Legal Update (Items Posted in February 2026)

Scope: Articles published in February 2026 by Attorney Hideki Takaishi (Nakamura & Partners)

Number of Articles Included: 34

Index Page: https://www.nakapat.gr.jp/ja/legal_updates_jp/

<Highlights of the Month> Key Points in the February 2026 Intellectual Property and Legal Affairs Update

This month's legal update addresses 34 judicial decisions and commentaries across a broad range of intellectual property practice, from claim construction, inventive step, inventorship and employee inventions, pharmaceutical patents and standard-essential patents, to expert-appraisal evidence, statutory procedures, and exceptions under copyright law. The particularly noteworthy decisions and practical points are as follows.

1. Scope of Rights Determined by Claim Language and the Specification

The Tokyo District Court Judgment, Reiwa 5 (Wa) No. 70380 [Rod-Shaped Light] <Presiding Judge Takahashi>, found that products using different inputs for storing and emitting a recommended color did not satisfy the claim elements, and also found a violation of the support requirement because there was no description or suggestion of solving the problem by using the same input method. Reiwa 6 (Ne) No. 10074 [Filler for Electronic Cigarette] <Presiding Judge Masuda> construed "cut" as a slit formed artificially and actively with a blade and found that the linear portions formed by crimping did not satisfy the claim element. By contrast, the Tokyo District Court Judgment, Reiwa 5 (Wa) No. 70594 [Mattress] <Presiding Judge Katsumata>, did not limit "pressure-bonded" to strong compression, construed it as a state in which pressure is applied to the extent that no gap is formed, and found the claim element satisfied. Reiwa 6 (Ne) No. 10080 [Under-Coping Ventilation Structure] <Presiding Judge Nakahira> held that the ventilation member "itself" must have ventilation and waterproofing performance. It is necessary to take into account the problem, means for solving the problem, effects, and means of formation described in the specification.

2. Common General Technical Knowledge, Predictability, Motivation, and Disincentives that Determine Inventive Step

Reiwa 7 (Gyo-Ke) No. 10037 [Wood Composite Material] <Presiding Judge Hibiki Shimizu> approved separate consideration because no particular synergistic effect was shown for density, dimensions, and random orientation, and treated them as optimization and selection based on well-known art and the like. Reiwa 6 (Ne) No. 10032 [Portable Information Communication Device] <Presiding Judge Shimizu> and Reiwa 6 (Ne) No. 10001 [Yarn Color Placement System] <Presiding Judge Hibiki Shimizu> likewise emphasized common general technical knowledge regarding image processing and adjustments that were necessarily made. By contrast, Reiwa 6 (Gyo-Ke) No. 10022 [... Antimicrobial Agent] <Presiding Judge Honda> affirmed inventive step because there was no reasonable expectation that the active ingredient would permeate the nail plate and exert a therapeutic effect. Reiwa 6 (Gyo-Ke) No. 10043 [Elasto-Plastic Hysteretic Damper] <Presiding Judge Honda> held that there was no motivation to apply a two-dimensional arrangement to the cited invention premised on unidirectional input and that there was a disincentive, while the Intellectual Property High Court Judgment, Reiwa 6 (Ne) No. 10048 [Battery] <Presiding Judge Nakahira>, emphasized the close relationship between the position of a member in the prior art and its effect. Common general technical knowledge, predictability, motivation, and disincentives should be argued separately.

3. Inventorship and Employee Inventions Are Determined by Involvement in the Characteristic Portion and Application of the Rules

Reiwa 5 (Gyo-Ke) No. 10078 [Audio Controller] <Presiding Judge Shimizu> denied joint inventorship on the ground that the commissioning parties had completed the conception accompanied by a specific means of solution, while the contractors had merely solved a different problem. Reiwa 7 (Ne) No. 10029 "Claim for Confirmation of the Right to Obtain a Patent" <Presiding Judge Masuda> found the professor who had recorded the problem and solution of the vascular plug in a research notebook to be the inventor, and [Employee Invention] Tokyo District Court Judgment, Reiwa 5 (Wa) No. 70495 <Presiding Judge Nakashima>, likewise denied the plaintiff's inventorship because there was no evidence substantiating the time of completion and the plaintiff's involvement. The Osaka District Court Judgment, Reiwa 5 (Wa) No. 10217 [Three-Dimensional Network Fiber Assembly] <Presiding Judge Matsuami>, dismissed the claims in light of the procedure for establishing the reward rules and the product's performance, whereas the Osaka District Court Judgment, Reiwa 4 (Wa) No. 11405 [Heterocyclic Derivative] <Presiding Judge Takemiya>, awarded statutory reasonable remuneration of approximately JPY 94 million because there was no provision or agreement applying the rules. Involvement in the characteristic portion should be documented, and the scope and procedures of the rules should be clarified.

4. Scope of Rights and Remedies for Pharmaceutical Patents and Standard-Essential Patents

Reiwa 5 (Ne) No. 10107 "PCSK9 (Second Litigation)" <Presiding Judge Nakahira> held that, although "competes" includes competition through steric hindrance, there was insufficient support for the neutralizing action of antibodies binding to different sites, and found a violation of the support requirement because that embodiment remained even after the correction to Fab fragments. The Tokyo District Court Judgment, Reiwa 5 (Wa) No. 70527 [Cyclic Protein Tyrosine Kinase Inhibitor] <Presiding Judge Sugiura>, held that the plaintiff's product was not substantially identical to Sprycel tablets because the differences between hydrate and anhydride and in excipients resulted from formulation design addressing problems of stability and dissolution. It is also noteworthy that the same presiding judge reached a different conclusion in the preliminary injunction proceeding and the action on the merits. The Tokyo District Court Judgment, Reiwa 4 (Wa) No. 7976 [Communication Equipment] <Presiding Judge Nakashima>, found infringement of an LTE standard-essential patent but held that the claim for an injunction constituted an abuse of rights, apportioned the royalty under FRAND terms, and did not allow an infringement premium.

5. Expert-Appraisal Evidence, Statutory Procedures, and Exceptions under Copyright Law

In the [Plant Variety Protection and Seed Act ★] breeder's-right infringement case, the credibility of the expert appraisal was denied because of the possibility that mycelium had been mixed in advance into test tubes prepared by the plaintiff and because subsequent verification had become impossible owing to disposal of the parent strain. Performance by a third-party institution and preservation of samples are indispensable. The Tokyo District Court Decision, Reiwa 6 (Gyo-U) No. 5001 <Presiding Judge Shibuya>, held that a defect arising from a request for examination made before submission of a translation in a foreign-language patent application was not cured later and that there was no practical benefit in revoking the disposition. Reiwa 6 (Ne) No. 10072 [Draft Difference Measuring Device] <Presiding Judge Nakahira> held that the opposition to the grant of a patent was not unlawful and also held that the other patent-application and maintenance expenses lacked an adequate causal relationship with the conduct. The Intellectual Property High Court Judgment of July 31, Reiwa 7 (Reiwa 6 (Ne) No. 10075) [Copyright Act ★] recognized quotation with respect to news photographs found to be related to the purpose of criticism in the text of the posts, and recognized exploitation of incidentally included works with respect to photographs that were incidentally and only slightly captured from adjacent newspaper pages. The collection and preservation of evidence, the sequence of statutory procedures, the causal relationship to damages, and each requirement for quotation should be reviewed.

In addition, this issue includes decisions spanning litigation, prosecution, contracts, and internal systems, including a finding of being "objectively unable to pay" under a contract, a joint tort based on an offer to sell a different product, the technical significance of numerical limitations, and grounds for retrial. This issue should be used to review the organization of issues and the design of evidence.

