[Patent★] “Cellulose Powder” Case: A case in which the court held different judgements that the enablement requirement is satisfied but the support requirement is not satisfied.

–Tokyo District Court Case No. 2017 (Wa) 24598 on March 26, 2020 (Presiding Judge Shibata)

1. The enablement requirement is satisfied

⇒With regard to the enablement requirement, the issue was whether it is possible to measure an angle of repose and an average particle diameter under the conditions described in the detailed description of the invention.

There is an influential opinion that in order to satisfy the enablement requirement, it is not enough for a person skilled in the art to be able to manufacture the product or use the process, but it is necessary for the said person to be able to embody the invention with the method of solving the problem and achieving the effect of the invention.

In accordance with the above opinion, the issues of the support requirement and the enablement requirement often reach the same conclusion. In this regard, this judgement in which the court decided the above both requirements and made different conclusions is uncommon.

 
2. The support requirement is not satisfied (Article 36, paragraph 6, item 1 of Patent Act)

⇒With regard to the support requirement, the issue was whether “level off polymerization degree” of the cellulose powder can be changed by hydrolysis.

⇒The mechanism and prediction for changing (reducing) “level off polymerization degree” was described in the BATTISTA thesis cited in the specification of the invention.

     The defendant also submitted other documentary evidence. On the other hand, the patentee submitted their experimental results.

⇒In this case, the documentary evidence which the defendant submitted was recognized as reasonable.

⇒A patentee who bears the burden of proof for support requirements should submit not their experimental results but the relevant “documentary evidence” in order to prove technical levels as of the priority date.

【Similar court cases (the cases in which it is necessary to embody the invention with the method of solving the problem and achieve the effect of the invention in order to satisfy the enablement requirements)】

1. Intellectual High Court Case No. 2015 (Gyo-ke)10148
2. Intellectual High Court Case No. 2017 (Gyo-ke)10143
3. Intellectual High Court Case No. 2011 (Gyo-ke)10179
4. Intellectual High Court Case No. 2011 (Gyo-ke)10251
5. Intellectual High Court Case No. 2010 (Gyo-ke)10090
6. Intellectual High Court Case No. 2008 (Gyo-ke)10272
7. Intellectual High Court Case No. 2014 (Gyo-ke)10080
8. Intellectual High Court Case No. 2008 (Gyo-ke)38602

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