Legal Update (Items Posted in January 2026)

Scope: Articles published in January 2026 by attorney Hideki Takaishi (Nakamura & Partners)

Number of items included: 34

List page: https://www.nakapat.gr.jp/ja/legal_updates_jp/

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

This month’s legal update addresses 34 court decisions and commentaries spanning a broad range of intellectual-property practice, including chains of divisional applications, new grounds for invalidation in appellate proceedings, scientific errors in specifications, claim construction, international jurisdiction, standard-essential patents, and employee inventions. The important decisions and practical points are as follows.

1. The [Vehicle Guidance System] Case, Which Shakes the Chain of Divisional Applications <Presiding Judge Honda>

The Intellectual Property High Court judgment in Reiwa 6 (Gyo-Ke) No. 10086, the [Vehicle Guidance System] case, focused on the configurations that had been indispensable in the fourth-generation specification as originally filed: returning, through a branch lane, a vehicle that could not use ETC, and determining the vehicle subject to return based on whether communication was possible. The fifth-generation divisional application, which did not limit these configurations and also encompassed guidance based on any criterion or method, was held to introduce new technical matter. As a result, retroactive effect of the filing date under Article 44, paragraph 2 of the Patent Act was denied, and the patent at issue, which was of the seventh generation, lacked novelty over the publication of the original application. The Intellectual Property High Court judgment of the same date in Reiwa 7 (Ne) No. 10035, the [Vehicle Guidance System] case <Presiding Judge Honda>, likewise limited “entrance/exit for ordinary vehicles” and “guidance means” in accordance with the specification and found non-infringement. At each generation of a divisional-application tree, the deletion of essential configurations and unrestricted generalization should be examined.

2. An Untimely Allegation Not Saved Even by a Statement of Reasons for Appeal — [Women’s Garment] Case <Presiding Judge Nakahira>

The Intellectual Property High Court judgment in Reiwa 6 (Ne) No. 10010, the [Women’s Garment] case, held that a ground for invalidation based on U.S. patent documents submitted for the first time in the statement of reasons for appeal was untimely because it could have been asserted in the court of first instance and there were no circumstances making submission difficult. Nevertheless, because the appellee made a rebuttal in the alternative and the appellant made no further rebuttal, the court also ruled on the invalidity issue, finding that the allegation could not be said to delay completion of the litigation. Even an allegation made at the initial stage of an appeal is not necessarily permitted, and arguments in the alternative must also be fully presented in the court of first instance. In addition, the [Smoking-Article Cartridge] case <Presiding Judge Shibuya> denied an interest in obtaining a declaratory judgment of nonexistence after the claim for damages had been waived, while the [Video Viewing Device] case <Presiding Judge Takemiya> held that an infringement report to Amazon constituted an act of unfair competition on the premise of non-infringement. Attention is required both to the timing of submission of claims and defenses and to the manner of exercising rights.

3. Scientific Accuracy of the Specification and the Limits of Supplementation by Common General Technical Knowledge

The Tokyo District Court judgment in Reiwa 5 (Wa) No. 70114, the [Brake Control Device for a Motorcycle] case <Presiding Judge Shibata>, and the appellate judgment <Presiding Judge Honda> held that the only formula for deriving corrected lateral G was a formula that subtracted physical quantities having different dimensions and therefore had no meaning in physics. Although the existence of an error could be understood, the method of correction was not uniquely determined and inconsistencies with other descriptions would also arise; therefore, the assertion that the description contained an error was rejected and a violation of the support requirement was found. By contrast, the Intellectual Property High Court judgment in Reiwa 5 (Gyo-Ke) No. 10147, the [RNA-Dependent Targeted DNA Modification] case <Presiding Judge Hibiki Shimizu>, found substantive disclosure based on the first application documents as a whole and the common general technical knowledge as of the filing date, and upheld the benefit of priority. Common general technical knowledge may supplement a disclosure, but it does not reconstruct an error whose content cannot be uniquely determined. Pre-filing verification of formulas, units, and mechanisms is important.

4. Precisely Reading Claim Language, Flows Between Devices, and the Essence of the Invention

The Intellectual Property High Court judgment in Reiwa 6 (Ne) No. 10012, the [R Badge, Receiving Device] case <Presiding Judge Hibiki Shimizu>, excluded from the determination of the gist of the invention a limitation concerning the counterpart mobile telephone because it did not specify the structure or function of the receiving device itself, and denied inventive step. On the other hand, the interlocutory judgment of the Intellectual Property High Court in Reiwa 6 (Ne) No. 10034, the [Elasto-Plastic Hysteretic Damper] case <Presiding Judge Honda>, did not limit “input” to a horizontal force in a specified direction and found infringement by some products. By contrast, non-infringement was found in the [Remotely Controlled Unmanned Boat] case for lack of a configuration in which one control device determines two conditions; in the [Reservation Management Device] case for lack of direct transmission from the server to the image printing device; in the [Shopping Payment System] case for lack of a camera that acquires images; and in the [Game System and Game Program] case for lack of a configuration that separately stores two types of quantities. Mapping the processing order, information path, and even operations and effects is indispensable to claim drafting and proof of infringement.

5. Cross-Border Enforcement, Standard-Essential Patents, and Employee Inventions

The Osaka District Court judgment in Reiwa 6 (Wa) No. 2705, the [Angle-Adjustable Hinge] case <Presiding Judge Takemiya>, denied Japanese jurisdiction over claims for registration of transfer of German and Chinese patent rights on the ground that the courts of the countries of registration had exclusive jurisdiction. The Tokyo District Court judgment in Reiwa 5 (Wa) No. 70022, the “LEGAL FORCE” case <Presiding Judge Takahashi>, likewise dismissed claims for trademark infringement and other relief on the ground that the website did not target consumers in Japan, while recognizing jurisdiction concerning a Japanese domain name. The Osaka District Court judgment in Reiwa 5 (Wa) No. 7855, the [Method for Mapping a Physical Hybrid Automatic Repeat Request Indicator Channel] case <Presiding Judge Matsuami>, held that Google had indicated willingness to take a license on FRAND terms, had presented counterproposals, and had negotiated sincerely, and therefore held that the injunction claim based on an SEP constituted an abuse of rights. The [Spindle Motor] case denied joint inventorship for lack of contribution to the core of the invention, and the [Article Conveying Facility] case recognized the reasonableness of employee-invention regulations in light of consultation with the labor union, dissemination, solicitation of opinions, and the evaluation system.

Also important are the [Pharmaceutical Composition/Registration of Patent Term Extension] case, which did not regard revision of a package insert as a disposition eligible for patent-term extension; the [Antipruritic Agent] case, which treated the consumption-tax equivalent differently under paragraphs 1 and 3 of Article 102 of the Patent Act; and the [Patent Royalties Relating to a Fulvic Acid Production Method] case, which did not derive a broad exemption from an abstract cautionary clause. The decisions in this issue should be used to review applications, contracts, litigation, and internal corporate systems.

Three-Line Summaries of All Articles

Category	Article Title and Three-Line Summary
Patent	Reiwa 6 (Gyo-Ko) No. 10007 [Pharmaceutical Composition/Registration of Patent Term Extension] <Presiding Judge Nakahira>① The issue was whether revision of a pharmaceutical product’s package insert constituted a “disposition” providing a basis for registration of a patent-term extension.② It was held to be outside the scope of extension registration because the administration rate was not an approved matter, the PMDA’s instruction was merely administrative guidance, and a notification of revision of the package insert was not a disposition changing rights or obligations.③ This case shows that the dispositions under Article 2, item 2 of the Enforcement Order of the Patent Act are exhaustively enumerated and that a package-insert revision not expressly provided for cannot be extended by analogy to the subject matter of extension registration.
Patent	Reiwa 6 (Ne) No. 10076 [Retractable Temporary Protective Fence] <Presiding Judge Nakahira>① The issue was whether the accused product’s “square tube,” a square pipe-shaped post, satisfied or was equivalent to the patented invention’s “pivoting plate-shaped member.”② Because the configuration of making the member thin as a “plate” and housing it in the web portion of H-shaped steel was the essential part of the invention, literal infringement was denied and Requirement 1 of the doctrine of equivalents was also held not satisfied.③ This case identified, from the problem and effects stated in the specification, a technical idea not found in the prior art, and determined the essential part for Requirement 1 of the doctrine of equivalents.
Patent	Reiwa 6 (Gyo-Ke) No. 10024 [X-Ray Inspection Device] <Presiding Judge Nakahira>① Of the two cooling circulation systems described in Cited Document 2, the issue was whether the decision properly extracted only the sensor section’s “cold-air circulation system” and recognized it as a technical matter.② Because the cold-air circulation system for the sensor section and the liquid-refrigerant circulation system for the signal-processing circuit section could be understood as separate technical ideas, the decision was held not to have erred in recognizing only the cold-air circulation system.③ This case shows that where multiple configurations in a cited document can be understood as different technical ideas, only one may be objectively and specifically extracted to identify the cited invention.
Patent	May 27, 2025; Reiwa 3 (Ne) No. 10037 [Antipruritic Agent] <Presiding Judge Hibiki Shimizu>① The issue was whether the consumption-tax equivalent could be added when calculating damages under paragraphs 1 and 3 of Article 102 of the Patent Act.② Lost profits under paragraph 1 were not consideration for a transfer of assets, etc., and consumption tax could not be added, while the reasonable-royalty amount under paragraph 3 could be regarded as such consideration and the consumption-tax equivalent could be added.③ This case shows that the consumption-tax treatment of patent-infringement damages differs between lost profits under paragraph 1 and a reasonable royalty under paragraph 3.
Trademark	[Copyrighted Works and Trademark Rights] Tokyo District Court, Reiwa 3 (Wa) No. 32244 <Presiding Judge Nakajima>① The defendant, a skateboarder and artist, disputed with the plaintiff, its licensee, ownership of copyright and registration of transfer of trademark rights.② Copyright in album cover art and the like belonged to the defendant; the plaintiffs had obligations to return the trademark rights and cooperate in their return; and because use premised on the return obligation lacked an intention to possess for oneself, acquisitive prescription did not arise.③ This case distinguished, in accordance with the contractual language, transfer of copyright from the grant of an exclusive right of use, and shows that a trademark-return clause also affects whether acquisitive prescription arises.
Patent	Osaka District Court, Reiwa 6 (Wa) No. 2705 [Angle-Adjustable Hinge] <Presiding Judge Takemiya>① The issue was the lawfulness of an action seeking procedures in a Japanese court for registration of transfer of German and Chinese patent rights.② The action was dismissed because actions concerning patent registration were subject to the exclusive jurisdiction of the courts of the country of registration, Japanese courts lacked jurisdiction, and a declaratory judgment would not remove uncertainty in legal status.③ This case shows that when disputing ownership of a foreign patent, it is necessary to consider the exclusive jurisdiction of the country of registration and whether a Japanese judgment would have legal effect there.
Patent	Osaka District Court, Reiwa 5 (Wa) No. 10970 [Video Viewing Device] <Presiding Judge Takemiya>① The issues were whether the accused device had the “compression” of limitations F and G and whether an infringement report to Amazon constituted an act of unfair competition.② The limitations were not satisfied because “compression” required temporal shortening of vehicle-travel information so that it fit within a period shorter than the original period, and the damages claim concerning the infringement report was granted.③ This case shows that a patent-infringement report to a sales platform may give rise to damages liability as an act of unfair competition where the targeted product does not satisfy the patented invention.
Patent	Reiwa 7 (Ne) No. 10008 [Method for Deodorizing a Room in Which a Deceased Person and/or an Animal Has Been Left] <Presiding Judge Nakahira>① The issue was whether limitation E was satisfied in special cleaning, namely that filth remained at a place exposed by dismantling work and that place was covered with paint.② The limitation was held not satisfied because an estimate merely predicted the need for coating, and cleaning agents and coating could also be used preventively, so the presence of remaining filth could not be inferred.③ This case shows that proof of satisfaction requires objective evidence that filth remained at a place exposed after dismantling, not merely an estimate for the work or the fact that chemicals were used.
Patent	Reiwa 6 (Ne) No. 10084 [Remotely Controlled Unmanned Boat] <Presiding Judge Nakahira>① The issue was whether the “first control device” in limitation J required a mechanism capable of determining both automatic-return activation conditions: signal loss and low remaining power.② The flowchart in Figure 8 of the specification and other descriptions required one mechanism that determined both conditions, rather than two inventions separately having each condition; literal infringement was denied, as were Requirements 1 and 5 of the doctrine of equivalents.③ This case shows that the relationship among multiple conditions is construed not only from claim language but also from flowcharts in the specification, and a configuration separately providing each condition may fail to satisfy the claim.
Patent	Reiwa 6 (Ne) No. 10078 [Porous Air-Permeable Bag Containing Feed for Mites] <Presiding Judge Honda>① The issue was whether the accused product, in which mite attractant was sandwiched between two nonwoven sheets, gauze, or the like, satisfied the “porous air-permeable bag” in limitation A-3.② The configuration required at least a structure capable of retaining the enclosed material inside and preventing dispersion, whereas the accused product allowed the attractant to fall out around its perimeter; therefore, the limitation was not satisfied.③ This case shows that, in determining whether a “bag” limitation is satisfied, not only external form but also the function of retaining contents internally and preventing dispersion is a key matter of proof.
Patent	Reiwa 6 (Ne) No. 10012 [R Badge, Receiving Device] <Presiding Judge Hibiki Shimizu>① The issue was whether the matter concerning the mobile telephone “according to claim 4,” cited in a subcombination claim for a receiving device, should be treated as a matter specifying the receiving-device invention.② Because the matter had no meaning for specifying the receiving device, it was excluded from the determination of the gist of the invention, and inventive step was denied because applying well-known techniques to the Exhibit Otsu 52 invention would have been easy.③ This case shows that a description that specifies only the counterpart device of a subcombination and does not specify the structure or function of the claimed device may be excluded from determination of the gist of the invention.
Patent	Reiwa 6 (Gyo-Ke) No. 10042 [Melting Furnace] <Presiding Judge Masuda>① The issue was whether there was motivation to replace the regenerative burner of the primary-reference invention with a well-known flat-flame burner and further add a heat exchanger.② Inventive step was affirmed because, despite the existence of the well-known technique, the primary-reference invention deliberately adopted another burner for energy efficiency and other reasons and already included a heat exchanger for waste-heat recovery, so there was no motivation for the replacement or addition.③ This case shows that even a well-known technique may lack motivation for application where the primary-reference invention intentionally adopts a different configuration and already solves the same problem.
Patent	[Patent ★★★] It was held that, because the fifth-generation divisional application violated the divisional requirements, the seventh-generation patent had a ground for invalidation based on lack of novelty over the publication of the original application. — Intellectual Property High Court, Reiwa 6 (Gyo-Ke) No. 10086 [Vehicle Guidance System] <Presiding Judge Honda> —① The issue was whether the fifth-generation divisional application satisfied the divisional requirements after removing limitations concerning the cases in which vehicles were returned and the determination method, which the fourth-generation specification as originally filed had treated as indispensable to solving the problem.② The unrestricted generalization introduced new technical matter and therefore violated the divisional requirements; the seventh-generation application at issue likewise did not receive retroactive effect to the original filing date and lacked novelty over the publication of the original application.③ This case shows that a violation of the divisional requirements in the middle of a divisional chain can cause subsequent applications to lose the benefit of retroactivity to the original filing date, so it is necessary to confirm at each generation that the invention remains within the disclosure of the immediately preceding specification and drawings.
Patent	[Patent ★★] A case in which, on appeal in a patent-infringement action, a new ground for invalidation asserted in the statement of reasons for appeal was held untimely because it could have been asserted in the court of first instance — Intellectual Property High Court, Reiwa 6 (Ne) No. 10010 [Women’s Garment] <Presiding Judge Nakahira> — (First Instance: Tokyo District Court, Reiwa 3 (Wa) No. 18262 <Presiding Judge Kokubu>)① The issue was whether first asserting in the statement of reasons for appeal a new ground for invalidation based on Exhibits Otsu 31 through 33, which could have been submitted in the first instance, constituted an untimely allegation or defense.② It was held that the late submission involved gross negligence and ordinarily would have had to be dismissed, but because the appellee rebutted it and the oral argument concluded without a further rebuttal, there was no litigation delay; the court therefore ruled on the merits and rejected the ground for invalidation.③ This case shows that even a ground for invalidation submitted in a statement of reasons for appeal may be deemed untimely if it could have been asserted in the first instance, and therefore invalidity materials and defenses should be submitted as fully as possible at the first-instance stage.
Patent	[Patent ★] A case holding that the configuration and the like of the counterpart of a subcombination were not matters specifying the invention. ⇒ No inventive step — Intellectual Property High Court, July 10, 2025, Reiwa 6 (Ne) No. 10012 [R Badge, Receiving Device] <Presiding Judge Hibiki Shimizu> —① The issue was the standard for recognizing a feature of the counterpart device stated in a subcombination claim as a matter specifying the claimed device’s invention.② Matters that specify only the counterpart device and do not specify the structure, function, or the like of the claimed device were excluded from determination of the gist of the invention, and internal circumstances of the mobile telephone and the like were found to produce no difference on the receiving-device side.③ To make a limitation on the counterpart device a matter specifying the invention, it is useful to reflect corresponding signal processing, physical shape, timing control, or the like in the claim as a structure or function of the claimed device.
Patent	[Patent ★] A case in which the description in the detailed description of the invention concerning the method for deriving a parameter in a claim was erroneous, the assertion that the description contained an error was rejected, and the support requirement was denied — Tokyo District Court, Reiwa 5 (Wa) No. 70114 [Brake Control Device for a Motorcycle] <Presiding Judge Shibata> — (Same holding on appeal: Intellectual Property High Court, Reiwa 6 (Ne) No. 10038 <Presiding Judge Honda>)① The issues were whether the formula in the specification for deriving corrected lateral G was physically valid and whether the formula could be corrected as an unambiguous error in the description so that the support requirement was satisfied.② The formula subtracting velocity from acceleration had inconsistent dimensions and no meaning in physics; because there were possible solutions other than the correction asserted by the plaintiff and inconsistencies with other descriptions would arise, it was not found to be an error in the description, and the support requirement was denied.③ This case shows that calculations and methods for deriving parameters forming the core of problem-solving must be described in the specification with physical consistency and so that a person skilled in the art can understand them unambiguously.
Patent	Reiwa 7 (Ne) No. 10001 “Patent Royalties Relating to a Fulvic Acid Production Method” <Presiding Judge Honda>① Concerning an agreement intended to transfer an exclusive patent license and sublicense a non-exclusive license, the issues were the validity of termination for breach due to lack of licensing authority and the exemptive effect of Article 7 of the agreement.② The article was merely a cautionary clause recognizing the possibility that registration might be unavailable in the future, and was not an exemption for a situation in which the licensing obligation could not be performed from the time of contracting; accordingly, the appellee’s termination was held valid.③ This case shows the distinction between a cautionary clause indicating a future risk of failure to register and an exemption from inability to perform the principal obligation existing from the time of contracting.
Patent	Reiwa 5 (Gyo-Ke) No. 10147 [RNA-Dependent Targeted DNA Modification] <Presiding Judge Hibiki Shimizu>① The issue was whether the first application documents sufficiently disclosed a PAM sequence, NLS and codon optimization, and application to eukaryotic cells, so that the invention at issue could enjoy the benefit of the priority claim.② The court found substantive disclosure and upheld the benefit of priority because these matters were common general technical knowledge or well-known techniques as of the filing date and could be implemented without undue experimentation.③ This case shows that disclosure serving as the basis for priority is judged not only from the wording of the first application documents but also in light of the common general technical knowledge at the filing date and whether undue experimentation was required.
Patent	Tokyo District Court, Reiwa 7 (Wa) No. 70003 [Smoking-Article Cartridge] <Presiding Judge Shibuya>① The issue was whether, after the defendant waived its claim for damages following the filing of an action for a declaration that the claim did not exist, there remained an interest in immediate determination while customs procedures and the like were still pending.② The court denied an interest in immediate determination because there was no actual dispute over nonexistence of the damages claim and a declaratory judgment would not prevent assertion of an injunction claim or the like.③ This case shows that after a rights holder conclusively waives a claim for damages, a party seeking to dispute an injunction claim must directly seek a declaration that the injunction claim does not exist.
Trademark	[Trademark/Domain] Tokyo District Court, Reiwa 5 (Wa) No. 70022, “Legal Force” Case <Presiding Judge Takahashi>① The issues were Japan’s international jurisdiction and infringement and the like concerning use of the “LEGAL FORCE” trademark on an English-language website by a U.S. corporation and use of a Japanese domain name.② The court denied jurisdiction over the trademark-related claims because the website did not target consumers in Japan; although it recognized jurisdiction over the .JP domain, it denied an improper purpose and dismissed the claims.③ This case shows that, for international jurisdiction over web services, the reality of targeting consumers in Japan is important, while for a domain name the location of the administering organization and the purposes of acquisition and use are separately considered.
Patent	Interlocutory Judgment; Reiwa 6 (Ne) No. 10034 [Elasto-Plastic Hysteretic Damper] <Presiding Judge Honda>① For an elasto-plastic hysteretic damper, the issues were the direction of “input” in limitation G and whether the “pair of plates” in limitation D was satisfied.② The Intellectual Property High Court did not limit “input” to a specified direction, held that the two connecting plates or stiffeners of Σ-shaped Dampers 5 and 6 were a “pair of plates,” and found infringement by some accused products.③ This case did not add a directional limitation to “input” where the claims and specification had none, and determined whether there was a “pair” based on the shape, arrangement, and connection relationships of the members.
Patent	Tokyo District Court, Reiwa 6 (Wa) No. 70283 [Reservation Management Device] <Presiding Judge Sugiura>① The issue was whether “transmission” from the reservation management device to the image printing device included the accused system, which printed image data through a pharmacy terminal.② The court denied satisfaction by the accused system because neither the claims nor the specification disclosed or suggested a configuration in which the reservation management device transmitted through another device.③ This case shows that satisfaction of a transmission-path limitation should be determined, based on the claims and specification, by distinguishing direct communication between a server and printer from communication through a terminal.
Patent	Osaka District Court, Reiwa 6 (Wa) No. 4500 [Shopping Payment System] <Presiding Judge Matsuami>① For a shopping payment system, the issues were whether a barcode scanner was a “camera,” whether it was “associated” with a customer terminal, and whether the “abnormality” detection limitations were satisfied.② The court found non-infringement because a scanner acquiring a code was not a camera acquiring an image, correspondence with a membership number was not association with a customer terminal, and detection based on a weight change was not an abnormality based on success or failure of image identification.③ This case shows the need to individually confirm whether the information acquired, the object with which a correspondence relationship is established, and the trigger for abnormality detection match the technical configurations defined in the claim.
Patent	Reiwa 6 (Ne) No. 10068 [Leak-Preventing Sealing Material] <Presiding Judge Hibiki Shimizu>① The issues were the state in which “diameter” was measured and whether an accused product installed by a third party was an article used exclusively for production of a product infringing the patent at issue.② The Intellectual Property High Court construed “diameter” as thickness in the original-yarn state and found non-infringement, and denied indirect infringement because there was no proof that Canon installed the product at the prescribed angle or that there was no other economic, commercial, or practical use.③ This case shows that the measurement state of a term is determined from the specification and common general technical knowledge, and that application of Article 101, paragraph 1, item 1 of the Patent Act requires proof of the prescribed actual use and absence of other uses.
Patent	Reiwa 7 (Ne) No. 10005 [Jig for a Lifeline Post] <Presiding Judge Masuda>① The issues were whether the accused product’s hook was a “bent portion” formed by bending the end of a rectangular plate into a U shape and whether infringement under the doctrine of equivalents was established.② The Intellectual Property High Court denied literal infringement and infringement under the doctrine of equivalents because the hook was not formed by bending the bottom plate into a U shape and the essential part also differed, and affirmed the first-instance judgment finding notification and dissemination of false facts.③ This case shows that where not only a member’s shape but also its method of formation is specified in a limitation and relates to the essential part, both literal infringement and infringement under the doctrine of equivalents may be denied.
Patent	Tokyo District Court, Reiwa 6 (Wa) No. 70128 [Box-Shaped Vessel] <Presiding Judge Nakajima>① The issue was whether maintenance involving replacement of a pH sensor with a one-year service life and other components constituted “production” under Article 2, paragraph 3, item 1 of the Patent Act.② The court held that the pH sensor was a consumable, was not an essential part of the invention, and had extremely slight economic value compared with the box-shaped vessel as a whole; accordingly, replacement did not destroy the product’s identity and did not constitute “production.”③ This case shows that whether replacement constitutes “production” is determined from the service life of the replacement part, its relationship to the essential part, its economic value, and the identity of the product as a whole, and that only the act of installation should not be isolated.
Patent	Reiwa 7 (Ne) No. 10004 [Wireless Scuff Plate] <Presiding Judge Nakahira>① The issues were the meaning of “a control module that adjustably switches the backlight module on and off with respect to the time interval between the on and off states” and whether the appellee’s products satisfied that limitation.② The Intellectual Property High Court construed “adjustable” to mean actively varying the light-emission duration, and found non-infringement because the products did not include a control module that variably adjusted it independently of the timing of magnetic detection.③ This case shows that the functional language “adjustable” is judged not merely by whether switching on and off is possible, but by whether there is a configuration capable of variably controlling the target time.
Patent	Tokyo District Court, Reiwa 6 (Wa) No. 70463 [Connecting Fixture for Faucet Elbows] <Presiding Judge Sugiura>① The issues were contractual claims and tort liability concerning a patent application or application invention for a connecting fixture for faucet elbows that had received a decision of rejection.② The court denied the claims because there were no circumstances showing establishment of a right, the invention was not found to be within the agreement at issue, and the defendant’s involvement in the application process or working of the invention was not found.③ This case shows that imposing contractual or tort liability based on a rejected application invention requires support for establishment of a right, inclusion within the contractual subject matter, and the other party’s specific involvement.
Design	[Design] Osaka District Court, Reiwa 5 (Wa) No. 2668, “Vegetated Earth-Retaining Sandbag” Case <Presiding Judge Matsuami>① The issues were identification and similarity of a design for an earth-retaining vegetated sandbag including the natural object “grass,” and infringement under the doctrine of equivalents concerning the configuration fixing the vegetation sheet.② After specifying the shape of the grass within the range of regularity and reproducibility, the court held that the accused sandbag was dissimilar because, in particular, the manner in which the grass grew differed greatly, and it also denied infringement under the doctrine of equivalents because the fixing configuration was an essential part of the invention.③ This case shows that similarity of a design including a natural object may be judged as a reproducible shape, and that a distinctive fixing configuration producing operations and effects may be an essential part under the doctrine of equivalents.
Patent	Tokyo District Court, Reiwa 6 (Wa) No. 70223 [Game System and Game Program] <Presiding Judge Nakajima>① The issues were quantity management and priority consumption of purchased items and in-game acquired items in the game system, and satisfaction of “cumulative number acquired” in the game program.② The court denied satisfaction of each patent because the accused system did not distinguish the free portion granted upon purchase from the portion acquired in the game and had no priority-consumption function, and because the relevant value also included the number of skill-ticket uses.③ This case shows that whether quantities are managed in aggregate or separately, and whether another element is mixed into the target value, affects satisfaction of a claim specifying a data configuration.
Patent	Osaka District Court, Reiwa 5 (Wa) No. 7855 [Method for Mapping a Physical Hybrid Automatic Repeat Request Indicator Channel] <Presiding Judge Matsuami>① For an injunction based on a standard-essential patent, the issue was whether Company G’s conduct in license negotiations constituted bad-faith holdout.② The court held that the time required for NDA negotiations and review of numerous claim charts was unavoidable and that Company G had sincerely negotiated by presenting a reasoned counterproposal and revised proposals; it therefore dismissed the injunction claim as an abuse of rights.③ This case shows that sincerity in FRAND negotiations is judged not only by the length of the negotiation period but also by the need for confidentiality and patent review, responses to the basis for the royalty rate, and the reasonableness of counterproposals.
Patent	Reiwa 7 (Ne) No. 10035 [Vehicle Guidance System] <Presiding Judge Honda> (PXZ v. East Nippon Expressway Company Limited)① The issues were the scope of “entrance/exit for ordinary vehicles” and whether there was a “guidance means” for returning a vehicle for which ETC toll collection was impossible to a prescribed route.② The Intellectual Property High Court found non-infringement because an entrance/exit for ordinary vehicles at a separate adjacent interchange was not included, and a driver’s voluntary U-turn without a sign or the like was not guidance by the facility.③ This case held that the “entrance/exit for ordinary vehicles” meant an entrance/exit at the same facility where the vehicle guidance system was installed, did not include an entrance/exit at another adjacent interchange, and that a driver’s voluntary U-turn without a sign or the like was not “guidance” by the facility.
Patent	Reiwa 7 (Ne) No. 10025 [Spindle Motor] <Presiding Judge Nakahira> ⇒ Claim for Employee-Invention Remuneration① The issue was whether the appellant could claim employee-invention remuneration as a joint inventor of patented inventions in Japan, the United States, and China concerning a spindle motor.② The Intellectual Property High Court denied joint inventorship and dismissed the claim because the appellant’s explanatory document did not address the specific configuration of the communication hole forming the core of the Japanese invention, and the through-holes of the U.S. and Chinese inventions differed from the appellant’s idea of a groove.③ This case shows that proof of joint inventorship requires materials showing involvement in the specific configuration forming the core of the invention, and that an explanatory document describing a different problem and solution is insufficient.
Patent	Osaka District Court, Reiwa 6 (Wa) No. 7193 [Article Conveying Facility] <Presiding Judge Matsuami> ⇒ Claim for Employee-Invention Remuneration Dismissed① The issues were whether the establishment, operation, dissemination, and content of internal employee-invention rules were unreasonable under Article 35, paragraph 5 of the Patent Act and whether a reasonable benefit could be claimed under paragraph 7 of that Article.② In light of consultation with the labor union, solicitation of opinions from all employees, continuous access and training, performance rewards based on objective indicators, and opportunities to state opinions, the court held that the rules were not unreasonable and dismissed the claim.③ This case shows that consultation and solicitation of opinions when rules are established, dissemination of the system, objective evaluation, rewards according to performance, and opportunities for inventors to state opinions are emphasized as circumstances supporting the reasonableness of the rules.