Three-Line Summaries of All Articles

Category	Article Title and Three-Line Summary
Patent	Reiwa 7 (Gyo-Ke) No. 10037 [Wood Composite Material] <Presiding Judge Hibiki Shimizu>① This case concerned whether, with respect to a wood composite material, density, the dimensions of small flakes, and random orientation in the fiber direction should be considered as an integrated difference having a synergistic effect, or whether obviousness should be considered separately for each of them.② The court approved the separate consideration on the ground that, although the individual effects of each element were recognized, no particular synergistic effect from their combination was recognized, and denied inventive step on the ground that density, dimensions, and random orientation could each be readily selected or optimized on the basis of well-known art and the like.③ The decision indicates that, unless a particular synergistic effect from the combination is shown in the specification or experimental data, multiple differences may be considered separately.
Patent	Reiwa 6 (Ne) No. 10032 [Portable Information Communication Device] <Presiding Judge Shimizu>① This case concerned, in relation to the inventive step of a portable information communication device, whether demodulation of radio signals and image display, differences in resolution from an external monitor, image memory, and cropping or reducing images and the like were common general technical knowledge or well-known art at the filing date.② The court held that all of these were common general technical knowledge or well-known art at the filing date and would naturally have been understood by a person skilled in the art even if not expressly stated in publicly known documents, denied inventive step, and affirmed the judgment of the court of first instance dismissing the claims.③ The decision indicates that a configuration that a person skilled in the art would naturally understand from common general technical knowledge at the filing date may be taken into account in the inventive-step analysis even if it is not expressly stated in a publicly known document.
Patent	Reiwa 6 (Ne) No. 10001 [Yarn Color Placement System] <Presiding Judge Hibiki Shimizu>① This case concerned the inventive step of a configuration that, in consideration of yarns hidden by high-low control, sets the actual tufting density higher than the desired apparent density and controls the feed speed of the backing material.② The court dismissed the claims, holding that the prior art contained a system for controlling yarn supply and substrate feed, that increasing the tufting density by the amount of the hidden yarns was self-evident, and that adjustment of the feed speed was also merely a matter of design that a person skilled in the art would naturally implement.③ The decision indicates that expressing, under a different conceptual name, an adjustment that is necessarily made in carrying out conventional technology may not support inventive step.
Patent	Tokyo District Court Judgment, Reiwa 5 (Wa) No. 70079 [Vehicle Guidance System] <Presiding Judge Kokubu>① This case concerned whether vehicle guidance at an SIC by opening and closing barriers and using display devices satisfied claim elements including a “system for guiding vehicles entering and exiting through ETC-only entrances and exits.”② The court found that vehicles seeking to use ETC-only entrances and exits were guided to prescribed lanes by start-control devices and roadside display devices, and found satisfaction of the claim elements, including Claim Elements A and F, as well as patent infringement.③ The specific operation by which the start-control devices and roadside display devices guided vehicles to prescribed lanes was used in determining whether the vehicle guidance system satisfied the claim elements.
Patent	Tokyo District Court Judgment, Reiwa 5 (Wa) No. 70380 [Rod-Shaped Light] <Presiding Judge Takahashi>① This case concerned whether the button inputs used to store and emit the recommended color of a rod-shaped light constituted the same input method prescribed in the claims or detection of the “first predetermined input,” and whether that configuration was supported by the specification.② The court held that Accused Products 1 and 2 did not satisfy the claim elements because they used different input methods for storage and recall, and that Accused Products 3 and 4 did not emit light solely upon detection of the first predetermined input; it also found a violation of the support requirement because the specification neither described nor suggested solving the problem by the same input method.③ The decision indicates that whether the input methods used for storage and emission are identical and whether light is emitted solely upon detection of the predetermined input affect satisfaction of the claim elements, and that claims including the same input method require a corresponding description or suggestion in the specification.
Intellectual Property—General	A Container Capable of Carrying 10 Cubic Centimeters of Liquid and/or Solid① This article considers, using “a container capable of carrying 10 cubic centimeters of liquid and/or solid” as an example, whether a correction changing “A and/or B” to “B” may constitute an expansion or alteration.② The article presents an example of a correction deleting an alternative and also refers, as the converse pattern, to a case in which adding the wording “electrically” may constitute an expansion or alteration, but does not itself state a conclusion.③ The article presents the issue that, when making a correction, the possibility of an expansion or alteration should be considered both for deletion of an alternative and for addition of wording.
Patent	Reiwa 6 (Gyo-Ke) No. 10043 [Elasto-Plastic Hysteretic Damper] <Presiding Judge Honda>① This case concerned lack of inventive step based on a combination of a building damper and a bridge damper and the like, and a violation of the support requirement based on an alleged lack of support for responding to “loads from every direction,” with respect to an elasto-plastic hysteretic damper.② The court held that there was no motivation to apply a two-dimensional arrangement to the invention of Exhibit Ko No. 1, which was premised on unidirectional input, that there was a disincentive, and that the other cited references likewise did not suggest a pair of shear portions oriented differently from each other; it further denied a violation of the support requirement because the invention at issue did not require maximum energy absorption with respect to loads from all directions.③ The decision indicates that the direction of load presupposed by a cited invention affects the determination of motivation or disincentive for a combination, and that the support requirement is determined in light of the scope of problem-solving actually required by the claims.
Patent	Intellectual Property High Court Judgment, Reiwa 6 (Ne) No. 10048 [Battery] <Presiding Judge Nakahira>① In this patent-infringement action concerning a battery, the issues included whether the power-generating element included a stacked type, whether bonding through a member was included in the claims, and whether Claim Element A4 could readily have been conceived from the prior art.② The court found satisfaction of the claim elements because the power-generating element was not limited to a wound type and included a stacked type, and because bonding through a member was not excluded; on the other hand, it found inventive step because the flange position in the invention of Exhibit Otsu No. 12 was closely related to its effect and neither the other cited references reached Claim Element A4 nor was there motivation, and it affirmed the first-instance judgment granting an injunction and approximately JPY 1.27 billion.③ The decision indicates that, in claim construction, it is necessary to ascertain from the specification whether there is a structural limitation and, in determining obviousness, to consider the close relationship between the placement of a member in the prior art and the effect of the invention.
Intellectual Property—General	[Plant Variety Protection and Seed Act ★] Case in Which the Plaintiff's Claims Were Dismissed Because the Credibility of the Expert Appraisal Purporting to Prove Infringement of the Breeder's Right Was Not Established① In this breeder's-right infringement action concerning shiitake mushrooms, the credibility of the subculturing acts, which were conducted using test tubes prepared by the plaintiff itself and after which the parent strain was discarded, and of the expert appraisal premised on those acts was disputed.② The court denied the credibility of the expert appraisal because the possibility that mycelium of the plaintiff's variety had been mixed into the test tubes in advance could not be sufficiently ruled out and subsequent verification had become impossible owing to disposal of the parent strain, and dismissed the plaintiff's claims without needing to determine the remaining points.③ In an expert appraisal for breeder's-right infringement, it is important to request a fair and neutral third-party institution to prepare the test tubes and to retain, rather than discard, the parent strain after the expert appraisal, thereby ensuring the fairness, transparency, and subsequent verifiability of the expert appraisal.
Patent	Reiwa 6 (Ne) No. 10056 [Van-Type Motor Vehicle for Cleaning Work] <Presiding Judge Nakahira>① This case concerned whether an act of offering for sale a product different from the infringing product constituted a joint tort on the ground that it assisted or facilitated the sale of the infringing product.② The court denied a joint tort, holding that, even if the appellee offered for sale Appellee Product 2 under a name different from Appellee Product 1, it could not be found that this assisted or facilitated KCS's sale of Appellee Product 1.③ The decision indicates that merely offering for sale a product different from the infringing product does not constitute a joint tort unless it is established that the act assisted or facilitated the sale of the infringing product.
Intellectual Property—General	[New YouTube Video] Infringement Analysis (Other than Typical Literal Satisfaction) (Reading Through the Encyclopedia of Patent Judicial Decisions, 4th Edition) November 5, 2025① This article introduces a video covering major judicial decisions concerning the doctrine of equivalents, numerical limitations, use inventions, and the like as infringement analyses other than typical literal satisfaction.② Through a reading of the Encyclopedia of Patent Judicial Decisions, 4th Edition, the video enables viewers to grasp together, in a single video, major judicial decisions concerning infringement analysis.③ Major judicial decisions concerning infringement analyses other than typical literal satisfaction can be reviewed across subject matters in a single video.
Intellectual Property—General	[Contract] Tokyo District Court Judgment, Reiwa 4 (Wa) No. 9422 <Presiding Judge Shibuya>① This case concerned whether the defendant fell within the “state of being objectively unable to pay” prescribed in Article 17(2) of the contract at issue and whether termination of the contract pursuant to that provision was valid.② Based on the evidence, the court found that the defendant had been in a state of being objectively unable to pay no later than February 7, Reiwa 7, and held the termination of the contract valid.③ The decision indicates that, in applying a contractual provision making inability to pay a ground for termination, it is important whether the point in time at which the defendant became objectively unable to pay can be established by evidence.
Patent	Tokyo District Court Judgment, Reiwa 5 (Wa) No. 70449 [Fastening Hardware] <Presiding Judge Takahashi>① This case concerned whether the language “for inducing deformation when an excessive load acts” in the fastening hardware limited the configuration of the invention and whether novelty existed over hardware described in a design gazette.② The court denied novelty, holding that the language merely indicated the purpose or an operation or effect necessarily obtained by the configuration in which the front portion and rear-edge portion were integrated by multiple branch-like portions, and that the invention of Exhibit Ko No. 5 necessarily obtained the same effect from the same shape.③ When asserting a difference from the prior art based on claim language indicating a purpose or an operation or effect, it is necessary to consider whether the language limits the configuration and whether that effect necessarily arises from the same configuration.
Patent	Osaka District Court Judgment, Reiwa 5 (Wa) No. 10217 [Three-Dimensional Network Fiber Assembly] <Presiding Judge Matsuami>① This case concerned, with respect to a three-dimensional network fiber assembly that was an employee invention, the unreasonableness of payment of remuneration under internal reward rules and whether the requirements for payment of an implementation reward were satisfied.② The court held that it was not unreasonable to pay remuneration for employee inventions under the reward rules because, in the process of establishing and revising them, general employment rules and the like were referred to, opinions were obtained from persons with knowledge of intellectual property, and the proposed rules were disclosed to employees and their opinions were heard; it further dismissed the claims, holding that there was no unreasonable aspect in the defendant's determination that the requirements for payment of an implementation reward were not satisfied under circumstances including that the accused product received a low evaluation as a mattress and commercialization had ended.③ In determining rewards for employee inventions, it is important, in addition to the procedures for establishing and revising the rules, to specifically record and prove the sales performance, evaluation, and contribution to the business of the relevant product.
Patent	[Employee Invention] Tokyo District Court Judgment, Reiwa 5 (Wa) No. 70495 <Presiding Judge Nakashima>① This case concerned whether the plaintiff was the inventor or a joint inventor of the invention at issue, including the time of completion of the invention and the plaintiff's involvement in conception and embodiment.② The court denied the plaintiff's inventorship and joint inventorship, holding that there was no appropriate evidence substantiating the time of completion asserted by the plaintiff, that the actual nature of the plaintiff's involvement remained unclear even after repeated requests for clarification, and that the invention at issue was conceived and embodied without the plaintiff's involvement.③ To assert inventorship, it is necessary to substantiate, by specific materials, the time of completion of the invention and actual involvement in its conception and embodiment.
Patent	Osaka District Court Judgment, Reiwa 4 (Wa) No. 11405 [Heterocyclic Derivative] <Presiding Judge Takemiya>① This case concerned whether internal employee-invention rules applied to an employee invention relating to a heterocyclic derivative and the amount of reasonable remuneration under the Patent Act before the 2004 amendment.② The court calculated the statutory reasonable remuneration because there was no provision or agreement applying the employee-invention rules to the invention at issue, and awarded approximately JPY 94 million after taking into account, for the employer's own working and third-party working, an employer contribution of 99%, a joint-inventor share of one-third, and other factors.③ Employee-invention rules should clearly specify their scope of application; where the rules do not apply, excess sales, a hypothetical royalty rate, licensing revenue, the employer's contribution, the patent's contribution ratio, and the joint-inventor share should be considered as materials for calculating remuneration.
Patent	Reiwa 5 (Ne) No. 10107 “PCSK9 (Second Litigation)” <Presiding Judge Nakahira>① This case concerned whether, with respect to an antibody invention defined by the functions of neutralizing the binding between PCSK9 and LDLR and competing with a reference antibody, the corrected claims satisfied the support requirement.② The court held that “competes” included direct competition and competition through steric hindrance, but that the specification did not contain sufficient disclosure supporting the neutralizing action of antibodies that bind to different sites and compete through steric hindrance, and found a violation of the support requirement because the possibility that such antibodies were included remained even after the correction limiting the claims to Fab fragments.③ For antibody claims defined by function, it is necessary to confirm whether the entire scope of the claims, including mechanisms of action different from those in the examples, is supported by the specification, and to actually exclude unsupported embodiments by correction.
Patent	Tokyo District Court Judgment, Reiwa 4 (Wa) No. 7976 [Communication Equipment] <Presiding Judge Nakashima>① This case concerned, in connection with infringement of an LTE standard-essential patent, whether the claim for an injunction constituted an abuse of rights and how damages and an infringement premium based on FRAND terms should be treated.② While finding patent infringement, the court held that the claim for an injunction constituted an abuse of rights because the failure to reach agreement resulted from the difference in royalty rates and it could not be said that the defendant lacked willingness to obtain a license; it calculated damages by apportioning the royalty rate for the entire standard by the number of patents and, owing to the nature of FRAND terms, did not allow an increase based on an infringement premium.③ In enforcing a standard-essential patent, it is necessary to distinguish a difference of views concerning the royalty rate from an implementer's willingness to obtain a license, and to consider damages in light of the royalty rate for the entire standard, the number of patents, and the relative contribution of each standard.
Patent	Reiwa 6 (Ne) No. 10074 [Filler for Electronic Cigarette] <Presiding Judge Masuda>① This case concerned the meaning of “cut” in Claim Element B relating to a filler for an electronic cigarette and whether linear portions of the accused product formed by crimping satisfied that claim element.② Based on dictionary descriptions and examples of means for formation in the specification, the court construed “cut” as meaning a slit or cut formed artificially and actively using a blade, and held that the claim element was not satisfied because the linear portions of the accused product were not formed with a blade.③ In construing a common term in a claim, the dictionary meaning and the means for formation stated in the specification may be taken into account; therefore, it is important to prove the specific manufacturing process of the accused product.
Patent	Reiwa 6 (Gyo-Ke) No. 10109 [Assistance Device] <Presiding Judge Honda>① This case concerned whether the relationship between the original trial decision and the subsequent fourth retrial decision constituted a ground for retrial under Article 338(1)(x) of the Code of Civil Procedure, as applied mutatis mutandis by Article 171(2) of the Patent Act.② The court rejected the claim, holding that a conflict with the fourth retrial decision, which was issued after the original trial decision that was the subject of the request for retrial, did not constitute a ground for retrial of the original trial decision; even assuming that the fourth retrial decision was the subject, the original trial decision was a decision dismissing an appeal against an examiner's decision of refusal, while the fourth retrial decision was a decision dismissing the request for retrial as unlawful, and they therefore did not conflict with each other.③ When asserting a ground for retrial against a trial decision, it is necessary to identify the trial decision that is the subject of the retrial and then consider, from the chronology, operative parts, and legal nature of each decision, whether they actually conflict.
Patent	Tokyo District Court Decision, Reiwa 6 (Gyo-U) No. 5001 <Presiding Judge Shibuya>① This case sought revocation of the JPO's disposition dismissing as unlawful a request for examination made, with respect to an international patent application in a foreign language, before submission of the translation.② The court held that Article 184-17 of the Patent Act made it a procedural requirement to request examination after submission of the translation, that the defect in the order of those procedures was not cured by a later submission of the translation, and that there was no interest in the action because the JPO would have no choice but to dismiss the request again even if the disposition were revoked; it therefore dismissed the action.③ For a foreign-language patent application, a request for examination must be made after submission of the translation, and attention should be paid to the fact that an error in the order of procedures cannot be cured by submitting the translation afterward.
Patent	Reiwa 6 (Gyo-Ke) No. 10022 [... Antimicrobial Agent] <Presiding Judge Honda>① This case concerned whether the corrected invention relating to a therapeutic agent for onychomycosis using KP-103 could readily have been conceived from the primary cited invention directed to treating tinea pedis or external dermatomycosis.② The court denied obviousness based on the primary cited invention, holding that there was an obstacle making it difficult for an antifungal agent to penetrate and permeate into the nail plate, that a person skilled in the art could not reasonably have expected delivery of KP-103 to the infected site and a therapeutic effect, and that the effect was also difficult to predict.③ In determining inventive step for a medical-use invention, it is necessary to consider not only commonality of the causative fungus or keratin, but also whether it could reasonably have been expected that the active ingredient would pass through the target tissue, be delivered to the infected site, and exert a therapeutic effect.
Patent	Reiwa 7 (Ne) No. 10029 “Claim for Confirmation of the Right to Obtain a Patent” <Presiding Judge Masuda>① This case concerned who was the inventor who actually participated in completing the characteristic portion of a vascular-plug invention, and whether a dispute seeking confirmation of the right to obtain foreign patents in connection with a PCT application was mature.② The court found that it was Professor A, who recorded the problem of the invention at issue and the means for solving it in a research notebook, rather than Y1, who lacked clinical knowledge, who actually participated in completing the characteristic portion; it further held that, at the present time, when there was neither a new foreign filing or national-phase entry nor any specific plan therefor, the ripeness of a dispute seeking confirmation of the right to obtain foreign patents was not established.③ With respect to inventorship, actual involvement in the characteristic portion of the invention should be proved by specific materials; when seeking confirmation of the right to obtain a foreign patent, the target countries and specific plans for a new filing or national-phase entry and the like must be clarified.
Patent	Reiwa 5 (Gyo-Ke) No. 10078 [Audio Controller] <Presiding Judge Shimizu> (Defendant: Pixie Dust)① This case concerned whether Contractor C and others were joint inventors of the invention at issue and, on that premise, whether misappropriation or violation of the joint-application requirement was established.② The court held that Commissioners A and B had already completed the invention at issue on the basis of a conception accompanied by specific means for solving the problem, and that the functions realized by Contractor C and others merely solved a problem different from that of the invention at issue and did not constitute creative involvement in the characteristic portion; it therefore did not find misappropriation or violation of the joint-application requirement.③ The case indicates that, in determining joint inventorship, it is necessary to consider not contribution in general at the implementation stage, but whether the person embodied the characteristic portion that solves the technical problem of the invention at issue.
Patent	Reiwa 5 (Wa) No. 70563 [Transaction Management System] <Presiding Judge Shibuya> (Keysoft v. Sankaku Kikaku)① This case concerned whether, in the accused system relating to the Furusato Nozei program, a local public body constituted an “intermediate trader” of the invention at issue.② The court held that Furusato Nozei and the provision of return gifts were not sales transactions and that there was no relationship in which the local public body received an order from the donor and placed an order with a business operator; the local public body therefore did not constitute an “intermediate trader” conducting transactions in goods in stages.③ The case indicates that satisfaction of a claim element relating to a transaction system must be considered not only from the form of notification but also in light of the actual relationship, including whether the transaction is for consideration and whether order information is received and transmitted in stages.
Patent	Tokyo District Court Judgment, Reiwa 5 (Wa) No. 70594 [Mattress] <Presiding Judge Katsumata>① This case concerned the construction of the claim element requiring multiple cushion bodies to be incorporated into a mattress cover in a “pressure-bonded” state and whether the accused product satisfied that claim element.② The court construed “pressure-bonded” as not requiring a state in which the cushion bodies are strongly compressed and adhere, but as meaning a state in which some pressure is applied to the extent that no gap is formed between the cushion bodies, and found satisfaction because pressure of 0.2 MPa or more was found between the inner materials of the accused product.③ The case indicates that, in construing claim terms, it is important to consider together not only dictionary meanings but also the embodiments, drawings, and purpose and effects of the invention in the specification, and, with respect to an accused product, to prove by measurement the physical state corresponding to the claim element.
Patent	Reiwa 5 (Ne) No. 10114 [Layered Body and Retroreflective Sheet Having Cube-Corner Elements] <Presiding Judge Nakahira>① This case concerned whether the numerical limitation setting the dihedral-angle error of cube-corner elements at 1 to 60 arcminutes had technical significance and supported inventive step.② The court held that there was no basis in the specification for regarding the numerical range as preferable, that examples below 1 minute also produced the operation and effect, and that neither a basis for setting the upper limit at 60 arcminutes nor an operation and effect peculiar to the range was shown; accordingly, the numerical range had no particular technical significance and merely reflected the exercise of ordinary creative ability.③ The case indicates that, to support inventive step by a numerical limitation, it is important to substantiate in the specification the basis for the numerical range and its upper and lower limits, as well as an operation and effect peculiar to that range.
Patent	Reiwa 5 (Gyo-Ke) No. 10121 [Imaging Device] <Presiding Judge Masuda>① This case concerned whether the support requirement was satisfied in relation to the statement “orthogonal” in the claims and the depiction of Axis A in Figure 4B.② The court held that “orthogonal” indicated not the angle of intersection between the first axis and the second axis, but the positional relationship in which two sides of the rectangular display intersected at a right angle at a corner; it further held that the depiction of Axis A as moving in Figure 4B was an obvious error from which a person skilled in the art could readily understand the correct configuration, and therefore found that the support requirement was satisfied.③ The case indicates that, even where a drawing contains an error, a violation of the support requirement does not immediately result if a person skilled in the art can readily understand the error and the correct configuration from the claims and the specification as a whole.
Patent	Reiwa 5 (Wa) No. 70004 [Portable Information Communication Device] <Presiding Judge Takahashi>① This case concerned whether, with respect to a portable information communication device, the configuration relating to Difference ① could readily have been conceived by applying common general technical knowledge to the invention of Exhibit Otsu No. 6.② The court denied inventive step, holding that a person skilled in the art at the priority date could readily have conceived, by applying common general technical knowledge to the invention of Exhibit Otsu No. 6, a configuration in which, to import image information from outside, the communication unit received a radio signal, converted it into a digital signal, and transmitted it to the CPU.③ The case indicates that whether a difference from the prior invention can be specifically derived by applying common general technical knowledge at the priority date is an important consideration in determining inventive step.
Patent	Tokyo District Court Decision, Reiwa 5 (Yo) No. 30214, Petition for a Preliminary Injunction <Presiding Judge Sugiura>① The text of this article does not state the specific facts or issues of the petition for a preliminary injunction and refers to the judgment on the merits by the same Presiding Judge Sugiura.② The article states that the patent owner suffered a reversal and loss in the action on the merits, but does not state the specific conclusion or reasons of the preliminary-injunction decision.③ The article indicates that the change in the conclusion between the preliminary injunction and the action on the merits before the same presiding judge should be reviewed together with the article concerning the judgment on the merits linked from this article.
Patent	Tokyo District Court Judgment, Reiwa 5 (Wa) No. 70527 [Cyclic Protein Tyrosine Kinase Inhibitor] <Presiding Judge Sugiura>① This case concerned whether the effect of an extended pharmaceutical patent right reached the plaintiff's product as a product “substantially identical as a pharmaceutical product,” despite differences in the hydrate or anhydride form of the active ingredient and in the composition of excipients.② The court held that the changes in excipients addressing problems of stability and dissolution of the anhydride were not a mere application of well-known or commonly used art but active formulation design to secure bioequivalence, and therefore held that the plaintiff's product was not substantially identical to the originator pharmaceutical product and that the extended patent right did not extend to it.③ On appeal, a point of practical interest is whether the logic of this judgment, which treats the problems and technical significance relating to differences in excipients as material, will be maintained, or whether its scope will be limited to cases in which the active ingredient differs.
Patent	Reiwa 6 (Ne) No. 10080 [Under-Coping Ventilation Structure] <Presiding Judge Nakahira> = Court of First Instance: Osaka District Court Judgment, Reiwa 5 (Wa) No. 8403① This case concerned whether the plate-shaped portion of the appellee's product constituted a “ventilation member that exhibits ventilation performance and waterproof performance” and satisfied Claim Element C.② In light of the claim language and the specification, the court construed the ventilation member itself as being required to have ventilation performance and waterproof performance, and denied satisfaction of Claim Element C because the plate-shaped portion of the appellee's product did not satisfy that requirement and Sloped Portion ⑤ reduced ventilation performance and therefore did not contribute to that performance.③ The case indicates that, for a claim element specifying performance, it should be considered in accordance with the claim language and specification whether the member itself is required to have that performance, and that mere “contribution” to performance cannot be used as the standard without a reasonable basis.
Patent	Reiwa 6 (Ne) No. 10072 [Draft Difference Measuring Device] <Presiding Judge Nakahira>① This case concerned whether expenses for responding to opposition proceedings and other patent-application and maintenance expenses could be recovered as damages based on the tort of the defendant in the court of first instance.② The court held that no tort was established because the opposition to the grant of the patent was not unlawful, and that the other expenses had been incurred by the plaintiff in the court of first instance on its own judgment and lacked an adequate causal relationship with the conduct of the defendant in the court of first instance.③ The case indicates that, to claim expenses for responding to a patent opposition or patent-application and maintenance expenses as damages, the unlawfulness of the other party's conduct and an adequate causal relationship between that conduct and the expenditure must be specifically proved.
Copyright	[Copyright Act ★] Case in Which, Regarding the Appellee's (Defendant's) Acts of Photographing, to the Extent Included in a Single Smartphone Photograph, Articles (Headlines, Article Text, and the Photographs at Issue) in a Newspaper Published by the Appellant (Plaintiff), and Posting Them Together with the Text of Posts on Twitter (X) via the Internet on 25 Occasions, the Appellant Alleged Infringement of Copyright (Right of Making Transmittable) in the Photographs at Issue and Sought Damages in Tort, and the Court Held that the Quotation Defense (Article 32(1) of the Copyright Act) or the Defense of Exploitation of Incidentally Included Works (Article 30-2 of the Copyright Act) Applied and that the Appellant's Claims Should Be Dismissed① This case concerned whether the quotation defense or the defense of exploitation of incidentally included works applied to infringement of the right of making the photographs transmittable arising from the defendant's acts of photographing articles and photographs in the Seikyo Shimbun with a smartphone and posting them on Twitter (X), together with the text of posts, on 25 occasions.② With respect to photographs found to be related to the purpose of criticism in the text of the posts, the Intellectual Property High Court found clear distinguishability from the text of the posts, a principal-subordinate relationship, the ability to recognize the source, relevance to the purpose of quotation, and appropriateness of the scope and quantity, and upheld the quotation defense; with respect to photographs incidentally and only slightly captured from adjacent newspaper pages, it found exploitation within a justifiable extent as incidentally included works, and dismissed the appeal.③ The decision is practically instructive in that, with respect to quotation when posting newspaper pages containing news photographs, it specifically considered clear distinguishability, the principal-subordinate relationship, fair practice, and the justifiable extent for the purpose, while separately treating slight inclusion of material not subject to criticism as exploitation of incidentally included works.

