Intellectual Property High Court Case No.10010 (Ne) 2023, February 27, 2024 “Functional” Case (Presiding Judge Shoji) – Prior Instance Court/ Osaka District Court Case No. 4920 (Wa) 2021 –
1. Some Considerations on The Determination of Inventive Step in This Judgment –Difficulty in denying inventive step of an invention with numerical limitations based on a publicly worked invention –
This case involved a publicly worked invention with a “weight-average molecular weight of 45,000,” a pre-corrected claim specifying “a weight-average molecular weight of 500 to 50,000,” and a post-corrected claim specifying “a weight-average molecular weight of 500 to 15,000,” for which inventive step could not be denied.
Inventive step of an invention with numerical limitations or an invention with parameters (in particular, but not necessarily limited to an invention with numerical limitations or an invention with parameters) tends to be easily denied as mere design changes if no technical significance is recognized in the numerical limitations or parameters themselves. Accordingly, the Appellee raised this argument, but the appeal court determined that the present invention – a functional water containing a polyallylamine or diallylamine polymer with a “weight-average molecular weight of 500 to 15,000” – possesses technical significance in that it has “various functions including the preservation of the freshness of seafood or meat.” Consequently, the court rejected the Appellee’s argument. In this sense, on the patent holder’s side as well, when securing inventive step through corrections, it is extremely useful not only to satisfy correction requirements but also to include in the claim values whose technical significance can be understood through examples in the specification.
Furthermore, it is also worth considering that the main cited invention was a publicly worked invention. The Appeal Court held that it is generally difficult to recognize any particular technical problem from a publicly worked invention itself. The court held that it is necessary to examine whether the technical concept or problem could be recognized based on the common technical knowledge at the time of the filing date (priority date), and whether there was motivation to alter its structure or composition. This approach is consistent with the perspective presented in former Intellectual Property High Court Chief Judge Otaka’s paper.
2. Excerpts from The Judgment Concerning Other Issues the Appeal Court Determined (Rights of prior use and Patent exhaustion)
“(5) Whether rights of prior use apply (Issue 3)
… The Appellee merely purchased the former ATW and current ATW from the Appellant’s affiliated company and sold the Appellee’s products. … Neither the Appellee nor [party] A contributed to the completion of the invention covered by the patent in question, nor did they complete the invention. Thus, the Appellee’s argument of a non-exclusive license based on prior use cannot be recognized.”
“(6) Whether Existence of Exhaustion applies, or Whether Implicit License is granted (Issue 4)
The Appellee asserts that with respect to manufacturing and selling the Appellant’s products using the former ATW and current ATW purchased from the Appellant’s affiliated company, the Appellant’s patent rights are exhausted, or that the Appellant has impliedly licensed such patent.
However, the products of the Appellee in this case that are alleged to infringe the patent rights refer to products manufactured by the defendant using raw materials purchased from a medical company. They do not include products manufactured using the former ATW or the current ATW. Therefore, the Appellee’s argument lacks its fundamental premise.”
Writer: Hideki TAKAISHI
Attorney at Law & Patent Attorney