1. Highlights of the Judgment
In the judgment, the court reversed the JPO decision on patent opposition, finding that the JPO decision ignored “rupture disk” from the technical matter of exhibit A-2 (by assuming that the term “rupture disk” was not used) and recognized the sub-cited reference as a higher concept, and then reasoned that staggering the opening timing of each valve (thereby preventing pressurization in each chamber) was easily conceivable.
2. Some Considerations
As a claimant for invalidation proceedings, it is important to be wary of abstracting or superseding the disclosures in the primary and secondary references. If there are multiple descriptions of different levels of abstraction in the known literature, it is desirable to present moderately abstract technical matters that do not include specific technical matters that would be different when contrasted with the invention in question. In this sense, one should always consider whether to use an example from a known reference as a citation, a general description in a known reference as a citation, or what level of abstract disclosure should be used as a citation. (For example, Intellectual Property High Court Case No. 10008 (Gyo-ke) 2022, Case No. 10027 (Gyo-ke) “Information Providing Device” case, (Presiding Judge Otaka) are cases in which the judgment of the conclusion of the inventive step differed depending on which level of abstraction of disclosure in the known literature was used as a cited example.)
In relation to this issue, the two cases below are important court decisions that reversed a judgment on the level of abstraction of a cited invention as determined from the cited reference, and resulted in the reversal of the trial decision.
Intellectual Property High Court Case No. 10061 (Gyo-ke) 2016 (Presiding Judge Tsuruoka) denied inventive step because the cited invention was not limited to the examples described in the cited reference.
Intellectual Property High Court Case No. 10062 (Gyo-ke) 2017 (Presiding Judge Takabe) affirmed the inventive step because the cited invention was specified in a different configuration from the invention in question.
The decisive factor in this judgment was the finding that the technical matter in Exhibit A2 “presupposes the use of a rupture disk,” and the reasoning of the case which did not use a rupture disk was denied. The level of abstraction of the cited examples is an important issue in determining novelty and inventive step.
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