Reiwa 7 (Gyo-Ke) No. 10037 [Wood Composite Material] <Presiding Judge Hibiki Shimizu>

Original Article URL: https://www.nakapat.gr.jp/ja/legal_updates_jp/%e4%bb%a4%e5%92%8c7%e5%b9%b4%e8%a1%8c%e3%82%b110037%e3%80%90%e6%9c%a8%e8%b3%aa%e8%a4%87%e5%90%88%e6%9d%90%e3%80%91%ef%bc%9c%e6%b8%85%e6%b0%b4%e9%9f%bf%ef%bc%9e/

Reiwa 7 (Gyo-Ke) No. 10037 [Wood Composite Material] <Presiding Judge Hibiki Shimizu>

Inventive Step: ×

The plaintiff asserted that the three elements of density, dimensions of small flakes, and orientation (direction) operated together to produce a synergistic effect and therefore should be considered as a single difference. This judgment, however, approved the JPO's method of considering them separately, holding that, although the specification and experimental data showed that each element individually produced an effect (such as improved strength or improved surface properties), they did not establish any particular synergistic effect resulting from the combination.

(1) Difference 1: Density (400-550 kg/m³)The invention of Exhibit Ko No. 1 does not specify density, but it was well known in the prior art (Exhibits Otsu Nos. 2-4) that a density of 0.40-0.65 g/cm³ (400-650 kg/m³) was suitable for a wood board.⇒ A person skilled in the art could readily optimize or select a preferable numerical density range according to the use (a substrate for flooring material).

(2) Difference 2: Dimensions of the Small Wood Flakes (Thickness of 0.2-0.5 mm, etc.)The invention at issue specifies the flake size in detail, but similar dimensions were disclosed in the prior art (Exhibits Ko Nos. 4 and 5, among others).⇒ It was common general technical knowledge that making the flakes smaller produces uniformity and smoothness but reduces strength (a trade-off), and optimizing the numerical values within that relationship was within the ordinary creative ability of a person skilled in the art. The absence of "knots" was also a natural result of reducing the material to small pieces.

(3) Difference 3: Random Orientation of the Fiber DirectionIn the invention at issue, the flakes are randomly oriented.⇒ In OSB, imparting orientation or using a random orientation were well-known alternatives, and it was common general technical knowledge that random orientation eliminates variations in strength depending on direction (anisotropy). It was therefore easy to select random orientation according to the use.

https://www.courts.go.jp/assets/hanrei/hanrei-pdf-93877.pdf

Reiwa 6 (Ne) No. 10032 [Portable Information Communication Device] <Presiding Judge Shimizu>

Original Article URL: https://www.nakapat.gr.jp/ja/legal_updates_jp/%e4%bb%a4%e5%92%8c6%e5%b9%b4%e3%83%8d10032%e3%80%90%e6%90%ba%e5%b8%af%e6%83%85%e5%a0%b1%e9%80%9a%e4%bf%a1%e8%a3%85%e7%bd%ae%e3%80%91%ef%bc%9c%e6%b8%85%e6%b0%b4%ef%bc%9e/

Reiwa 6 (Ne) No. 10032 [Portable Information Communication Device] <Presiding Judge Shimizu>

Inventive Step: ×⇒ The judgment of the court of first instance dismissing the claims was affirmed.

At the filing date, it was common general technical knowledge that a mobile telephone receives a radio signal, demodulates it into a digital signal, and that the CPU processes the signal and displays an image.⇒ Even if not expressly stated in a publicly known document, a person skilled in the art would naturally understand it in that manner.

In the Exhibit Hei B9 document as well, because data that cannot be fully viewed on the mobile screen is output to an external monitor, there is a "difference in resolution."

When handling images, the use of VRAM (image memory) and bitmap data (dot data) was common general technical knowledge.Techniques for cropping or reducing a portion of a large image (or scrolling it) in order to view it on a small screen were also well-known techniques at the filing date.

https://www.courts.go.jp/assets/hanrei/hanrei-pdf-93879.pdf

Reiwa 6 (Ne) No. 10001 [Yarn Color Placement System] <Presiding Judge Hibiki Shimizu>

Original Article URL: https://www.nakapat.gr.jp/ja/legal_updates_jp/%e4%bb%a4%e5%92%8c6%e5%b9%b4%e3%83%8d10001%e3%80%90%e3%83%a4%e3%83%bc%e3%83%b3%e8%89%b2%e9%85%8d%e7%bd%ae%e3%82%b7%e3%82%b9%e3%83%86%e3%83%a0%e3%80%91%ef%bc%9c%e6%b8%85%e6%b0%b4%e9%9f%bf%ef%bc%9e/

Reiwa 6 (Ne) No. 10001 [Yarn Color Placement System] <Presiding Judge Hibiki Shimizu>

Inventive Step: × ⇒ Claims Dismissed

"High-Low Control" = A conventional technique in which, when creating a pattern, yarns of colors intended to appear on the surface are left high, while yarns of colors intended to be hidden are pulled back low (or pulled out).

The invention at issue = Because some yarns are hidden, the number actually tufted (the effective rate) is set at a "higher density" than the apparent density of the finished product (the desired rate), and the feed speed of the backing material is controlled accordingly.

⇒ In the prior art (the invention of Exhibit Otsu No. 4), a system already existed that controlled the supply of yarn and the feed of the substrate (backing material) to create a desired pattern.When some yarns are hidden by using "High-Low Control," it is self-evident that the actual tufting density (stitch rate) must be increased so that gaps are not created by the hidden yarns; otherwise, the desired apparent density cannot be obtained.⇒ In order to obtain the "desired apparent density," setting the "actual tufting density" higher in consideration of the hidden yarns and adjusting the feed speed of the substrate was merely a matter of design that a person skilled in the art would naturally implement.(The concept of an "effective stitch rate" asserted by the plaintiff was not a new invention, but merely expressed in different words an adjustment that was necessarily made when carrying out conventional "High-Low Control.")

https://www.courts.go.jp/assets/hanrei/hanrei-pdf-93894.pdf

Tokyo District Court Judgment, Reiwa 5 (Wa) No. 70079 [Vehicle Guidance System] <Presiding Judge Kokubu>

Original Article URL: https://www.nakapat.gr.jp/ja/legal_updates_jp/%e6%9d%b1%e4%ba%ac%e5%9c%b0%e5%88%a4%e4%bb%a4%e5%92%8c5%e5%b9%b4%e3%83%af70079%e3%80%90%e8%bb%8a%e4%b8%a1%e8%aa%98%e5%b0%8e%e3%82%b7%e3%82%b9%e3%83%86%e3%83%a0%e3%80%91%ef%bc%9c%e5%9c%8b%e5%88%86/

Tokyo District Court Judgment, Reiwa 5 (Wa) No. 70079 [Vehicle Guidance System] <Presiding Judge Kokubu>

* Patent infringement was found.⇒ On appeal, the judgment was reversed and the claim elements were found not satisfied.

With respect to satisfaction of Claim Element A (a system for guiding vehicles entering and exiting through ETC-only entrances and exits), the court found, in substance, that the claim elements of the invention at issue were satisfied because, at the SIC, vehicles seeking to use an ETC-only entrance or exit were guided, by opening and closing barriers and using display devices, to the entry/exit route (Lane c) or the exit/general-road route (Lane d).The court also found Claim Element F (guidance means, etc.) and the other claim elements satisfied.

(Excerpt from the Judgment)Because each accused system can be said to guide a vehicle seeking to pass through an ETC-only entrance in order to enter a toll-road tollgate, service area, or the like, or a vehicle seeking to pass through an ETC-only exit in order to leave a toll-road tollgate, service area, or the like, to either Lane c or Lane d by means of the respective start-control devices and roadside display device ⑧ described above, it falls within a "system for guiding vehicles entering and exiting through ETC-only entrances and exits."

https://www.courts.go.jp/assets/hanrei/hanrei-pdf-94081.pdf

Tokyo District Court Judgment, Reiwa 5 (Wa) No. 70380 [Rod-Shaped Light] <Presiding Judge Takahashi>

Original Article URL: https://www.nakapat.gr.jp/ja/legal_updates_jp/%e6%9d%b1%e4%ba%ac%e5%9c%b0%e5%88%a4%e4%bb%a4%e5%92%8c5%e5%b9%b4%e3%83%af70380%e3%80%90%e6%a3%92%e7%8a%b6%e3%83%a9%e3%82%a4%e3%83%88%e3%80%91%ef%bc%9c%e9%ab%99%e6%a9%8b%ef%bc%9e/

Tokyo District Court Judgment, Reiwa 5 (Wa) No. 70380 [Rod-Shaped Light] <Presiding Judge Takahashi>

Claim Elements Not Satisfied + Violation of the Support Requirement

Accused Products 1 and 2 use a "long press" to store and a "short press" to recall, and therefore do not satisfy Claim Element J4, which requires the same input method.Accused Products 3 and 4 do not cause the recommended color to emit light solely by "detecting" the "aforementioned first predetermined input" on the second button, and therefore do not satisfy the configuration "when the aforementioned first predetermined input is detected, ... cause light to be emitted."

"Although the detailed description of the invention in the specification at issue can be said to state that, with respect to storing the recommended color and emitting light in the recommended color, the problem is solved by a configuration using different input methods for the second button, it neither states nor suggests solving the problem by a configuration using the same input method for storing the recommended color and emitting light in the recommended color."⇒ Violation of the support requirement

https://www.courts.go.jp/assets/hanrei/hanrei-pdf-94101.pdf

A Container Capable of Carrying 10 Cubic Centimeters of Liquid and/or Solid

Original Article URL: https://www.nakapat.gr.jp/ja/legal_updates_jp/10%e7%ab%8b%e6%96%b9%e3%82%bb%e3%83%b3%e3%83%81%e3%83%a1%e3%83%bc%e3%83%88%e3%83%ab%e3%81%ae%e6%b6%b2%e4%bd%93%e5%8f%8a%e3%81%b3-%e5%8f%88%e3%81%af%e5%9b%ba%e4%bd%93%e3%82%92%e9%81%8b%e6%90%ac/

When A and/or B is changed to B by correction, can that constitute an expansion or alteration?

For example:

A container capable of carrying 10 cubic centimeters of liquid and/or solid, perhaps?