Reiwa 6 (Gyo-Ko) No. 10007 [Pharmaceutical Composition/Registration of Patent Term Extension] <Presiding Judge Nakahira>

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%b310007%e3%80%90%e5%8c%bb%e8%96%ac%e7%b5%84%e6%88%90%e7%89%a9-%e5%ad%98%e7%b6%9a%e6%9c%9f%e9%96%93%e5%bb%b6%e9%95%b7%e7%99%bb%e9%8c%b2%e3%80%91%ef%bc%9c/

Reiwa 6 (Gyo-Ko) No. 10007 [Pharmaceutical Composition/Registration of Patent Term Extension] <Presiding Judge Nakahira>

<Issue> Does a “revision of the package insert” for a pharmaceutical product constitute a “disposition” that provides a basis for registration of a patent-term extension (Article 67, paragraph 4 of the Patent Act and Article 2 of the Enforcement Order of the Patent Act)?

⇒ A revision of a package insert does not constitute a “disposition” eligible for registration of an extension.

(1) Legal Nature of the Revision of the Package Insert (Related to Issue 1)<Distinction from Approved Matters>In the marketing approval for the pharmaceutical product at issue, the “administration rate” was not applied for as an approved matter (dosage and administration) and was not subject to review. The PMDA’s instruction concerning the administration rate remained administrative guidance and was not a legally binding disposition.<Not a Lifting of a Prohibition>Even before the revision of the package insert, the administration method at issue (administration at a high rate) was not prohibited by law. Accordingly, the revision of the package insert did not lift any prohibition (and thereby make working of the patented invention possible).<Difference from Partial-Change Approval>Filing a notification of revision of the package insert is performance of an obligation by the marketing authorization holder, and does not in itself mean that an administrative agency changed rights or obligations (a disposition). It therefore differs in legal nature from “partial-change approval” under the Pharmaceuticals and Medical Devices Act.

(2) Whether the Enforcement Order May Be Applied by Analogy (Related to Issue 2)The “dispositions” that provide a basis for registration of an extension under Article 2, item 2 of the Enforcement Order of the Patent Act are understood to be an exhaustive enumeration.Although the Enforcement Order has been amended repeatedly, it has not been amended to include revision of a package insert as a disposition even after introduction of the package-insert revision consultation system.In view of the foundation of the patent system (the public interest), under which anyone may freely use an invention after expiration of the patent term, a “revision of a package insert,” for which there is no express provision, should not be made eligible for registration of an extension by analogical interpretation.

https://www.courts.go.jp/assets/hanrei/hanrei-pdf-94150.pdf

Reiwa 6 (Ne) No. 10076 [Retractable Temporary Protective Fence] <Presiding Judge Nakahira>

Original Article URL: https://www.nakapat.gr.jp/ja/legal_updates_jp/%e4%bb%a4%e5%92%8c7%e5%b9%b4%e3%83%8d10076%e3%80%90%e8%b5%b7%e4%bc%8f%e5%8f%8e%e5%ae%b9%e5%bc%8f%e4%bb%ae%e8%a8%ad%e9%98%b2%e8%ad%b7%e6%9f%b5%e3%80%91%ef%bc%9c%e4%b8%ad%e5%b9%b3%ef%bc%9e/

Reiwa 6 (Ne) No. 10076 [Retractable Temporary Protective Fence] <Presiding Judge Nakahira>

The accused product’s “square tube” (a square pipe-shaped post) does not literally satisfy the “pivoting plate-shaped member” of the patented invention.

The problem addressed by the invention is “to reduce the width of the raising and lowering member of a temporary protective fence and thereby achieve reduced weight and compactness.”⇒ The specification states the effect that “because the pivoting plate-shaped member has thickness in the short-side direction (because it is thin), it can be housed within the width of the web portion of the base frame (H-shaped steel).”⇒ The configuration of making the post thin by making it “plate-shaped,” so that it fits in the recess (web portion) of the H-shaped steel, is a distinctive technical idea not found in the prior art (= the essential part).⇒ No infringement under the doctrine of equivalents (Requirement 1 not satisfied).

https://www.courts.go.jp/assets/hanrei/hanrei-pdf-94147.pdf

Reiwa 6 (Gyo-Ke) No. 10024 [X-Ray Inspection 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%e8%a1%8c%e3%82%b110024%e3%80%90%ef%bd%98%e7%b7%9a%e6%a4%9c%e6%9f%bb%e8%a3%85%e7%bd%ae%e3%80%91%ef%bc%9c%e4%b8%ad%e5%b9%b3%ef%bc%9e/

Reiwa 6 (Gyo-Ke) No. 10024 [X-Ray Inspection Device] <Presiding Judge Nakahira>

Cited Document 2 describes a “cold-air circulation system” for the sensor section and a “liquid-refrigerant circulation system” for the signal-processing circuit section, but these can be understood as separate technical ideas in terms of cooling configurations.⇒ Accordingly, the decision did not err in extracting and finding only the “cold-air circulation system” related to cooling of the sensor section.

(Excerpt from the Holding)The decision at issue is found to have objectively and specifically identified, as a cooling configuration and on the basis of the above descriptions in Cited Document 2, the cold-air circulation system that removes heat from the sensor section, which is one of the two circulation systems that can be understood as embodying different technical ideas. In light of the foregoing, no error is found in the decision’s identification of the technical matter described in Cited Document 2.

https://www.courts.go.jp/assets/hanrei/hanrei-pdf-94148.pdf

May 27, 2025; Reiwa 3 (Ne) No. 10037 [Antipruritic Agent] <Presiding Judge Hibiki Shimizu>

Original Article URL: https://www.nakapat.gr.jp/ja/legal_updates_jp/%e4%bb%a4%e5%92%8c7%e5%b9%b45%e6%9c%8827%e6%97%a5-%e4%bb%a4%e5%92%8c3%e5%b9%b4%e3%83%8d10037%e3%80%90%e6%ad%a2%e7%97%92%e5%89%a4%e3%80%91%ef%bc%9c%e6%b8%85%e6%b0%b4%e9%9f%bf%ef%bc%9e/

May 27, 2025Reiwa 3 (Ne) No. 10037 [Antipruritic Agent] <Presiding Judge Hibiki Shimizu>

<Damages> Treatment of the Consumption-Tax EquivalentArticle 4 and Article 2, paragraph 1, item 8 of the Consumption Tax Act, and Basic Circular 5-2-5 on the Consumption Tax Act⇒ Lost profits calculated as “sales quantity × profit per unit” under Article 102, paragraph 1 of the Patent Act cannot be regarded as “consideration for a transfer of assets, etc.,” and consumption tax therefore cannot be added.On the other hand, the “amount of money the patentee would have been entitled to receive for the working of the patented invention” under Article 102, paragraph 3 of the Patent Act is an amount equivalent to a royalty determined after the fact between the patentee and the infringer, and can be regarded as “consideration for a transfer of assets, etc.”; accordingly, the consumption-tax equivalent may be added to that extent.

Note: Other than the damages issue, this case is the same as the judgment of the same date in Reiwa 6 (Gyo-Ke) No. 10033 [Antipruritic Agent (Nalfurafine Hydrochloride/Patent-Term Extension)] <Presiding Judge Hibiki Shimizu>.

https://www.courts.go.jp/assets/hanrei/hanrei-point_pdf-94302.pdf

[Copyrighted Works and Trademark Rights] Tokyo District Court, Reiwa 3 (Wa) No. 32244 <Presiding Judge Nakajima>

Original Article URL: https://www.nakapat.gr.jp/ja/legal_updates_jp/%e3%80%90%e8%91%97%e4%bd%9c%e7%89%a9%e3%83%bb%e5%95%86%e6%a8%99%e6%a8%a9%e3%80%91%e6%9d%b1%e4%ba%ac%e5%9c%b0%e5%88%a4%e4%bb%a4%e5%92%8c3%e5%b9%b4%e3%83%af32244%ef%bc%9c%e4%b8%ad%e5%b3%b6%ef%bc%9e/

[Copyrighted Works and Trademark Rights] Tokyo District Court, Reiwa 3 (Wa) No. 32244 <Presiding Judge Nakajima>

The defendant (AI), a skateboarder and artist, sought registration of transfer of the trademark rights from the plaintiff SI, with which the defendant had entered into a license agreement and conducted business (counterclaim).

① Copyright in each of the copyrighted works at issue belongs to the defendant.Plaintiff SI asserted that it had acquired the copyright under the 2000 music agreement at issue. Under the proper construction of that agreement, however, musical works and the like were subject to transfer (“shall be transferred”), whereas album cover art and the like were merely subject to the grant of an exclusive right of use for promotional purposes (“shall have the exclusive rights”).

② The plaintiffs are obligated to return each of the trademark rights at issue to the defendant and to cooperate in effecting the return.Article 11 of the license agreement at issue provides that marks such as “MARK GONZALES” may be registered for protection of the rights, on the condition that the trademark registrations be returned to the defendant upon the defendant’s request.The plaintiffs asserted acquisitive prescription, but because their use presupposed an obligation to return the rights and no “intention to possess for oneself” was found, acquisitive prescription did not arise.

Note: U.S. and Korean judgments were cited as evidence. Because California law was the governing law, citation of the U.S. judgment is understandable, but citation of the Korean judgment is interesting.

https://ipforce.jp/Hanketsu/jiken/no/14552

Osaka District Court, Reiwa 6 (Wa) No. 2705 [Angle-Adjustable Hinge] <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%8c6%e5%b9%b4%e3%83%af2705%e3%80%90%e8%a7%92%e5%ba%a6%e8%aa%bf%e6%95%b4%e5%8f%af%e8%83%bd%e3%81%aa%e3%83%92%e3%83%b3%e3%82%b8%e3%80%91%ef%bc%9c/

Osaka District Court, Reiwa 6 (Wa) No. 2705 [Angle-Adjustable Hinge] <Presiding Judge Takemiya>

Claims seeking procedures for registration of transfer of German and Chinese patent rights⇒ Dismissed as inadmissible.

An action concerning patent registration is subject to the exclusive jurisdiction of the courts of “the place where registration is to be made (that country).” Japanese courts have no jurisdiction.

(China) Because there is no reciprocity between Japan and China for recognition of judgments, even if a Japanese court were to declare that “the plaintiff owns the rights,” that declaration would not serve to prevent the effect of a Chinese judgment in favor of the defendant and would not remove uncertainty concerning legal status.

(Germany) No concrete possibility that the plaintiff would conduct business in Germany was shown, and the legal dispute had not matured.

(Risk of Suit in Japan) Even if the defendant were to sue in Japan for “infringement of a foreign patent,” there would be very little prospect of the claim being granted under the principle of territoriality.

https://www.courts.go.jp/assets/hanrei/hanrei-pdf-94374.pdf

Osaka District Court, Reiwa 5 (Wa) No. 10970 [Video Viewing Device] <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%8c5%e5%b9%b4%e3%83%af10970%e3%80%90%e6%98%a0%e5%83%8f%e8%a6%96%e8%81%b4%e8%a3%85%e7%bd%ae%e3%80%91%ef%bc%9c%e6%ad%a6%e5%ae%ae%ef%bc%9e/

Osaka District Court, Reiwa 5 (Wa) No. 10970 [Video Viewing Device] <Presiding Judge Takemiya>

For the accused device to have the “compression” of limitations F and G, where vehicle-travel information exists for period T1 (or for “period T2 + period T1”), the vehicle-travel information must be temporally shortened (compressed) so that it fits within period T2, which is shorter than those periods.⇒ Limitation not satisfied.

