“A learning implement…includes…a picture selection means for selecting picture data of one set of pictures from picture data of a plurality of sets of pictures recoded on the picture recording medium”
The Court affirmed patent infringement under the doctrine of equivalents and decided in favor of the patentee (the defendant).
Even if, within the structure stated in the scope of the claims, there is a part that is different from a product manufactured or a process used by the other party (the “subject product”), it is reasonable to understand that the subject product falls under the technical scope of the patented invention as an equivalent to the structure stated in the scope of the claims if the following requirements are fulfilled:
(i) said part is not the essential part of the patented invention [Non-essential Part];
(ii) even if said part is replaced with a part in the subject product, the purpose of the patented invention can be achieved, and the same function and effect can be obtained [Interchangeability];
(iii) a person ordinarily skilled in the art could have easily conceived of such replacement at the time of the manufacturing of the subject product [Conceivability of Interchange];
(iv) the subject product etc. is neither identical to art publicly known at the time of the filing of the patent application for the patented invention nor one that a person ordinarily skilled in the art could have easily conceived of at the time of said filing based on such publicly known art [Non-obviousness]; and
(v) there are no special circumstances, such as the fact that the subject product falls under inventions that were intentionally excluded from the scope of the claims in the patent application procedures for the patented invention [No Special Circumstances].
In the Maxacalcitol Case (the IP High Court Grand Panel Decision of March 25, 2018, Case No. 2015 [Ne] 10014), the court found that:
However, if the statement of the problem, which is described as one that prior art could not solve, in the description is objectively insufficient in light of prior art as of the filing date (or the priority date…), a characteristic part which constitutes a unique technical idea of the patented invention that is not seen in prior art should be found also in consideration of prior art that is not stated in the description. In such cases, the essential part of the patented invention is closer to the statements in the scope of claims compared to the cases where it is found only based on the statements in the scope of claims and the description, and the scope of application of the doctrine of equivalents is considered to be narrower.
As stated above, in the Maxacalcitol Case, the IP High Court Grand Panel indicated a tendency that the scope of application of the doctrine of equivalents will be narrower if prior art that is not stated in the description is taken into consideration when determining the essential part of an invention.
In this case, when determining the essential part of an invention, the Court adopted the same approach as indicated in the Maxacalcitol Case, that is, “if the statement of the problem, which is described as one that prior art could not solve, in the description is objectively insufficient in light of prior art as of the filing date (or the priority date…), a characteristic part which constitutes a unique technical idea of the patented invention that is not seen in prior art should be found also in consideration of prior art that is not stated in the description”, and affirmed infringement under the doctrine of equivalents, in contrast to the above-mentioned tendency indicated in the Maxacalcitol Case, that is, “in such cases, the essential part of the patented invention is closer to the statements in the scope of claims compared to the cases where it is found only based on the statements in the scope of claims and the description, and the scope of application of the doctrine of equivalents is considered to be narrower”. Therefore, this case attracts attention as part of a pro-patent tendency.
However, in this case, “inventions of Exhibit A No. 11 and Exhibit B No. 6 were taken into consideration in addition to prior art stated in the description”. Therefore, this case is not a case in which the court affirmed infringement under the doctrine of equivalents by determining the essential part of an invention based only on prior art that is not stated in the description. If that were the case, it will be much more difficult for infringement under the doctrine of equivalents to be affirmed in accordance with the approach indicated in the Maxacalcitol Case.
Writer: Hideki TAKAISHI
Supervising editor: Kazuhiko YOSHIDA
Contact information for inquiries: h_takaishi@nakapat.gr.jp
Hideki TAKAISHI
Attorney at Law & Patent Attorney
Nakamura & Partners
Room No. 616, Shin-Tokyo Building,
3-3-1 Marunouchi, Chiyoda-ku,
Tokyo 100-8355, JAPAN