[Title of the patent] “ANALYSIS METHOD OF HAIRCUT TECHNIQUES”

[Key issue] Statutory Invention (Article 2, paragraph (1) of the Patent Act）

A case in which the court ruled that the 1^st to 4^th steps of the invention at issue are estimation of a naturally-dried hairstyle by the use of knowledge of hair (1st step), selection of the area of head to be analyzed (2nd step), classification of the analysis subject’s hairstyle that was estimated by the analyst (3rd step) and derivation of an analysis for the haircut technique corresponding to the classification (4^th step) and they are all conducted by the analyst in his/her mind; therefore the invention at issue cannot be said to be “a creation of technical ideas utilizing a law of nature” and does not fall under the “invention” stipulated by the Patent Act.

[Suit against Appeal Decision on Refusal of Design Patent Application]

[Key issue] Estoppel

A case in which the court rescinded a JPO’s decision, stating that it cannot be said that the fact that an applicant changes its allegation in the appeal seeking rescission of the JPO decision from its allegation made in the examination and trial stages is not allowed due to estoppel.

[Title of the patent] “Antipruritic agent”

[Key issue] Whether the application for registration of patent term extension (PTE application) falls under Article 67-3, paragraph (1), item (i) of the Patent Act

Court rescinded a JPO’s appeal decision which maintained an examiner’s decision to reject a PTE application.  The examiner’s reason for rejecting the PTE application was that the approved drug having nalfurafine hydrochloride as the active component was not contained in the patent invention having nalfurafine as the active component and therefore it could not be found that upon working the patent invention, it was necessary to receive the disposition specified by Cabinet Order as set forth in Article 67, paragraph (2) of the Patent Act.

[Title of the patent] “(Meth)acrylic acid ester copolymer”

[Key issue] Inventive step (Article 29, paragraph (2) of the Patent Act)

Court rescinded a JPO’s revocation decision, stating that the patent invention could have been easily conceived of by a person skilled in the art based on Cited Invention 1, since there was little motivation to improve Cited Invention 1 to solve the problem of the patent invention because the technical field and the problem are not necessarily the same for the patent invention and Cited Invention 1 and according to the disclosure of Citation 1 (Exhibit Ko 7), there is little reason for a person skilled in the art to select the two kinds of monomers, a monomer containing epoxy groups and a monomer containing hydroxy groups, from among multiple combinations disclosed in Citation 1.

The IPHC published an English translation of a Ground Panel Case (2019(Ne)10003, Appeal Case of Seeking Injunction and Compensation against Patent Infringement).

[Title of the invention] METHOD AND DEVICE FOR FORMING AND DISTRIBUTING REAL TIME INTERACTIVE CONTENTS ON WIRELESS COMMUNICATION NETWORK AND INTERNET

[Key issue]
Present Invention and Cited Invention differ from each other in that Present Invention sends “at least an identifier of a single receiver” in addition to the “expression of the second content”, whereas Cited Invention can select a “rank” in which the performer will participate by inputting the “rank” of a “performance group” (“Different Feature”). The issue is whether or not “at least an identifier of a single receiver” could have been easily conceived from “rank” of a “performance group”.
The court rescinded the JPO decision by stating that the JPO’s judgment on whether or not the Different Feature could have been easily conceived has an error.

[Title of the patent] “PROCESS FOR PACKAGING WINE IN ALUMINUM CANS”

[Key issue] Support requirement (Article 36, paragraph (6), item (i) of the Patent Act)
Court dismissed the Plaintiff’s claim for rescission, stating that the Invention cannot be acknowledged as conforming to the support requirement since it cannot be recognized from the description of the Detailed Description of the Invention and the common general technical knowledge as of the priority date that a person skilled in the art could recognize that the problem to be solved by the Invention could be solved over the whole numerical ranges of a chloride level of less than 300 ppm and a sulfate level of less than 800 ppm that were encompassed into the Invention.

[Title of the patent] “Application generation support system and application generation support program”

[Key issue] Inventive step (Article 29, paragraph (2) of the Patent Act)

Court stated in the decision that there is no motivation to apply the well-known art to the cited invention in view of the purpose thereof.

