is still denied.

Diagram labels:
– Invention obtainable by trial and error based on the cited invention
– Scope of the amended claimed invention
– Overlap with the cited invention
– Specific improved invention
– Some invention (including a regressive invention)
– Trial and error carried out by a person skilled in the art who reviewed the cited invention, for the purpose of an improved invention

Embedded Figure 2 — Description in the Examination Guidelines Concerning Determination of New Matter (3)

3.3.1 Amendment of the Scope of Claims

(1) Where an amendment generalizes, deletes, or changes a matter specifying the invention

(2) Where an amendment narrows a matter specifying the invention to a subordinate concept or adds such a matter

1. Even where an amendment narrowing a matter specifying the invention in a claim to a subordinate concept does not narrow it to a matter expressly stated in the original specification, etc. or to a matter self-evident from the descriptions in the original specification, etc., the amendment does not introduce new technical matter if it is clear that the amendment adds no new technical significance. Such an amendment is therefore permitted.

(3) Where an amendment adds or changes a numerical limitation

(4) Where an amendment uses an “excluding claim”

An “excluding claim” means a claim that expressly excludes, from the matters stated in the claim, only part of the matters included in the invention under the claim while retaining the wording of the matters stated in the claim.

An amendment that retains the wording of the matters stated in the claim before amendment and converts the claim into an “excluding claim” by excluding matters stated in the original specification, etc. is permitted if the “excluding claim” after the exclusion does not introduce new technical matter.

The following amendments using an “excluding claim” do not introduce a new technical matter and are therefore permitted:

(i) Where the claimed invention overlaps the cited invention and novelty, etc. (Article 29(1)(iii), Article 29-2, or Article 39) might therefore be denied, an amendment excluding only that overlap.

(ii) Where a claimed invention includes a “human” and therefore fails to satisfy the requirement in the introductory clause of Article 29(1), or falls under an unpatentable invention prescribed in Article 32, an amendment excluding only the “human.”

(5) Where an amendment concerns a Markush-type or other alternative-form claim

Embedded Figure 3 — Relationship Between Types of Amendments Using an “Excluding Claim” and the Examination Guidelines

3. A) Where the technical matter of not including a specific matter is expressly described in the original specification, etc.
   → The amendment does not introduce a new technical matter and is permitted. (Examination Guidelines 3.1)
4. B) Where the technical matter of not including a specific matter is self-evident from the descriptions in the original specification, etc.
   → The amendment does not introduce a new technical matter and is permitted. (Examination Guidelines 3.2)
5. C) Where inclusion of a specific matter causes failure to satisfy the requirement in the introductory clause of Article 29(1), or causes the invention to fall under an unpatentable invention under Article 32
   → For example, where the claimed invention includes a “human” and therefore fails to satisfy the requirement in the introductory clause of Article 29(1) or falls under Article 32, an amendment excluding “human” from the claimed invention makes the invention no longer fall under the above ground for refusal. It is clear that such an amendment does not introduce a new technical matter and is therefore permitted. (Examination Guidelines 3.3.1(4)(ii))
6. D) Where none of Types A to C applies
   → The amendment is permitted if it does not introduce a new technical matter.

One example is an “amendment excluding only the overlap where the claimed invention overlaps the cited invention and novelty, etc. might therefore be denied” (Examination Guidelines 3.3.1(4)(i)); the Guidelines state that this is permitted because it does not introduce a new technical matter.

Other examples include amendments that narrow a matter to a subordinate concept where it is clear that no new technical significance is added (Examination Guidelines 3.3.1(2)b); such amendments are stated to be permitted.

Embedded Figure 4 — Regarding the Description in Section 3.3.1(4)(i) of the Examination Guidelines (1)

• The example given in Section 3.3.1(4)(i) of the Examination Guidelines is a case in which the cited invention and the claimed invention have inherently and markedly different inventive concepts, but an overlap happens to cause a novelty rejection; excluding the overlap resolves the novelty rejection while leaving an invention having inventive step.

(i) Where the claimed invention overlaps the cited invention and novelty, etc. (Article 29(1)(iii), Article 29-2, or Article 39) might therefore be denied, an amendment excluding only that overlap

(Explanation)
The “excluding claim” in (i) above is a claim expressly excluding only matters that form part of a cited invention under Article 29(1)(iii), Article 29-2, or Article 39, as stated in a publication or in the specification, etc. of an earlier application (including matters equivalent to those described). The amendment converting the claim into the “excluding claim” in (i) above excludes specific matter forming the content of the cited invention and therefore cannot be said to make any change to the technical matter derived from the specification, etc. before amendment. Accordingly, it is clear that such an amendment does not introduce new technical matter and is therefore permitted.

An invention that can be patented by use of an “excluding claim” is an invention that, as a technical concept, is markedly different from the cited invention and inherently has inventive step, but happens to overlap the cited invention. Where an invention is not markedly different from the cited invention as a technical concept, it is considered that a rejection based on lack of inventive step will almost never be resolved by converting the claim into an “excluding claim.”

Embedded Figure 5 — Regarding the Description in Section 3.3.1(4)(i) of the Examination Guidelines (2)

• When Section 3.3.1(4)(i) of the Examination Guidelines was revised in 2010, the Japan Patent Office published the following response to comments submitted in the public-comment procedure.

Q15. Are amendments falling under Type (i) or Type (ii) judged to fall within those types without separately examining the specific amendment content or the content of the invention?

