[Patent★★] A Case in which the Intellectual Property Hight Court acknowledged joint direct infringement even if some part of the method invention was worked by another entity.

 Intellectual Property Hight Court Case No.2021 (Ne) 10029, September 21, 2021(Presiding Judge Shoji)

（Osaka District Court Case No. 2017 (Wa) 10716, February 18, 2021（Presiding Judge Sugiura), the same conclusion）

 
 
1. Excerpt from the Judgements Concerning Theory of Fulfillment of Patentability Conditions among Multiple Entities

“…The defendant sold the defendant’s products and carried out the defendant’s method until the glass mounting frame was attached to the handrail body. The glass mounting work was carried out by a different contractor (according to the entire import of the argument, the defendant is deemed not to be selling glasses). However, …it is probable that the contractor, who was engaged in the glass mounting work, used the defendant’s products and carried out the mounting work following the defendant’s work by the defendant’s designated method. It can be regarded that the defendant and the contractor engaged in the glass mounting work were working together to implement the defendant’s method. Thus, the defendant is deemed to have committed acts directly infringing the Patent Rights.”

⇒ Joint (direct) infringement

2. Consistency with Other Court Cases on Theory of Fulfillment of Patentability Conditions among Multiple Entities

Although this case is consistent in conclusion with past court cases judged by the so-called “tool theory” in which an entity who has carried out only a part of the method invention has a direct infringement of the whole of patent rights, the two theories are different.

Under “tool theory”, some practitioners who are regarded as “tools” do not seem to directly infringe the patent rights. However, in this judgment, the contractor also constitutes joint infringement because the contractor and defendant are “joint” actors.

Regarding product inventions, there is also a court case involving multiple entities in which the Tokyo District Court acknowledged the infringement of patent rights with respect to a product (system) invention (Tokyo District Court Case No. 2004 (Wa) 25576 “HOYA case”).

In both of the above cases, although there is a difference in logic, a similar value judgment is justified in that the infringement of patent rights cannot be avoided by having another entity work part of the invention.

 
Writer: Hideki TAKAISHI

Supervising editor: Kazuhiko YOSHIDA

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