[Title of the patent] “Carbon dioxide-containing viscous composition”
[Key issue] Criteria for deciding the amount of damage compensation (Article 102, paragraphs (2) and (3) of the Patent Act)
This is the original judgement of a recent IPHC Ground Panel case of which judgment was delivered on June 7, 2019.Source IPHC website
Claim for damages for unfair competition
[Key issue] “Unfair competition” pursuant to Article 2, paragraph (1), item (ii) of the Unfair Competition Prevention Act.
Court stated in the decision “…Article 2, paragraph (1), item (ii) of the Unfair Competition Prevention Act does not require an act of unfair competition to be the ‘creation of confusion with another person’s goods or business.’ This is because the purport of item (ii) of the same paragraph is in preventing free riding by use of the customer attracting power of a famous indication of goods, etc., as well as in preventing the source-identifying function and the quality guarantee function from being harmed due to dilution. As such, if an indication which is identical or similar to another person’s famous indication of goods, etc. is used in a manner that accomplishes the functions of indicating the source of goods and of distinguishing said goods from the goods of other persons, such use is acknowledged as the use as an indication of goods, etc., and whether or not confusion is created among consumers as to the source shown by said indication does not directly affect this point.”Source IPHC website
|Trademark at issue||Cited Trademark (three-dimensional trademark)|
[Key issue] “Well known” and “unfair purposes” of Article 4, paragraph (1), item (xix) of the Trademark Act.
Court judged that the three-dimensional form (Cited Trademark) of the Defendant’s Product was well-known and famous among consumers as an indicator of the Defendant’s Product, the filing by the plaintiff of the application for registration of the Trademark was based on the purpose of hindering the defendant’s business operation for the Defendant’s Product, and thus the trademark held by the plaintiff falls under Article 4, paragraph (1), item (xix) of the Trademark Act.Source IPHC website
[Title of the patent] “IMMUNOCHROMATOGRAPHY TEST DEVICE AND KIT FOR MYCOPLASMA PNEUMONIAE DETECTION”
[Key issue] “Invention described in a publication” (Article 29, paragraph (1), item (iii) of the Patent Act)
Court stated in the decision “…the patent invention is an invention of a product, and thus a comparison is made with an invention of a product described in a publication in considering the inventive step. Here, it is necessary for a person skilled in the art to be able to make a product on the basis of the description of the publication and the common general knowledge as of the filing of the Patent in order to find that an invention of a product is described in the publication.”Source IPHC website
[Title of the patent] “CONSTRUCTIONAL BOARD”
[Key issue] “Finding of the differences between the Invention and the cited invention” (Article 29, paragraph (2) of the Patent Act)
Court stated in the decision “…when a difference between the Invention and the primarily cited invention is to be found, it is reasonable to find the difference between them as a collective structure as a unit from a viewpoint of a solution to the technical problem of the invention. It is inappropriate to find the differences by particularly finely segmenting them and to determine whether each of the differences could have been easily conceived of without considering the above viewpoint, since the invention for which the inventive step should have been found could not be properly determined and the inventive step could be denied as a result.”Source IPHC website
Injunction against copyright infringement, etc.
[Key issue] “Defense of quotation” and “fair practices” (Article 32, paragraph (1) of the Copyright Act)
A case in which, concerning file footage for the press over which a news agency has copyright, the court held that the act of quoting and using the same in a documentary film without indicating the source is not lawful quotation.Source IPHC website
[Design at issue]
“Publicly known” (Article 3, paragraph (2) of the Design Act)
Court ruled that in order to fall under the terms “publicly known,” the fact of being actually known to an unspecified or large number of people in Japan or a foreign country prior to the filing of the application for design registration was required.Source IPHC website
[Title of the patent] “Method for repairing sliding door device and repaired sliding door device”
[Key issue] Literal infringement (Article 70 of the Patent Act)
IP High Court judged in a patent infringement case that the appellant’s device did not belong to the technical scope of the patent invention, since the device did not satisfy “substantially the same height” of the phrase “an upper end of the behind wall and an upper end of a lower frame for repair have substantially the same height” of the patent claim, on which point the district court had made an opposite judgement.Source IPHC website
[Title of the patent] “Food product containing rice saccharified material and rice oil and/or inositol”
[Key issue] Support requirement (Article 36, paragraph (6), item (i) of the Patent Act)
Court rescinded a JPO’s decision on an opposition case, stating “the state of art as of time of the filing is only a matter to be considered auxiliary in order to understand the description of the claims and the Detailed Description of the Invention, and in principle, should not be treated as a matter to extract a problem to be solved by the invention.”Source IPHC website
[Title of the case] “Accessory case shaped camera” (the article of the design)
[Key issue] “The difficulty in creating a design” of Article 3 (2) of the Design Act.
Court stated that the present design, whose article was an “accessory case shaped camera”, could have been easily created by combining the primary cited design relating to a “ring case with a camera” with the secondary cited design relating to a “hidden camera.”Source IPHC website
[Key issue] “A trademark consists solely of a mark indicating, in a common manner, the common name of the goods or services” of Article 3(1)(i) of Trademark Act.
Court rescinded a JPO’s invalidation-trial decision, stating that in the light of the usage of “PPF” on websites, etc. for goods “films in general for protection of the body surface of automobile” (the goods ), it was acknowledged that traders and consumers had recognized “PPF” as a general abbreviation of the goods.Source IPHC website
[Title of the patent] “Constructional board”
[Key issue] Inventive step (Article 29 (2) of the Patent Act)
Court rescinded a JPO’s invalidation-trial decision, stating that a difference between a patent invention and a primarily cited invention should be found as a collective structure as a unit from a viewpoint of solving the technical problem of the patent invention.Source IPHC website
[Title of the invention] “Pharmaceutical”
[Key issue] “Right of prior use” of Article 79 of the Patent Act.
In an injunction case requested on the basis of a pharmaceutical patent, Court did not affirm a right of prior use for Appellant stating that the technical idea embodied in a sample drug of the Appellant’s product could not be an invention having the same content as the patent invention.Source IPHC website
[Title of the case] “Retweet” (Copyright)
[Key issue] “Infringement of moral right of author” of Articles 19(1) and 20 of the Copyright Act.
Court stated that, concerning the so-called “Retweet,” there was no infringement of copyrights (reproduction right, right to transmit to the public, right of communication to the public), but that there was infringement of moral right of the author (right to determine the indication of an author’s name, right to maintain integrity).
Source IPHC website
[Title of the case] Litigation seeking rescission of the JPO decision of dismissal of motion to invalidation of a patent covering a pharmaceutical compound.
[Key issue] Inventive step and the legal interest for filing a litigation against a JPO decision
This is Grand Panel case. The IP High Court stated in the judgement:
(i)the legal interest for filing litigation against a JPO’s invalidation-trial decision would not be lost even after the expiration of the patent right unless there is a special circumstance.
(ii)if a cited invention alleged is indicated by a general formula covering an enormous number of compounds, such an invention cannot be recognized as a cited invention, since it is impossible to derive a technical concept specifically relating to a compound unless there is any reason to preferentially or positively select the technical concept.Source IPHC website