The reverse pattern is:

A pattern in which adding language constitutes an expansion or alteration.

For example, ... connected "electrically"

Reiwa 6 (Gyo-Ke) No. 10043 [Elasto-Plastic Hysteretic Damper] <Presiding Judge Honda>

Original Article URL: https://www.nakapat.gr.jp/ja/legal_updates_jp/%e4%bb%a4%e5%92%8c6%e5%b9%b4%e8%a1%8c%e3%82%b110043%e3%80%90%e5%bc%be%e5%a1%91%e6%80%a7%e5%b1%a5%e6%ad%b4%e5%9e%8b%e3%83%80%e3%83%b3%e3%83%91%e3%80%91%ef%bc%9c%e6%9c%ac%e5%a4%9a%ef%bc%9e/

Reiwa 6 (Gyo-Ke) No. 10043 [Elasto-Plastic Hysteretic Damper] <Presiding Judge Honda>

1. <Invention of Exhibit Ko No. 1 + Invention of Exhibit Ko No. 2, etc.>The plaintiff asserted that it would have been easy to apply the arrangement of the "invention of Exhibit Ko No. 2 (bridge damper)," which accommodates two-dimensional movement, to the "invention of Exhibit Ko No. 1 (building damper)," which accommodates movement in one direction.However, the invention of Exhibit Ko No. 1 is premised on a load from one direction along the plane of a building structure.The invention of Exhibit Ko No. 2 is arranged in multiple directions in order to accommodate two-dimensional movement of a bridge.There is no motivation to apply the arrangement of the invention of Exhibit Ko No. 2 to the invention of Exhibit Ko No. 1; rather, the premise of the invention of Exhibit Ko No. 1 (unidirectional input) creates a disincentive to arranging the components in different orientations.

2. <Invention of Exhibit Ko No. 12 + Invention of Exhibit Ko No. 13>The "pair of shear portions" in the invention at issue means "two" shear portions, whereas the corrugated steel plate of Exhibit Ko No. 12 is a single continuous member and therefore has a different configuration.Exhibit Ko No. 13 provides a "recess" in place of a vertical rib, and making only one "recess" results in a configuration in which one portion is recessed and the other is a flat plate; it does not suggest the "pair of shear portions oriented differently from each other" of the invention at issue.

3. <Violation of the Support Requirement>The plaintiff asserted that the invention at issue is claimed functionally as if it can accommodate "loads from every direction," but that the specification lacks support for accommodating all directions.⇒ From the description in the specification, a person skilled in the art can recognize that the problem of a conventional damper having only "one shear portion" (such as being able to accommodate only one direction) can be solved by the invention at issue (arranging two shear portions in different orientations).The invention at issue does not require "maximum energy absorption with respect to loads from all directions."

(Excerpt from the Judgment)The plaintiff asserts that Corrected Invention 1 at issue is specified only as "when a load is received by input, it deforms and absorbs energy," and is functionally specified as if it could accommodate a load from any direction, whereas the decision at issue, despite recognizing that Corrected Invention 1 at issue cannot absorb energy from all directions, found no violation of the support requirement, and is erroneous in this respect.However, even in light of the description in the specification at issue, Corrected Invention 1 at issue cannot be found to require maximum energy absorption with respect to loads from all directions. The plaintiff's assertion is therefore erroneous in its premise and has no merit.

https://www.courts.go.jp/assets/hanrei/hanrei-pdf-93912.pdf

Intellectual Property High Court Judgment, Reiwa 6 (Ne) No. 10048 [Battery] <Presiding Judge Nakahira>

Original Article URL: https://www.nakapat.gr.jp/ja/legal_updates_jp/%e7%9f%a5%e8%b2%a1%e9%ab%98%e5%88%a4%e4%bb%a4%e5%92%8c6%e5%b9%b4%e3%83%8d10048%e3%80%90%e9%9b%bb%e6%b1%a0%e3%80%91%ef%bc%9c%e4%b8%ad%e5%b9%b3%ef%bc%9e/

Intellectual Property High Court Judgment, Reiwa 6 (Ne) No. 10048 [Battery] <Presiding Judge Nakahira>

The judgment of the court of first instance granting an injunction and JPY 1.27 billion was affirmed.

According to the description in the specification at issue, the power-generating element is not limited to a wound type and includes a laminated type. The claim language "outer surface of the uncoated active-material portion" and "the surfaces are joined" likewise does not exclude joining through a member such as a clip.⇒ Satisfied

The position of the flange in Exhibit Otsu No. 12 is inseparable from the effect of the invention of Exhibit Otsu No. 12, and cannot be construed as not being limited to the specifically disclosed location. Even if combined, the invention at issue would not be reached.Exhibits Otsu Nos. 22 and 23 are each merely part of a fuse or breaker structure, do not reach Configuration A4 in which terminal-connection members are provided on both the positive and negative electrodes, and provide no motivation.⇒ Inventive Step: ○

(Excerpt from the Judgment)According to the statements in [Claim 1] of the claims of the Exhibit Otsu No. 12 publication and the statements in the detailed description of the invention in the Exhibit Otsu No. 12 publication, it is found that the "flange portion" described in the Exhibit Otsu No. 12 publication is provided on the lower surface of the lid body, and that a rotation-preventing portion engaging an engaging portion of the flange portion is provided on the lower surface of the lid body, thereby producing the effect that the terminal pole does not rotate even when an external force is applied to the terminal pole. ...Further, according to paragraph [0080] of the Exhibit Otsu No. 12 publication, it is also found that an effect of the invention described in that publication is that, by interposing an annular packing between the upper surface of a planar flange portion integrally formed with the terminal pole and the lower surface of the lid body, and by locking an annular compression spring to the pole portion to secure the terminal pole to the lid body, the annular packing is compressed in the vertical direction, thereby allowing the terminal pole to be securely sealed and fixed to the lid plate.Thus, in the invention described in the Exhibit Otsu No. 12 publication, the provision of the flange portion on the lower surface of the lid body is closely related to the effect of the invention. Accordingly, ... the Exhibit Otsu No. 12 publication is found to disclose a configuration in which the flange portion is provided on the lower surface of the lid body; it cannot be said that the Exhibit Otsu No. 12 publication effectively discloses a configuration corresponding to Claim Element A4 of Invention 1 at issue; it also cannot be said that whether to install the flange portion inside or outside the container is a matter of design; and applying the Exhibit Otsu No. 12 configuration to the invention of Exhibit Otsu No. 9 does not reach the configuration of Invention 1 at issue.

https://www.courts.go.jp/assets/hanrei/hanrei-pdf-94167.pdf

[Plant Variety Protection and Seed Act ★] Case in Which the Plaintiff's Claims Were Dismissed Because the Credibility of the Expert Appraisal Purporting to Prove Infringement of the Breeder's Right Was Not Established

Original Article URL: https://www.nakapat.gr.jp/ja/legal_updates_jp/%e3%80%90%e7%a8%ae%e8%8b%97%e6%b3%95%e2%98%85%e3%80%91%e8%82%b2%e6%88%90%e8%80%85%e6%a8%a9%e4%be%b5%e5%ae%b3%e3%82%92%e7%ab%8b%e8%a8%bc%e3%81%99%e3%82%8b%e9%91%91%e5%ae%9a%e3%81%ae%e4%bf%a1%e7%94%a8/

Tokyo District Court Judgment of April 24, Reiwa 7 (Reiwa 4 (Wa) No. 2829) (Presiding Judge Motoyuki Nakashima)

◆ Full Text of the Judgment

[Overview of the Case]The plaintiff held a breeder's right in a shiitake mushroom variety (Registration No. 17039) and sought, jointly and severally, payment of JPY 55,485,724 in damages and delay damages under Articles 709 and 719(1) of the Civil Code, alleging that the defendants' importation and transfer of mushroom culture beds and their production and transfer of shiitake mushrooms infringed the plaintiff's breeder's right.

The court narrowed the core issues to: (1) whether mycelium could have been mixed in advance into the culture medium in the test tubes prepared by the plaintiff itself; and (2) why the plaintiff disposed of the parent strain and whether that disposal was appropriate. This judgment held that the possibility that the plaintiff had mixed mycelium of the plaintiff's variety into the test tubes at issue in advance could not be sufficiently excluded, that the results of the expert appraisal premised thereon should be found to lack credibility, and that, without needing to decide the remaining points, the plaintiff's claims lacked merit; it therefore dismissed the plaintiff's claims.

[Preliminary Explanation Based on Prior Judicial Decisions—Proof of Infringement of a Breeder's Right under the Plant Variety Protection and Seed Act]A "variety" protected by the variety-registration system under the Plant Variety Protection and Seed Act means a single grouping of plants that can be distinguished from other groupings of plants by all or part of its characteristics and can be propagated while retaining all of those characteristics (Article 2(2) of the Act). This makes the actually existing grouping of plants itself the object of legal protection. With respect to the scope of a breeder's right, the Act provides that the holder has the exclusive right to exploit, as a business, "the variety for which variety registration has been obtained (hereinafter referred to as the 'registered variety') and any variety that is not clearly distinguishable from the registered variety by its characteristics" (Article 20(1) of the Act). A "variety that is not clearly distinguishable from the registered variety by its characteristics" means a variety that differs in characteristics from the registered variety but lacks a clear difference of a degree sufficient to establish distinctness as a requirement for variety registration. Specifically, it is understood that a variety whose differences in characteristics from the registered variety remain within the class values established for each characteristic (numerical values classifying characteristics by class; for example, where the registered variety is a strawberry, characteristics include the "ratio of fruit length to width," "fruit size," and "fruit-skin color") will often fall within a "variety that is not clearly distinguishable from the registered variety by its characteristics." Even where the differences in characteristics do not remain within the foregoing range, there may also be cases in which such classification can be affirmed through comprehensive consideration of the differing items and the degree of difference, the type and nature of the plant, and other matters.It has also been held that "in order to determine whether a variety is one to which the effect of a breeder's right extends, it is ultimately necessary to compare the plants themselves and examine whether the variety suspected of infringement is not clearly distinguishable from the registered variety by its characteristics (the actual-object principle)" (Intellectual Property High Court Judgment of June 24, Heisei 27, Heisei 27 (Ne) No. 10002, Appeal in an Action Seeking an Injunction Against Infringement of a Breeder's Right; court of first instance: Tokyo District Court Judgment of November 28, Heisei 26, Heisei 21 (Wa) No. 47799 / Heisei 25 (Wa) No. 21905).

[Summary of the Judgment]1. Determination Concerning the Credibility of the Subculturing Acts at Issue and Related ActsAccording to the foregoing basic facts, the foregoing findings of fact, and the entire purport of the oral argument, it is found that the expert appraisal at issue was conducted on mycelium that had been separated from each accused product and subcultured through each separation act at issue, each subculturing act at issue, and the multiple subculturing acts subsequently performed (hereinafter collectively referred to as the "Subculturing Acts at Issue and Related Acts"). Accordingly, as a premise for determining the credibility of the expert appraisal at issue, the credibility of the Subculturing Acts at Issue and Related Acts (Issue 1-1) is examined.... In view of the fact that the plaintiff deliberately prepared the test tubes at issue in advance within its own company, rather than at a third-party institution such as the National Center for Seeds and Seedlings, and therefore had sufficient time to mix in mycelium of the plaintiff's variety, it must be said that it was fully possible to mix mycelium of the plaintiff's variety, of a size not visible to the naked eye, into the test tubes at issue in advance. Moreover, according to the foregoing findings of fact and the entire purport of the oral argument, after the Subculturing Acts at Issue and Related Acts, the plaintiff itself disposed of the parent strain at issue or caused the National Center for Seeds and Seedlings to dispose of it, and has not explained any reasonable ground for doing so. It is therefore found that the plaintiff itself made subsequent verification of the Subculturing Acts at Issue and Related Acts impossible. Considering these circumstances as a whole, the possibility that the plaintiff had mixed mycelium of the plaintiff's variety into the test tubes at issue in advance cannot be sufficiently excluded, and it is appropriate to find that the results of the expert appraisal at issue, which are premised thereon, lack credibility.

2. Other MattersThe Subculturing Acts at Issue and Related Acts should, by their nature, have been conducted by a fair and neutral third-party institution. Even if circumstances made it unavoidable to conduct them within the plaintiff's own company, the defendants are correct that conducting them within the plaintiff's own company inherently created a risk of mixing fungal strains or substituting test tubes. In light also of the matters explained above, when conducting the Subculturing Acts at Issue and Related Acts, it was indispensable, at a minimum, to have a third-party institution such as the National Center for Seeds and Seedlings prepare the test tubes and to preserve the parent strain without disposing of it, given the importance of fairness and transparency in expert appraisals in judicial proceedings. Nevertheless, the plaintiff deliberately failed to take those measures, gave no reasonable explanation of the necessity and appropriateness of preparing the test tubes at issue itself, and, with respect to disposal of the parent strain at issue, merely explained that the parent strain had become unnecessary after the mycelium was subcultured and was therefore disposed of, and that there was no problem. Accordingly, at least the Subculturing Acts at Issue and Related Acts lack credibility, as explained above, and the expert appraisal at issue premised thereon must likewise be said to lack credibility.

[Comment]This is a valuable judicial decision addressing the credibility of an expert appraisal as evidence proving infringement in a breeder's-right infringement action. In order to determine whether a variety is one to which the effect of a breeder's right extends, an expert appraisal involving comparative cultivation of the registered variety and the variety suspected of infringement is unavoidable under the actual-object principle. In this regard, the National Center for Seeds and Seedlings (https://www.naro.go.jp/laboratory/ncss/) is an institution that, under Article 15(2) of the Plant Variety Protection and Seed Act, conducts "growing tests" to obtain data, such as distinctness between an applied-for variety and existing varieties, necessary for the national government's examination of variety registration, and has an extremely high level of expertise in comparative growing tests. Litigation parties are therefore thought often to request an expert appraisal from the National Center for Seeds and Seedlings as a fair and neutral third-party institution. This judgment demonstrates the importance, in doing so, of conducting the expert appraisal with extreme care, including asking the institution conducting the expert appraisal to prepare the test tubes and asking a third party to preserve the parent strain after the expert appraisal.

[Keywords] Breeder's Right, Credibility of an Expert Appraisal, Actual-Object Principle

Reiwa 6 (Ne) No. 10056 [Van-Type Motor Vehicle for Cleaning Work] <Presiding Judge Nakahira>

Original Article URL: https://www.nakapat.gr.jp/ja/legal_updates_jp/%e4%bb%a4%e5%92%8c6%e5%b9%b4%e3%83%8d10056%e3%80%90%e6%b4%97%e6%b5%84%e4%bd%9c%e6%a5%ad%e7%94%a8%e3%83%90%e3%83%b3%e5%9e%8b%e8%87%aa%e5%8b%95%e8%bb%8a%e3%80%91%ef%bc%9c%e4%b8%ad%e5%b9%b3%ef%bc%9e/

Reiwa 6 (Ne) No. 10056 [Van-Type Motor Vehicle for Cleaning Work] <Presiding Judge Nakahira>

* An offer for sale was made concerning a product different from the infringing product.⇒ Joint tort denied.

