Osaka District Court, 2020 (Wa) 3473 [Lighting Fixture] <Matsuami> <Damages> Rebuttal of the presumption under Article 102(2): rebutted by 80%

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Article type: Case note

Categories: Patents

Topics: Damages

First published on this website: 2026-11-14

Display and classification checked: 2026-11-15

<Damages> Rebuttal of the presumption under Article 102(2): rebutted by 80%

<Grounds for rebutting the presumption>

(1) Significance 1 at issue—preventing deformation and damage to the exterior portion—is a function and element that a product should naturally ensure.

⇒ It can also be achieved through technologies other than the invention, such as choices of material, bracket-mounting method, and mounting-portion structure.

(2) Significance 3 contributes to reducing manufacturing costs by reducing the defect rate, but the extent of cost reduction (reflection in product prices) is unknown.

(3) Alternative technology: the fact that the plaintiff's successor product achieves similar effects through technology different from the invention is a circumstance rebutting the presumption to a large extent.

(4) Competing products: generally in approximately the same price range as the plaintiff's practicing product and the defendant's products.

(Extract from the court's reasoning)

Significance 1 at issue

Spotlight products generally had existed on the market long before the patented invention, and a mature market had already formed (Otsu 5; entire purport of the oral argument). According to a market-trend survey, development of spotlight products with high added value in color rendering, color temperature, etc. is expected (Otsu 30 and 31). Catalogs, etc. of the plaintiff, defendant, and competitors also appear to promote light-distribution control and characteristics, light color, lens design, energy savings, product size, lightness, design, etc. (Ko 5 and 6; Otsu 15, 16, and 25–29). By contrast, Significance 1, preventing deformation and damage to the exterior portion, may be said to be, so to speak, a function and element that a product should naturally ensure. Moreover, it can also be achieved through technologies other than the respective inventions, such as choices of material, bracket-mounting method, and mounting-portion structure, and is considered to be an effect generally achieved in practice by lighting-fixture manufacturers.

Since 2014, the plaintiff has also sold, under the same series and product names as its practicing product, a successor product that prevents deformation and damage to the exterior portion by attaching the bracket to the exterior portion rather than the heat-dissipating portion and making the exterior portion thick-walled (entire purport of the oral argument). In other words, Significance 1 can be assessed as having only such customer-attracting power that a product lacking it can still be sold to customers as the same series and product. This remains so even taking into account that, although the catalog does not expressly state Significance 1 in words, the characteristics relating to it can be perceived from the product photographs.

Significance 3 at issue

Significance 3 can be said to contribute to reducing manufacturing costs through a lower defect rate, but, considering that the extent of the cost reduction (reflection in product prices) due to Significance 3 is unknown, etc., it cannot be found to contribute greatly to profits on the defendant's products.

In view of these circumstances, the customer-attracting power of Significance 1 and Significance 3 is limited, and it must be said that their contribution to sales of the defendant's products is small.

Sales performance

The plaintiff has not manufactured its practicing product since the registration date at issue, its sales methods (channels), etc. are substantially limited, and the scale is extremely small. Although the plaintiff sells its successor product, that product achieves effects similar to those of the respective inventions through different technology. While these matters cannot be said to negate the underlying facts for the presumption under Article 102(2) of the Patent Act explained in (1) above, they should be regarded as circumstances rebutting the presumption to a large extent.

Competing products

During the relevant period, multiple products had the feature that the bracket was attached not to the exterior portion but to another portion, including the heat-dissipating portion: these included Panasonic's TOLSO series (Otsu 25), Odelic's C1000 series (Otsu 27-2 to 27-4), and Mitsubishi Electric's AK, Saimei, Senmei, and LED Spotlight series (Otsu 29). These products are generally in approximately the same price range as the plaintiff's practicing product and the defendant's products.

In view of the foregoing, competing products are found to exist for the defendant's products, and their existence also constitutes a circumstance rebutting the presumption.

Considering the foregoing circumstances comprehensively, with particular emphasis on the technical significance of the patented invention and the sales situation of the practicing product, the probability that, absent sales of the defendant's products, the corresponding demand would have been directed to the plaintiff's practicing or successor product should instead be regarded as low. It must therefore be said that 80% of the damages presumed under Article 102(2) of the Patent Act are rebutted. Neither the plaintiff's nor the defendant's arguments to the contrary can be accepted.

https://www.courts.go.jp/assets/hanrei/hanrei-pdf-91850.pdf

Originally published: 2023-11-02

Original article: https://ameblo.jp/hideki-takaishi/entry-12826996220.html

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