“Repair sliding door device” Case: A case in which interpretation of the phrase “substantially the same height” in claims became an issue in relation to the determination of fulfillment of the constituent features of the plaintiff’s invention. The court of first instance held that the defendant’s product fulfills the constituent feature of the plaintiff’s invention, however, the appeal court held, by employing interpretation of the phrase which is different from that of the court of first instance, that the defendant’s product does not fulfill the constituent feature.
The court of first instance granted the plaintiff’s claims in part holding that the defendant’s product fulfills the constituent feature of the plaintiff’s invention. However, the appeal court reversed the part of the judgment which was in favor of the plaintiff because the defendant’s product does not fulfill the constituent feature of the plaintiff’s invention.
In this case, with regard to the constituent feature E, “an upper end of the behind wall and an upper end of a lower frame for repair have substantially the same height”, interpretation of the wording “substantially the same height” became an issue. The court of first instance (Presiding Judge Shoji) judged that the phrase “substantially the same” is “a broad concept, and does not imply a specific numerical value”, and since there is no description regarding specific limitation to a numerical value in the specification, etc., the constituent feature E is considered to be fulfilled even in the case where the upper end of the behind wall and the upper end of the lower frame for repair have a difference of 5 mm. On the other hand, the appeal court held that the phrase “substantially the same height” is understood to be used “with the prospect that the upper end of the behind wall and the upper end of the lower frame for repair have the ‘same height’ which has a meaning that there is no height difference between the upper end of the of the behind wall and the upper end of the lower frame for repair. However, since there may be a case where the two do not have perfectly the ‘same height’ due to a dimensional error, a design error, or the like, ‘substantially the same height’ should be understood as an expression implying such a case“, and judged that the defendant’s product does not fulfill the constituent feature of the plaintiff’s invention.
It can be understood that the judgment in prior instance questioned the scope within which the problem of the invention to “secure a wide opening area” can be recognized to be solved, and judged that the constituent feature can be fully achieved if “the difference in the heights between the upper end of the behind wall and the upper end of the lower frame for repair is smaller than at least a difference in the heights between the upper end of the lower frame for repair and the upper end of the behind wall which is caused by conventional technologies”. Therefore, the judgment in prior instance is highly consistent with other court cases in the past.
On the other hand, the judgment of the appeal court started with the interpretation of “substantially the same height” stating that ” ‘substantially the same height’ is understood to be used with the prospect that the upper end of the behind wall and the upper end of the lower frame for repair have the ‘same height’ which has a meaning that there is no height difference between the upper end of the of the behind wall and the upper end of the lower frame for repair. However, since there may be a case where the two do not have perfectly the ‘same height’ due to a dimensional error, a design error, or the like, ‘substantially the same height’ should be understood as an expression implying such a case”. It is understood that the appeal court put less importance on the problem to be solved by the invention in relation to the conventional technologies. Although the word “substantially” which denotes degree or extent was added at the beginning of the sentence, since the words “the same height” were used in claims, the appeal court did not accept the case where there is a difference in height to the extent that the problem to be solved by the invention can be solved in relation to the conventional technologies. Such approach of the appeal court is convincing, and may serve as future reference in practice.
Writer: Hideki TAKAISHI
Supervising editor: Kazuhiko YOSHIDA
Contact information for inquiries: h_takaishi@nakapat.gr.jp
Hideki TAKAISHI (The person in charge of this Article)
Attorney at Law & Patent Attorney
Nakamura & Partners
Room No. 616, Shin-Tokyo Building,
3-3-1 Marunouchi, Chiyoda-ku
Tokyo 100-8355, JAPAN