⇒ The claim for damages was granted on the ground that the infringement report to Amazon constituted an act of unfair competition!!

https://t.co/LhHb5i5Kec

Reiwa 7 (Ne) No. 10008 [Method for Deodorizing a Room in Which a Deceased Person and/or an Animal Has Been Left] <Presiding Judge Nakahira>

Original Article URL: https://www.nakapat.gr.jp/ja/legal_updates_jp/%e4%bb%a4%e5%92%8c7%e5%b9%b4%e3%83%8d10008%e3%80%90%e6%95%85%e4%ba%ba%e5%8f%8a%e3%81%b3%ef%bc%8f%e5%8f%88%e3%81%af%e5%8b%95%e7%89%a9%e3%81%ae%e6%94%be%e7%bd%ae%e3%81%95%e3%82%8c%e3%81%9f%e9%83%a8/

Reiwa 7 (Ne) No. 10008 [Method for Deodorizing a Room in Which a Deceased Person and/or an Animal Has Been Left] <Presiding Judge Nakahira>Court of first instance: Tokyo District Court, Reiwa 5 (Wa) No. 70512

Limitation E: “a coating step of covering with paint a place where filth remains and that was exposed by the dismantling work”⇒ Limitation not satisfied.

(Summary of the Holding)<Description in the Estimate>Inclusion in the estimate merely showed a “prediction” that coating work would probably be necessary, and did not provide a basis for finding the objective fact that filth actually remained at a place exposed after dismantling.

<Use of Chemicals>Even if a cleaning agent or coating was used in special cleaning, its use was not limited to cases in which filth remained and could have been preventive or merely precautionary.Accordingly, the fact that such work was performed, by itself, cannot support an inference that filth remained at a place exposed by dismantling.https://www.courts.go.jp/assets/hanrei/hanrei-pdf-94197.pdf

Reiwa 6 (Ne) No. 10084 [Remotely Controlled Unmanned Boat] <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%8d10084%e3%80%90%e9%81%a0%e9%9a%94%e6%93%8d%e7%b8%a6%e7%84%a1%e4%ba%ba%e3%83%9c%e3%83%bc%e3%83%88%e3%80%91%ef%bc%9c%e4%b8%ad%e5%b9%b3%ef%bc%9e/

Reiwa 6 (Ne) No. 10084 [Remotely Controlled Unmanned Boat] <Presiding Judge Nakahira>

The “first control device” in limitation J is a mechanism capable of making determinations concerning both automatic-return activation condition ① (loss of signal) and condition ② (low remaining power). … It is also clear from Figure 8 of the specification—namely, the flowchart provides that automatic return occurs if no signal is received within a prescribed time; if receipt is confirmed, the process proceeds to determine whether the remaining power is at or below a prescribed value; and, if automatic return has not occurred, both conditions are checked—that the specification does not describe two separate inventions, one having condition ① and the other having condition ②.⇒ No literal infringement.

No infringement under the doctrine of equivalents either; Requirements 1 and 5 not satisfied.

https://www.courts.go.jp/assets/hanrei/hanrei-pdf-94196.pdf

Reiwa 6 (Ne) No. 10078 [Porous Air-Permeable Bag Containing Feed for Mites] <Presiding Judge Honda>

Original Article URL: https://www.nakapat.gr.jp/ja/legal_updates_jp/%e4%bb%a4%e5%92%8c6%e5%b9%b4%e3%83%8d10078%e3%80%90%e3%83%80%e3%83%8b%e7%94%a8%e9%a3%9f%e9%a4%8c%e5%85%a5%e3%82%8a%e3%81%ae%e5%a4%9a%e5%ad%94%e8%b3%aa%e9%80%9a%e6%b0%97%e6%80%a7%e8%a2%8b%e3%80%91/

Reiwa 6 (Ne) No. 10078 [Porous Air-Permeable Bag Containing Feed for Mites] <Presiding Judge Honda>

★ The patent is the same as in the court of first instance, Osaka District Court, Reiwa 4 (Wa) No. 11025.

* The invention at issue has a structure capable of retaining the attractant internally.⇒ The accused product merely sandwiches the mite attractant between two nonwoven fabric sheets, gauze, or the like, and the mite attractant falls out from around the perimeter; therefore, the limitation is not satisfied.

Note: … Is the accused product really like that? Should it have been proved through experiments or the like that the material did not fall out?

(Court of First Instance — Excerpt from the Holding)According to the specification, the invention at issue aims to exhibit a high mite-capturing capability. Its means are to attract mites over a broad area by diffusing a mite attractant from a woven sheet impregnated with the mite attractant, and then to arrange inside the mat an adhesive tape for capturing mites and porous air-permeable bags containing mite feed attached to the adhesive tape in a staggered pattern, so that mites attracted by the mite attractant further enter the inside from both the front and back surfaces of the mat, contact the adhesive tape, and are captured there. In addition, because the configuration impregnates a woven sheet with “fragrance” as the substance that attracts mites and arranges the porous air-permeable bags containing “feed” on both the front and back surfaces of the double-sided adhesive tape, thereby luring the mites inside the porous air-permeable cover and bringing them into contact with an unmixed adhesive layer so that they are captured, the “porous air-permeable bag” in the invention is expected to have a function that keeps the feed at the same location and does not reduce the adhesiveness of the adhesive layer. Moreover, the structure of the porous air-permeable bag makes it possible to achieve these results with one bag and to reduce the number of constituent materials.In light of the foregoing, it is appropriate to construe “porous air-permeable bag” in limitation A-3, both according to its dictionary meaning and the specification, as requiring at least a structure capable of retaining the enclosed material inside and preventing its dispersion. In the accused product sold, by contrast, the mite attractant is merely sandwiched between two nonwoven fabric sheets, gauze, or the like, and falls out from around the perimeter; accordingly, the product cannot be found to have a structure capable of retaining the attractant inside.

https://www.courts.go.jp/assets/hanrei/hanrei-pdf-94224.pdf

Reiwa 6 (Ne) No. 10012 [R Badge, Receiving Device] <Presiding Judge Hibiki Shimizu>

Original Article URL: https://www.nakapat.gr.jp/ja/legal_updates_jp/%e4%bb%a4%e5%92%8c%ef%bc%96%e5%b9%b4%e3%83%8d10012%e3%80%90%ef%bd%92%e3%83%90%e3%83%83%e3%82%b8%e3%80%81%e5%8f%97%e4%bf%a1%e8%a3%85%e7%bd%ae%e3%80%91%ef%bc%9c%e6%b8%85%e6%b0%b4%e9%9f%bf%ef%bc%9e/

Reiwa 6 (Ne) No. 10012 [R Badge, Receiving Device] <Presiding Judge Hibiki Shimizu>

* A case in which a subcombination limitation was held not to be a matter specifying the invention.

As of the priority date of the patent at issue, techniques of incorporating smart-card functionality into a mobile telephone and communicating by RFID (Exhibit Otsu 19), and of communicating between a mobile telephone and a receiving terminal instead of using an IC card (Exhibits Otsu 9 and 11), were well-known techniques to a person skilled in the art. The invention of Exhibit Otsu 52 and these well-known techniques shared a technical field, and a person skilled in the art could easily have conceived of adopting a configuration in which the contactless data carrier of the Exhibit Otsu 52 invention was a mobile telephone.⇒ No inventive step.

(Excerpt from the Holding)The matter concerning the mobile telephone “according to claim 4,” which is the “other subcombination” in corrected claim 5, can be said to have no meaning for specifying the invention of the “receiving device” in Corrected Invention 5.Accordingly, in determining the gist of Corrected Invention 5, it is appropriate to exclude the matter “according to claim 4.”

https://www.courts.go.jp/assets/hanrei/hanrei-pdf-94282.pdf

Reiwa 6 (Gyo-Ke) No. 10042 [Melting Furnace] <Presiding Judge Masuda>

Original Article URL: https://www.nakapat.gr.jp/ja/legal_updates_jp/%e4%bb%a4%e5%92%8c%ef%bc%96%e5%b9%b4%e8%a1%8c%e3%82%b110042%e3%80%90%e6%ba%b6%e8%a7%a3%e7%82%89%e3%80%91%ef%bc%9c%e5%a2%97%e7%94%b0%ef%bc%9e/

Reiwa 6 (Gyo-Ke) No. 10042 [Melting Furnace] <Presiding Judge Masuda>

① The primary reference deliberately adopted a configuration other than the well-known technique.② The primary reference had already solved the problem, and there was no motivation to additionally adopt the technique.⇒ Inventive step affirmed.

(Excerpt from the Holding)Although flat-flame burners were well known for uses such as aluminum melting when the tower-type nonferrous-metal melting and holding furnace of the Exhibit Ko 3 invention was placed on the market, it can be found that a regenerative burner was deliberately adopted as the holding burner from the standpoint of energy efficiency and the like. Accordingly, it cannot be found that a person skilled in the art who encountered the Exhibit Ko 3 invention would have been motivated to deliberately adopt a flat-flame burner in place of that holding burner.

The holding burner of the Exhibit Ko 3 invention is found to employ a regenerative burner, and a regenerative burner has a self-contained waste-heat recovery function, namely, a function of drawing in exhaust gas, exchanging heat in a heat-storage body, and preheating air, and therefore includes a heat exchanger; … thus, no motivation can be said to exist to additionally provide a further heat exchanger.

https://www.courts.go.jp/assets/hanrei/hanrei-pdf-94212.pdf

[Patent ★★★] It was held that, because the fifth-generation divisional application violated the divisional requirements, the seventh-generation patent had a ground for invalidation based on lack of novelty over the publication of the original application. — Intellectual Property High Court, Reiwa 6 (Gyo-Ke) No. 10086 [Vehicle Guidance System] <Presiding Judge Honda> —

Original Article URL: https://www.nakapat.gr.jp/ja/legal_updates_jp/%e3%80%90%e7%89%b9%e8%a8%b1%e2%98%85%e2%98%85%e2%98%85%e3%80%91%e7%ac%ac%ef%bc%95%e4%b8%96%e4%bb%a3%e5%88%86%e5%89%b2%e5%87%ba%e9%a1%98%e3%81%ab%e3%81%8a%e3%81%91%e3%82%8b%e5%88%86%e5%89%b2%e8%a6%81/

◆ Judgment Text

[Summary of This Judgment and Some Observations]

1. Overview of the Case

The fourth-generation specification, etc. as originally filed states, as indispensable configurations in the invention of a vehicle guidance system, (i) the matter of causing a vehicle that cannot use ETC to travel on a branch lane and return when that vehicle enters an ETC-only lane, and (ii) the matter of determining whether a vehicle is one to be returned according to whether wireless communication between an ETC on-board unit and a roadside antenna is possible; and it does not disclose a technical concept that does not make items (i) and (ii) above essential configurations.

By contrast, each invention recited in the claims of the fifth-generation divisional application introduces, in a three-way branching lane provided with either a lane that branches from an entrance-side lane extending from an ordinary road toward a parking area or service area of a toll road and returns to the ordinary road, or a lane that branches from an exit-side lane extending from a parking area or service area of a toll road toward an ordinary road and returns to the parking area or service area, a new technical matter whereby, with respect to opening and closing the two barriers on the left and right beyond the branch, no determination means is specified, so that, according to any criterion or method not limited to one involving a determination as to whether an inability or failure of wireless communication has occurred between the roadside antenna and the on-board unit of the ETC system, one of the barriers remains closed while the other opens, thereby guiding a vehicle either to continue traveling on the main lane or to enter the branch lane. Because (i) there is no limitation on the circumstances in which the vehicle is caused to travel on the branch lane and return and (ii) there is no limitation on the method for determining a vehicle to be returned, these two configurations constitute an unlimited generalization of the essential configurations described in the fourth-generation specification, etc. as originally filed

Accordingly, each fifth-generation invention should be regarded as introducing new technical matter in relation to the technical matter derived from all the descriptions in the fourth-generation specification, etc. as originally filed. The fifth-generation divisional application is therefore not entitled to application of the main clause of Article 44(2) of the Patent Act, and its filing date is its actual filing date, December 2, 2014.

It follows that the filing date of the application at issue, which is the seventh-generation divisional application, can relate back only as far as December 2, 2014.

Exhibit Ko 9 (Japanese Unexamined Patent Application Publication No. 2006-79580, which is the publication of the first original application), which was distributed in Japan before December 2, 2014, describes the configuration of a vehicle guidance system installed at a toll-road tollgate that includes the respective configurations of Inventions 1 and 2 at issue, and states that a vehicle guidance system having the same configuration may be installed at a service area or parking area.

Accordingly, each invention at issue is an invention described in Exhibit Ko 9 and cannot be patented under Article 29(1)(iii) of the Patent Act.

2. Excerpts from the Holding

[Excerpt omitted.]

3. Infringement Judgment of the Same Date (Reiwa 7 (Ne) No. 10035) — Non-Satisfaction Under the Same Logic as This Judgment

(1) Non-Satisfaction of "Entrance/Exit for Ordinary Vehicles" (Limitation 2E)

Based on the description of the specification at issue and other matters, the court held that the term "entrance/exit for ordinary vehicles" does not include the entrance/exit for ordinary vehicles of another interchange adjacent to the toll-road tollgate, service area, parking area, or the like at which the vehicle guidance system according to Invention 2 at issue is installed.

(Excerpt from the Holding)

It cannot be read from the description of the parent-application specification at issue that the use, by a vehicle that could not use the smart interchange because ETC toll collection was impossible, of an entrance/exit for ordinary vehicles at another adjacent interchange is the result of guidance by the guidance means according to Invention 2 at issue. Accordingly, the "entrance/exit for ordinary vehicles" in Limitation 2E cannot be construed as including the entrance/exit for ordinary vehicles of another interchange adjacent to the toll-road tollgate, service area, or parking area at which the vehicle guidance system according to Invention 2 at issue is installed.

(2) Non-Satisfaction of "Guidance Means" (Limitation 2E)

The court held that "guidance" means objectively leading a vehicle and that, where there are no signs or the like (including no sign or the like instructing a U-turn), even if the driver could make a U-turn and return to a point before the ETC-only entrance/exit, this does not constitute "guidance means" for a route returning to a point before the ETC-only entrance/exit.

(Excerpt from the Holding)

"Guidance" means inviting and leading toward a destination. Because no sign or the like instructing a U-turn exists within any of the Plaintiff’s facilities, it cannot be said that the Plaintiff’s facilities invite and lead a vehicle for which ETC toll collection is impossible onto a route returning it again to a point before the ETC-only entrance/exit. Even if it is factually possible for the driver of that vehicle, by the driver’s own choice, to make a U-turn and return again to a point before the ETC-only entrance/exit, it must be said to be unreasonable to characterize such travel of the vehicle based on the driver’s intention as being attributable to guidance means installed at the Plaintiff’s facilities. Accordingly, none of the Plaintiff’s facilities can be said to include guidance means that guide a vehicle for which ETC toll collection is impossible onto a "route returning it again to a point before the ETC-only entrance/exit."

4. Some Observations

At a time when the proportion of divisional applications is increasing, there is concern that instances will increase in which the addition of new matter in a patent application partway through a divisional tree prevents the filing date from relating back to the filing date of the original application, resulting in denial of novelty or inventive step. Although there have previously been few cases in which courts have so held, such cases are expected to increase.

In particular, in 2025 the Japan Patent Office issued a message suggesting revision of the Examination Guidelines in the direction of making the amendment requirements for so-called "excluding claims" stricter. If inventions claimed in issued patents by means of "excluding claims" begin to be held to have a ground for invalidation based on the addition of new matter, the problem described above will surface, and there is concern that patent practice will become confused in the future. (See the materials of the 18th Working Group of the Examination Standards Subcommittee, Patent System Subcommittee, Intellectual Property Committee, Industrial Structure Council.)

https://www.jpo.go.jp/resources/shingikai/sangyo-kouzou/shousai/kijun_wg/18-shiryou.html

[Related Court Decisions (Concerning Divisional Requirements)]

(1) Intellectual Property High Court, Reiwa 6 (Gyo-Ke) No. 10086 [Vehicle Guidance System] <Presiding Judge Honda> (This Judgment)

* The child application violates the divisional requirements ⇒ the filing date of the grandchild application does not relate back to the filing date of the parent application.

<Excerpt from the Holding>

[Excerpt omitted.]

⇒ Because each fifth-generation invention lacks items (i) and (ii) above (the indispensable configurations for solving the problem), it constitutes the addition of new matter.

(2) Tokyo District Court, Reiwa 1 (Wa) No. 23164 [Image Forming Apparatus] <Presiding Judge Tanaka>

* The child application violates the divisional requirements ⇒ the filing date of the grandchild application does not relate back to the filing date of the parent application.

* In Reiwa 2 (Gyo-Ke) No. 10131 concerning the same patent, the court held: "Considering together ... that there was an opportunity to cure the state in which Application 2 at issue violated the divisional requirements by making an amendment such as deleting the added portion above, it was not appropriate for the examiner of Application 2 at issue to overlook the above violation of the divisional requirements, but ..."

<Excerpt from the Holding>

[Excerpt omitted.]

(3) Osaka High Court, Heisei 14 (Ne) No. 2776 [Concrete Embedded Object] (Mirai Kogyo v. Nichido Denko)

* The child application came to violate the divisional requirements due to the retroactive effect of a procedural amendment.

⇒ The filing date of the grandchild application does not relate back to the filing date of the parent application.

* The fact that invalidity of the child application became final is unrelated to whether the filing date of the grandchild application relates back to the filing date of the parent application.

<Excerpt from the Holding>

[Excerpt omitted.]

(4) Tokyo High Court, Heisei 15 (Gyo-Ke) No. 65 [Concrete Embedded Object] (Mirai Kogyo v. Nichido Denko)

* The child application came to violate the divisional requirements due to the retroactive effect of a procedural amendment.

⇒ The filing date of the grandchild application does not relate back to the filing date of the parent application.

<Excerpt from the Holding>

[Excerpt omitted.]

(5) Tokyo District Court, Heisei 15 (Wa) No. 9215 [Fastener and Cord Fastening Device] (JP3367651) <Presiding Judge Mimura>

* Divisional applications and amendments are permitted within the same scope.

= Tokyo District Court, Heisei 10 (Wa) No. 8345 [Ear-Hanging Device for Cultured Shellfish] <Presiding Judge Mimura>

<Excerpt from the Holding>

Regarding the division of a patent application, Article 44(1) of the Patent Act provides that "only within the period during which an amendment may be made to the specification or drawings attached to the application, a patent applicant may make a part of a patent application containing two or more inventions into one or more new patent applications." In order for such a divisional application to be recognized as lawful, the original application must be pending before the Japan Patent Office and must contain two or more inventions; containing two or more inventions is understood not to require that they be contained only in the claims, but is satisfied if the specification contains two or more inventions. A divisional application must also be filed within a period during which an amendment may be made (Article 44(1) of the Patent Act). Further, a divisional application is deemed to have been filed at the time of the original patent application (paragraph (2) of the same Article), and novelty, inventive step, and the like are assessed as of the filing date of the patent application from which the divisional application originated. In light of these matters, division of an application may be said to have a function similar to that of an amendment (Article 17 of the Patent Act); therefore, the permissible scope of a divisional application should likewise be construed as limited to the scope within which the original application may be amended. (If division were permitted even where the requirements for amendment were not satisfied, it would in substance permit circumvention of the amendment requirements by means of the divisional procedure, which would be unreasonable.) Thus, the specification or drawings of a divisional application should be construed not to include anything outside the scope of matters described in the specification or drawings of the original application as filed. ...

(6) Tokyo District Court, Heisei 16 (Wa) No. 14649 [Telephone Call Control System] <Presiding Judge Shitara>

* A case in which the divisional requirements were assessed based on the claims after amendment (retroactive effect of amendment) — the same logic and conclusion as for the amendment requirements

= Tokyo High Court, Heisei 15 (Gyo-Ke) No. 65; cf. Heisei 28 (Gyo-Ke) No. 10114

<Excerpt from the Holding>

... The first and second amendments to Application 2 at issue added a description of an embodiment in which, before a customer pays a deposit, the amount of the deposit and a special code are stored in advance in memory means of a special exchange unit, and should be regarded as additionally describing an invention producing a new operation and effect, "...", that was not described in the original specification of Application 2 at issue. Accordingly, the first and second amendments to Application 2 at issue cannot be recognized as amendments that increased, decreased, or changed the claims of the original specification of the divisional application within the scope of matters described in the original specification or drawings of Application 2 at issue. Therefore, the divisional application at issue does not satisfy the divisional-application requirements of former Article 44(1) of the Patent Act and is deemed to have been filed on May 7, 1997. Furthermore, because the first and second amendments to Application 2 at issue cannot be recognized as having been made within the scope of matters described in the original specification or drawings of the divisional application at issue, they violate Article 17-2(3) of the Patent Act. ...

(7) Tokyo High Court, Showa 50 (Gyo-Ke) No. 75

* A violation of the divisional requirements may be cured by an amendment (retroactive effect of amendment).

(Reference) Tokyo High Court, Heisei 15 (Gyo-Ke) No. 65, [Concrete Embedded Object] ⇒ The filing date of a grandchild application divided from a child application does not relate back to the filing date of the parent application where the child application ceases to satisfy the divisional requirements due to an amendment.

⇒ The filing date of the child application is the date on which the procedural amendment was submitted!!

<Excerpt from the Holding>

[Excerpt omitted.]