(Excerpt from the Judgment)Even if the appellee received delivery of Appellee Product 2 from KCS and offered it for sale under the name "ECO ACE JET," which differs from Appellee Product 1 sold by KCS, it cannot be found that this assisted or facilitated KCS's sale of Appellee Product 1.

https://www.courts.go.jp/assets/hanrei/hanrei-pdf-93950.pdf

[New YouTube Video] Infringement Analysis (Other than Typical Literal Satisfaction) (Reading Through the Encyclopedia of Patent Judicial Decisions, 4th Edition) November 5, 2025

Original Article URL: https://www.nakapat.gr.jp/ja/legal_updates_jp/%e3%80%90%e6%96%b0%e7%9d%80youtube%e3%80%91%e5%85%85%e8%b6%b3%e8%ab%96%ef%bc%88%e5%85%b8%e5%9e%8b%e7%9a%84%e3%81%aa%e6%96%87%e8%a8%80%e5%85%85%e8%b6%b3%e4%bb%a5%e5%a4%96%ef%bc%89%ef%bc%88%e7%89%b9/

[New YouTube Video] Infringement Analysis (Other than Typical Literal Satisfaction) (Reading Through the Encyclopedia of Patent Judicial Decisions, 4th Edition) November 5, 2025

<Catch up at once, in this single video, on the principal judicial decisions concerning infringement analysis, including the doctrine of equivalents, numerical limitations, and use inventions.>

https://youtu.be/IxWjTUBHpGQ

[Contract] Tokyo District Court Judgment, Reiwa 4 (Wa) No. 9422 <Presiding Judge Shibuya>

Original Article URL: https://www.nakapat.gr.jp/ja/legal_updates_jp/%e3%80%90%e5%a5%91%e7%b4%84%e3%80%91%e6%9d%b1%e4%ba%ac%e5%9c%b0%e5%88%a4%e4%bb%a4%e5%92%8c4%e5%b9%b4%e3%83%af9422%ef%bc%9c%e6%be%81%e8%b0%b7%ef%bc%9e/

[Contract] Tokyo District Court Judgment, Reiwa 4 (Wa) No. 9422 <Presiding Judge Shibuya>

The defendant was found to have been in a "state of objectively being unable to pay" (Article 17(2) of the contract at issue), and the termination was held valid.

"According to the evidence (Exhibits Ko Nos. 27, 28, and 30), it can be found that, no later than February 7, Reiwa 7, the defendant was in a state of objectively being unable to pay."

https://www.courts.go.jp/assets/hanrei/hanrei-pdf-94059.pdf

Tokyo District Court Judgment, Reiwa 5 (Wa) No. 70449 [Fastening Hardware] <Presiding Judge Takahashi>

Original Article URL: https://www.nakapat.gr.jp/ja/legal_updates_jp/%e6%9d%b1%e4%ba%ac%e5%9c%b0%e5%88%a4%e4%bb%a4%e5%92%8c5%e5%b9%b4%e3%83%af70449%e3%80%90%e7%b7%a0%e7%b5%90%e9%87%91%e7%89%a9%e3%80%91%ef%bc%9c%e9%ab%99%e6%a9%8b%ef%bc%9e/

Tokyo District Court Judgment, Reiwa 5 (Wa) No. 70449 [Fastening Hardware] <Presiding Judge Takahashi>

The claim language "in order to induce deformation when an excessive load acts" does not limit the configuration of the invention.("It merely indicates the purpose sought to be achieved, or an action or effect necessarily obtained, by the configuration in which the front portion and the rear-edge portion are integrated by a plurality of branch-shaped portions, and has no meaning that limits the configuration of the invention.")

⇒ Novelty: × based on the design publication("Because the plurality of narrow plate portions of the column-member connecting fitting of the invention of Exhibit Ko No. 5 have a configuration identical in shape to the plurality of branch-shaped portions of the fastening hardware of the invention at issue, they necessarily obtain the action or effect expressed as 'in order to induce deformation when an excessive load acts.' ..."

https://www.courts.go.jp/assets/hanrei/hanrei-pdf-94135.pdf

Osaka District Court Judgment, Reiwa 5 (Wa) No. 10217 [Three-Dimensional Network Fiber Assembly] <Presiding Judge Matsuami>

Original Article URL: https://www.nakapat.gr.jp/ja/legal_updates_jp/%e5%a4%a7%e9%98%aa%e5%9c%b0%e5%88%a4%e4%bb%a4%e5%92%8c5%e5%b9%b4%e3%83%af10217%e3%80%90%e7%ab%8b%e4%bd%93%e7%b6%b2%e7%8a%b6%e7%b9%8a%e7%b6%ad%e9%9b%86%e5%90%88%e4%bd%93%e3%80%91%ef%bc%9c%e6%9d%be/

Osaka District Court Judgment, Reiwa 5 (Wa) No. 10217 [Three-Dimensional Network Fiber Assembly] <Presiding Judge Matsuami>

Action Seeking Remuneration for an Employee Invention⇒ Dismissed

(Excerpt from the Judgment)Because the reward rules at issue were established after, in the course of their establishment and amendment, general employment rules and the like had been referred to, opinions had been obtained from persons knowledgeable about intellectual property, drafts had been disclosed to employees and others, and opinions had been heard, it cannot be found unreasonable for the defendant to pay remuneration for employee inventions made at the defendant in accordance with the reward rules at issue, which were established through lawful procedures. ...Although it appears that the accused product had some possibility of being used as a cushioning material or the like as a general-purpose three-dimensional network fiber assembly, in the application as a bedding mattress asserted by the plaintiffs as the basis for excess sales, the product was once commercialized and achieved sales for a certain period, but appears to have received a low evaluation for its performance as a mattress, and commercialization was terminated. ...Under these circumstances, there is nothing unreasonable in the defendant's determination that the condition for payment of an implementation reward—"when, through the exercise of an industrial property right, a major contribution has been made to the company"—was not met and that no implementation reward should be paid for the inventions at issue.

https://www.courts.go.jp/assets/hanrei/hanrei-pdf-94104.pdf

[Employee Invention] Tokyo District Court Judgment, Reiwa 5 (Wa) No. 70495 <Presiding Judge Nakashima>

Original Article URL: https://www.nakapat.gr.jp/ja/legal_updates_jp/%e3%80%90%e8%81%b7%e5%8b%99%e7%99%ba%e6%98%8e%e3%80%91%e6%9d%b1%e4%ba%ac%e5%9c%b0%e5%88%a4%e4%bb%a4%e5%92%8c5%e5%b9%b4%e3%83%af70495%ef%bc%9c%e4%b8%ad%e5%b3%b6%ef%bc%9e/

[Employee Invention] Tokyo District Court Judgment, Reiwa 5 (Wa) No. 70495 <Presiding Judge Nakashima>

* The plaintiff was not recognized as a joint inventor.—The plaintiff was unable to assert when the invention was completed.

(Excerpt from the Judgment)Although the plaintiff asserts that the plaintiff's invention was completed before the plaintiff prepared the plaintiff's explanatory document, there is no reliable evidence substantiating that assertion, and the invention at issue was, in the first place, conceived and reduced to a specific form without the plaintiff's involvement. ...In addition, even after two rounds of assertions and evidence by both parties, the Court found that the actual nature of the plaintiff's involvement in the invention at issue remained unclear and repeatedly sought clarification from both parties on two occasions. Even after fully considering the results, in view of the actual nature of the plaintiff's involvement and other circumstances, the invention at issue was conceived and reduced to a specific form without the plaintiff's involvement, and the plaintiff cannot be found to be an inventor or joint inventor of the invention at issue.

https://www.courts.go.jp/assets/hanrei/hanrei-pdf-94170.pdf

Osaka District Court Judgment, Reiwa 4 (Wa) No. 11405 [Heterocyclic Derivative] <Presiding Judge Takemiya>

Original Article URL: https://www.nakapat.gr.jp/ja/legal_updates_jp/%e5%a4%a7%e9%98%aa%e5%9c%b0%e5%88%a4%e4%bb%a4%e5%92%8c4%e5%b9%b4%e3%83%af11405%e3%80%90%e8%a4%87%e7%b4%a0%e7%92%b0%e8%aa%98%e5%b0%8e%e4%bd%93%e3%80%91%ef%bc%9c%e6%ad%a6%e5%ae%ae%ef%bc%9e/

Osaka District Court Judgment, Reiwa 4 (Wa) No. 11405 [Heterocyclic Derivative] <Presiding Judge Takemiya>

[Claim for Remuneration for an Employee Invention] Approximately JPY 94 million awarded.* The employee-invention rules are redacted and unclear, but they were not applied to this invention.⇒ Patent Act prior to the Heisei 16 amendment(Reason) Although the defendant had employee-invention rules, no agreement to apply them to a case such as the invention at issue was found, and the statutory "reasonable remuneration" was to be calculated.

Employer's own working portion (domestic sales):(Excess sales) × (hypothetical royalty rate of 5.9%) × (1 − employer contribution rate of 99%) × (co-inventor's share of 1/3)

Third-party working portion (license revenue):(License revenue) × (1 − employer contribution rate of 99%) × (patent contribution rate of 25%*) × (co-inventor's share of 1/3)<* Because the license agreement also included know-how and the provision of data, the contribution of the patent itself was limited to 25%.>

(Excerpt from the Judgment)The employee-invention rules at issue provide that ●●●●●●●●●●●●●●●● ●●●●●●●●●●●●●●●●●●●However, the employee-invention rules at issue contain no provision stating that the rules also apply to inventions, such as the invention at issue, that do not fall within the inventions described in the foregoing provision, and the record contains no evidence sufficient to find that an agreement was reached between the plaintiff and the defendant to apply the employee-invention rules at issue to such an invention.

https://t.co/fG0Rvflzyf

Reiwa 5 (Ne) No. 10107 "PCSK9 (Second Litigation)" <Presiding Judge Nakahira>

Original Article URL: https://www.nakapat.gr.jp/ja/legal_updates_jp/%e4%bb%a4%e5%92%8c%ef%bc%95%e5%b9%b4%e3%83%8d10107%e3%80%8epcsk9%ef%bc%88%e4%ba%8c%e6%ac%a1%e8%a8%b4%e8%a8%9f%ef%bc%89%e3%80%8f%ef%bc%9c%e4%b8%ad%e5%b9%b3%ef%bc%9e/

Reiwa 5 (Ne) No. 10107 "PCSK9 (Second Litigation)" <Presiding Judge Nakahira>

* In the second litigation, a professor's technical opinion and other materials were newly submitted, resulting in a finding of violation of the support requirement.

Amgen's patented invention does not limit the specific structure of the antibody (amino-acid sequence), but is an antibody defined by the following functions:1. Neutralizes: inhibits binding between PCSK9 and LDLR.2. Competes: competes for binding to PCSK9 with a specified "reference antibody (such as 21B12)" created by Amgen.

The court found that "competes" includes the following two patterns:1. Direct competition (Direct Blocking): binds to the "same site" as the reference antibody and interferes with it.2. Competition through steric hindrance (Steric Hindrance): binds to a "different site" from the reference antibody, but, because of the antibody's large size, physically interferes with and inhibits binding.

The specification at issue described "antibodies that bind to the same site (1 above)," but did not contain sufficient disclosure (support) as to whether "antibodies that bind to a different site and interfere through steric hindrance (2 above)" actually have a neutralizing action.⇒ Violation of the support requirement

Even after correction to limit the claim to Fab fragments, the possibility remains that it includes "an antibody that competes through steric hindrance but has a different binding site."

https://www.courts.go.jp/assets/hanrei/hanrei-pdf-94092.pdf

Tokyo District Court Judgment, Reiwa 4 (Wa) No. 7976 [Communication Equipment] <Presiding Judge Nakashima>

Original Article URL: https://www.nakapat.gr.jp/ja/legal_updates_jp/%e6%9d%b1%e4%ba%ac%e5%9c%b0%e5%88%a4%e4%bb%a4%e5%92%8c4%e5%b9%b4%e3%83%af7976%e5%8f%b7%e3%80%90%e9%80%9a%e4%bf%a1%e6%a9%9f%e5%99%a8%e3%80%91%ef%bc%9c%e4%b8%ad%e5%b3%b6%ef%bc%9e/

Tokyo District Court Judgment, Reiwa 4 (Wa) No. 7976 [Communication Equipment] <Presiding Judge Nakashima>

* Standard-essential patent—infringement.⇒ The claim for an injunction constituted an abuse of rights (the parties failed to reach agreement because of the difference in royalty rates, and it could not be said that the defendant lacked willingness to obtain a license).

⇒ Damages were calculated as: "Sales of the accused products × aggregate royalty rate for the entire LTE standard ÷ total number of patents for the entire LTE standard (1,300 patents) × number of patents at issue (1 patent)."As to the "aggregate royalty rate for the entire LTE standard," the rate was 9% for products supporting LTE only and 8% for 5G-compatible products (because LTE's relative contribution is lower).An increase based on an infringement premium (Article 102(4) of the Patent Act) was not allowed because of the nature of FRAND terms.

https://www.courts.go.jp/assets/hanrei/hanrei-pdf-94200.pdf

Reiwa 6 (Ne) No. 10074 [Filler for Electronic Cigarette] <Presiding Judge Masuda>

Original Article URL: https://www.nakapat.gr.jp/ja/legal_updates_jp/%e4%bb%a4%e5%92%8c6%e5%b9%b4%e3%83%8d10074%e3%80%90%e9%9b%bb%e5%ad%90%e3%82%bf%e3%83%90%e3%82%b3%e7%94%a8%e5%85%85%e5%a1%ab%e7%89%a9%e3%80%91%ef%bc%9c%e5%a2%97%e7%94%b0%ef%bc%9e/

Reiwa 6 (Ne) No. 10074 [Filler for Electronic Cigarette] <Presiding Judge Masuda>

In considering the meaning of "cut" (Claim Element B), the entries in various dictionaries contemplate the active acts of "cutting into," "making a cut," and "cutting," and several examples expressly state that the act is performed with a blade.

Accordingly, "cut" means a structure or state in which a "slit" or "cut" has been artificially and actively formed using a blade.

The specification at issue merely gives examples such as a cutter blade, razor blade, and rotary cutter as means for forming the cuts, and contains no description or suggestion of any means of formation other than a blade.

⇒ Turning to the accused product, the three linear portions formed substantially parallel to the surface of the tobacco substrate along the longitudinal direction of the tobacco stick (rod) were formed by controlling crimping conditions in the crimping process and were not formed by a blade.

