In this case, the Court interpreted the wording of the “cylindrical portion for power feeding” to mean that the cylindrical portion is actually used for power feeding, and it also found that the defendant’s product does not fulfil the constituent feature of the patented invention because the defendant’s product does not use the cylindrical portion for power feeding.
The plaintiff argued that the wording of “(AAA) for (BBB)” is widely used when (AAA) has the configuration etc. suitable for (BBB) even when (AAA) is not actually used for (BBB). In fact, in some fields except for the fields of pharmaceuticals and chemistry, and particularly in the fields of mechanics and electricity, there are many court cases in which the court interpreted the wording of “(AAA) for (BBB)” as argued by the plaintiff in this case, and judged the constituent features of the patented invention to be fulfilled. Therefore, the plaintiff’s argument was not necessarily unreasonable.
There is a court case which offers a comparative perspective: the Roll Paper for Medicine Packaging case (the Intellectual Property High Court Case No. 2019 [Ne] 10009, Presiding Judge OTAKA), in which the interpretation of the wording of “used” in claims of an invention of a sub-combination became an issue, and the court found with respect to the wording of “(XXX) used in (YYY)” that it is sufficient that (XXX) is capable of being used in (YYY), and that constituent features of the patented invention are fulfilled as in the case of the court of the first instance (the Osaka District Court Case No. 2016 [Wa] 6494).
In this ANENNA Case of the Tokyo District Court, the wording of “(AAA) for (BBB)” became an issue, and in the Roll Paper for Medicine Packaging case of the IP High Court, the wording of “(XXX) used in (YYY)” became an issue; and these wordings are different in that the former seems to suggest a use invention, while the latter is employed to specify an invention of a sub-combination. However, it is hard to say that they are substantially different from each other, and in addition, an invention of a sub-combination can be regarded as a form of a use invention. Therefore, it is deemed desirable to examine the consistency between these two cases and engage in patent practice with both of the aforementioned court cases in mind.
It is noted that the wording used in claims of the invention of this case is “the antenna which has (AAA) for (BBB)”, and not “the antenna for (BBB)”; therefore, the question is not what the antenna is used for. Further, one of the constituent features of the antenna is “(AAA) for (BBB)”, more specifically, “the cylindrical portion for power feeding”; therefore, it is not a matter of the interpretation of the technical scope of a use invention, but it is a matter of one possible interpretation of constituent features of an invention of a product. Accordingly, it is possible to understand that the “cylindrical portion for power feeding” means the “cylindrical portion which is used for power feeding”.
In other words, in the case of an invention of the “cylindrical portion for power feeding”, it can be interpreted that the cylindrical portion is not necessarily used for power feeding, and it is sufficient that the cylindrical portion is suitable for power feeding, while on the other hand, in the case of the invention of the “antenna which has the cylindrical portion used for power feeding”, it can be interpreted that the cylindrical portion is required to be used for power feeding as found by the court in this case.
Therefore, the Tokyo District Court Decision and the IP Hight Court Decision can be understood as being consistent with each other.
IP High Court Case No. 2019 (Ne) 10009; June 27, 2019 (President Judge OTAKA)
<First Instance: Osaka District Court Case No. 2016 (Wa) 6494; December 18, 2018, in which the court rendered a decision to the same effect>
The defendant’s product is a plastic tube on which a sheet for packaging medicine is wound, and in an axial center hollow part of the defendant’s product (the plastic tube), a used hollow core tube of a “roll paper for medicine packaging” manufactured by the plaintiff on which a rubber band is wound is fitted by a user, thereby integrating two products into one product (“integrated product”). In this case, whether the “integrated product” falls under the technical scope of an invention of a “sub-combination” became an issue.
The IP High Court stated that the wording of “(XXX) used in (YYY)” in the claims is interpreted to specify the structure, characteristics, etc. of the object of the invention, and if (XXX) is capable of being used in (YYY), (XXX) is considered to satisfy the constituent feature of the patented invention. The Court further stated that whether or not (XXX) is actually used in (YYY) does not influence the decision on whether or not (XXX) belongs to the technical scope of the patented invention, and then affirmed [indirect] infringement of the patent for the invention of the sub-combination (the IP High Court Decision came to the same conclusion as that of the original decision, however, the IP High Court clearly indicated that (XXX) is considered to satisfy constituent feature of the patented invention if (XXX) is “capable of being used” in (YYY)).
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