A15. No. However, where the prior art and the technical concept are identical or similar, so that merely converting the claim into an “excluding claim” does not make the invention inventive, and the applicant argues in a written opinion or the like that the “excluding claim” has inventive step, for example because it produces a remarkable effect, a notice of reasons for refusal may be issued on the ground that the amendment falls under neither Type (i) nor Type (ii) and introduces new technical matter. Further, where the prior art and the technical concept are identical or similar, if a reason for refusal under Article 29(2) is notified in addition to Article 29(1)(iii) or Article 29-2, the application may be finally rejected under Article 29(2) even after conversion to an “excluding claim.”

As stated in the explanation of Type (i), an invention for which a patent can be obtained by converting the claim into an “excluding claim” is an invention that is markedly different from the prior art in technical concept and inherently has inventive step, but merely happens to overlap the prior art.

• Accordingly, the mere fact that an amendment excludes overlap with the cited invention does not immediately mean that it falls under Type (i) and is permitted.

Embedded Figure 6 — Divisional Applications, Amendments, and Retroactive Effect

General rule quoted from Intellectual Property High Court, Heisei 28 (Gyo-Ke) No. 10263:
“The substantive requirements for a divisional application to be lawful are that (i) the specification or drawings of the original application contained two or more inventions, (ii) the invention of the new application is part of an invention described in the specification or drawings of the original application, and (iii) the invention of the new application falls within the scope of matters described in the original specification, etc. of the original application. Because the application at issue is a fifth-generation divisional application counted from the first application, in order for the application at issue to be deemed filed at the time of the first application, the application at issue, the fourth application, the third application, and the second application must each satisfy requirements (i) to (iii) above in relation to the application from which it was divided, and the invention at issue must fall within the scope of matters described in the specification, etc. of the first application as filed.”

Important note:
Even if a child application is lawful when filed, if the child application is amended after filing, the retroactive effect of the amendment may cause the child application to violate the divisional requirements.

Key authorities and labels:
1. Osaka High Court, Heisei 14 (Ne) No. 2776 <Presiding Judge Wakabayashi>
2. Tokyo High Court, Heisei 15 (Gyo-Ke) No. 65 <Presiding Judge Shinohara>
→ The filing date of the grandchild application relates back only to the filing date of the child application.
Note: If the post-amendment content constitutes the addition of new matter, the divisional requirements are violated.
3. Heisei 16 (Wa) No. 14649 <Presiding Judge Shitara>
4. Tokyo High Court, Showa 50 (Gyo-Ke) No. 75
→ If an amendment cures a violation of the divisional requirements (a change of gist), the violation of the divisional requirements is avoided.
8. Tokyo District Court, Heisei 15 (Wa) No. 9215 <Presiding Judge Mimura>
→ Divisional requirements = amendment requirements.

Timeline: Parent filing date → Child filing date → Amendment of the child → Grandchild filing date
“The amendment has retroactive effect.”

“Because all claims were deleted by correction, the utility model registration at issue is deemed never to have existed from the beginning.” Heisei 13 (Gyo-Ke) No. 421 <Presiding Judge Yamashita>

Even if the child application is withdrawn, the filing date of the grandchild application relates back to the filing date of the parent application. Heisei 27 (Wa) No. 8517 [Ridge Plastering Machine] <Presiding Judge Shimasue>. In that case, there had been no violation of the divisional requirements before withdrawal. (Except under Article 39(5) of the Patent Act, withdrawal of an application has no retroactive effect. Heisei 1 Trial Decision No. 123.)

If a divisional application is finally refused or invalidated while still containing added new matter, the filing date of the grandchild application does not relate back to the filing date of the parent application. Therefore, even if the case is likely to end in refusal, an amendment curing the addition of new matter should be attempted.

Embedded Figure 7 — Reiwa 1 (Wa) No. 23164 [Image Forming Apparatus] <Presiding Judge Tanaka>

Cf. Reiwa 2 (Gyo-Ke) No. 10131 <Presiding Judge Otaka>.

• If a child application violates the divisional requirements, the filing date of a grandchild application relates back only to the actual filing date of the child application. It does not relate back to the filing date of the parent application. This is the same holding as Osaka High Court, Heisei 14 (Ne) No. 2776, and Tokyo High Court, Heisei 15 (Gyo-Ke) No. 65.
• Has adding descriptions to the specification constituted the addition of new matter since the [Artificial Nipple] case (Heisei 14 (Gyo-Ke) No. 539)!?

When the specification, etc. of Application 1 at issue at the time Application 2 at issue was divided is compared with the specification, etc. of Application 2 (the specification of Application 2 at the time of division), the latter differs in that it adds descriptions concerning maintaining machining conditions after the power is turned off and displaying them on the first screen shown on the next and subsequent occasions (paragraph [0100]); reducing the number of magnification settings and menu settings by means of “one above” and “one below” displays (paragraph [0105]); preventing erroneous instructions by locking a registered menu against change (paragraph [0145]); and adding Figures 7 to 15 and related descriptions (paragraph [0041], etc.). Because the specification of Application 2 at the time of division contains matters absent from the specification of Application 1 at the time of the decision to grant a patent, it does not fall within the scope of matters described in the latter specification. Application 2 therefore fails to satisfy divisional requirement (ii). → Lack of inventive step over a cited invention published after the parent filing date and before the child filing date.

• In a priority claim, “partial priority” may be available; however, adding descriptions to the specification when filing a divisional application has no benefit and only causes harm. If the matter is disclosed in the original specification, etc., no additional description is needed; if it is not disclosed there, the additional description constitutes the addition of new matter.

WORD: Articles_Published_in_January_2026

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  Hideki TAKAISHI

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