(8) Tokyo District Court, Heisei 27 (Wa) No. 8517 [Ridge Plastering Machine] <Presiding Judge Shimasue>

* A third-generation patent in a sequence of original application ⇒ first generation ⇒ second generation ⇒ third generation.

* The second-generation application had been withdrawn, but whether its filing date could relate back to the first-generation application and the original application was not disputed.

* Tokyo High Court, Heisei 15 (Gyo-Ke) No. 65, and Osaka High Court, Heisei 14 (Ne) No. 2776, held that invalidity of the child application itself was irrelevant.

<Excerpt from the Holding>

[Excerpt omitted.]

(9) Intellectual Property High Court, Heisei 28 (Gyo-Ke) No. 10263 [Wiring Box] (Mirai Kogyo v. Nichido Denko) <Presiding Judge Takabe>

* General method for assessing the divisional requirements of a great-grandchild patent

<Excerpt from the Holding>

[Excerpt omitted.]

End

(Plaintiff) East Nippon Expressway Company Limited

(Defendant) PXZ Limited Company

[Patent ★★] A case in which, in the appellate instance of a patent infringement action, a new ground for invalidity was alleged in the statement of reasons for appeal, but was held untimely because it could have been alleged in the court of first instance — Intellectual Property High Court, Reiwa 6 (Ne) No. 10010 [Women’s Garment] <Presiding Judge Nakahira> — (First Instance: Tokyo District Court, Reiwa 3 (Wa) No. 18262 <Presiding Judge Kokubu>)

Original Article URL: https://www.nakapat.gr.jp/ja/legal_updates_jp/%e3%80%90%e7%89%b9%e8%a8%b1%e2%98%85%e2%98%85%e3%80%91%e7%89%b9%e8%a8%b1%e6%a8%a9%e4%be%b5%e5%ae%b3%e8%a8%b4%e8%a8%9f%e3%81%ae%e6%8e%a7%e8%a8%b4%e5%af%a9%e3%81%ab%e3%81%8a%e3%81%84%e3%81%a6%e3%80%81/

◆ Judgment Text

[Summary of This Judgment and Some Observations]

1. Claims (Claim 1)

A. A women’s garment covering at least the bust portion of a woman, comprising:B. a cup member covering at least the bust portion of the woman;C. left and right front-body members disposed on the front-surface side of the cup member in a state separated from the cup member,the left and right front-body members being provided from the respective left and right underarm portions of the bust portion to a central portion of the lower bust while covering the sides of the bust; andD. a plurality of connecting members provided so as both to connect the left and right front-body members to each other near the central portion of the lower bust and to permit adjustment of the connecting width of the left and right front-body members,E. the women’s garment being characterized thereby.

2. Infringement Analysis (First-Instance Judgment / Tokyo District Court, Reiwa 3 (Wa) No. 18262 [Women’s Garment] <Presiding Judge Kokubu>)

The sixth edition of Kojien sets out two meanings of the term “tomoni”: (i) “as one; together; in company; alike” and (ii) “at the same time.”The Defendant (the alleged infringer) alleged that, when Kojien sets out two meanings, the meaning listed first is the more general meaning, but this allegation was not accepted.

The Tokyo District Court stated: “There is insufficient evidence to establish that the sixth edition of Kojien adopted an editorial policy of listing meanings beginning with those in broad and general use. Further, ... the items specifically exemplified as ‘connecting members’ in the specification ... are inconsistent with the Defendant’s ... construction. ...” It construed the claim term “tomoni” in the patented invention to have meaning (ii), “at the same time,” and found infringement. (The patentee prevailed.)

(Excerpt from the Holding / First-Instance Judgment)

The Defendant alleges that, with respect to “tomoni” in Limitation D, because, when a dictionary is compiled, the meanings of each word or phrase are listed beginning with those in broad and general use, the term should have the meaning listed first in the sixth edition of Kojien, namely, “as one; together; in company; alike.” However, which meanings of a word or phrase are given priority in the description is considered to depend on the editorial policy of each dictionary, and ... there is insufficient evidence to establish that the sixth edition of Kojien adopted an editorial policy of listing meanings beginning with those in broad and general use. Further, ... each item specifically exemplified as a “connecting member” in the specification at issue is such that its connecting width cannot be adjusted unless the connecting members are disconnected from each other, and is therefore inconsistent with the Defendant’s proposed construction of “tomoni.” ...

3. Invalidity Analysis (Although Held Untimely, It Was Nevertheless Considered.)

Grounds for invalidity alleged by the Appellant in the court of first instance

·        Lack of novelty and inventive step based on Otsu 8 as the primary reference

·        Lack of inventive step based on Otsu 9 and Otsu 10 as secondary references

Grounds for invalidity first alleged by the Appellant on appeal

·        Lack of novelty and inventive step based on Otsu 31 to 33 (U.S. patent documents)

Reasons, etc. why the Intellectual Property High Court held the allegation “untimely”

1. There was a time at which it should have been alleged in the court of first instance

·        On August 31, 2022, at a procedural session, the court disclosed its preliminary view on infringement.

·        It was possible to allege the new grounds for invalidity by that time.

2. They were neither submitted nor alleged at all in the court of first instance

·        “The Appellant did not even submit Otsu 31 to 33 through the end of the proceedings.”

·        “Nor did it make any allegations of invalidity based on those documents.”

3. There were no circumstances making the allegation difficult

·        “There are no circumstances suggesting that it was difficult to allege an invalidity defense based on the documents Otsu 31 to 33.”

4. Submission on appeal would cause delay in the proceedings

·        A change in the level of court or a change of counsel is not a reason.

·        5. Conclusion

The failure to make the allegation in the court of first instance, despite being able to do so, was held “untimely.”

6. “It cannot be said that it would delay completion of the proceedings”

Because a response to the grounds for invalidity had been made and oral argument was concluded without any further response, the court held that it could not be said that consideration of the grounds would delay completion of the proceedings and therefore decided the invalidity issues.

(Excerpt from the Holding / Appellate Judgment (This Judgment))

First, in examining whether this constitutes an untimely allegation or defense, the Appellant’s new allegation of grounds for invalidity in this appellate instance was made in the statement of reasons for appeal dated February 6, 2024. In a patent infringement action, an invalidity defense may be alleged without awaiting finalization of an invalidation decision in a patent invalidation trial, in order to resolve a dispute concerning patent infringement as promptly as possible within the patent infringement proceedings. Because the defense is made within civil litigation proceedings, which are separate from a patent invalidation trial, it should be dismissed as an untimely allegation or defense when, in light of the course of the proceedings, it would unduly delay the proceedings.

On that basis, reviewing the course of the proceedings in the court of first instance, the Appellant, which was the first-instance Defendant, denied in its answer dated October 22, 2021 and submitted on October 27, 2021 that the Appellee’s product satisfied the limitations of the invention at issue, and alleged a ground for invalidity based on lack of inventive step, using Otsu 8 as the primary reference and combining it with well-known art or using Otsu 9 as a secondary reference. After receiving the Appellee’s response and other submissions, the Appellant added, in Preparatory Brief (3) dated March 18, 2022, a ground for invalidity based on lack of novelty over Otsu 8. After receiving the Appellee’s further response, it additionally alleged, in Preparatory Brief (4) dated May 27, 2022, a ground for invalidity based on lack of inventive step, using Otsu 8 as the primary reference and Otsu 10 as a secondary reference. In response to the Appellee’s arguments on that point, it further replied in Preparatory Brief (5) dated August 29, 2022.

Then, on the premise that the parties had fully presented their allegations and evidence on infringement, in a preparatory proceeding conducted by web conference on August 31, 2022, the court disclosed its preliminary view that the proceedings would move to damages (the progress table for the preparatory proceeding on August 31, 2022 states in the “result of discussion” column: “Both parties: allegations and proof regarding infringement have been completed”; and “Presiding Judge: hereafter, the proceedings will address damages”). Proceedings on damages then continued. At the oral-argument hearing held on September 22, 2023, the Appellant stated that it had no further allegations or evidence, the oral argument in the court of first instance was concluded, and the original judgment was rendered.

In light of this course of proceedings in the court of first instance, the new allegation of grounds for invalidity in this appellate instance constitutes an untimely allegation or defense, and the Appellant was grossly negligent in delaying its submission. It would therefore ordinarily have to be dismissed. However, the Appellee has, albeit in the alternative, responded to the grounds for invalidity submitted in this appellate instance, and the oral argument in this appellate instance has been concluded without any further responsive allegation by the Appellant. To that extent, it cannot be said that considering the grounds would delay completion of the proceedings; therefore, the court will decide them below. ...

4. Some Observations

The course of allegations and proof in the court of first instance was ordinary for a patent infringement action. Thus, if, under the reasoning of this judgment, new grounds for invalidity “made in the statement of reasons for appeal” are held untimely, it may in substance become impossible to make any new allegation beginning in the appellate instance.

In the Ichitaro case (discussed below), the assertion of a new ground for invalidity beginning on appeal was permitted because the first-instance proceedings were short and the new primary reference was a foreign-language document. In this case, however, the assertion of a new ground for invalidity using the invention in Otsu 31, an English-language document, as the primary reference was held, in principle, to be untimely.

If, as in this judgment, the court states that “the Appellant did not even submit Otsu 31 to 33 through the end of the proceedings,” one might think they should simply have been submitted and alleged even after disclosure of the first-instance court’s preliminary view. Yet another Intellectual Property High Court judgment held an allegation untimely because it had been dismissed as untimely in the first instance; there is therefore no way out.

Separately from whether an allegation is untimely, one possible strategy for obtaining an appellate holding, as in this judgment, that “it cannot be said that it would delay completion of the proceedings” is to make all allegations in the statement of reasons for appeal and then refrain from making a further response to the Appellee’s response. Because the proceedings in this case followed that course, the invalidity issues were decided on the ground that “it cannot be said that it would delay completion of the proceedings.”

If so, when a new ground for invalidity is alleged in the statement of reasons for appeal, the Appellee could adopt a strategy of not responding to its substance and alleging only untimeliness. However, although it would ordinarily be difficult to imagine that the appellate court would close oral argument at that point, uphold the invalidity defense, and reverse in favor of the alleged infringer, a strategy of making no response entails risk. In many cases, therefore, the Appellee will likely respond on the merits as a precaution.

Regarding allegations first made on appeal and untimeliness, many prior Intellectual Property High Court judgments did not find an allegation untimely if made in the statement of reasons for appeal, but found it untimely if made in a preparatory brief after that statement; this judgment is extremely strict. A comprehensive strategy should be formulated while bearing in mind that other Intellectual Property High Court judgments have found that new grounds for invalidity alleged beginning on appeal were not untimely.

For example, Heisei 28 (Ne) No. 10100 [Electric Fishing Reel] <Presiding Judge Takabe> involved a correction defense that had been alleged after the court of first instance disclosed its view that the patent was invalid and had been dismissed as untimely. When the correction defense dismissed below was alleged in the statement of reasons for appeal, however, it was not dismissed as untimely.

That judgment held: “In light of the course of proceedings in the court of first instance and this court, it may be said that it would have been desirable to make the correction defense earlier. Nevertheless, because the Appellant, after the original judgment was rendered and advance notice of the trial decision was issued, set out the correction defense in detail in the statement of reasons for appeal and promptly submitted that allegation in this appellate instance, it cannot be said that the Appellant’s submission of the correction defense was untimely.” This is close to practical sensibilities. Where the first-instance judgment contains an unexpected determination, should not an allegation made on the basis of that determination be permitted on appeal, so long as it is made in the statement of reasons for appeal, at the outset of the appellate proceedings?

[Related Court Decisions (Cases in Which New Allegations First Made on Appeal Were Dismissed as Untimely)]

1. Court decisions in which an allegation made at the outset of the appellate proceedings (in the statement of reasons for appeal) was dismissed as untimely

Intellectual Property High Court, Reiwa 6 (Ne) No. 10010 [Women’s Garment] <Presiding Judge Nakahira> (This Judgment)

* A new invalidity defense alleged in the statement of reasons for appeal was held untimely. (On this reasoning, nothing new could be alleged beginning on appeal ...)

“The Appellant’s new allegation of grounds for invalidity in this appellate instance was made ... in the statement of reasons for appeal. ...

... After receiving the court’s disclosure of its preliminary view that the proceedings would move to damages, ... proceedings on damages continued, and ... at the oral-argument hearing, the Appellant stated that it had no further allegations or evidence; the oral argument in the court of first instance was concluded; and the original judgment was rendered. ... In light of this course of proceedings in the court of first instance, the new allegation of grounds for invalidity in this appellate instance constitutes an untimely allegation or defense, and the Appellant was grossly negligent in delaying its submission. It would therefore ordinarily have to be dismissed. However, the Appellee has, albeit in the alternative, responded to the grounds for invalidity submitted in this appellate instance, and the oral argument in this appellate instance has been concluded without any further responsive allegation by the Appellant. To that extent, it cannot be said that considering the grounds would delay completion of the proceedings; therefore, the court will decide them below. ... The allegation of lack of inventive step is without merit.”

Intellectual Property High Court, Heisei 29 (Ne) No. 10055 [Continuous Shellfish Fastening Tool] <Presiding Judge Mori>

* Although untimely, the next hearing had been scheduled and completion of the proceedings would not be delayed. ⇒ Not dismissed. ⇒ Lack of novelty.

“It is recognized that the Appellants could have submitted the defense concerning Ground for Invalidity 3 (lack of novelty) no later than January 26, 2017; therefore, it constitutes an ‘allegation or defense submitted untimely’ (Article 157(1) of the Code of Civil Procedure).

However, at the first oral-argument hearing in this appeal, ... Appellant Shinwa alleged that, before the date on which the patent at issue was deemed filed, it had sold a product satisfying the limitations of each invention at issue and that the patent at issue therefore lacked novelty. At that hearing, a further hearing was scheduled and additional allegations and proof were contemplated. In those circumstances, there was insufficient basis to find that the allegation at that time would delay completion of the proceedings.” (* January 26, 2017 was the date on which oral argument in the court of first instance was concluded.)

Intellectual Property High Court, Reiwa 5 (Ne) No. 10071 [Chip-Type Fuse] <Presiding Judge Miyasaka>

* An allegation concerning a different claim that had been dismissed as untimely in the court of first instance was also dismissed as untimely on appeal.

“The facts stated in the attached ‘Course Leading to the Addition of the Cause of Action at Issue’ are recognized as the course of proceedings and other matters in the court of first instance leading to the addition of the cause of action at issue. Specifically, at the answer stage (dated February 28, 2022), the Appellee submitted detailed allegations disputing satisfaction of the fourth requirement of the doctrine of equivalents, specifically identifying such publicly known documents as Otsu 1 and Otsu 3. Thereafter, by November of that year, the Appellant and Appellee exchanged two rounds of briefs containing arguments on that issue and fully presented allegations and proof. During that period, the record of the preparatory proceedings included the Appellee’s procedural position that it would ‘submit a responsive brief focusing on the fourth requirement of the doctrine of equivalents,’ and satisfaction of the fourth requirement was recognized as at least one of the central issues in the case. At a discussion by web conference on November 28, when allegations and proof on infringement had reached a preliminary stopping point (a discussion in written preparatory proceedings; the same applies below), the court disclosed to both parties its preliminary view that the Appellee’s product did not fall within the technical scope of Invention 1 at issue, and the parties were to consider settlement. Settlement negotiations soon failed. At the discussion on January 27, 2023, the Appellant stated that it would submit a preparatory brief setting out a further response concerning the arc-extinguishing action (note: relating to the second requirement of the doctrine of equivalents), supplementation of its prior allegations, and other matters. Nevertheless, in a preparatory brief dated February 27, 2023, the Appellant then alleged the addition of the cause of action at issue. In response, by a preparatory brief dated April 13, 2023, the Appellee moved for dismissal as an untimely method of attack or for a ruling refusing the amendment of the action as one that would substantially delay the proceedings.

... On the basis of the foregoing, first examining whether addition of the cause of action at issue was “untimely,” the Appellant sought that addition because, as long as the issue was whether Invention 1 at issue under Claim 1 fell within the technical scope, it was highly likely, in relation to the publicly known documents submitted by the Appellee, ... that the fourth requirement of the doctrine of equivalents (non-equivalence to publicly known art, etc.) would be held unsatisfied; the Appellant therefore attempted to satisfy the fourth requirement by putting at issue Invention 2 under Claim 3, which includes the additional configuration at issue. However, ... the Appellee’s allegation disputing the fourth requirement of the doctrine of equivalents had already been submitted in detail and with specificity at the answer stage, and it was possible to consider addition of the cause of action at issue as a countermeasure. Thereafter, the parties exchanged two rounds of briefs over approximately nine months and fully presented allegations and proof on this issue. The Appellant then suddenly added the cause of action at issue after disclosure of the court’s preliminary view and despite having itself stated the procedural position that it contemplated only a supplemental submission. It is clear that this constituted submission of an untimely method of attack.”

Intellectual Property High Court, Heisei 29 (Ne) No. 10072 [Personal-Network Relationship Registration System] <Presiding Judge Tsuruoka>

* An allegation under the doctrine of equivalents made at the first appellate hearing was dismissed as untimely.

Cf. Heisei 29 (Ne) No. 10029 and Heisei 27 (Ne) No. 10076, in which the allegations were not dismissed.

“At the first oral-argument hearing in this appellate instance, ... this Court dismissed the allegation of infringement under the doctrine of equivalents as an untimely allegation or defense. The reasons are as follows. ... The Appellant should naturally have anticipated from the outset that the conclusion on satisfaction or non-satisfaction of the limitations could change depending on the claim construction regarding ... and the manner of internal processing by the Appellee’s server. Accordingly, the Appellant had ample opportunity, at the issue-organizing stage in the court of first instance, to consider whether to allege infringement under the doctrine of equivalents even in the alternative and to make that allegation as necessary. (In light of the actual use of planned proceedings in patent infringement litigation, it is reasonable to view the matter in this way; and at least no objective circumstances preventing the Appellant from making the allegation are recognized.) Nevertheless, the Appellant did not make the allegation at the issue-organizing stage below, stated that there were ‘no further allegations or proof regarding infringement,’ and allowed the issue-organizing procedure to conclude. In these circumstances, the Appellant’s addition of an allegation of infringement under the doctrine of equivalents in this appellate instance, as stated above, was clearly untimely even though made before the first oral-argument hearing, and the Appellant is found to have acted intentionally or with gross negligence in that regard. ...”

Cf. Intellectual Property High Court, Heisei 27 (Ne) No. 10076 [Circular Table] <Presiding Judge Takabe>

* An allegation under the doctrine of equivalents made at the first appellate hearing was not dismissed as untimely (because the appeal was dismissed at the first hearing, meaning the patentee lost).

“The Appellant’s allegation above was set out in ... the preparatory brief stating the reasons for appeal, the Appellee also admitted or denied and responded to it, and it could be decided based on evidence already submitted. This Court then ... concluded oral argument at the first appellate oral-argument hearing. Accordingly, the Appellant’s allegation above cannot be found to ‘delay completion of the proceedings’ (Article 157(1) of the Code of Civil Procedure), and therefore should not be dismissed as untimely.”

Cf. Intellectual Property High Court, Heisei 26 (Ne) No. 10111 [Method for Mixing Granular Material and Removing Fine Powder] <Presiding Judge Takabe>

* An allegation under the doctrine of equivalents made at the first appellate hearing was held untimely, but was decided.

“In light of the course of the proceedings, including that the issues in the first instance concerned exclusively satisfaction of Limitations 2E and 1B; that the notice of appeal did not state reasons for appeal; that the statement of reasons for appeal did not include ... an allegation of infringement under the doctrine of equivalents or give notice of such an allegation; and that the Appellant’s first preparatory brief was submitted only five days before ... the first oral-argument hearing in this appellate instance, the Appellant’s allegation of infringement under the doctrine of equivalents must be regarded as untimely. However, because the Appellee also admitted or denied and responded to the allegation, the court will decide below whether infringement under the doctrine of equivalents is established.”

Cf. Intellectual Property High Court, Reiwa 4 (Ne) No. 10078 [Display Device Capable of One-Handed Support] <Presiding Judge Kanno>

* Three correction defenses were alleged in the court of first instance ⇒ a fourth correction defense was alleged in the statement of reasons for appeal; in light of the course of the proceedings, the court stated that it ordinarily would have to be dismissed as untimely. However, because a response had been made, the court decided it.

