Patent Case Law and Intellectual Property Practice Blog

日本語版 / Japanese version An agreement between a company and a former employee under which ‘all claims, including the right to claim reasonable remuneration, are extinguished’ in exchange for JPY 300,000 was held valid in light of the negotiation history. ⇒ Claim dismissed The defendant sent a warning letter two months after the agreement. ⇒ It could not be found that, at the time of the agreement, the defendant knew that another company’s products infringed the patent at i

日本語版 / Japanese version Invalidation petitioner: Aichi Steel Patentee: MagneDesign (Extract from the court's reasoning) ‘Whether an effect is distinguishable from prior technology in a natural-scientific sense ... is unrelated to patentability requirements ... a patent is granted if the technical idea could not readily have been conceived.’ ⇒ Support requirement satisfied https://www.courts.go.jp/assets/hanrei/hanrei-pdf-91863.pdf Originally published: 2023-11-14 Origin

日本語版 / Japanese version *In this case, obviousness was found in light of, among other matters, the overlap with the numerical range of the cited invention. (Difference as described in the judgment and extract from the court’s reasoning) 　The peak temperature of the loss tangent based on the dynamic viscoelastic spectrum of adhesive portion (B), measured at a frequency of 1 Hz, is ‘−25°C to 5°C’ in Invention 1, whereas the peak temperature of the loss tangent is unknown in

日本語版 / Japanese version Liability became final in Intellectual Property High Court, 2019 (Ne) 10002 First-instance judgment: 2020 (Wa) 17626 <Sugiura> ⇒ It is difficult to consider all Y's sales attributable to misidentification or confusion with X's products ⇒ A 40% deduction under Article 5(1) of the Unfair Competition Prevention Act for circumstances preventing sales Appeal: Intellectual Property High Court, 2022 (Ne) 10095 and 10112 <Honda> ⇒ Even without actual mis

日本語版 / Japanese version <Clarity requirement> * Products not satisfying the claimed effect ‘configured to be capable of causing paper tearing’ are excluded from the invention. ⇒ Clarity upheld even though the claims do not specify the frequency or conditions of occurrence of ‘paper tearing’ <Inventive step> * Even if the numerical range overlaps the cited reference, the values are not disclosed as significant in relation to the claimed effect ‘capable of causing paper te

日本語版 / Japanese version An amendment was made on the basis of the description of the prior art. ⇒ (1) It does not disclose that the configuration described under [Embodiments for Carrying Out the Invention] has the prior-art configuration, and (2) there is no description suggesting that it presupposes the prior-art configuration. ⇒ Addition of new matter (Extract from the court's reasoning) 　... The statement ‘... issues a warning when there is danger’ in [0002] of the i

日本語版 / Japanese version The specification does not describe the technical significance of the stepped portion extending ‘substantially horizontally.’ Whether the stepped portion extends ‘substantially horizontally’ or ‘slightly downward’ does not change the effects produced by the invention. ⇒ Merely a design matter. Inventive step denied * A feature specifying the invention whose technical significance is not described in the specification, and which does not affect the i

日本語版 / Japanese version <Damages> Rebuttal of the presumption under Article 102(2): 98% rebutted (Invention 2), 85% rebutted (Invention 3) JPY 5.5 billion claimed; approximately JPY 2.78 billion awarded <Grounds for rebutting the presumption>　 (1) Invention II made only a slight contribution, while Invention III made a limited contribution. Most of the defendant’s products relating to Invention II were purchased because of functions or other features unrelated to the char

日本語版 / Japanese version Factors for assessing the duty of due care of a prudent manager (1) Duty to investigate, including obtaining an opinion from an impartial expert (2) Cessation of working acts and reserving an amount equivalent to damages ⇒ At the time of the article’s review, no uniform standard had been established. https://jpaa-patent.info/patent/viewPdf/4202 Originally published: 2023-11-20 Original article: https://ameblo.jp/hideki-takaishi/entry-12829359437.h

日本語版 / Japanese version (1) Five years elapsed after registration ⇒ In this case, neither an invalidity defense for violation of Article 4(1)(xi) of the Trademark Act nor an Emax defense is available (2) It is not improper for the plaintiff, which manufactured the former Leader company's products, to acquire the trademark right in the bankruptcy proceedings of the former Leader company, etc. ⇒ No abuse of rights https://www.courts.go.jp/assets/hanrei/hanrei-pdf-91719.pdf