⇒ Claim Element Not Satisfied (for the same reasons as the court of first instance, Tokyo District Court Judgment, Reiwa 5 (Wa) No. 70407)

hanrei-pdf-93997.pdf

Reiwa 6 (Gyo-Ke) No. 10109 [Assistance Device] <Presiding Judge Honda>

Original Article URL: https://www.nakapat.gr.jp/ja/legal_updates_jp/%e4%bb%a4%e5%92%8c6%e5%b9%b4%e8%a1%8c%e3%82%b110109%e3%80%90%e4%bb%8b%e5%8a%a9%e6%a9%9f%e3%80%91%ef%bc%9c%e6%9c%ac%e5%a4%9a%ef%bc%9e/

Reiwa 6 (Gyo-Ke) No. 10109 [Assistance Device] <Presiding Judge Honda>

The subject of the petition for retrial is understood to be the original decision. The fact that the original decision, which became final before the fourth retrial decision, conflicts with the fourth retrial decision does not constitute a ground for retrial of the original decision under Article 338(1)(x) of the Code of Civil Procedure, as applied mutatis mutandis by Article 171(2) of the Patent Act.Even assuming that the plaintiff's position is construed as making the fourth retrial decision the subject of the petition for retrial and asserting, as a ground for retrial, that it conflicts with the original decision, the original decision was a decision finding the appeal against the examiner's decision of refusal unsuccessful, whereas the fourth retrial decision was a decision dismissing the petition for retrial as unlawful. The fourth retrial decision therefore does not conflict with the original decision, and the plaintiff's claim has no merit.

https://www.courts.go.jp/assets/hanrei/hanrei-pdf-94030.pdf

Tokyo District Court Decision, Reiwa 6 (Gyo-U) No. 5001 <Presiding Judge Shibuya>

Original Article URL: https://www.nakapat.gr.jp/ja/legal_updates_jp/%e6%9d%b1%e4%ba%ac%e5%9c%b0%e6%b1%ba%e4%bb%a4%e5%92%8c6%e5%b9%b4%e8%a1%8c%e3%82%a65001%ef%bc%9c%e6%be%81%e8%b0%b7%ef%bc%9e/

Tokyo District Court Decision, Reiwa 6 (Gyo-U) No. 5001 <Presiding Judge Shibuya>

The plaintiff, having filed an international patent application (PCT application), made a "request for examination" before submitting the "translation" prescribed by the Patent Act. The JPO dismissed the request as unlawful, and the plaintiff sought revocation of that disposition.⇒ Action dismissed.

Article 184-17 of the Patent Act provides that, for a foreign-language patent application, a request for examination may not be made until "after" procedures such as submission of a translation have been completed.This provision makes submission of a translation before a request for examination a procedural requirement, and a defect (error) in that sequence is not cured by subsequently submitting the translation.In this case, it is clear that the translation had not been submitted when examination was requested.Even if the court were to revoke the disposition at issue, the fact that the request for examination violated the Act would remain unchanged, and there would be no possibility of curing the defect. The JPO would therefore have no choice but to dismiss the request again. Revocation of the disposition at issue would accordingly provide no practical benefit to the plaintiff, and there is no legal interest in bringing the action.

https://www.courts.go.jp/assets/hanrei/hanrei-pdf-94034.pdf

Reiwa 6 (Gyo-Ke) No. 10022 [... Antimicrobial Agent] <Presiding Judge Honda>

Original Article URL: https://www.nakapat.gr.jp/ja/legal_updates_jp/%e4%bb%a4%e5%92%8c6%e5%b9%b4%e8%a1%8c%e3%82%b110022%e3%80%90%e6%8a%97%e5%be%ae%e7%94%9f%e7%89%a9%e5%89%a4%e3%80%91%ef%bc%9c%e6%9c%ac%e5%a4%9a%ef%bc%9e/

Reiwa 6 (Gyo-Ke) No. 10022 [... Antimicrobial Agent] <Presiding Judge Honda>

In order for it to have been obvious to change the treatment target of the primary cited invention (from tinea pedis or a topical cutaneous fungal disease) to "onychomycosis" and thereby adopt the configuration relating to the difference,in light of the technical level at the filing date of the application at issue,it is necessary that, when the therapeutic agent is simply applied to the nail plate, it could reasonably have been expected that the active ingredient KP-103 would penetrate and permeate into the interior of the nail plate, be delivered to the lower layer of the nail plate and the nail bed, which are the infected sites, and exert a therapeutic effect.⇒ Inventive Step of the Medical-Use Invention: ○

(Excerpt from the Judgment)(1) As common general technical knowledge at the filing date of the application at issue, it is found that: (i) Trichophyton rubrum and Trichophyton mentagrophytes accounted for most of the causative fungi of onychomycosis, as they did for tinea pedis; (ii) in order to treat onychomycosis effectively with a topical agent, it was necessary to cause the antifungal agent to penetrate the keratin of the nail plate and deliver it to the infected site, but, because of the nature of the nail plate, there was an obstacle in that antifungal agents did not readily penetrate or permeate into its interior, and treatment of onychomycosis with a topical agent was considered extremely difficult, while oral agents also presented problems of side effects and development of a topical agent was awaited; and (iii) both nails and hair contain hard keratin and have mutually similar amino-acid compositions.

(2) As technical findings known at the filing date of the application at issue, it is found that: (iv) attempts to deliver a topical antifungal agent to the infected site included development of nail-lacquer preparations and treatments involving chemical or surgical removal of the nail plate, application of an antifungal agent, and use in combination with occlusive dressing therapy (ODT); (v) the Exhibit Ko No. 6 study evaluating the antifungal agent tioconazole as a topical therapeutic agent for onychomycosis had been conducted; (vi) KP-103 had properties such as low adsorption to keratin and high release, without reduction of its anti-Trichophyton mentagrophytes activity even when human hair (keratin) was added; and (vii) there had been research using human hair to evaluate adsorption of antifungal drugs to keratin and reduction in activity upon adsorption to keratin.

(3) In order for a person skilled in the art to have readily conceived of changing the treatment target of the topical fungal-disease therapeutic agent of the primary cited invention (the invention of Exhibit Ko No. 1-1) to "onychomycosis" and adopting the configuration of the corrected invention at issue relating to the difference, in light of the technical level at the filing date of the application at issue, it is necessary that, when the therapeutic agent is simply applied to the nail plate, it could reasonably have been expected that the active ingredient KP-103 would penetrate and permeate into the interior of the nail plate, be delivered to the lower layer of the nail plate and the nail bed, which are the infected sites, and exert a therapeutic effect. Considering the common general technical knowledge and technical findings in (1) and (2) above as a whole, it cannot be said that a person skilled in the art could reasonably have had such an expectation at the filing date of the application at issue. Further, in light of the common general technical knowledge at the filing date of the application at issue, it would have been difficult for a person skilled in the art to predict the effects of the corrected invention at issue shown in the specification at issue and the like. Accordingly, at the filing date of the application at issue, a person skilled in the art could not readily have made the corrected invention at issue based on the invention of Exhibit Ko No. 1-1.

https://www.courts.go.jp/assets/hanrei/hanrei-pdf-94078.pdf

Reiwa 7 (Ne) No. 10029 "Claim for Confirmation of the Right to Obtain a Patent" <Presiding Judge Masuda>

Original Article URL: https://www.nakapat.gr.jp/ja/legal_updates_jp/%e4%bb%a4%e5%92%8c7%e5%b9%b4%e3%83%8d10029%e3%80%8e%e7%89%b9%e8%a8%b1%e3%82%92%e5%8f%97%e3%81%91%e3%82%8b%e6%a8%a9%e5%88%a9%e3%81%ae%e7%a2%ba%e8%aa%8d%e8%ab%8b%e6%b1%82%e3%80%8f%ef%bc%9c%e5%a2%97/

Reiwa 7 (Ne) No. 10029 "Claim for Confirmation of the Right to Obtain a Patent" <Presiding Judge Masuda>

* He graduated from a humanities faculty and started a business, but had no clinical knowledge.⇒ Inventorship: ×(The cooperating professor was the inventor.)

<Inventorship (Employee Invention)>It is necessary to have actually participated in the creative act concerning the technical idea of the invention, particularly in completing the characteristic portion of the invention relating to the means for solving the prior technical problem.The characteristic portion of Inventions 1-3 at issue lies in the following: in a vascular plug comprising a pusher wire and a mesh portion for embolizing an aneurysm in order to prevent rupture of an aneurysm within a blood vessel, there were problems in that multiple vascular plugs of different sizes had to be prepared and that rapid expansion of the mesh portion risked damaging the aneurysm; therefore, a configuration was adopted in which, when not housed, the distal end of the stent is pushed out from the distal end of the catheter and expands while curling outward; this provides a high degree of freedom in size with respect to the aneurysm and does not damage a bifurcation aneurysm.Y1 graduated from a humanities faculty and, after working for a financial institution, established the plaintiff company in the first instance together with his elder brother, who held a doctorate in science, but had no clinical knowledge.By contrast, Professor A, who was a cooperating party, had extensive clinical experience, and Professor A's research notebook clearly described the problems and means for solving them in Inventions 1-3 at issue. It is therefore appropriate to find that Professor A actually participated in completing the characteristic portion of Inventions 1-3 at issue.

<Claim for Confirmation of the Right to Obtain a Patent Relating to a PCT Application>The plaintiff in the first instance states that, after obtaining a judgment in this action confirming the right to obtain a patent, it will select, from among the Contracting States to the Patent Cooperation Treaty, the countries or regions in which it actually wishes to obtain patents and pursue new applications or procedures for restoration of rights. However, in light of the principle of territoriality, how a right to obtain a patent is treated and what effect it has in foreign countries are understood to be determined by the law of the country in which a patent right is registered on the basis of that right to obtain a patent. At present, no new application, national-phase entry, or the like has been made for the invention in any foreign country, and no specific plan has been disclosed. Accordingly, ripeness of the dispute cannot be found with respect to confirmation of the right to obtain a patent for the invention.

https://www.courts.go.jp/assets/hanrei/hanrei-pdf-94055.pdf

Reiwa 5 (Gyo-Ke) No. 10078 [Audio Controller] <Presiding Judge Shimizu> (Defendant: Pixie Dust)

Original Article URL: https://www.nakapat.gr.jp/ja/legal_updates_jp/%e4%bb%a4%e5%92%8c5%e5%b9%b4%e8%a1%8c%e3%82%b110078%e3%80%90%e3%82%aa%e3%83%bc%e3%83%87%e3%82%a3%e3%82%aa%e3%82%b3%e3%83%b3%e3%83%88%e3%83%ad%e3%83%bc%e3%83%a9%e3%80%91%ef%bc%9c%e6%b8%85%e6%b0%b4/

Reiwa 5 (Gyo-Ke) No. 10078 [Audio Controller] <Presiding Judge Shimizu> (Defendant: Pixie Dust)

C (the contractor) merely solved a problem different from that of the invention at issue.⇒ Neither misappropriation nor violation of the joint-application requirement was established.

(Excerpt from the Judgment)It is found that A and B (the commissioning parties) had conceived of a "phased-array speaker" before PDT placed an order with the plaintiff for the prototype at issue. ... A and B were researchers in ultrasound and are found to have understood the basic principle of the conventional parametric speaker. They had also developed the experimental device at issue, which, although subject to certain limitations, could generate audible sound at a focal position. Accordingly, the conception of A and B was not at the level of a mere idea, as the plaintiff asserts, but was a conception accompanied by a specific means of solution. ... ...

Accordingly, among the functions provided in the prototype at issue, ... the function of emitting the audible-sound waveform with a phase difference such that it converges at the focal position and aligning the audible-sound waveform at the focal position ... improves the sound quality of the audible sound. However, the technical problem of the invention at issue is removal of restrictions on the environment of use, not improvement of the sound quality of audible sound. Therefore, that function of the prototype at issue does not constitute the characteristic portion of the invention at issue.The remaining points are also merely one specific and objective mode of implementing the characteristic portion of the invention at issue. Depending on their content, they may be said to solve a problem different from that of the invention at issue, but cannot be said to solve the problem of the invention at issue.In other words, the functions of the prototype at issue do not affect the foregoing finding that, through development of the experimental device at issue, the characteristic portion of the invention at issue had been configured in a sufficiently specific and objective manner to enable a person skilled in the art to implement it, and that the invention at issue had been completed.

Accordingly, C and the others cannot be said to be persons who configured the characteristic portion of the invention at issue in a sufficiently specific and objective manner to enable a person skilled in the art to implement it, and they are not inventors (joint inventors) of the invention at issue. ...

https://www.courts.go.jp/assets/hanrei/hanrei-pdf-94070.pdf

Reiwa 5 (Wa) No. 70563 [Transaction Management System] <Presiding Judge Shibuya> (Keysoft v. Sankaku Kikaku)

Original Article URL: https://www.nakapat.gr.jp/ja/legal_updates_jp/%e4%bb%a4%e5%92%8c5%e5%b9%b4%e3%83%af70563%e3%80%90%e5%8f%96%e5%bc%95%e7%ae%a1%e7%90%86%e3%82%b7%e3%82%b9%e3%83%86%e3%83%a0%e3%80%91%ef%bc%9c%e6%be%81%e8%b0%b7%ef%bc%9e-%ef%bc%88%e3%82%ad%e3%83%bc/

Reiwa 5 (Wa) No. 70563 [Transaction Management System] <Presiding Judge Shibuya>(Keysoft v. Sankaku Kikaku)

In the invention at issue, an "intermediary trader" means a person situated between a "downstream trader," which is the recipient of goods, and an "upstream trader," which is the shipper of goods, and who conducts stepwise sales transactions for specified goods—that is, a person who receives from the downstream trader an order concerning the sale of the subject goods and, based thereon, places with the upstream trader an order concerning the sale of those goods.

The accused system concerns the "Furusato Nozei system." Furusato Nozei is a gratuitous provision of an economic benefit (a donation), and provision of a return gift is likewise a gratuitous act of gratitude for the donation and has no relationship of consideration with the donation.Accordingly, no sales transaction (transaction for consideration) with the donor can be found, and the local government does not fall within an "intermediary trader."