“Reviewing the course of the proceedings in the court of first instance, after the invalidity defense alleging that the patent at issue lacked novelty and inventive step was made at the first preparatory-hearing date (November 18, 2019) (Defendant’s Preparatory Brief No. 1), the Appellant submitted, by the third preparatory-hearing date (July 27, 2020), Plaintiff’s Preparatory Brief No. 2 concerning a correction defense based on the second correction. In conjunction with correction requests in the patent invalidation trial, it then submitted Plaintiff’s Preparatory Brief No. 5 dated March 3, 2021 and Plaintiff’s Preparatory Brief No. 6 dated May 27, 2021, setting out a correction defense based on the third correction (those briefs, including corrected versions, were stated at the fourth preparatory-hearing date (December 16, 2021)). The original judgment held that neither the correction defense based on the second correction nor that based on the third correction satisfied the correction requirements, and that the patent at issue should be invalidated in a patent invalidation trial. The Appellant then added, in the statement of reasons for appeal, a correction defense based on the fourth correction. In light of this course of proceedings below, the fourth correction constitutes an untimely allegation or defense, and the Appellant was grossly negligent in delaying its submission, so it would ordinarily have to be dismissed. However, the Appellee responded to the correction defense based on the fourth correction, including that the fourth correction does not satisfy the correction requirements. To that extent, it cannot be said that considering the defense would delay completion of the proceedings; therefore, the court will decide it below.”

2. Court decisions in which the allegation was not held untimely on appeal (because, for example, an invalidation decision had issued. ⇒ A similar effect may be expected if proceedings have reached advance notice of the trial decision.)

Intellectual Property High Court, Heisei 30 (Ne) No. 10033 [Aerosol Can Product] <Presiding Judge Otaka>

* The same ground for invalidity dismissed below was alleged in the statement of reasons for appeal. ⇒ Not dismissed.

“... The commissioned judge in the court of first instance granted the Appellee’s motion above and dismissed the Appellant’s allegations and evidence relating to the invalidity defense above. The Japan Patent Office, ... finding a violation of the support requirement ... and the existence of the ground for invalidity relating to the invalidity defense at issue, rendered a separate decision invalidating the patent. ...

The Appellant’s invalidity defense in this appellate instance is the same in substance as the allegation dismissed below as an untimely allegation or defense because it was submitted after the infringement phase had concluded and the damages phase had begun. However, the Appellant resubmitted it in this appellate instance after a separate decision invalidating the patent at issue had been rendered before conclusion of oral argument below, recognizing the existence of the ground for invalidity relating to the invalidity defense at issue and other matters. It is also recognized that the Appellant set out the invalidity defense at issue in the statement of reasons for appeal and alleged it from the outset of the appellate proceedings. Therefore, submission of the Appellant’s invalidity defense in this appellate instance cannot be said to have been untimely. In light of the course of the appellate proceedings, it is also not recognized that submission of the invalidity defense by the Appellant would delay completion of the proceedings. Accordingly, ... the court will not dismiss it as an untimely allegation or defense.”

Intellectual Property High Court, Reiwa 1 (Ne) No. 10066 [Information Management Program] <Presiding Judge Mori>

* The same ground for invalidity that was dismissed below. ⇒ Not dismissed.

In the court of first instance, an invalidity defense based on lack of novelty over the Otsu 14 invention had been dismissed as untimely.

⇒ On appeal, the first-instance Defendant did not allege that the invalidity defense based on lack of novelty, using the Otsu 14 invention as the primary reference, was untimely.

⇒ The patentee lost on reversal based on lack of novelty. (★ Three months earlier, the same Second Division of the Intellectual Property High Court had rendered a judgment in the action to rescind the trial decision, Reiwa 1 (Gyo-Ke) No. 10109, and had upheld the invalidation decision based on lack of novelty.)

3. Other Cases

Intellectual Property High Court, Heisei 28 (Ne) No. 10100 [Electric Fishing Reel] <Presiding Judge Takabe>

* A correction defense alleged after the court of first instance disclosed its view that the patent was invalid had been dismissed as untimely.

⇒ When the correction defense dismissed below was alleged in the statement of reasons for appeal, it was not dismissed as untimely.

“The Appellant did not submit a correction defense in the court of first instance before conclusion of the preparatory proceedings, but first alleged it in a preparatory brief submitted after those proceedings had concluded, and it was therefore dismissed by the court of first instance as untimely. (The correction alleged below was identical to the correction in this appellate instance, except for the presence or absence of the words ‘with one hand.’) After the original judgment was rendered on September 8, 2016, the Appellant filed an appeal on September 21. On September 30, advance notice of the trial decision was issued in each patent invalidation trial concerning Patents 1 to 3 at issue. The Appellant therefore set out the correction defense in the statement of reasons for appeal submitted on November 10 of that year. In light of the course of proceedings in the court of first instance and this court described above, it may be said that it would have been desirable to make the correction defense earlier. Nevertheless, because the Appellant, after the original judgment was rendered and advance notice of the trial decision was issued, set out the correction defense in detail in the statement of reasons for appeal and promptly submitted that allegation in this appellate instance, it cannot be said that the Appellant’s submission of the correction defense was untimely. In addition, in light of the content of the correction defense at issue, its submission is not recognized as delaying completion of the proceedings. The court therefore will not dismiss the Appellant’s correction defense as untimely.”

Intellectual Property High Court (Grand Panel), Heisei 17 (Ne) No. 10040 [Ichitaro Case]

“Whether an allegation or defense should be dismissed under Article 157 of the Code of Civil Procedure as untimely must be determined, in accordance with the specific progress of the litigation, based on whether there were objective circumstances under which it could have been expected to be submitted earlier than it was. Each of the circumstances alleged by the Appellant merely concerns matters unrelated to the specific progress of this litigation concerning the Appellee’s claim.

In the court of first instance, only slightly more than two months elapsed from the first oral-argument hearing until oral argument was concluded at the third hearing, and less than four months elapsed even from filing of the action. Thus, the first-instance proceedings were conducted extremely quickly over a short period. Except for certain supplemental portions, the Appellant’s new allegations and proof in this appellate instance concerning satisfaction of the limitations and the grounds for invalidity of the patent at issue were basically made together with the statement of the reasons for appeal at the first oral-argument hearing in this appellate instance, and were submitted at the outset of the appellate proceedings. Turning to the substance of the additional allegations and proof above, the part concerning satisfaction of the limitations merely supplemented, from a somewhat different angle, the Appellant’s allegation already made below concerning satisfaction of the limitation (the meaning of ‘icon’). The part concerning the grounds for invalidity of the patent at issue was based on newly added documents, but each was an English-language document distributed abroad and had been distributed before the filing date of the patent at issue, which was nearly fifteen years before this action was filed. It was therefore unavoidable that investigating and searching for such publicly known documents would require a certain amount of time. Considering all these circumstances together, the Appellant’s additional allegations and proof newly submitted in this appellate instance concerning satisfaction of the limitations and the grounds for invalidity of the patent at issue cannot be said to have been untimely.”

Intellectual Property High Court, Heisei 30 (Ne) No. 10044 [Optical Information Reading Device] <Presiding Judge Otaka>

* A correction defense made four days before the first appellate hearing was dismissed as untimely.

“A correction defense to an invalidity defense should originally be alleged at an appropriate time in the court of first instance. Moreover, although the Appellant could have alleged the correction defense in this appellate instance no later than the deadline for submitting the statement of reasons for appeal, it did not do so and first submitted a preparatory brief setting out the correction defense at issue only four days before the first oral-argument hearing. The correction defense at issue should therefore be regarded as an untimely allegation or defense submitted due at least to the Appellant’s gross negligence.”

Intellectual Property High Court, Heisei 30 (Ne) No. 10031 [Lower-Limb Garment] <Presiding Judge Takabe>

* An invalidity defense made after the deadline for submitting the statement of reasons for appeal was dismissed as untimely.

“... More than one month after ... the deadline for submitting their statement of reasons for appeal, ... the first-instance Defendants submitted ... ‘Statement of Reasons for Appeal (3).’ ... The addition of the invalidity defense and publicly known-art defense should be dismissed as an untimely allegation or defense under Article 157(1) of the Code of Civil Procedure. ...

In addition to the circumstances above, ... the grounds for invalidity sought to be added in this appellate instance ... number at least six. Addition on appeal of an invalidity defense based on such a large number of grounds for invalidity must be regarded as having been submitted for the purpose of unduly delaying the proceedings. Accordingly, the additional invalidity-defense allegations should also be dismissed under Article 104-3(2) of the Patent Act.”

Intellectual Property High Court, Reiwa 3 (Ne) No. 10084 [Printed Retroreflective Sheet] <Presiding Judge Miyasaka>

* A new invalidity defense at the first appellate hearing was dismissed as untimely.

* It is unclear from the judgment whether it was alleged in the statement of reasons for appeal.

Allegations (i) and (ii) of lack of inventive step first made on appeal were dismissed as untimely!!

·        The primary reference alleged below + other secondary references

·        An allegation changing the construction of the primary reference alleged below (the determination of the primary-reference invention)

Intellectual Property High Court, Reiwa 4 (Ne) No. 10008 [Information Providing Device] <Presiding Judge Otaka>

* Correction defense alleged after conclusion of written preparatory proceedings on appeal ⇒ dismissed as untimely

The court of first instance found lack of novelty, but the patent was maintained in the JPO invalidation trial. The patentee therefore did not allege a correction defense from the outset of the appeal and did not do so during the appellate issue-organizing procedure before conclusion of the written preparatory proceedings, but alleged it after those proceedings had concluded. ⇒ Dismissed as untimely. <Because the sequence was a decision maintaining the patent followed by the original judgment, the correction defense should have been asserted in the alternative.> The alleged infringer changed its comparison with the primary reference so as to cover the decisive difference on which the decision maintaining the patent had found the patent maintainable, and the original judgment found lack of novelty.

Intellectual Property High Court, Reiwa 3 (Ne) No. 10094 [... Work Glove] <Presiding Judge Kanno>

* A correction defense alleged after the court of first instance disclosed its view that the patent was invalid had been dismissed below as untimely. ⇒ Although the correction defense dismissed below was alleged in the statement of reasons for appeal, it was again dismissed as untimely.

“The Appellant alleges in the statement of reasons for appeal that the invention at issue should be corrected (a correction defense), but this Court dismissed the allegation as an untimely allegation or defense. The reasons are as follows. According to the record, the correction defense was made after the court of first instance disclosed its view that the patent at issue was invalid and was therefore dismissed below as an untimely allegation or defense. No circumstances are found showing that it could not have been alleged at an appropriate time in the court of first instance. The above allegation in this appellate instance is therefore plainly untimely, the Appellant was at least grossly negligent in that regard, and permitting this allegation or defense would plainly cause substantial delay in completion of these proceedings.”

Intellectual Property High Court, Reiwa 2 (Ne) No. 10044 [Fluid Supply Device and ... Program] <Presiding Judge Tsuruoka>

* The invalidity allegation was made after disclosure of the court of first instance’s preliminary view, but there was a problem with the organization of allegations below (whether there was a judicial admission).

⇒ Infringement and invalidity cannot be considered separately. — Not dismissed.

“Regarding whether the allegations constituted ‘untimely allegations or defenses’: Invalidity Allegations A, B, and D were made after disclosure of the court of first instance’s preliminary view on infringement and were therefore treated below as untimely. However, as already noted in the section concerning infringement, the organization of allegations in the court of first instance concerning satisfaction of Limitation 1C1 (Non-Infringement Allegation (iv)) and satisfaction of Limitations 1A, 1C, 1F3, and 1F4 (Non-Infringement Allegation (v)) was deficient in that issues that should have been treated as disputed were treated as undisputed. The necessity and timing of allegations concerning invalidity cannot be considered separately from the development of allegations and proof on infringement. Therefore, in this case, where further allegations and proof should originally have been presented on infringement, it is not appropriate to characterize the invalidity allegations as untimely merely because they were made after disclosure of the court of first instance’s preliminary view. The invalidity allegations concerning the above grounds for invalidity were also made promptly after appeal. Accordingly, neither from the perspective of viewing the proceedings below and on appeal as a whole nor from the perspective focused on the appellate proceedings can the first-instance Defendant’s invalidity allegations above be characterized as untimely.”

End

(Appellant) FLORe Co., Ltd.

(Appellee) MIC Co., Ltd.

[Patent ★] A case in which the configuration, etc. of the counterpart subcombination was held not to be a matter specifying the invention. ⇒ No inventive step — Intellectual Property High Court, July 10, 2025; Reiwa 6 (Ne) No. 10012 [R Badge, Receiving Device] <Presiding Judge Hibiki Shimizu> —

Original Article URL: https://www.nakapat.gr.jp/ja/legal_updates_jp/%e3%80%90%e7%89%b9%e8%a8%b1%e2%98%85%e3%80%91%e3%82%b5%e3%83%96%e3%82%b3%e3%83%b3%e3%83%93%e3%83%8d%e3%83%bc%e3%82%b7%e3%83%a7%e3%83%b3%e3%81%ae%e7%9b%b8%e6%89%8b%e6%96%b9%e3%81%ae%e6%a7%8b%e6%88%90/

(1) Criteria for Determining Matters Specifying the Invention in a Subcombination Claim

This judgment has important practical significance because, in determining the gist of a subcombination invention (an invention of a device constituting part of a multifunctional system), it provided guidance on when matters concerning the “other subcombination (counterpart device)” recited in the claim are taken into account as matters specifying the invention (or are ignored).

This judgment confirmed the framework that a description concerning the counterpart device of a subcombination is excluded (ignored) in determining the gist of the invention “where it is a matter specifying only that counterpart device and does not specify the structure, function, or the like of the subcombination under the claim (the claimed device itself).”

That is, even if the claim wording merely includes a limitation concerning the counterpart device (for example, a high-function mobile phone, an application-download function, or the like), it is excluded (ignored) from determination of the gist of the invention at issue, which is the premise for assessing novelty and inventive step, if it does not affect the structure, function, or the like of the device under that claim (for example, the receiving device) itself (= if it has no meaning in specifying that device).

(2) Whether the Feature Is Reflected in the “Structure, Function, or the Like” (Comparison with Related Court Decisions)

Viewing this judgment together with the [Related Court Decisions] below (affirmative and negative examples), the dividing line for whether a subcombination claim is recognized as stating a matter specifying the invention may be said to be whether the feature of the counterpart device of the subcombination specifies (limits) the “structure, function, or the like” of the claimed device itself.

(i) Cases in Which the Matter Was Not Recognized as a Matter Specifying the Invention (This Judgment, the “Information Processing Device” Judgment, the “Lock and Key” Judgment, etc.)

In this judgment, whether the mobile phone (the counterpart) had “means for downloading an application and adding a function,” a “credit-card function,” or the like caused no difference, from the perspective of the receiving device, in the basic operation of receiving transmitted identification information (ID). In other words, where only the “internal circumstances” of the counterpart device or the “semantic content of the information” handled by it are described, and the signal format or physical shape at the interface between the two devices does not change, that description is excluded from the gist of the invention.

Similarly, the “Information Processing Device” judgment discussed below held that the “basis (logic)” on which a server extracts information does not specify the configuration of the party receiving a notification. The “Key” judgment likewise held that the internal structure of the lock (the tumbler mechanism) did not specify anything other than the physical shape (recesses) of the key.

(ii) Cases in Which the Matter Was Recognized as a Matter Specifying the Invention (the “Waste Storage Device” Judgment, the “Liquid Container” Judgment, etc.)

By contrast, in the “Waste Storage Device” judgment discussed below, the existence of the rotating device directly determined the engagement structure and the manner in which the cassette was supported. In the “Liquid Container” judgment, the light-emitting portion of the ink container and the light-receiving portion of the printer body cooperated as a system, and one directly controlled or detected the operation of the other.

Thus, where the configuration of the counterpart device of a subcombination “necessarily defines” the configuration of the claimed device itself (where there is physical fitting or an inseparable interaction as a system), it is recognized as a matter specifying the invention.

(3) Practical Guidance

In light of this judgment, in drafting a subcombination claim, merely stating “(the claimed device) communicates with (a counterpart device) having the configuration ...” entails a risk that the matter will not be regarded as specifying the invention because it does not specify (limit) the structure, function, or the like of the claimed device itself.

For effective acquisition and enforcement of patent rights, it is useful to claim the “reflection” in the structure and function of the claimed device itself corresponding to the characteristic configuration of the counterpart device, such as “what signal processing is performed (decoding, authentication, etc.),” “what physical shape is required (fitting, arrangement, etc.),” and “how timing control changes.”

Going further, where both the claimed device and the counterpart device are manufactured and sold separately, as with a printer and an ink cartridge, one patent-application strategy would be to design them so that each device’s structure and function are specified (limited) by the other device, allowing subcombination claims to be patented for each, and to consider some technical significance of that structure and function and describe it in the specification.

[Patent ★] A case in which the description in the detailed description of the invention concerning the derivation method for a parameter in the claims was erroneous, the allegation that the description contained an error was also rejected, and the support requirement was denied — Tokyo District Court, Reiwa 5 (Wa) No. 70114 [Brake Control Device for a Motorcycle] <Presiding Judge Shibata> — (Same holding on appeal: Intellectual Property High Court, Reiwa 6 (Ne) No. 10038 <Presiding Judge Honda>)

Original Article URL: https://www.nakapat.gr.jp/ja/legal_updates_jp/%e3%80%90%e7%89%b9%e8%a8%b1%e2%98%85%e3%80%91%e8%ab%8b%e6%b1%82%e9%a0%85%e4%b8%ad%e3%81%ae%e3%83%91%e3%83%a9%e3%83%a1%e3%83%bc%e3%82%bf%e3%81%ae%e5%b0%8e%e5%87%ba%e6%96%b9%e6%b3%95%e3%81%ab%e9%96%a2/

◆ Judgment Text

[Summary of This Judgment and Some Observations]

1. Claims (Claim 1)

1A. A brake control device used in a vehicle that is a so-called motorcycle and has at least two wheels,1B. the brake control device being composed of a vehicle-speed detection device, a vehicle-behavior detection device, an ECU (control unit), and a braking device;1C. the vehicle-speed detection device being a wheel-speed sensor and obtaining vehicle traveling speed from a detected signal;1D. the vehicle-behavior detection device being a sensor that detects states in left and right roll directions and left and right lateral directions relative to the traveling direction, and obtaining bank angular velocity (Ψ) and lateral acceleration (Gken) from the detected signal;1E. the ECU performing calculation of detected signals, calculation of a target braking force according to vehicle behavior, and issuance of a braking command to the braking device;1F. as the signal calculation, at least having a method of deriving corrected lateral G (Ghosei), obtained by performing a calculation that removes the effect of roll on an acceleration sensor that detects lateral acceleration;1G1. the braking device being a mechanism that decelerates the vehicle in response to a braking command from the ECU;1G2. having means for engine braking and for increasing and decreasing pressure on a brake disk;1H. in the vehicle, vehicle behavior being determined based on a combination of the bank angular velocity (Ψ) and the corrected lateral G (Ghosei); and1I. a target braking force according to the vehicle behavior being determined, braking being performed at the wheels, and behavior in the roll direction being suppressed by braking, the vehicle brake control device being characterized thereby.

2. This Judgment

(1) Summary of This Judgment

This judgment held that the description in the detailed description of the invention concerning the “method of deriving ... lateral G,” a parameter in the claims, was erroneous, rejected the Plaintiff’s (patentee’s) allegation that the description contained an error, and denied compliance with the support requirement.

Paragraph [0073] of the specification states the formula “Ghosei = Gken − (Ψ·Rhsen)” (Formula A). The judgment pointed out that, although Ψ is understood as bank angular velocity and Rhsen as the height of the sensor position, this formula subtracts velocity from acceleration, so the dimensions do not agree and the formula has no meaning in physics. In other words, because Formula A is physically invalid, the court held that a person skilled in the art could not actually use it to derive corrected lateral G.

The Plaintiff alleged that Formula A contained an error and should have been Formula A′, in which Ψ is construed as bank angular acceleration. The judgment held, however, that because the specification at issue consistently used bank angular velocity Ψ throughout, and correcting it to acceleration would create portions inconsistent with other descriptions and render them incomprehensible, it could not be uniquely determined that the description contained that error; therefore, the correction alleged by the Plaintiff could not be assumed.

“Although a person skilled in the art can understand that there is some error because the terms in Formula A have different dimensions, the method of resolving the problem of different dimensions is not limited to the correction alleged by the Plaintiff, and there is insufficient evidence to establish that, from the content of Formula A and other matters, a person skilled in the art would understand that there is no method other than correction to Formula A′ for resolving the problem of different dimensions. Further, if the portions of the specification at issue concerning Formula A are corrected so as to be consistent with the correction of Formula A, it is recognized that the purport of descriptions that previously presented no problem becomes incomprehensible or inconsistent. In light of these circumstances, it cannot be said that the specification at issue would be understood as showing that Formula A is an erroneous description of Formula A′. Accordingly, the Plaintiff’s allegation, which is premised on Formula A being understood as an erroneous description of Formula A′, lacks its premise. ... None of the inventions at issue can be said to be an invention described in the specification at issue, and each fails to satisfy the support requirement.”

(2) Excerpts from This Judgment Concerning Violation of the Support Requirement

[Excerpt omitted.]

