【PATENT ★★】”PIT CONSTRUCTING MACHINE” Case: A case in which the IP High Court found that (i) since the purposes of a primary cited invention and a secondary cited invention are different, the structure of the primary cited invention needs to be changed correspondingly to the difference in the purposes in order to be combined with the secondary cited invention (there is a factor teaching away from combining the secondary cited invention with the primary cited invention), and (ii) a part of a structure of a cited invention is not allowed to be extracted independently (the limitations of specifying technical contents as generic concepts). The Court acknowledged an inventive step of the Present Invention.

―IP High Court Case No. 2019 (Gyo-ke) 10102 of May 24, 2020 (Presiding Judge TAKABE)

【Summary and Consideration of the Present Decision】

1. Motivation to combine the secondary cited invention with the primary cited invention, and a factor teaching away from combining the two inventions (an inventive step of the Present Invention was acknowledged, Article 29, Paragraph 2 of the Patent Act)

⇒ The purposes of the primary cited invention and the secondary cited invention are different.

⇒ The structure of the primary cited invention needs to be changed, correspondingly to the difference in the purposes, in order to be combined with the secondary cited invention.

⇒ There is a factor teaching away from combining the secondary cited invention with the primary cited invention.

(Excerption from the Present Decision) “…[B]y further examining the structure of the two inventions,…correspondingly to the aforementioned difference in the purposes, the ‘elevation frame 4’ in Cited Invention 1 has the structure in which the ‘mounting seat 4a’ for mounting the swing bearing 6 is split so as to divide it,…Since such split liner 4 and the split clamp 3 of Cited Invention 2’ cannot be mounted as they are on the ‘mounting seat 4’ on the ‘elevation frame 4’ of the Cited Invention…, the structure itself of Cited Invention 1 of the ‘elevation frame 4’ and the ‘mounting seat 4a’ which can be split needs to be changed in order to combine Cited Invention 2’ with Cited Invention 1.”

 
2. Finding of Cited Invention-the limitations of specifying technical contents as generic concepts (an inventive step of the Present Invention was acknowledged, Article 29, Paragraph 2 of the Patent Act)

⇒ A part of a structure of a cited invention is not allowed to be extracted independently (specifying technical contents as generic concepts was not allowed )

(Excerption from the Present Decision) “…[I]dentifying the invention from Cited Invention 3 as stated in Section III-2 (Plaintiffs’ Arguments) is to focus only on a part of a revolution seat bearing; however, the revolution seat bearing does not work as a unit by such a part only.”

【Relevant Court Cases (*Identification of Cited Invention-the limitations of specifying technical contents as generic concepts were disputed)】

1. Court cases which were decided in favor of a patent holder or patent applicant (cases in which a part of a structure of a cited invention is not allowed to be extracted independently)
 

 
2. Court cases which were decided against the patent holder or patent applicant (cases in which a part of a structure of a cited invention is allowed to be extracted independently)
 

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