Damages (Article 102, paragraph (1) of the Patent Act)
A damages calculation method of an amount of damages based on Article 102, Paragraph 1 of the Patent Act and the circumstances to be taken into account in the calculation.
<Summary of the Judgment>
(1) The “products that the patentee could have been sold if there had been no infringement” only needs to be a product of the patentee whose sales quantity is affected by the infringement, that is, a product of the patentee having a competitive relationship with the infringing product in the market.
(2) The “amount of profit per unit” is an amount of marginal profit obtained by deducting the cost additionally required in direct relation with the manufacture and sales of the aforementioned product for the patentee from the sales of the product of the patentee, and the burden of allegation and proof resides on the side of the patentee.
(3) Even if a characteristic part of the patented invention is only a part of the patentee’s product which worked the patented invention, it is factually presumed that the total amount of the marginal profit obtained by the sales of the patentee’s product is the lost profit of the patentee. However, under the circumstances where a portion having a great attraction for customers in the product is the structure of the rotating parts, and the characteristic part of the patented invention cannot be considered to contribute to all the profit earned by sales of the product by the patentee, and comprehensively taking into account the circumstances such as the importance of said characteristic part of the patentee’s product, any other characteristics of the patentee’s product, and their power to attract customers, the factual presumption is to be overturned by approximately 60%, and the amount of which should be deducted from the marginal profit.
(4) The “ability (of the patentee) to work (the invention)” only needs to be a potential ability. If the patentee is able to supply the quantity of the patentee’s product corresponding to the sales quantity of the infringing product by such means as outsourcing its production, it is reasonable to construe that the patentee has the capability to work the invention, and the burden of allegation and proof resides on the patentee’s side.
(5) The “circumstances due which the patentee would have been unable to sell” prescribed in the proviso to Article 102, Paragraph 1 of the Patent Act refers to circumstances that disprove a reasonable causal relationship between the infringement and the sales decrease of the patentee’s product, and circumstances such as (i) presence of a difference in the business forms, prices, and the like between the patentee and the infringer (difference of the subject market); (ii) presence of competitive products in the market; (iii) marketing efforts of the infringer (brand power and promotion activities); and (iv) presence of differences in performances of the infringing product and the patentee’s product (functions, design, and other features different from those of the patented invention) should fall under such circumstances, and the burden of allegation and proof of the aforementioned circumstances and the quantity corresponding to the circumstances resides on the infringer’s side.
<Writer: Hideki Takaishi (Attorney-at-law licensed in Japan and California)>