(3) Supplemental Allegations in the Appellate Judgment, Intellectual Property High Court, Reiwa 6 (Ne) No. 10038 <Presiding Judge Honda>

“Focusing on the ‘return angle (ρ)’ alleged by the Appellant, the detailed description of the invention states: ‘Hybrid sensor 20 compactly incorporates acceleration sensor 21 for detecting acceleration in the traveling direction, bank angular-velocity sensor 22 for detecting roll velocity in the traveling direction, and acceleration sensor 23 for detecting acceleration in the roll direction, and is arranged near the combined center of gravity including the rider’s weight. In hybrid sensor 20, both the theoretical bank angle (Φ) occurring during banking and the return angle (ρ) arising from a change in the tire’s load-contact point due to banking are present at the same time. (See Figure 8 as well.) A deviation arises between the force generated at sensor 20 (vector A) and the force actually generated (vector A′). Analysis showed that accurate lateral G could be detected from this deviation angle (return angle (ρ)).’ ([0060]); and ‘The formula can be transformed to Gken = g·cos Φ·tan ρ − Ψ·Rhen, yielding a simple formula. Here, Φ represents the theoretical bank angle of the vehicle, which is also the theoretical inclination angle, and is an angle obtained by time-integrating angular velocity Ψ (rad/sec) detected by bank angular-velocity sensor 22; ρ represents the bank-return angle; and R represents the height at which G sensor #23 is installed on the actual vehicle (Figure 8 bhsen).’ ([0063]). However, these descriptions merely show that, as a result of analyzing ‘lateral acceleration (Gken),’ it can be expressed by a formula using bank angle Φ, bank-return angle ρ, bank angular velocity Ψ, and the like. By contrast, although the claims specify that the ‘lateral acceleration (Gken)’ of Invention 1 at issue is detected by an ‘acceleration sensor that detects lateral acceleration,’ they do not specify that it is derived from the calculation Gken = g·cos Φ·tan ρ − Ψ·Rhen based on bank angle Φ, bank-return angle ρ, bank angular velocity Ψ, and Rhen. The Appellant’s allegation therefore lacks its premise.Further, if the ‘lateral acceleration (Gken)’ detected by the ‘acceleration sensor that detects lateral acceleration’ were accurate lateral G, detection of accurate lateral G would be an inherent function of the ‘acceleration sensor that detects lateral acceleration’ and would be unrelated to detection of an accurate bank angle. That would also contradict the problem alleged by the Appellant, namely, ‘(i) enabling detection of “accurate lateral G” during travel by “associating the lateral G sensor and angular-velocity sensor during travel” and “detecting an accurate bank angle.”’ The Appellant’s allegation is therefore an independent view inconsistent with the specification at issue and cannot be accepted.”

3. Some Observations

The support requirement is determined by examining “whether the invention recited in the claims is an invention described in the detailed description of the invention and falls within the scope in which a person skilled in the art can recognize, based on the detailed description, that the problem of the invention can be solved, or, even without such description or suggestion, within the scope in which a person skilled in the art can recognize, in light of technical common knowledge as of the filing date, that the problem of the invention can be solved.”

Here, unless a specific challenge is raised, the description in the detailed description of the invention is provisionally treated as correct, and compliance with the support requirement is found on the basis that a person skilled in the art can recognize that the problem of the invention can be solved.

By contrast, where it is alleged that a mechanism, mode of action, example, comparative example, or the like described in the detailed description is erroneous, or that it does not extend across the entire claimed scope, the burden of proof falls on the patent applicant or patentee. There are several court decisions in which failure to prove the matter resulted in denial of the support requirement, enablement requirement, or qualification as an invention (listed below). With respect to inventive step, the burden of proof rests on the party alleging invalidity. However, regardless of whether the independent-requirement theory or the overall-consideration theory is adopted, where a party seeks to reverse an unfavorable obviousness determination by relying on an unpredictable remarkable effect, the burden of proof falls on the patent applicant or patentee. There are also court decisions in which an effect stated in the specification was found erroneous, the unpredictable remarkable effect was denied, and inventive step was denied (listed below).

An allegation that a description in the detailed description is scientifically erroneous (contrary to a law of nature) is often proved by replication testing, publicly known documents (including documents after the filing date), expert opinions, and the like.

[Related Court Decisions (Cases in Which Patentability Requirements Were Denied Because a Description in the Detailed Description of the Invention Was Erroneous)]

1. Court Decisions Denying the Support Requirement or Enablement Requirement

(1) Intellectual Property High Court, Heisei 17 (Gyo-Ke) No. 10645 [Method for Inspecting Sealed Packages] <Presiding Judge Tsukahara>

“The trial decision’s determination regarding violations of Article 36(4) and (6) of the Patent Act ...

Paragraph [0008] states: ‘Accordingly, when electrode 4 from the voltage-output terminal of high-voltage power supply 6 is brought into contact with or close to side portion 31 of sealed package 3, electrically conductive contents 1 in sealed package 3 are charged by the negative or positive potential of the high voltage (0.6 kV to 30 kV) applied to electrode 4, and negative (−) ions or positive (+) ions are generated.’ Figure 1 depicts only negative (−) ions as if generated throughout the contents. However, it is unclear how these ‘negative (−) ions or positive (+) ions’ are generated, and a person skilled in the art cannot readily carry this out. Specifically, if there is no closed circuit and no displacement current flows, or if charge does not move along side portion 31 of sealed package 3, it is unclear from where the charge for generating negative (−) ions or positive (+) ions is supplied. If negative (−) ions or positive (+) ions are generated in the contents without charge being supplied from outside the contents, this violates the law of conservation of charge.

...

Court’s Determination

...

As in the invention of the application, “bringing ... a single electrode 4 into contact with or close to side portion 31 of sealed package 3 ... and charging contents 1 in sealed package 3 through electrically insulating coating 2” violates the law of conservation of charge and cannot be realized by anyone. Such an invention must therefore be regarded as unclear, and the detailed description of the invention in the specification of the application cannot be said to describe the invention clearly and sufficiently to such an extent that a person skilled in the art can carry it out. ...”

(2) Intellectual Property High Court, Reiwa 3 (Gyo-Ke) No. 10094 [PCSK9 (Second Litigation)] <Presiding Judge Kanno>

* Successfully proved that the technical significance of the invention at issue (as alleged by the patentee) did not hold true!!

⇒ Support requirement not satisfied.

“... The technical significance of the invention at issue lies in specifying that an antibody competing with the 31H4 antibody has the functional characteristic of being an antibody that neutralizes binding between PCSK9 and the LDLR protein by the same mechanism as the 31H4 antibody. ... In the absence of an explanation of a mechanism supporting that antibodies of this kind in general exhibit functional characteristics similar to the 31H4 antibody, it cannot be said that ‘an antibody that competes with the 31H4 antibody for binding to PCSK9’ in the invention at issue ‘exhibits functional characteristics similar’ to the 31H4 antibody. ...

A person skilled in the art would find it difficult to understand that an antibody competing with the 31H4 antibody is a binding-neutralizing antibody.

... Dr. [name omitted] expressed the opinion that “it is certainly erroneous to say that all antibodies competing with the 31H4 antibody ... would have the effect of neutralizing binding.” ... According to the foregoing, neither Invention 1 nor Invention 5 at issue is recognized as complying with the support requirement.”

(3) Intellectual Property High Court, Heisei 28 (Gyo-Ke) No. 10064 [Polyvinyl-Alcohol-Based Polymer Film] <Presiding Judge Mori>

* It could not be recognized that the problem could be solved by every substance falling within the invention, regardless of type.

* Although the detailed description stated, “The inventors ... found that the above objective is achieved by a PVA-based polymer film having a pH within a certain range when dissolved in water ...,” the court held that the mechanism could not be recognized.

“... Even when a person skilled in the art encounters the disclosure that, in an example adopting the lauric-acid diethanolamide mixture at issue as the surfactant, setting the numerical range for the content of the nonionic surfactant at ‘0.3 parts by mass’ and setting the numerical range for the pH of the PVA-based polymer film at ‘3.6 to 6.2’ produced an effect of suppressing yellowing in a 30°C long-term storage test and an 80°C short-term storage test, it cannot be recognized that the person skilled in the art could understand that, for any ‘nonionic surfactant (B)’ of Corrected Invention 1 at issue regardless of its type, setting the numerical range for the content of the nonionic surfactant at ‘0.001 to 1 part by mass’ and setting the numerical range for the pH of the PVA-based polymer film at ‘2.0 to 6.8’ would solve the problem of Corrected Invention 1 at issue, namely, providing a PVA-based polymer film capable of suppressing yellowing during long-term storage at room temperature. Accordingly, Corrected Invention 1 at issue exceeds the scope described in the corrected specification at issue in such a manner that a person skilled in the art having the technical common knowledge as of the filing date could recognize that the problem of Corrected Invention 1 at issue can be solved, and cannot be said to comply with the support requirement prescribed in Article 36(6)(i) of the Patent Act.”

(4) Intellectual Property High Court, Heisei 27 (Gyo-Ke) No. 10201 [Beverage in a Container] <Presiding Judge Shimizu>

* The problem was specifically identified ⇒ Support requirement not satisfied.

The mechanism for solving the problem could not be read from the examples.

* Although the detailed description stated, “The inventors found that a beverage whose appearance is maintained with little change in color tone even after long-term storage is obtained by causing specified amounts of alcohols to be contained together with isoquercitrin and its sugar adducts and further adjusting the pH within a specified range,” the court held that a person skilled in the art could not recognize that mechanism.

“... It cannot be said that a person skilled in the art would understand that, because isoquercitrin and its sugar adducts were blended in addition to L-ascorbic acid under the conditions of the examples and comparative examples in the specification at issue, browning of L-ascorbic acid did not occur (and therefore that changes in color tone caused by browning of L-ascorbic acid were not included in the changes in color tone of the beverages in the examples and comparative examples of the specification at issue). ...

According to the foregoing, in light of the detailed description of the invention in the specification at issue and the technical common knowledge as of the filing date, it cannot be said that a person skilled in the art could recognize that Corrected Inventions 9 to 16 at issue solve the problem of providing a method for suppressing a change in the color tone of a beverage in a container by suppressing changes in the color tone of isoquercitrin and its sugar adducts contained in that beverage.”

(5) Tokyo High Court, Heisei 12 (Gyo-Ke) No. 176 [Continuous Forming and Trimming Method]

* Burden of proof where the specification contains no description

⇒ The court found a description deficiency because the specification’s disclosure was insufficient.

“When the issue is whether a description omitted from the specification is well-known art that requires no explanation to a person skilled in the art, the party asserting that proposition (the applicant) must fully present allegations and proof sufficient for the court to make that finding; unless such proof is presented, the court will treat the matter as a ‘deficiency in the description of the specification.’”

“The detailed description of the invention must describe the above configuration to such an extent that a person skilled in the art can readily carry it out. ... However, where the matter stated in the claims is technology of such a degree that a person skilled in the art, merely upon encountering the wording, can readily carry it out without any further particular explanation, it is a reasonable construction, in light of the purpose of the above provision, that exceptionally it is not always necessary to describe that explanation in the specification. Nevertheless, if, in an action to rescind a trial decision, it becomes disputed whether the matter stated in the claims is technology of the above degree, then unless the party asserting that it is technology of that degree presents allegations and proof sufficient for even a court, which is not a person skilled in the art, to make that finding, the court has no choice but to treat the specification as deficient. ...”

(6) Intellectual Property High Court, Heisei 25 (Gyo-Ke) No. 10250 [Polyimide Film]

* The applicant bears the burden of proof regarding the enablement requirement.

⇒ Concerning the enablement requirement: “The applicant originally bears the burden of allegation and proof regarding enablement (technical correctness). Although the specification at issue lacks specific guidance for reducing the coefficient of thermal expansion, the Defendant (applicant) has presented no specific proof.”

“... The specification at issue provides no specific guidance whatsoever on how to control solvent content, temperature conditions, stretching speed, and the like so as to reduce the coefficient of thermal expansion to the level of Invention 9 at issue. Although the burden of allegation and proof regarding the enablement requirement originally rests on the Defendant, which is the applicant, the Defendant makes no specific allegation or proof that a two-component ODA/BPDA polyimide film satisfying the range of coefficients of thermal expansion in Invention 9 at issue can be manufactured. ...”

2. Court Decision Denying Qualification as an Invention

(1) Tokyo High Court, Heisei 15 (Gyo-Ke) No. 166 [... Topical Agent for Treating Atopic Dermatitis] <Presiding Judge Tsukahara>

“Although the specification at issue ... describes the results of the clinical trial at issue, it must be said that there is insufficient evidence to establish (i) that the clinical trial at issue was actually conducted, (ii) that the drugs used in the clinical trial were in fact ... the topical ointment and topical cream, and (iii) that the results of the clinical trial were accurately stated in the specification at issue. Further, even considering the various points alleged by the Defendant other than the clinical trial at issue, there is insufficient evidence to establish that the drug at issue has a therapeutic effect. It therefore cannot be inferred that the technical content (technical means) of the invention at issue can produce the intended technical effect. The subject matter asserted to be the invention at issue is thus incomplete as an invention, does not constitute an ‘invention’ under the introductory clause of Article 29(1) of the Patent Act, and cannot be patented. ...”

3. Court Decision Denying Inventive Step (Unlike the First Judgment, the Unpredictable Remarkable Effect Was Denied)

(1) Intellectual Property High Court, Heisei 24 (Gyo-Ke) No. 10419 [Carvedilol (Second Judgment)] <Presiding Judge Shitara>

⇒ (Although the holding concerns a remarkable effect for inventive-step purposes,) a case in which the effect stated in the examples in the specification was denied by post-filing documents and other evidence. No inventive step.

“As explained above, the results of the U.S. carvedilol study had low reliability due to the short treatment period and other factors. Accordingly, even though the study was discontinued because an advantageous effect over placebo was confirmed in the U.S. carvedilol study, it cannot be said that the invention at issue has a remarkable effect.”

(Plaintiff) Individual

(Defendant) Yamaha Motor Co., Ltd.

Reiwa 7 (Ne) No. 10001 “Patent Royalties Relating to a Fulvic Acid Production Method” <Presiding Judge Honda>

Original Article URL: https://www.nakapat.gr.jp/ja/legal_updates_jp/%e4%bb%a4%e5%92%8c7%e5%b9%b4%e3%83%8d10001%e3%80%8e%e3%83%95%e3%83%ab%e3%83%9c%e9%85%b8%e8%a3%bd%e9%80%a0%e6%96%b9%e6%b3%95%e9%96%a2%e9%80%a3%e7%89%b9%e8%a8%b1%e4%bd%bf%e7%94%a8%e6%96%99%e3%80%8f/

Reiwa 7 (Ne) No. 10001 “Patent Royalties Relating to a Fulvic Acid Production Method” <Presiding Judge Honda>

⇒ The Appellee’s termination was valid.

The purpose of Article 7 of the agreement is merely to serve as a cautionary provision stating that the three related companies recognize that “among the patents and patent applications covered by the exclusive patent-license agreement executed today, there may be defects that could prevent preservation of registration at the registration authority in the future.”⇒ It is a provision recognizing the risk of a future unforeseen event, namely, that registration “may not be obtained / may be refused”; it is not a provision exempting liability for a breach of obligation such as the fact that, as of execution of the agreement, authority to grant a license for Patent Rights 1 and 3 at issue had not been obtained from the co-owners (that is, the obligation to grant the license was impossible to perform from the outset).The principal purpose of the agreement at issue was “assignment of an exclusive patent license + sublicense of a non-exclusive license.” It would be unnatural to derive from the abstract wording of Article 7 an exemption clause broad enough to mean that even a failure to perform this principal obligation “does not constitute a breach of obligation.”

⇒ The “exemption” effect that the Appellant attempted to read into Article 7 was denied.

https://www.courts.go.jp/assets/hanrei/hanrei-pdf-94268.pdf

Reiwa 5 (Gyo-Ke) No. 10147 [RNA-Dependent Targeted DNA Modification] <Presiding Judge Hibiki Shimizu>

Original Article URL: https://www.nakapat.gr.jp/ja/legal_updates_jp/%e4%bb%a4%e5%92%8c%ef%bc%95%e5%b9%b4%e8%a1%8c%e3%82%b110147%e3%80%90%ef%bd%92%ef%bd%8e%ef%bd%81%e4%be%9d%e5%ad%98%e6%80%a7%e6%a8%99%e7%9a%84%ef%bd%84%ef%bd%8e%ef%bd%81%e4%bf%ae%e9%a3%be%e3%80%91/

Reiwa 5 (Gyo-Ke) No. 10147 [RNA-Dependent Targeted DNA Modification] <Presiding Judge Hibiki Shimizu>

* Based on the descriptions in the first-application documents as a whole and the technical common knowledge at the filing date, the subject matter should be regarded as having been disclosed in substance; the invention at issue was therefore entitled, under Article 4A of the Paris Convention, to the benefit of the priority claim based on the first application.

(Excerpt from the Holding)

The Plaintiff alleges that PAM sequences were not well-known art. However, as of the priority date at issue, many documents stated that a PAM sequence was required for DNA cleavage using the CRISPR/Cas system of bacteria (prokaryotes), and this was well known to persons skilled in the art. The documents and the consistent first-application documents also made clear that PAM sequences differed depending on the type of Cas9 and identified their specific sequences. There were no circumstances suggesting that it was ordinarily considered that PAM sequences were unnecessary in eukaryotic cells. Accordingly, as of the priority date at issue, it was technical common knowledge among persons skilled in the art that, when DNA is cleaved in a eukaryotic cell using the CRISPR/Cas9 system, a PAM sequence must also be present downstream of the target DNA sequence.

The Plaintiff alleges that NLS and codon optimization were not well-known art. However, as of the priority date at issue, although NLS and codon optimization were not indispensable technologies in a CRISPR/Cas9 system, implementation of each had been reported in many documents, and each was well-known technology applicable to a CRISPR/Cas9 system.

With respect to application to eukaryotic cells, if it is recognized that the invention at issue could be carried out based on the descriptions in the first-application documents without requiring undue experimentation, the disclosure is sufficient. The emails and other materials identified by the Plaintiff merely reflect exchanges of views on hypothetical possibilities or concerns in the course of ordinary experimentation; those materials alone make it difficult to recognize the existence of a barrier that would require undue experimentation by a person skilled in the art. Rather, after the inventors published the CRISPR/Cas9 system relating to the first priority application in a publication (Otsu 12, June 28, 2012), many researchers reported, during the short period from October 2012 to January 2013, that the CRISPR/Cas9 system had been applied to eukaryotic cells and had enabled genome editing. This shows that a person skilled in the art could carry out the invention at issue based on the descriptions in the first-application documents without undue experimentation.

hanrei-pdf-94292.pdf

Tokyo District Court, Reiwa 7 (Wa) No. 70003 [Smoking-Article Cartridge] <Presiding Judge Shibuya>

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%8c7%e5%b9%b4%e3%83%af70003%e3%80%90%e5%96%ab%e7%85%99%e5%85%b7%e7%94%a8%e3%82%ab%e3%83%bc%e3%83%88%e3%83%aa%e3%83%83%e3%82%b8%e3%80%91%ef%bc%9c/

Tokyo District Court, Reiwa 7 (Wa) No. 70003 [Smoking-Article Cartridge] <Presiding Judge Shibuya>

* The right to claim damages was waived during the litigation.⇒ Although customs proceedings concerning an injunction remained, an action seeking a declaration only that the right to claim damages did not exist lacked an interest in immediate determination.

(Excerpt from the Holding)It is recognized that, on February 27, 2025, after the actions at issue were filed, the Defendant notified the Plaintiffs that it waived the right to claim damages at issue and would not exercise that right; and, at the second oral-argument hearing in these cases held on April 23 of that year, stated that it waived the right to claim damages at issue and would not allege its withdrawal, revocation, or invalidity, whether within or outside the litigation.Accordingly, the Defendant admits that it has no right to claim damages against the Plaintiffs. There is no present dispute between the parties on that point, nor can it be said that there is uncertainty or danger concerning the Plaintiffs’ rights or legal status. An interest in immediate determination is therefore not recognized.

Each action at issue seeks a declaration that the right to claim damages at issue does not exist. Even if a judgment granting that relief became final, the determination in the reasons concerning whether the patent right at issue was infringed would not become final with res judicata effect; therefore, the Defendant would not be prevented from exercising against the Plaintiffs a right to seek an injunction based on infringement of the patent right at issue or a claim involved in separate litigation. Rather, to dispute the Defendant’s right to seek an injunction against the products at issue based on infringement of the patent right at issue, the Plaintiffs may directly bring an action seeking a declaration that the right to seek the injunction does not exist. Thus, obtaining a declaratory judgment that the right to claim damages at issue does not exist cannot be said to be necessary and appropriate to remove danger or uncertainty concerning the Plaintiffs’ rights or legal status.The Plaintiffs also allege that there is a difference in the amount of filing fees between a case in which the Defendant brings an action seeking partial damages and a case in which the Plaintiffs bring an action seeking a declaration that the right to seek an injunction does not exist. Such a circumstance does not directly affect the interest in immediate determination and does not alter the determination above.

https://www.courts.go.jp/assets/hanrei/hanrei-pdf-94270.pdf

[Trademark / Domain Name] Tokyo District Court, Reiwa 5 (Wa) No. 70022, “Legal Force” Case <Presiding Judge Takahashi>

Original Article URL: https://www.nakapat.gr.jp/ja/legal_updates_jp/%e3%80%90%e5%95%86%e6%a8%99%ef%bc%8f%e3%83%89%e3%83%a1%e3%82%a4%e3%83%b3%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%af70022%e3%80%8elegal-force%e3%80%8f%e4%ba%8b/

[Trademark / Domain Name] Tokyo District Court, Reiwa 5 (Wa) No. 70022, “Legal Force” Case <Presiding Judge Takahashi>

Trademark infringement and other relief were sought with respect to the U.S. corporate Defendant’s provision of services in English under the mark.⇒ The court denied Japan’s international jurisdiction and dismissed the action on the grounds, among others, that the Defendant’s website was not directed to consumers in Japan.

