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【PATENT★】”LEARNING IMPLEMENT” Case: A case in which the Court found that the plaintiff’s product constitutes patent infringement under the doctrine of equivalents and dismissed the plaintiff’s claim for confirmation of absence of right to demand an injunction.

November 12,2021

―Osaka District Court Case No. 2019 (Wa) 3273 of March 25, 2021 (Presiding Judge Masaki SUGIURA)

 

◆Main Text of the case

 

1. Patent Claim

“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”

 

2. Conclusion

The Court affirmed patent infringement under the doctrine of equivalents and decided in favor of the patentee (the defendant).

 

3. The five requirements of the doctrine of equivalents
(The Supreme Court Judgment of February 24, 1998, “Ball Spline Case”)

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].

 

4. A modicum of consideration on this case

In the Maxacalcitol Case (the IP High Court Grand Panel Decision of March 25, 2018, Case No. 2015 [Ne] 10014), the court found that:

…the essential part of a patented invention should be found based on the statements in the scope of claims and the description, in particular, through comparison with prior art stated in the description. [i] If the degree of contribution of the patented invention is considered to be more than that of prior art, the patented invention is found as a generic concept in relation to part of the statements in the scope of claims (…the Corrected Invention is an example of such a case). [ii] If the degree of contribution of the patented invention is evaluated as not much more than prior art, the patented invention is found to have almost the same meaning as stated in the scope of claims.

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

 
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