IP High Court, 2023 (Ne) 10071 [Chip Fuse] <Miyasaka>
更新日：2 日前
Article information
Article type: Case note
Category: Patents
Topics: Litigation procedure, Doctrine of equivalents
First published on this website: 2026-11-01
Display and classification checked: November 2, 2026
Originally published on Ameblo: 2024-11-05 (Japan time). Full English translation.
IP High Court, 2023 (Ne) 10071 [Chip Fuse] <Miyasaka>
Claim 3 was first asserted after the first-instance court disclosed its preliminary assessment.
⇒ Intended to circumvent the fourth requirement of equivalence, which had been an issue from the outset
Adding an invention under another claim of the same patent as a cause of action is not an amendment of the action, but a means of attack or defense.
⇒ Rejected as untimely
★This directly relates to the extremely important issue of the scope of res judicata!!
*The first-instance Osaka District Court, 2021 (Wa) 10032, treated it as an amendment of the action and rejected it as significantly delaying the proceedings (Code of Civil Procedure Article 143(1), proviso, and (4)).
Cf. 2023 (Gyo-Ke) 10069 [Soldering Apparatus] <Hibiku Shimizu>
*The binding effect of the first judgment extends to factual findings concerning the differences!!
⇒ Perhaps somewhat harsh to require the patentee who prevailed in the first trial decision to advance, in the prior lawsuit, arguments that the decision passed over….
⇒ Even the party that prevailed before the JPO must make alternative arguments, or the binding effect may prevent it from raising them in the second lawsuit.
Cf. 2005 (Gyo-Ke) 10179 [Fashion Hair-Enhancement Appliance] <Mimura>*A case upholding a patent-revocation decision after switching the primary and secondary references: “Making arguments different from the trial or revocation decision regarding common features and differences … or combinations … does not … immediately go beyond the framework of comparison with publicly known facts examined and decided in the trial or patent opposition….”
Cf. [Article] Transcript of a Lecture by Former Judge Shiotsuki (Patent, 2011)
Q: Where two invalidity grounds are asserted in a trial, and the decision finds Ground A established but rejects Ground B, issuing a decision of invalidity
A: “Because both invalidity grounds were decided in the trial decision …, both may be examined and decided in the action to set aside the decision.”
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November 1, 2026: First published on this website.
November 2, 2026: Added article information, classification, topics, language navigation, related articles where the same case was confirmed, consultation guidance, and SEO. The original text and first-published date were preserved.