[Suit against Invalidation Appeal Decision of Trademark Application]

[Key issue] “Likely to cause confusion” (Article 4, paragraph (1), item (xv) of the Trademark Act).

Trademark at issue	Cited Trademark

Considering the following facts, Court concluded that the Trademark “is likely to cause confusion”:
While the Trademark and the Cited Trademark are different in silhouette, and because of the presence or lack of a design that is outlined by a white line inside, and other features, the two trademarks are similar in the entire silhouette.
The Cited Trademark has become a well-known trademark that is widely recognized by traders and consumers in Japan as a trademark indicating clothing, caps, hats, and the like of the brand, “PUMA”, pertaining to the plaintiff’s business.
While the designated goods of the Trademark are “tee-shirts; headgear for wear”, the brand, “PUMA”, also covers products of T-shirts, caps, and hats…

[Suit against Appeal Decision on Refusal of Design Patent Application]

A case in which, with regard to the design according to a body of an electric toothbrush, the constitution of the entirety and the constitution of the shaft portion create a common aesthetic impression as a whole, in which an impression received from the different point that two buttons for controlling operation are disposed vertically on a front surface of the body grasping portion in the design of the present application, whereas in the cited design, one is disposed, does not exceed the impression received from the common point, and it is judged that the design of the present application is similar to the cited design.

Drawing of design at issue	Drawing of cited design

[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)

A recent IPHC Ground Panel judgment delivered on June 7, 2019.

[Title of the patent] “ANTIGEN-BINDING MOLECULE CAPABLE OF BINDING TO TWO OR MORE ANTIGEN MOLECULES REPEATEDLY”

[Key issue] Enablement requirement (Article 36, paragraph (4), item (i) of the Patent Act)

Court stated in the decision that “it cannot be said that the Detailed Description of the Invention provides a description to the extent that allows a person ordinarily skilled in the art to implement the whole range of pharmaceutical composition encompassed by the invention.”

[Title of the patent] “ANTIGEN BINDING PROTEINS TO PROPROTEIN CONVERTASE SUBTILISIN KEXIN TYPE 9 (PCSK9)”

[Key issue] Inventive step, support requirement and enablement requirement (Article 29, paragraph (2); Article 36, paragraph (4), item (i); and Article 36, paragraph (6), item (i) of the Patent Act)

Regarding the support requirement issue, Court stated in the decision “A person ordinarily skilled in the art who read the description could recognize that various neutralizing antibodies competing with the reference antibody included in the scope of the claims of the Corrected Invention 1 (Claim 1) other than neutralizing antibodies competing with the reference antibody in the description might be obtained by repetitively implementing the production and selection of immunized mouse in accordance with a procedure and a schedule of immunization program in the description, the hybridoma generation in which a selected immunized mouse is used, and a screening and an epitope binning assay for identifying an antibody that strongly blocks a binding interaction between PCSK9 and LDLR in the description from the start.  Therefore, it is recognized that Corrected Invention 1 (Claim 1) conforms to the support requirement.” and maintained the patent.

Confirmation of the non-existence of right to demand compensation for damages based on patent right

[Key issue] International jurisdiction and benefit of action (Article 3-2, paragraph (3), Article 3-3, item (viii), Article 3-6, Article 3-9, Article 38, first half of the Code of Civil Procedure)

A case in which, with regard to a claim for confirmation of the non-existence of right to demand compensation for damage based on a patent right between the parties concerned including foreign corporations among both the appellants/appellees, the jurisdiction of the Japanese courts is acknowledged and then, the action was dismissed since the change of the action of adding the product to be the target of the action is not allowed, and the action lacks benefit of action and is illegal.

Injunction against breeder’s right

[Key issue] Interpretation of “the holder of the right has not had reasonable opportunity to exercise his/her right” (Article 2, paragraph (5), item (ii) of the Plant Variety Protection and Seed Act)

A case in which, in regards to a demand for compensation, etc. based on a breeder’s right of shiitake mushrooms, the court held that the exercising of the right against production or transferring or the like of harvested material shall be restricted only to the cases where the holder of the right has not had reasonable opportunity to exercise his/her right at the stage of propagating material, thereby partially restricting the exercising of the right.