Further, as to the operation of the accused system, although an application by a donor causes email notifications to be sent to the local government and the business operator, the system does not contemplate that the local government will receive order information and then notify the business operator, and there is no relationship in which the local government, based on an email from the donor, instructs the business operator to place an order.Accordingly, the local government cannot be said to be a stepwise trader in goods and, on this ground as well, does not fall within an "intermediary trader."

https://www.courts.go.jp/assets/hanrei/hanrei-pdf-94153.pdf

Tokyo District Court Judgment, Reiwa 5 (Wa) No. 70594 [Mattress] <Presiding Judge Katsumata>

Original Article URL: https://www.nakapat.gr.jp/ja/legal_updates_jp/%e6%9d%b1%e4%ba%ac%e5%9c%b0%e5%88%a4%e4%bb%a4%e5%92%8c5%e5%b9%b4%e3%83%af70594%e3%80%90%e3%83%9e%e3%83%83%e3%83%88%e3%83%ac%e3%82%b9%e3%80%91%ef%bc%9c%e5%8b%9d%e5%8f%88%ef%bc%9e/

Tokyo District Court Judgment, Reiwa 5 (Wa) No. 70594 [Mattress] <Presiding Judge Katsumata>

In the invention at issue, "pressure-bonded" does not require that the cushion bodies be strongly compressed and stuck together. In light of the purpose of preventing hands, feet, and the like from falling into a gap, it is construed to mean "a state in which some pressure is mutually applied to the cushion bodies to the extent that no gap is formed between them."The plaintiff's measurements established that pressure of at least 0.2 MPa was applied between the inner materials of the accused product; accordingly, the accused product satisfies the requirement of being "pressure-bonded."⇒ Satisfied

(Excerpt from the Judgment)A. In the invention at issue, the mattress cover is defined as having a bottomed tubular cover member into which a plurality of cushion bodies can be fitted while being pressure-bonded (Claim Element G), and the plurality of cushion bodies are defined as being incorporated into the mattress cover in a pressure-bonded state (Claim Element H).The term "pressure-bond" means "to strongly compress and stick together" (Kojien, 7th ed.; Exhibit Otsu No. 1). However, because "pressure" means "to hold down; to press so that something cannot move" (Appendix to Kojien, 7th ed.; Exhibit Ko No. 15), "pressure-bond" can also be said to have a meaning on the order of "to hold down and stick together."B. Next, the specification at issue contains, with respect to "pressure-bonding," the statement: "For example, when incorporating three cushion bodies, first press the respective side surfaces of two cushion bodies against the inner surfaces on both longitudinal sides of the bottom-side cover, and then press the remaining cushion body (which may be mountain-folded) downward between those cushion bodies, thereby making it possible to readily incorporate all of the cushion bodies into the mattress cover in a pressure-bonded state" ([0017]); the statement: "Figure 5 is a conceptual diagram showing an example of the manner in which cushion bodies 21 to 23 are accommodated in the bottom-side cover 10b while being pressure-bonded, with respect to mattress 1" ([0050]); and the statement: "Figure 5 illustrates, as a method of incorporating a plurality of cushion bodies 21 to 23 into mattress cover 10, a method using side portions 13 on both longitudinal sides of bottom-side cover 10b (the front and rear sides of side portion 13). In this method, first, the side surfaces of two cushion bodies 21 and 23 are respectively pressed against the front and rear sides of side portion 13, and cushion body 22 is thereafter pressed vertically downward. By this method, the plurality of cushion bodies 21 to 23 can be readily incorporated into mattress cover 10 in a pressure-bonded state" ([0051]). Figure 5, concerning a method of incorporating a plurality of cushion bodies into the mattress cover, depicts another cushion body being pressed downward between two cushion bodies, with the three cushion bodies installed in contact with one another without gaps inside the mattress cover, but does not express that the cushion bodies mutually exert strong pressure in the left-right direction.In addition, as stated in 1(2) above, the invention at issue produces the effect of providing a mattress in which hands, feet, and the like are less likely to fall into grooves. According to the specification at issue, that effect results from the fact that "a stretch-preventing member is provided on the peripheral surface portion (side portion) of the mattress cover" ([0011]), and is not stated to result from the cushion bodies being strongly compressed and stuck together. Considering these matters as a whole, although the invention at issue can be said to contemplate that no gap into which hands, feet, and the like may fall is formed at the boundaries between the cushion bodies, so that hands, feet, and the like are less likely to fall in, it cannot be found to contemplate a state in which the cushion bodies are strongly compressed and stuck together.Accordingly, it is appropriate to construe "pressure-bonded" in the invention at issue as meaning a state in which some pressure is mutually applied to the cushion bodies to the extent that no gap is formed between them.

https://www.courts.go.jp/assets/hanrei/hanrei-pdf-94144.pdf

Reiwa 5 (Ne) No. 10114 [Layered Body and Retroreflective Sheet Having Cube-Corner Elements] <Presiding Judge Nakahira>

Original Article URL: https://www.nakapat.gr.jp/ja/legal_updates_jp/%e4%bb%a4%e5%92%8c5%e5%b9%b4%e3%83%8d10114%e3%80%90%e3%82%ad%e3%83%a5%e3%83%bc%e3%83%96%e3%82%b3%e3%83%bc%e3%83%8a%e3%83%bc%e7%b4%a0%e5%ad%90%e3%82%92%e6%9c%89%e3%81%99%e3%82%8b%e5%b1%a4%e7%8a%b6/

Reiwa 5 (Ne) No. 10114 [Layered Body and Retroreflective Sheet Having Cube-Corner Elements] <Presiding Judge Nakahira>

= Reiwa 5 (Gyo-Ke) No. 10102

* The technical significance of the numerical limitation is not stated in the specification.

⇒ Matter of design

(Excerpt from the Judgment)

The specification at issue states that "the elements preferably have a dihedral-angle error of 1 to 60 arcminutes" ..., but contains no statement whatsoever of the basis for describing that range as preferable.

On the other hand, all of the examples described in the specification at issue ... include examples having dihedral-angle errors of less than 1 arcminute, such as 0.1 arcminute, −0.5 arcminute, and 0.8 arcminute, and each of those examples is stated to have a uniformly distributed spot pattern and to produce the action and effects of the inventions at issue. With respect to the upper limit as well, Claim Elements 1-C4 and 4C-1 set it at 60 arcminutes, as stated above, whereas the maximum dihedral-angle error shown in the examples is −19.8 arcminutes ..., and there is no statement of any basis for setting the upper limit at 60 arcminutes. Moreover, even if spot patterns consisting only of values within the numerical range stated in the foregoing claim elements were extracted from the examples described in the specification at issue and compared, there is no example showing that the action and effect of uniform distribution of the spot pattern is produced. ...

Accordingly, it must be said that the numerical range of the foregoing dihedral-angle error stated in the claim elements of the inventions at issue has no particular technical significance, and it is found to be no more than an exercise of the ordinary creative ability of a person skilled in the art.

courts.go.jp/assets/hanrei/hanrei-pdf-94132.pdf?fbclid=IwY2xjawPuQg1leHRuA2FlbQIxMQBzcnRjBmFwcF9pZBAyMjIwMzkxNzg4MjAwODkyAAEegjztdni-hA9B68ybThlUwz0jZmfaQnMZKGrk-q2mzvspjovtVNX8KIk-vTw_aem_owvKftxWnemJdJR6czUekg

Reiwa 5 (Gyo-Ke) No. 10121 [Imaging Device] <Presiding Judge Masuda>

Original Article URL: https://www.nakapat.gr.jp/ja/legal_updates_jp/%e4%bb%a4%e5%92%8c5%e5%b9%b4%e8%a1%8c%e3%82%b110121%e3%80%90%e6%92%ae%e5%83%8f%e8%a3%85%e7%bd%ae%e3%80%91%ef%bc%9c%e5%a2%97%e7%94%b0%ef%bc%9e/

Reiwa 5 (Gyo-Ke) No. 10121 [Imaging Device] <Presiding Judge Masuda>

The statement "orthogonal" in the claim does not define the angle of intersection between the first axis and the second axis, but indicates the positional relationship in which two sides of the rectangular display meet at a right angle at a corner.The depiction in Figure 4B as if Axis A moves is an obvious error, and a person skilled in the art can readily understand the correct configuration (Axis A does not track the movement).

⇒ Support Requirement: ○

https://www.courts.go.jp/assets/hanrei/hanrei-pdf-94108.pdf

Reiwa 5 (Wa) No. 70004 [Portable Information Communication Device] <Presiding Judge Takahashi>

Original Article URL: https://www.nakapat.gr.jp/ja/legal_updates_jp/%e4%bb%a4%e5%92%8c5%e5%b9%b4%e3%83%af70004%e3%80%90%e6%90%ba%e5%b8%af%e6%83%85%e5%a0%b1%e9%80%9a%e4%bf%a1%e8%a3%85%e7%bd%ae%e3%80%91%ef%bc%9c%e9%ab%99%e6%a9%8b%ef%bc%9e/

Reiwa 5 (Wa) No. 70004 [Portable Information Communication Device] <Presiding Judge Takahashi>= Reiwa 5 (Wa) No. 70035= Reiwa 4 (Wa) No. 70131

At the priority date of the patent at issue, a person skilled in the art could readily have conceived of applying ... common general technical knowledge to the invention of Exhibit Otsu No. 6 and adopting the configuration relating to Difference (1), in which, as a configuration for externally importing image information that could not be clearly displayed on simplified liquid-crystal display panel 23, communication unit 12 receives a radio signal transmitting that image information, converts it into a digital signal, and transmits it to CPU 11, and CPU 11 receives that digital signal.⇒ Inventive Step: ×

https://www.courts.go.jp/assets/hanrei/hanrei-pdf-94112.pdf

Tokyo District Court Decision, Reiwa 5 (Yo) No. 30214, Petition for a Preliminary Injunction <Presiding Judge Sugiura>

Original Article URL: https://www.nakapat.gr.jp/ja/legal_updates_jp/%e6%9d%b1%e4%ba%ac%e5%9c%b0%e6%b1%ba%e4%bb%a4%e5%92%8c5%e5%b9%b4%ef%bc%88%e3%83%a8%ef%bc%89%e7%ac%ac30214%e5%8f%b7%e4%bb%ae%e5%87%a6%e5%88%86%e5%91%bd%e4%bb%a4%e7%94%b3%e7%ab%8b%e4%ba%8b%e4%bb%b6/

Tokyo District Court Decision, Reiwa 5 (Yo) No. 30214, Petition for a Preliminary Injunction <Presiding Judge Sugiura>

★ Before the same Presiding Judge Sugiura, the patentee lost in the action on the merits, reversing the result in the preliminary-injunction proceeding.Tokyo District Court Judgment, Reiwa 5 (Wa) No. 70527 [Cyclic Protein Tyrosine Kinase Inhibitor] <Presiding Judge Sugiura> | Attorney Hideki Takaishi's Patent Channel (Attorney-at-Law / Patent Attorney / California Attorney; Passed the Patent Agent Examination)

Tokyo District Court Judgment, Reiwa 5 (Wa) No. 70527 [Cyclic Protein Tyrosine Kinase Inhibitor] <Presiding Judge Sugiura>

Original Article URL: https://www.nakapat.gr.jp/ja/legal_updates_jp/%e6%9d%b1%e4%ba%ac%e5%9c%b0%e5%88%a4%e4%bb%a4%e5%92%8c5%e5%b9%b4%e3%83%af70527%e3%80%90%e7%92%b0%e7%8a%b6%e3%82%bf%e3%83%b3%e3%83%91%e3%82%af%e8%b3%aa%e3%83%81%e3%83%ad%e3%82%b7%e3%83%b3%e3%82%ad/

Tokyo District Court Judgment, Reiwa 5 (Wa) No. 70527 [Cyclic Protein Tyrosine Kinase Inhibitor] <Presiding Judge Sugiura>

The "scope of effect of an extended patent right" extends to the product that was the subject of the disposition designated by Cabinet Order (the originator drug "Sprycel Tablets") and to products "substantially identical thereto as pharmaceuticals."For a patented invention characterized only by the active ingredient of a pharmaceutical product, where the subject product differs in components other than the active ingredient, it is included within substantial identity if the change is based on "well-known and commonly used art."

In this case, the "Sprycel Tablets" that were the subject of the disposition contained "dasatinib hydrate" as the active ingredient and PEG as an excipient, whereas the plaintiff's product contained "dasatinib (anhydrous)" as the active ingredient, did not contain PEG, and added carnauba wax and other substances.This difference resulted from the plaintiff's own measures to address problems of stability and dissolution properties arising from the plaintiff's adoption of the "anhydrous form" (for example, the anhydrous form has lower photostability and higher solubility than the hydrate).Specifically, replacing PEG with HPC and adjusting the components of the coating agent (including addition of carnauba wax) is inferred to have resulted not from the mere application of well-known and commonly used art, but from active formulation design to ensure bioequivalence.Accordingly, the plaintiff's product was not found to be "substantially identical as a pharmaceutical" to Sprycel Tablets, and the effect of the extended patent right at issue did not extend to the plaintiff's product.⇒ Claims Dismissed

★ The same Presiding Judge Sugiura reached a different conclusion from the preliminary injunction proceeding (Reiwa 5 (Yo) No. 30214, Petition for a Preliminary Injunction)!!⇒ The appeal requires close attention.Many practitioners and academics have expressed the view that, in light of the Oxaliplatin Intellectual Property High Court judgment, the claim should be satisfied, and I have not heard the contrary view, so the appeal is noteworthy.Looking at Remitch as well, the Intellectual Property High Court is pro-patent when it comes to pharmaceuticals.Even if the conclusion of the dasatinib judgment at first instance does not change, it is also important to watch whether the court maintains the logic of treating the technical significance associated with the problem arising from the difference in excipients as an issue, or whether the scope of the judgment is limited to cases in which the active ingredient differs. If the former is maintained as it stands, a generic company could readily place its product outside the scope of effect by formulating a problem + using different excipients + obtaining a patent.https://www.bms.com/assets/bms/japan/pressrelease/20231129-pdf.pdf

https://www.courts.go.jp/assets/hanrei/hanrei-pdf-94154.pdf

Reiwa 6 (Ne) No. 10080 [Under-Coping Ventilation Structure] <Presiding Judge Nakahira> = Court of First Instance: Osaka District Court Judgment, Reiwa 5 (Wa) No. 8403

Original Article URL: https://www.nakapat.gr.jp/ja/legal_updates_jp/%e4%bb%a4%e5%92%8c6%e5%b9%b4%e3%83%8d10080%e3%80%90%e7%ac%a0%e6%9c%a8%e4%b8%8b%e6%8f%9b%e6%b0%97%e6%a7%8b%e9%80%a0%e4%bd%93%e3%80%91%ef%bc%9c%e4%b8%ad%e5%b9%b3%ef%bc%9e-%ef%bc%9d%e5%8e%9f%e5%af%a9/

Reiwa 6 (Ne) No. 10080 [Under-Coping Ventilation Structure] <Presiding Judge Nakahira>= Court of First Instance: Osaka District Court Judgment, Reiwa 5 (Wa) No. 8403

In light of the language "a ventilation member that exhibits ventilation performance and waterproofing performance" and the description in the specification at issue (the problem, means for solving the problem, and effects), it is natural to construe the claim as requiring the ventilation member "itself" to have ventilation performance and waterproofing performance.⇒ The plate-shaped portion of the appellee's product cannot be found, by itself, to satisfy the requirement.