* Did U.S. attorneys residing in Japan not use it?

— Regarding Japanese customers of the Defendant’s trademark-application services: “It is recognized that the Defendant filed trademark applications for 44 Japanese customers.” The legalforcelaw website stated in English: “LegalForce RAPC represents clients in more than 100 countries worldwide”; “Outside the United States, LegalForce RAPC Trademarkia’s top filing countries are as follows: / (... omitted ...) Japan 97 /”; and “LegalForce RAPC has supported trademark filings in 88 countries worldwide since 2009 / (... omitted ...) Japan.”“No evidence was found showing that, with respect to ‘AI-based review of contracts and email accounts’ on the Defendant’s website at issue, services were provided to users in Japan.”⇒ If there had been a person in Japan using the “AI-based review of contracts and email accounts” on the Defendant’s website at issue, would that have changed the conclusion!?

By contrast, with respect to the claim concerning use of a Japanese domain name (.jp), the court recognized jurisdiction because the domain-name administrator was located in Japan.However, the Defendant had used the name in the United States before the Plaintiff, and automatically directing the domain name to the Defendant’s business website had a legitimate purpose. The court therefore denied both a “purpose of obtaining an illicit gain” and a “purpose of causing damage to another” under the Unfair Competition Prevention Act and dismissed the claim.

https://legaldoc.jp/hanrei/hanrei-pdf?f=93748_0.pdf

Interlocutory Judgment, Reiwa 6 (Ne) No. 10034 [Elasto-Plastic Hysteretic Damper] <Presiding Judge Honda>

Original Article URL: https://www.nakapat.gr.jp/ja/legal_updates_jp/%e4%b8%ad%e9%96%93%e5%88%a4%e6%b1%ba%e3%83%bb%e4%bb%a4%e5%92%8c6%e5%b9%b4%e3%83%8d10034%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/

Interlocutory Judgment, Reiwa 6 (Ne) No. 10034 [Elasto-Plastic Hysteretic Damper] <Presiding Judge Honda>The court modified the judgment of the Tokyo District Court in Reiwa 3 (Wa) No. 15964, and found patent infringement with respect to some of the Defendant’s products.

Limitation G provides that “the shear portion deforms and absorbs energy when it receives a load from an input.” The court of first instance construed “input” as limited to a horizontal force in a specific direction, such as the bridge-axis direction, and found the limitation not satisfied; the Intellectual Property High Court rejected that construction.According to the corrected claims and corrected specification at issue, Corrected Invention 1 at issue has a configuration in which “a pair of plate-shaped shear portions” are “provided with mutually different orientations” ([0007]) and does not limit the direction of an “input” to the “shear portions” in any way. Accordingly, it is reasonable to construe “input” in Limitation G as encompassing any load externally applied to a “shear portion” and as not being limited to a particular direction.According to the underlying facts, each web portion included in the Defendant’s dampers “deforms and absorbs energy when it receives a load from an input”; therefore, the Defendant’s dampers satisfy Limitation G.

Limitation D: “a pair of plates”In Defendant’s Σ-shaped Dampers 1 to 4, one end of each parallel-plate portion and web portion is welded to a vertical plate portion, and the vertical plate portion is bolted to a column constituting a load-bearing panel. By contrast, the other end of each parallel-plate portion and web portion is directly welded to a steel pipe constituting the load-bearing panel (Defendant’s Σ-shaped Dampers 1 to 3) or to channel steel (Defendant’s Σ-shaped Damper 4). A vertical plate portion and a steel pipe or channel steel cannot be said to be two thin, flat pieces of metal constituting one set. Therefore, Defendant’s Σ-shaped Dampers 1 to 4 cannot be recognized as including “a pair of plates.”The web portion and parallel-plate portion constituting Defendant’s Σ-shaped Damper 5 are arranged between two connecting plates, and both ends of the web portion and parallel-plate portion are directly welded to the respective connecting plates. The two connecting plates are rectangular metal plates of the same shape and are disposed on the left and right sides so as to sandwich the web portion and parallel-plate portion. They are therefore recognized as constituting “a pair of plates.”In the load-bearing panel in which Defendant’s Σ-shaped Damper 6 is used, the web portion and parallel-plate portion constituting Defendant’s Σ-shaped Damper 6 are arranged between two stiffeners, and both ends of the web portion and parallel-plate portion are directly welded to the respective stiffeners. The two stiffeners are rectangular metal plates of the same shape and are disposed on the left and right sides so as to sandwich the web portion and parallel-plate portion. They are therefore recognized as constituting “a pair of plates.”

https://www.courts.go.jp/assets/hanrei/hanrei-pdf-94603.pdf

Tokyo District Court, Reiwa 6 (Wa) No. 70283 [Reservation Management Device] <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%8c6%e5%b9%b4%e3%83%af70283%e3%80%90%e4%ba%88%e7%b4%84%e7%ae%a1%e7%90%86%e8%a3%85%e7%bd%ae%e3%80%91%ef%bc%9c%e6%9d%89%e6%b5%a6%ef%bc%9e/

Tokyo District Court, Reiwa 6 (Wa) No. 70283 [Reservation Management Device] <Presiding Judge Sugiura>

In the patented invention at issue, the reservation management device (server), in response to operation of a store terminal, transmits received image data to an image printing device (printer/fax).Flow: server → printer

Defendant’s system: the server sends image data to a pharmacy terminal (PC/tablet), and the pharmacy terminal sends the data to a printer for printing. The server does not communicate directly with the printer.Flow: pharmacy terminal → printer

An expansive construction under which it is sufficient for the reservation management device to send the data “through another device” lacks support in the specification.

(Excerpt from the Holding)“According to the wording of the claims, there is no description suggesting that the reservation management device may transmit image data to the image printing device through another device. The specification at issue likewise contains no description disclosing or suggesting inclusion of a configuration in which, at a store terminal that has received prescription image data from the reservation management device and displays the image data, the image data are printed by the image printing device directly from the store terminal through a user’s operation of the store terminal, without transmitting a legibility instruction or the like to the reservation management device.”

https://www.courts.go.jp/assets/hanrei/hanrei-pdf-94951.pdf

Osaka District Court, Reiwa 6 (Wa) No. 4500 [Shopping Payment System] <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%8c6%e5%b9%b4%e3%83%af4500%e3%80%90%e8%b2%b7%e7%89%a9%e6%b1%ba%e6%b8%88%e3%82%b7%e3%82%b9%e3%83%86%e3%83%a0%e3%80%91%ef%bc%9c%e6%9d%be%e9%98%bf/

Osaka District Court, Reiwa 6 (Wa) No. 4500 [Shopping Payment System] <Presiding Judge Matsuami>

The “camera” of the patented invention at issue acquires an image (video image) in order to identify a product.By contrast, the “barcode scanner” in the Defendant’s product acquires barcode information (a code), not an image, and performs a different function.⇒ Limitation not satisfied.

The patented invention at issue requires linking the camera and a “customer terminal” by means of a specific ID or the like.However, the Defendant’s product establishes a correspondence between the store terminal (cart) and only a membership number (customer identification information), and does not technically “link” the customer terminal itself.⇒ Limitation not satisfied.

The patented invention at issue treats as an “abnormality” a case in which a product cannot be identified from a camera image.By contrast, the Defendant’s product detects an abnormality based on a “change in the weight sensor” when an item is placed in the basket without scanning, not based on success or failure of image identification.⇒ Limitation not satisfied.

(Excerpt from the Holding)According to the description in the specification at issue and the ordinary understanding of a person skilled in the art, the “camera” of the invention at issue is recognized as a device that uses an optical system to form an image of a subject on the surface of an imaging element or the like (see Kojien, seventh edition). With respect to the barcode scanner in the Defendant’s product, there is insufficient evidence to establish that it performs such a function. Further, in general, a barcode scanner acquires “information” embodied in a barcode and does not acquire an “image,” that is, does not perform imaging. The barcode scanner in the Defendant’s product therefore does not constitute the “camera” in Limitation B....The Plaintiff’s allegation concerning the technical significance of “linking” in Limitation D is unclear. Invention 1 at issue includes as elements that the camera transmits imaging information concerning a product to be purchased to the management server (Limitation E), and that the management server notifies the customer terminal of the product-identification result (Limitation F). “Linking” is therefore construed as establishing, as a premise, a correspondence between the camera and the customer terminal. On this point, the Plaintiff does not dispute that, in the Defendant’s product, the processing under Limitation F is performed by the “store terminal” (and is not performed by the customer terminal). Further considering, as stated above, that shopping can be completed normally in the Defendant’s product even without a customer terminal (that the customer terminal is not an indispensable configuration for realizing the technical concept of the Defendant’s product), it is recognized that the store terminal establishes a correspondence only with customer identification information (the membership number). Beyond that, the “customer terminal” and the barcode scanner of the store terminal are not recognized as being “linked” in the sense described above.

https://www.courts.go.jp/assets/hanrei/hanrei-pdf-94493.pdf

Reiwa 6 (Ne) No. 10068 [Leak-Preventing Sealing Material] <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%8d10068%e3%80%90%e3%82%82%e3%82%8c%e9%98%b2%e6%ad%a2%e7%94%a8%e3%82%b7%e3%83%bc%e3%83%ab%e6%9d%90%e3%80%91%ef%bc%9c%e6%b8%85%e6%b0%b4%e9%9f%bf%ef%bc%9e/

Reiwa 6 (Ne) No. 10068 [Leak-Preventing Sealing Material] <Presiding Judge Hibiki Shimizu><The same issues and the same conclusion as in the first-instance judgments, Osaka District Court, Reiwa 4 (Wa) Nos. 9112 and 11173 <Presiding Judge Matsuami>.>

“The diameter of the warp or weft of the ground yarn is made smaller than the diameter of the pile yarn” (Limitation 1C)⇒ “Diameter” is measured in the original-yarn state, not in the product state.⇒ Limitation not satisfied.

“In the state of use, the direction of the arrangement is inclined relative to the rotational direction of the rotating body such that the direction of the arrangement forms, relative to the rotational direction, an angle φ greater than the predetermined angle θ” (Limitation 1E)The Defendants were not involved in how the Defendant’s product was installed in toner cartridges manufactured by Canon or its affiliates; the installation position and method were determined by Canon. There was insufficient evidence to establish that Canon installed the Defendant’s product at angle θ < angle φ, and there was no proof that installation by a different method or use was not economic, commercial, or practical.Accordingly, there was insufficient proof that the Defendant’s product was an article used exclusively for the production of an article infringing the patent at issue (Article 101(1)(i) of the Patent Act), and the Plaintiff’s allegation of indirect infringement could not be accepted.

(Excerpt from the Holding)The specification at issue includes descriptions concerning the “diameter” of yarn in the original-yarn state and the relative magnitudes thereof, such as: “Figures 4 and 5 each schematically show an example in which yarn having a larger diameter than ground warp yarn 21 and ground weft yarn 22 is used as pile yarn 4 ...” (paragraphs [0043], [0033], [0050], and [0052]). As discussed below, it is reasonable to construe “diameter” as synonymous with “thickness” indicated by methods generally used to refer to the “thickness” of fibers. Because the “diameter” of each yarn in the original-yarn state is uniform, the meaning of the “diameter” of each yarn can be understood unequivocally, and on that basis the relative “magnitudes” of the “diameters” of the respective yarns can also be compared. Accordingly, it is reasonable to construe “diameter” and the relative “magnitudes” thereof in Limitation 1C of Corrected Invention 1 at issue as meaning the “diameter” and relative “magnitudes” of yarn in the original-yarn state. D. According to the technical common knowledge in paragraph (3) above, with respect to “thickness,” an important property of fibers, methods indicating fiber thickness by weight per unit length, such as denier, are generally used. Where fibers are made of different materials and have different specific gravities (densities), their thicknesses cannot immediately be compared using denier values, but it is recognized as technical common knowledge that cross-sectional areas can readily be calculated and compared from the fibers’ specific gravities and denier values.Accordingly, “diameter” of the ground-yarn warp and weft and pile yarn in Limitation 1C of Corrected Invention 1 at issue means the “thickness” of each yarn in the original-yarn state as indicated by a generally used method. It is reasonable, in light of the technical common knowledge of a person skilled in the art at the filing date, to construe the relative “magnitudes” as meaning that the cross-sectional areas of the fibers of the yarns in the original-yarn state are calculated on the premise of that method and the relative magnitudes of the “diameters” are determined. (According to the foregoing, Limitation 1C also cannot be said to be unclear.)

As stated in the original judgment, the Defendants were not involved in how the Defendant’s product was installed in toner cartridges manufactured by Canon or its affiliates; the installation position and method were determined by Canon. There was insufficient evidence to establish that Canon installed the Defendant’s product at angle θ < angle φ, and there was no proof that installation by a different method or use was not economic, commercial, or practical. Accordingly, there was insufficient proof that the Defendant’s product was an article used exclusively for the production of an article infringing the patent at issue (Article 101(1)(i) of the Patent Act), and the Plaintiff’s allegation of indirect infringement could not be accepted.

https://www.courts.go.jp/assets/hanrei/hanrei-pdf-94232.pdf

Reiwa 7 (Ne) No. 10005 [Jig for a Lifeline Post] <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%8d10005%e3%80%90%e8%a6%aa%e7%b6%b1%e6%94%af%e6%9f%b1%e7%94%a8%e6%b2%bb%e5%85%b7%e3%80%91%ef%bc%9c%e5%a2%97%e7%94%b0%ef%bc%9e/

Reiwa 7 (Ne) No. 10005 [Jig for a Lifeline Post] <Presiding Judge Masuda>

Because the hook formed on the side plate of the Defendant’s product was not formed by bending the bottom plate into a U shape, the Defendant’s product did not include the “bent portions bent into a U shape at vertically spaced intervals at an end of the rectangular plate in the first direction” in Limitation C.⇒ No literal infringement.

Difference in the essential part⇒ No infringement under the doctrine of equivalents.

⇒ The court affirmed the original judgment, which found notification and dissemination of false facts.

https://www.courts.go.jp/assets/hanrei/hanrei-pdf-94223.pdf

Tokyo District Court, Reiwa 6 (Wa) No. 70128 [Box-Shaped Vessel] <Presiding Judge Nakajima>

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%8c6%e5%b9%b4%e3%83%af70128%e3%80%90%e7%ae%b1%e5%9e%8b%e8%88%b9%e3%80%91%ef%bc%9c%e4%b8%ad%e5%b3%b6%ef%bc%9e/

Tokyo District Court, Reiwa 6 (Wa) No. 70128 [Box-Shaped Vessel] <Presiding Judge Nakajima>

* Replacement of a pH sensor having a one-year service life did not constitute manufacture of a new product.⇒ No infringement.

(Excerpt from the Holding)No particular service life was specified for the box-shaped vessel itself in the Defendant’s product. Among the components subject to the maintenance at issue, only the pH sensor had a specified service life of one year and was therefore replaced with a new one during the annual maintenance. ...Because the maintenance at issue replaced only the pH sensor, whose service life was one year, out of the entire box-shaped vessel, it may be said merely to replace, in accordance with ordinary use, the pH sensor, which is a consumable component of the box-shaped vessel. Moreover, as to the technical function of the pH sensor, Otsu 4 discloses a box-shaped vessel including a stock-solution supply device that automatically adjusts the supply amount of an acid stock solution based on a value detected by a pH sensor. The pH sensor therefore cannot be said to be a configuration relating to the essential part of the invention at issue. In addition, the economic value of the pH sensor is ... extremely small compared with the value of the entire box-shaped vessel falling within the technical scope of the invention at issue. Under these circumstances, the maintenance at issue cannot be said to restore satisfaction of a configuration relating to the essential part of the invention after the product came to lack that configuration. Accordingly, the maintenance at issue cannot be regarded as newly manufacturing a box-shaped vessel lacking identity with the Defendant’s box-shaped vessel, and cannot be construed as constituting “production” under Article 2(3)(i) of the Patent Act.In response, the Plaintiff alleges that the maintenance at issue changes a product outside the technical scope of the invention at issue (one lacking a pH sensor and therefore lacking Limitation F) into a product within the technical scope, and therefore constitutes “production” under the same item.However, as explained above, whether an act constitutes “production” should be assessed by considering the circumstances stated above from the perspective of whether the act may be said to restore satisfaction of a configuration relating to the essential part of the invention after the product came to lack that configuration. It is therefore inappropriate to isolate and assess only the act of newly installing a pH sensor after it was absent; the same reasoning applies to the tube alleged by the Plaintiff.From the foregoing perspective, replacement of the pH sensor alleged by the Plaintiff and replacement of a tube due to deterioration or damage are acts that should be regarded as repair or maintenance itself, and cannot be said to newly manufacture a box-shaped vessel lacking identity. The maintenance at issue therefore cannot be construed as constituting “production” of the invention at issue.In the first place, the box-shaped vessel alleged by the Plaintiff should be regarded as having already been manufactured before registration of the patent at issue. Even if the Plaintiff did not obtain a benefit relating to that box-shaped vessel, because it predates registration of the patent at issue, the result is not unreasonable as alleged by the Plaintiff.

https://patent-law.hatenablog.com/entry/2025/07/19/230000

Reiwa 7 (Ne) No. 10004 [Wireless Scuff Plate] <Presiding Judge Nakahira>

Original Article URL: https://www.nakapat.gr.jp/ja/legal_updates_jp/%e4%bb%a4%e5%92%8c7%e5%b9%b4%e3%83%8d10004%e3%80%90%e3%83%af%e3%82%a4%e3%83%a4%e3%83%ac%e3%82%b9%e3%82%b9%e3%82%ab%e3%83%83%e3%83%95%e3%83%97%e3%83%ac%e3%83%bc%e3%83%88%e3%80%91%ef%bc%9c%e4%b8%ad/

Reiwa 7 (Ne) No. 10004 [Wireless Scuff Plate] <Presiding Judge Nakahira>= First instance: Tokyo District Court, Reiwa 5 (Wa) No. 70346 <Presiding Judge Nakajima>

* “Adjustable” means capable of being actively varied.⇒ Limitation not satisfied.

The “control module that, in accordance with the sensing signal, opens and closes the backlight module with the time interval between its on and off states being adjustable” in Limitation F is construed as meaning a control module that can turn the backlight module on and off in accordance with the sensing signal and can also vary the interval after it is turned on in accordance with the sensing signal until it is turned off after a certain time even without another sensing signal, namely, the duration of illumination.⇒ None of the Appellee’s products was recognized as including a control module that variably adjusts and controls the illumination duration independently of the timing at which magnetism relating to opening or closing is sensed.

https://www.courts.go.jp/assets/hanrei/hanrei-pdf-94237.pdf

Tokyo District Court, Reiwa 6 (Wa) No. 70463 [Connecting Fixture for Faucet Elbows] <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%8c6%e5%b9%b4%e3%83%af70463%e3%80%90%e6%b0%b4%e6%a0%93%e3%82%a8%e3%83%ab%e3%83%9c%e9%80%a3%e7%b5%90%e5%9b%ba%e5%ae%9a%e5%85%b7%e3%80%91%ef%bc%9c/

Tokyo District Court, Reiwa 6 (Wa) No. 70463 [Connecting Fixture for Faucet Elbows] <Presiding Judge Sugiura>

The patent application at issue received a decision of refusal, and no specific circumstances suggest that any right was thereafter established for the invention of the application at issue.Nor can the invention of the application at issue be regarded as included in the subject matter of the agreement at issue.Further, no specific circumstances suggest any involvement by the Defendant in the patent application at issue or in practicing the invention of the application at issue. Therefore, no tort by the Defendant against the Plaintiff can be found in connection with the application process or practice of the invention. ...

https://www.courts.go.jp/assets/hanrei/hanrei-pdf-94920.pdf

[Design] Osaka District Court, Reiwa 5 (Wa) No. 2668, “Vegetated Earth-Retaining Sandbag” Case <Presiding Judge Matsuami>

Original Article URL: https://www.nakapat.gr.jp/ja/legal_updates_jp/%e3%80%90%e6%84%8f%e5%8c%a0%e3%80%91%e5%a4%a7%e9%98%aa%e5%9c%b0%e5%88%a4%e4%bb%a4%e5%92%8c5%e5%b9%b4%e3%83%af2668%e3%80%8e%e5%9c%9f%e7%95%99%e3%82%81%e6%a4%8d%e7%94%9f%e5%9c%9f%e5%9a%a2%e3%80%8f/

[Design] Osaka District Court, Reiwa 5 (Wa) No. 2668, “Vegetated Earth-Retaining Sandbag” Case <Presiding Judge Matsuami>

The shape of the “grass” in Registered Design 1 at issue should be identified, even though grass is a natural object, to the extent that it has regularity and reproducibility as a design.⇒ The appearance of the Defendant’s sandbag, particularly the manner in which the grass grew, differed substantially from Registered Design 1 at issue and was therefore dissimilar.

* With respect to patent infringement (infringement under the doctrine of equivalents) as well, the configuration in which the vegetation sheet is detachably fixed to the bag body “only at the opening-edge portion” is a characteristic part constituting a distinctive technical concept for producing the operation and effect of preventing deformation of the vegetation sheet and the like, and constitutes an essential part of the invention.⇒ No infringement under the doctrine of equivalents.

https://www.courts.go.jp/assets/hanrei/hanrei-pdf-93781.pdf

Tokyo District Court, Reiwa 6 (Wa) No. 70223 [Game System and Game Program] <Presiding Judge Nakajima>

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%8c6%e5%b9%b4%e3%83%af70223%e3%80%90%e3%82%b2%e3%83%bc%e3%83%a0%e3%82%b7%e3%82%b9%e3%83%86%e3%83%a0%e5%8f%8a%e3%81%b3%e3%82%b2%e3%83%bc%e3%83%a0/

Tokyo District Court, Reiwa 6 (Wa) No. 70223 [Game System and Game Program] <Presiding Judge Nakajima>

<Non-Satisfaction ((i) Game System)>Patent 1 at issue requires a configuration that separately stores the quantities of purchased items (first items) and items acquired in the game (second items), and preferentially consumes the first items.However, in the Defendant’s system (LINE: Disney Tsum Tsum), free portions received at purchase and portions acquired in the game are not distinguished but are managed in the aggregate, and the quantity of the second items alone is not stored.Further, because the two are not distinguished, the system does not have a function of preferentially consuming the first items. It therefore does not satisfy Limitations 1B and 1C.

<Non-Satisfaction ((ii) Game Program)>Patent 2 at issue is an invention that changes data according to the “cumulative number acquired” of the same item.However, the relevant value in the Defendant’s program (the value relating to an increase in skill level) includes not only the number of items themselves acquired but also another element, namely, the “number of skill tickets used.” This differs from the pure “cumulative number acquired” specified by the patent.

https://www.courts.go.jp/assets/hanrei/hanrei-pdf-94988.pdf

Osaka District Court, Reiwa 5 (Wa) No. 7855 [Method for Mapping a Physical Hybrid Automatic Repeat Request Indicator Channel] <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%af7855%e3%80%90%e7%89%a9%e7%90%86%e3%83%8f%e3%82%a4%e3%83%96%e3%83%aa%e3%83%83%e3%83%89%e8%87%aa%e5%8b%95%e5%86%8d%e9%80%81/

Osaka District Court, Reiwa 5 (Wa) No. 7855 [Method for Mapping a Physical Hybrid Automatic Repeat Request Indicator Channel] <Presiding Judge Matsuami>

* Standard-essential patent (SEP) — abuse of rights⇒ Claim for injunction dismissed.

1. Defendant’s Negotiating ConductThe Plaintiff proposed license negotiations on June 12, 2020, and Company G (Google) expressed its willingness on July 7 of that year to take a license on FRAND terms.The NDA negotiations took a total of five months, and review of 22 claim charts took approximately eight months. However, an NDA accompanies disclosure of trade secrets, and the time required was unavoidable as a period for reviewing numerous patents.Company G presented a counterproposal (Company G’s First Proposal) and subsequent revised proposals in response to the Plaintiff’s proposal. As of the end of November 2023, no lack of good faith in the negotiations was recognized.

2. Proposals of the Plaintiff and Company GWith respect to the Plaintiff’s First Proposal (0.75%), Company G questioned, among other matters, the age of the underlying information, but the Plaintiff did not respond sufficiently.Company G’s counterproposal referred to a top-down approach and other methods, including setting an aggregate royalty cap (27%); these are not methods excluded when examining FRAND terms.Company G’s judgment giving importance to the fact that the price of a smartphone depends heavily on performance other than communications cannot simply be criticized.

⇒ The court found that, even at the relevant time, the end of November 2023, Company G continued sincerely to negotiate toward concluding a license agreement and held that its conduct could not be characterized as bad-faith holdout.

https://www.courts.go.jp/assets/hanrei/hanrei-pdf-94591.pdf

Reiwa 7 (Ne) No. 10035 [Vehicle Guidance System] <Presiding Judge Honda> (PXZ v. East Nippon Expressway Company Limited)

Original Article URL: https://www.nakapat.gr.jp/ja/legal_updates_jp/%e4%bb%a4%e5%92%8c7%e5%b9%b4%e3%83%8d10035%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%e6%9c%ac%e5%a4%9a%ef%bc%9e-%ef%bc%88pxz-v-%e6%9d%b1/

Reiwa 7 (Ne) No. 10035 [Vehicle Guidance System] <Presiding Judge Honda>(PXZ v. East Nippon Expressway Company Limited)

* On the same substantive reasoning by which Reiwa 6 (Gyo-Ke) No. 10086 found a violation of the divisional requirements in the grandparent application, this judgment found the limitation not satisfied.

“The ‘entrance/exit for ordinary vehicles’ in Limitation 2E does not include an entrance/exit for ordinary vehicles of another interchange adjacent to the toll-road tollgate, service area, or parking area at which the vehicle guidance system according to Invention 2 at issue is installed.”⇒ Limitation not satisfied.

“Guidance” means objectively leading a vehicle. Where no signs or the like exist, a U-turn voluntarily made by the driver cannot be characterized as guidance by the function of the facility.⇒ “The facility does not include guidance means that guide a vehicle for which ETC toll collection is impossible onto a ‘route returning it again to a point before the ETC-only entrance/exit.’”⇒ Limitation not satisfied.

https://www.courts.go.jp/assets/hanrei/hanrei-pdf-94616.pdf

Reiwa 7 (Ne) No. 10025 [Spindle Motor] <Presiding Judge Nakahira> ⇒ Claim for Employee-Invention Remuneration

Original Article URL: https://www.nakapat.gr.jp/ja/legal_updates_jp/%e4%bb%a4%e5%92%8c7%e5%b9%b4%e3%83%8d10025%e3%80%90%e3%82%b9%e3%83%94%e3%83%b3%e3%83%89%e3%83%ab%e3%83%a2%e3%83%bc%e3%82%bf%e3%80%91%ef%bc%9c%e4%b8%ad%e5%b9%b3%ef%bc%9e-%e2%87%92%e8%81%b7%e5%8b%99/

Reiwa 7 (Ne) No. 10025 [Spindle Motor] <Presiding Judge Nakahira>⇒ Claim for employee-invention remuneration dismissed(Status as a joint inventor denied)

The core of the Japanese invention at issue lay in forming a particular “communication hole,” but the written explanation submitted by the Appellant did not mention that specific configuration and explained a completely different problem and solution. The Appellant’s idea therefore did not show the characteristics of the Japanese invention at issue.(The “Invention/Utility Model Explanation” submitted by the Appellant to the employer merely described a different problem and solution and did not address the specific configuration of the communication hole.)

The U.S. and Chinese patented inventions were based on “Invention A,” which provides a through-hole in a sleeve. Because this configuration clearly differs from the Appellant’s idea of providing a groove between the sleeve and the housing, they were different from the Appellant’s invention.

https://www.courts.go.jp/assets/hanrei/hanrei-pdf-94960.pdf

Osaka District Court, Reiwa 6 (Wa) No. 7193 [Article Conveying Facility] <Presiding Judge Matsuami> ⇒ Claim for Employee-Invention Remuneration Dismissed

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%8c7%e5%b9%b4%e3%83%af7193%e5%8f%b7%e3%80%90%e7%89%a9%e5%93%81%e6%90%ac%e9%80%81%e8%a8%ad%e5%82%99%e3%80%91%ef%bc%9c%e6%9d%be%e9%98%bf%e5%bd%8c/

Osaka District Court, Reiwa 6 (Wa) No. 7193 [Article Conveying Facility] <Presiding Judge Matsuami>

⇒ Claim for employee-invention remuneration dismissed.

(i) Process for Establishing and Operating the RulesFollowing the 2016 amendment to the Patent Act and publication of the Guidelines, the Defendant consulted with the labor union and explained the reward system and calculation method. When revising the rules, it also solicited opinions from all employees and responded to the Plaintiff’s opinion, following a careful and sincere process. These measures were reasonable.

(ii) Dissemination of the RulesThe rules were available for viewing at all times on the internal system and were also explained during new-employee training. The Plaintiff received rewards while employed and was in a position to understand the system.

(iii) Content of the RulesUnder the system, the business division and intellectual-property division evaluated performance rewards based on objective indicators and determined grades, and inventors were given an opportunity to state their views. The rules were therefore not unreasonable.(Excerpt from the Holding) “It is questionable whether the reasonableness of the amount of compensation, which in itself might be regarded as entrusted to private autonomy, is naturally included in the viewpoints for determining unreasonableness under Article 35(5) of the Patent Act. Even if it could be one factor for consideration, the matter might be different where, for example, rules provide only small lump-sum filing and registration rewards and do not distribute any of the profits subsequently obtained by the company through practice of the patent right. The Detailed Rules at issue, however, evaluate the economic value of practiced patent rights and the like from various perspectives, including contribution to profits and exclusion of competitors, and pay commensurate performance rewards in stages. No basis for finding them unreasonable can be identified.”

In conclusion, because the rules at issue were not unreasonable, the statutory claim for reasonable benefits under Article 35(7) of the Patent Act, premised on non-application of the rules, was without merit.

https://www.courts.go.jp/assets/hanrei/hanrei-pdf-95035.pdf

Appendix: English Translations of Text Embedded in Figures

The original figures are retained in the body of the document. The English translations below cover the Japanese text embedded in the seven unique figures.

Embedded Figure 1 — Example in Which Inventive Step Is Denied Even When an Essential Configuration Is Excluded

• Even where an amendment has been made to exclude a configuration described as essential in the cited invention, a person skilled in the art may ordinarily carry out design changes to some configuration other than that configuration for the purpose of further improving the invention. Such work may constitute the ordinary exercise of creative ability by a person skilled in the art.

• Further, even if the configuration is described as essential in the cited invention, unless an impediment is recognized that is strong enough to prevent replacement with any of various other configurations, there may be cases in which excluding that configuration in the claimed invention cannot be said to produce an advantageous effect.

• In such cases, under the current approach of the Examination Guidelines, inventive step is still denied.

Diagram labels:- Invention obtainable by trial and error based on the cited invention- Scope of the amended claimed invention- Overlap with the cited invention- Specific improved invention- Some invention (including a regressive invention)- Trial and error carried out by a person skilled in the art who reviewed the cited invention, for the purpose of an improved invention

Embedded Figure 2 — Description in the Examination Guidelines Concerning Determination of New Matter (3)

3.3.1 Amendment of the Scope of Claims

(1) Where an amendment generalizes, deletes, or changes a matter specifying the invention

(2) Where an amendment narrows a matter specifying the invention to a subordinate concept or adds such a matter

b. Even where an amendment narrowing a matter specifying the invention in a claim to a subordinate concept does not narrow it to a matter expressly stated in the original specification, etc. or to a matter self-evident from the descriptions in the original specification, etc., the amendment does not introduce new technical matter if it is clear that the amendment adds no new technical significance. Such an amendment is therefore permitted.

(3) Where an amendment adds or changes a numerical limitation

(4) Where an amendment uses an “excluding claim”

An “excluding claim” means a claim that expressly excludes, from the matters stated in the claim, only part of the matters included in the invention under the claim while retaining the wording of the matters stated in the claim.

An amendment that retains the wording of the matters stated in the claim before amendment and converts the claim into an “excluding claim” by excluding matters stated in the original specification, etc. is permitted if the “excluding claim” after the exclusion does not introduce new technical matter.

The following amendments using an “excluding claim” do not introduce a new technical matter and are therefore permitted:

(i) Where the claimed invention overlaps the cited invention and novelty, etc. (Article 29(1)(iii), Article 29-2, or Article 39) might therefore be denied, an amendment excluding only that overlap.

(ii) Where a claimed invention includes a “human” and therefore fails to satisfy the requirement in the introductory clause of Article 29(1), or falls under an unpatentable invention prescribed in Article 32, an amendment excluding only the “human.”

(5) Where an amendment concerns a Markush-type or other alternative-form claim

Embedded Figure 3 — Relationship Between Types of Amendments Using an “Excluding Claim” and the Examination Guidelines

A) Where the technical matter of not including a specific matter is expressly described in the original specification, etc.→ The amendment does not introduce a new technical matter and is permitted. (Examination Guidelines 3.1)

B) Where the technical matter of not including a specific matter is self-evident from the descriptions in the original specification, etc.→ The amendment does not introduce a new technical matter and is permitted. (Examination Guidelines 3.2)

C) Where inclusion of a specific matter causes failure to satisfy the requirement in the introductory clause of Article 29(1), or causes the invention to fall under an unpatentable invention under Article 32→ For example, where the claimed invention includes a “human” and therefore fails to satisfy the requirement in the introductory clause of Article 29(1) or falls under Article 32, an amendment excluding “human” from the claimed invention makes the invention no longer fall under the above ground for refusal. It is clear that such an amendment does not introduce a new technical matter and is therefore permitted. (Examination Guidelines 3.3.1(4)(ii))

D) Where none of Types A to C applies→ The amendment is permitted if it does not introduce a new technical matter.

One example is an “amendment excluding only the overlap where the claimed invention overlaps the cited invention and novelty, etc. might therefore be denied” (Examination Guidelines 3.3.1(4)(i)); the Guidelines state that this is permitted because it does not introduce a new technical matter.

Other examples include amendments that narrow a matter to a subordinate concept where it is clear that no new technical significance is added (Examination Guidelines 3.3.1(2)b); such amendments are stated to be permitted.

Embedded Figure 4 — Regarding the Description in Section 3.3.1(4)(i) of the Examination Guidelines (1)

• The example given in Section 3.3.1(4)(i) of the Examination Guidelines is a case in which the cited invention and the claimed invention have inherently and markedly different inventive concepts, but an overlap happens to cause a novelty rejection; excluding the overlap resolves the novelty rejection while leaving an invention having inventive step.

(i) Where the claimed invention overlaps the cited invention and novelty, etc. (Article 29(1)(iii), Article 29-2, or Article 39) might therefore be denied, an amendment excluding only that overlap

(Explanation)The “excluding claim” in (i) above is a claim expressly excluding only matters that form part of a cited invention under Article 29(1)(iii), Article 29-2, or Article 39, as stated in a publication or in the specification, etc. of an earlier application (including matters equivalent to those described). The amendment converting the claim into the “excluding claim” in (i) above excludes specific matter forming the content of the cited invention and therefore cannot be said to make any change to the technical matter derived from the specification, etc. before amendment. Accordingly, it is clear that such an amendment does not introduce new technical matter and is therefore permitted.

An invention that can be patented by use of an “excluding claim” is an invention that, as a technical concept, is markedly different from the cited invention and inherently has inventive step, but happens to overlap the cited invention. Where an invention is not markedly different from the cited invention as a technical concept, it is considered that a rejection based on lack of inventive step will almost never be resolved by converting the claim into an “excluding claim.”

Embedded Figure 5 — Regarding the Description in Section 3.3.1(4)(i) of the Examination Guidelines (2)

• When Section 3.3.1(4)(i) of the Examination Guidelines was revised in 2010, the Japan Patent Office published the following response to comments submitted in the public-comment procedure.

Q15. Are amendments falling under Type (i) or Type (ii) judged to fall within those types without separately examining the specific amendment content or the content of the invention?

A15. No. However, where the prior art and the technical concept are identical or similar, so that merely converting the claim into an “excluding claim” does not make the invention inventive, and the applicant argues in a written opinion or the like that the “excluding claim” has inventive step, for example because it produces a remarkable effect, a notice of reasons for refusal may be issued on the ground that the amendment falls under neither Type (i) nor Type (ii) and introduces new technical matter. Further, where the prior art and the technical concept are identical or similar, if a reason for refusal under Article 29(2) is notified in addition to Article 29(1)(iii) or Article 29-2, the application may be finally rejected under Article 29(2) even after conversion to an “excluding claim.”

As stated in the explanation of Type (i), an invention for which a patent can be obtained by converting the claim into an “excluding claim” is an invention that is markedly different from the prior art in technical concept and inherently has inventive step, but merely happens to overlap the prior art.

• Accordingly, the mere fact that an amendment excludes overlap with the cited invention does not immediately mean that it falls under Type (i) and is permitted.

Embedded Figure 6 — Divisional Applications, Amendments, and Retroactive Effect

General rule quoted from Intellectual Property High Court, Heisei 28 (Gyo-Ke) No. 10263:“The substantive requirements for a divisional application to be lawful are that (i) the specification or drawings of the original application contained two or more inventions, (ii) the invention of the new application is part of an invention described in the specification or drawings of the original application, and (iii) the invention of the new application falls within the scope of matters described in the original specification, etc. of the original application. Because the application at issue is a fifth-generation divisional application counted from the first application, in order for the application at issue to be deemed filed at the time of the first application, the application at issue, the fourth application, the third application, and the second application must each satisfy requirements (i) to (iii) above in relation to the application from which it was divided, and the invention at issue must fall within the scope of matters described in the specification, etc. of the first application as filed.”

Important note:Even if a child application is lawful when filed, if the child application is amended after filing, the retroactive effect of the amendment may cause the child application to violate the divisional requirements.

Key authorities and labels:1. Osaka High Court, Heisei 14 (Ne) No. 2776 <Presiding Judge Wakabayashi>2. Tokyo High Court, Heisei 15 (Gyo-Ke) No. 65 <Presiding Judge Shinohara>→ The filing date of the grandchild application relates back only to the filing date of the child application.Note: If the post-amendment content constitutes the addition of new matter, the divisional requirements are violated.3. Heisei 16 (Gyo-Ke) No. 14649 <Presiding Judge Shitara>4. Tokyo High Court, Showa 50 (Gyo-Ke) No. 75→ If an amendment cures a violation of the divisional requirements (a change of gist), the violation of the divisional requirements is avoided.8. Tokyo District Court, Heisei 15 (Wa) No. 9215 <Presiding Judge Mimura>→ Divisional requirements = amendment requirements.

Timeline: Parent filing date → Child filing date → Amendment of the child → Grandchild filing date“The amendment has retroactive effect.”

“Because all claims were deleted by correction, the utility model registration at issue is deemed never to have existed from the beginning.” Heisei 13 (Gyo-Ke) No. 422 <Presiding Judge Yamashita>

Even if the child application is withdrawn, the filing date of the grandchild application relates back to the filing date of the parent application. Heisei 27 (Wa) No. 8517 [Ridge Plastering Machine] <Presiding Judge Shimasue>. In that case, there had been no violation of the divisional requirements before withdrawal. (Except under Article 39(5) of the Patent Act, withdrawal of an application has no retroactive effect. Heisei 1 Trial Decision No. 123.)

If a divisional application is finally refused or invalidated while still containing added new matter, the filing date of the grandchild application does not relate back to the filing date of the parent application. Therefore, even if the case is likely to end in refusal, an amendment curing the addition of new matter should be attempted.

Embedded Figure 7 — Reiwa 1 (Wa) No. 23164 [Image Forming Apparatus] <Presiding Judge Tanaka>

Cf. Reiwa 2 (Gyo-Ke) No. 10313 <Presiding Judge Otaka>.

• If a child application violates the divisional requirements, the filing date of a grandchild application relates back only to the actual filing date of the child application. It does not relate back to the filing date of the parent application. This is the same holding as Osaka High Court, Heisei 14 (Ne) No. 2776, and Tokyo High Court, Heisei 15 (Gyo-Ke) No. 65.

• Has adding descriptions to the specification constituted the addition of new matter since the [Artificial Nipple] case (Heisei 14 (Gyo-Ke) No. 539)!?

When the specification, etc. of Application 1 at issue at the time Application 2 at issue was divided is compared with the specification, etc. of Application 2 (the specification of Application 2 at the time of division), the latter differs in that it adds descriptions concerning maintaining machining conditions after the power is turned off and displaying them on the first screen shown on the next and subsequent occasions (paragraph [0100]); reducing the number of magnification settings and menu settings by means of “one above” and “one below” displays (paragraph [0105]); preventing erroneous instructions by locking a registered menu against change (paragraph [0145]); and adding Figures 7 to 15 and related descriptions (paragraph [0041], etc.). Because the specification of Application 2 at the time of division contains matters absent from the specification of Application 1 at the time of the decision to grant a patent, it does not fall within the scope of matters described in the latter specification. Application 2 therefore fails to satisfy divisional requirement (ii). → Lack of inventive step over a cited invention published after the parent filing date and before the child filing date.

• In a priority claim, “partial priority” may be available; however, adding descriptions to the specification when filing a divisional application has no benefit and only causes harm. If the matter is disclosed in the original specification, etc., no additional description is needed; if it is not disclosed there, the additional description constitutes the addition of new matter.