The appellant also asserted that the determination should be based on whether the member "contributes" to waterproofing and ventilation, but the court held that there was no reasonable basis for using that method.In addition, Inclined Portion ⑤ of the appellee's product narrows the ventilation passage and reduces ventilation performance compared with the case in which it is absent. It therefore cannot be said to contribute to ventilation performance, and Claim Element C is not satisfied.

https://www.courts.go.jp/assets/hanrei/hanrei-pdf-94137.pdf

Reiwa 6 (Ne) No. 10072 [Draft Difference Measuring Device] <Presiding Judge Nakahira>

Original Article URL: https://www.nakapat.gr.jp/ja/legal_updates_jp/%e4%bb%a4%e5%92%8c6%e5%b9%b4%e3%83%8d10072%e3%80%90%e3%83%89%e3%83%a9%e3%83%95%e3%83%88%e5%b7%ae%e6%b8%ac%e5%ae%9a%e8%a3%85%e7%bd%ae%e3%80%91%ef%bc%9c%e4%b8%ad%e5%b9%b3%ef%bc%9e/

Reiwa 6 (Ne) No. 10072 [Draft Difference Measuring Device] <Presiding Judge Nakahira>

"Of the patent maintenance expenses and other expenses at issue, the expenses incurred for the opposition proceedings were expenses for responding to oppositions to the grant of the patent at issue filed by the defendant in the first instance and Nippon Steel. However, because the foregoing oppositions to the grant of the patent cannot be found to have been unlawful, no tort by the defendant in the first instance can be found.As to the expenses other than those for the opposition proceedings among the patent maintenance expenses and other expenses at issue, the plaintiff in the first instance incurred them, at its own discretion, in applying for and maintaining the patent at issue. In the first place, the conduct of the defendant in the first instance did not cause the plaintiff in the first instance to have to incur those expenses. Accordingly, no adequate causal relationship can be found between the conduct of the defendant in the first instance and the expenditures of the plaintiff in the first instance."

https://www.courts.go.jp/assets/hanrei/hanrei-pdf-94136.pdf

[Copyright Act ★] Case in Which, Regarding the Appellee's (Defendant's) Acts of Photographing, to the Extent Included in a Single Smartphone Photograph, Articles (Headlines, Article Text, and the Photographs at Issue) in a Newspaper Published by the Appellant (Plaintiff), and Posting Them Together with the Text of Posts on Twitter (X) via the Internet on 25 Occasions, the Appellant Alleged Infringement of Copyright (Right of Making Transmittable) in the Photographs at Issue and Sought Damages in Tort, and the Court Held that the Quotation Defense (Article 32(1) of the Copyright Act) or the Defense of Exploitation of Incidentally Included Works (Article 30-2 of the Copyright Act) Applied and that the Appellant's Claims Should Be Dismissed

Original Article URL: https://www.nakapat.gr.jp/ja/legal_updates_jp/%e3%80%90%e8%91%97%e4%bd%9c%e6%a8%a9%e6%b3%95%e2%98%85%e3%80%91%e8%a2%ab%e6%8e%a7%e8%a8%b4%e4%ba%ba%ef%bc%88%e8%a2%ab%e5%91%8a%ef%bc%89%e3%81%8c%e3%80%81%e6%8e%a7%e8%a8%b4%e4%ba%ba%ef%bc%88%e5%8e%9f/

Intellectual Property High Court Judgment of July 31, Reiwa 7 (Reiwa 6 (Ne) No. 10075) (Presiding Judge Hibiki Shimizu)

◆ Full Text of the Judgment

[Overview of the Case]

This case concerns the appellee (the "defendant"), a member, photographing, to the extent that they were captured in a single smartphone photograph, articles appearing in the Seikyo Shimbun newspaper issued by the appellant, a religious corporation (the "plaintiff")—including the headlines, article text, and the photographs at issue (Photographs 1 through 37 at issue)—and posting them on Twitter (X), together with the text of the posts, on 25 occasions via the Internet. The plaintiff alleges infringement of copyright in the photographs at issue (the right of making transmittable, Article 23 of the Copyright Act) and seeks damages in tort (Article 709 of the Civil Code and Article 114(3) of the Copyright Act).

The court of first instance (Tokyo District Court, Reiwa 5 (Wa) No. 70388) upheld the quotation defense (Article 32(1) of the Copyright Act) with respect to the photographs at issue and dismissed the plaintiff's claims. The plaintiff filed this appeal.

This judgment held that the quotation defense or the defense of exploitation of incidentally included works (Article 30-2(1) of the Copyright Act) applied to the photographs at issue, that the plaintiff's claims should be dismissed, and dismissed the appeal.

[Summary of the Judgment]

1. Quotation Defense (Article 32(1) of the Copyright Act)

(1) Requirements for the Quotation Defense and Their Construction

According to the language of Article 32(1) of the Copyright Act, in order to include and use all or part of a work in one's own work without the consent of the copyright owner, each of the following requirements must be satisfied: (i) the work being used has been made public; (ii) the use of that work constitutes quotation; (iii) the quotation is consistent with fair practices; and (iv) the quotation is made within a scope justified by the purpose of news reporting, critique, study, or other quotation.

Considering the purpose of the Copyright Act—to protect the rights of authors and others while giving due regard to the fair exploitation of cultural products such as works, and thereby to contribute to the development of culture (see Article 1 of the Copyright Act)—and the purpose of Article 32(1) of the Copyright Act, which enables fair exploitation of works and other cultural products while protecting copyright, it is appropriate to construe requirement (ii), "quotation," as generally requiring that the work being used be clearly distinguishable and recognizable from the work in which it is used, and that there be a principal-subordinate relationship between them, with the work in which the material is used being principal and the work being used being subordinate. However, this principal-subordinate relationship should not be determined formally based solely on a quantitative comparison; rather, after considering various factors such as the nature of the work in which the material is used and the work being used, the purpose of the quotation, and the method and manner of quotation, it should be determined substantively in light of social conventions. In that event, the determination will partly overlap with the determination under requirement (iv), whether the use is "within a scope justified by the purpose of the quotation."

As to whether the quotation under requirement (iii) is "consistent with fair practices," if fair practices concerning quotation exist in the relevant field, publication medium, or the like, the determination is made based on whether the method and manner of use by quotation are found to conform to those practices. If no such practices exist, the determination is made based on whether the method and the like are found to be reasonable under social conventions. In this connection, disclosure of the source of the work being used may be considered as one factor in determining compliance with the fair practices or with a method that is reasonable under social conventions.

Further, as to whether the quotation under requirement (iv) is made "within a scope justified by the purpose of news reporting, critique, study, or other quotation," the matter must be comprehensively assessed, in light of the foregoing purpose of the Copyright Act and the purpose of the provision, by considering the content and legitimacy of the purpose of the quotation, the relationship between the purpose of the quotation and the work being used, the nature of the work being used, the scope and quantity quoted, the method and manner of quotation, the benefit obtained by the user, the degree of disadvantage suffered by the person whose work is used, and other matters.

(2) Application

A. Introduction

The Photographs at Issue (Quotation) (Photographs 1-9, 11-26, and 30-37 at issue) are news photographs published on the same newspaper pages together with the articles in order to report events as an integrated whole. Accordingly, even if they are themselves photographic works, if the purpose of the quotation has a certain relationship to the events reported by the articles, a similar relationship is recognized with respect to the news photographs forming part of those articles. Further, the language of Article 32(1) of the Copyright Act does not require inevitability or strict necessity of quotation. In light of the nature of articles and news photographs, which are intended broadly to inform readers of current events and contribute to the formation of readers' opinions and the like, from the standpoint of harmonizing copyright protection and exploitation, where a relationship is found between the events reported by the articles and news photographs and the purpose of the quotation, the court is not precluded from finding that quotation of the Photographs at Issue (Quotation) is "within a scope justified by the purpose of the quotation," after considering whether there was commercial use, whether the principal-subordinate relationship requirement was satisfied, and other circumstances.

B. Constituting Quotation

The portions consisting of the text of the posts at issue and the quoted portions containing the Photographs at Issue (Quotation) can be clearly distinguished and recognized. Further, in light of the content of the posts at issue, the nature of the photographs at issue and other materials, the purpose of the quotation, the method and manner of expression of the quotation, and other matters, it is found, under social conventions, that the portions posted as the body text on Twitter are principal and the Photographs at Issue (Quotation) are subordinate.

C. Consistency with Fair Practices

The defendant generally continued to post materials in a similar format consisting of a photograph of a newspaper page and text criticizing it, including by stating in the text of the posts at issue that the material was quoted from Seikyo Shimbun or by publishing a photograph in which the "Seikyo Shimbun" masthead was captured. In light of the fact that many readers of the posts at issue are thought to have been members of the plaintiff or related persons, the source of the published Photographs at Issue (Quotation) could readily be understood by referring to the content of the post and the preceding and following posts, and the manner of use conforms to a method that is reasonable under social conventions.

D. Within a Scope Justified by the Purpose of the Quotation

Each post at issue consisted of the text of the post and a photograph taken to the extent that the article and the Photographs at Issue (Quotation) on a page of the Seikyo Shimbun were captured in a single smartphone photograph. The purpose of each post at issue is found to have been to criticize the plaintiff's activities and the like as perceived by the defendant through the article text or the Photographs at Issue (Quotation) in Seikyo Shimbun, the plaintiff's organ newspaper, and no unreasonable or inappropriate aspect is found in that purpose. Each of the Photographs at Issue (Quotation) is found to be related to the purpose of the quotation. In order to understand the criticism in the posts at issue, it cannot be found that including the Photographs at Issue (Quotation) appearing on the newspaper pages, to the extent captured in a single smartphone photograph, was excessive in scope. The scope and quantity of the works used through the quotation at issue must therefore be regarded as reasonable. Further, there is no finding that the defendant obtained any commercial benefit from the posts at issue, and there is no evidence sufficient to find that allowing quotation of the Photographs at Issue (Quotation) caused the plaintiff any economic disadvantage, such as a reduction in circulation.

E. Conclusion

Accordingly, the quotation defense (Article 32(1) of the Copyright Act) applies to the Photographs at Issue (Quotation) published in the posts at issue.

2. Defense of Exploitation of Incidentally Included Works (Article 30-2(1) of the Copyright Act)

With respect to the defense of exploitation of incidentally included works concerning the Photographs at Issue (Incidental) (Photographs 10 and 27-29 at issue), in light of the absence of transitional provisions, the history and purpose of the statutory amendment, and other matters, it is appropriate to construe Article 30-2 of the Copyright Act, as amended by the Reiwa 2 Amendment Act, as also applying to acts performed before the Reiwa 2 Amendment Act entered into force.

Based on the proportion occupied by the Photographs at Issue (Incidental) in the photographs of the newspaper pages (the creation/transmission materials) published in the posts at issue, the Photographs at Issue (Incidental) are found to be minor constituent portions (incidentally included works). Further, the defendant had no purpose of obtaining a benefit through their use; because they were adjacent to the newspaper articles that were the subject of criticism, it was difficult to photograph them separately; and they played no particular role in the creation/transmission materials. In light of these and other circumstances, they can be said to have been used, as incidentally included works and within a justified scope, in connection with the acts of reproduction and transmission.

Accordingly, the defense of exploitation of incidentally included works applies to the Photographs at Issue (Incidental).

[Comment]

1. Summary of the Judgment, 1(1)

The Supreme Court Judgment of March 28, Showa 55, Minshu Vol. 34, No. 3, p. 244 [Mad Amano Case], held that requirements (i) and (ii) below were necessary for the quotation defense under the former Copyright Act.

(i) The quoted work must be clearly distinguishable from the work quoting it.

(ii) The quoted work must be subordinate to the work quoting it.

By contrast, Article 32(1) of the current Copyright Act provides as follows concerning the quotation defense:

"It is permissible to quote and thereby exploit a work that has been made public. In such a case, the work must be quoted consistent with fair practices and within a scope that is justified for the purpose of news reporting, critique, study, or other purposes of quotation."

Further, with respect to the quotation defense, Article 48(1) of the current Copyright Act requires the source of the quoted work to be indicated in a manner and to the extent considered reasonable.

The Supreme Court judgment in the Mad Amano Case, which construed the former Copyright Act, is generally considered applicable to the construction of Article 32(1) of the current Copyright Act. Accordingly, concerning the relationship between requirements (i) and (ii) above and the quotation defense under Article 32(1) of the current Copyright Act, there are many divided judicial decisions and academic views, including the following:

A) Requirements (i) and (ii) above are necessary and sufficient requirements (Tokyo High Court Judgment of October 17, Showa 60, Mutai-shu Vol. 17, No. 3, p. 462 [Tsuguharu Foujita Case], among others).

B) Requirements (i) and (ii) above may be important factors for consideration, but other important factors may also exist, and the determination is made through comprehensive consideration according to the case (Intellectual Property High Court Judgment of October 13, Heisei 22, Hanrei Jiho No. 2092, p. 135 [Painting Appraisal Certificate Case], among others).

C) Requirements (i) and (ii) above are necessary requirements, and other requirements also exist. (Intellectual Property High Court Judgment of March 29, Reiwa 4 (Reiwa 3 (Ne) No. 10060), Courts Website [KuToo Case], among others.)

There are also many divided judicial decisions and academic views concerning the relationship between requirements (i) and (ii) above and the respective language "quotation," "consistent with fair practices," and "within a scope justified by the purpose" in Article 32(1) of the current Copyright Act, including the following:

a) Requirements (i) and (ii) above may relate to each of the phrases "quotation," "consistent with fair practices," and "within a scope justified by the purpose" (Tokyo High Court Judgment of October 17, Showa 60, Mutai-shu Vol. 17, No. 3, p. 462 [Tsuguharu Foujita Case]; Intellectual Property High Court Judgment of October 13, Heisei 22, Hanrei Jiho No. 2092, p. 135 [Painting Appraisal Certificate Case], among others).

b) Requirements (i) and (ii) above relate to the term "quotation" (Intellectual Property High Court Judgment of March 29, Reiwa 4 (Reiwa 3 (Ne) No. 10060), Courts Website [KuToo Case]).

c) Requirement (i) above relates to the term "quotation," and requirement (ii) above relates to the term "within a scope justified by the purpose" (Tamotsu Shoji, "The Quotation Defense," in Makiko Takabe ed., Intellectual Property Litigation II: Latest Court Practice Series 11 (Seirin Shoin, 2018), pp. 713-714).

The Intellectual Property High Court Judgment of October 13, Heisei 22, Hanrei Jiho No. 2092, p. 135 [Painting Appraisal Certificate Case], held that the material on the quoting side need not itself be a work.

Against this background of judicial decisions and academic views, Summary of the Judgment 1(1) is understood to have basically adopted C) and b) above.

2. Summary of the Judgment, 1(2)

With respect to whether the quotation defense applies, Summary of the Judgment 1(2) carefully applies to the facts of this case not only the requirements for constituting quotation—clear distinguishability and the principal-subordinate relationship—but also the other requirements of consistency with fair practices and being within a scope justified by the purpose of quotation, under the specific constructions of those requirements stated in Summary of the Judgment 1(1), and is useful in practice.

3. Summary of the Judgment, 2

Whereas the court of first instance upheld the quotation defense with respect to all of the photographs at issue, the appellate court upheld the quotation defense, as stated in Summary of the Judgment 1(2), only with respect to the Photographs at Issue (Quotation) (Photographs 1-9, 11-26, and 30-37 at issue), and upheld the defense of exploitation of incidentally included works, as stated in Summary of the Judgment 2, with respect to the Photographs at Issue (Incidental) (Photographs 10 and 27-29 at issue). On this point, it is inferred that the appellate court considered it difficult to uphold the quotation defense with respect to the Photographs at Issue (Incidental) (Photographs 10 and 27-29 at issue) because they were not the subject of criticism in the text of the defendant's posts and were unrelated to that text.

[Keywords] Soka Gakkai, Seikyo Shimbun, Quotation Defense, Clear Distinguishability, Principal-Subordinate Relationship, Defense of Exploitation of Incidentally Included Works