Patent Infringement Litigation in Japan
-
An Overview -
Introduction
1 Procedural Overview
1.1 Preparation for Litigation
1.1.1 Consulting an Attorney
1.1.2 Warning Letters
1.2 Commencement of Litigation
1.2.1 Preparation and Filing of the Complaint
1.2.2 Jurisdition/Venue
1.2.3 Provisional Injunction
1.2.4 Attorney Fees
1.3 Progress of Litigation
1.3.1 Hearings and Briefs
1.3.2 Evidence, Witnesses and Experts
1.3.3 Court-Assisted Settlement
1.3.4 Bifurcation
1.4 Judgment and Appeals
1.4.1 First Instance
1.4.2 Appeals to a High Court
1.4.3 Appeals to the Supreme Court
2 Substantive Issues in a Patent Infringement Case
2.1 Infringement
2.1.1 Literal Infringement
2.1.2 The Doctrine of Equivalents
2.2 Validity of a Patent
2.2.1 Invalidation of a Patent
2.2.2 Appeals from Patent Office Decisions
2.2.3 Invalidity as a Defense in an Infringement Case
2.3 Damages
2.3.1 Lost Profit
2.3.2 Reasonable Royalty
2.3.3 Use of an Expert to Calculate Damages
2.4 Other Defenses
3 Case Study
3.1 The Claim
3.2 The Issue
3.3 Plaintiff's Position
3.4 Defendant's Position
3.5 Decisions of the Courts
3.5.1 The District Court
3.5.2 The High Court
Introduction
Until recently, Japanese
companies were more anxious to obtain patents than to enforce the patents that
they had already obtained. In a sense, patents were a symbol of their
achievement, but not a business weapon. However, this has been changed. Now, it
is not rare that a Japanese big company sues another Japanese company alleging
patent infringement by that competitor.
In the past, the
Japanese market was expanding more rapidly than each company expanded. Hence,
more efforts were made to catch up with the market expansion. However, because
of the slowdown of the economy, competitors are forced to share the limited
market. This naturally requires that each company should keep others from
entering the market of its own products. If the products are covered by one or
more patents that the company has, the patents provide a good weapon to drive
out competitors from its market.
Intellectual property
litigation is becoming more and more important. Although trademark infringement
is also important, many companies are now concerned about patent infringement
because they may find themselves in the position of a defendant. Usually, a
trademark infringement is committed by a counterfeiter. However, even a company
of a good reputation can be accused of patent infringement. Therefore, leaders
of industries must have general understanding of patents and patent
infringement. Otherwise, their good faith efforts of R&D (research and
development) could result in infringement of a competitor’s patent.
Considering the
above-mentioned aspect, this article will give an overview of patent
infringement litigation in Japan. Both procedural and substantive issues are
discussed, and recent development in this area of law in Japan is explained.
１ Procedural Overview
1.1 Preparation for Litigation
When
the owner of an intellectual property right has reasonably concluded that a
competitor is likely infringing its right, the first thing it should do is to
consult an attorney. However, since resolution of disputes involving
intellectual property requires certain expertise, selection of the attorney is
important.
In
this regard, patent attorneys must be distinguished from attorneys-at-law.
Unlike U.S. patent attorneys, Japanese patent attorneys are not admitted to the
bar. After finishing a special training course and passing a completion test,
however, they are permitted to represent their clients before the court if
their client is represented also by an attorney-at-law. They are also permitted
to represent their clients in negotiations to grant a license under a patent.
On
the other hand, attorneys-at-law are basically litigators. They are experts in
litigation. However, it is rare that they have technical or scientific
background. Moreover, few of them actually have experience in patent
infringement litigation.
Under
the circumstances, we have two groups of experts for intellectual property
infringement litigation. One consists of patent attorneys who are very active
in assisting attorneys-at-law in litigation. They have some insight to how
patent claims are interpreted by the courts. This is very important because the
courts quite often interpret patent claims differently from the Patent Office.
The
other group consists of attorneys-at-law who are active in representing their
clients in patent infringement cases. Although they are not usually expected to
have technical or scientific background, they know how technical issues should
be tied to legal issues. In addition, the very fact that they do not have technical
or scientific background is sometimes an advantage. Since the judges do not
have technical or scientific background either, it is important to formulate
arguments that are understandable to laymen. In this regard, attorneys without
any technical background may play the role of litmus paper; that is, what they
do not understand would not be understood by the judges.
Under Japanese law, it
is not usually required to send a warning letter to enforce an intellectual
property right. The only exception is when one would like to preserve a certain
preliminary right based on a patent application before a patent issues from
that application.
However, it is quite
customary that a warning letter is sent from the owner of an intellectual property
right to an accused infringer before litigation actually commences. This may
have two reasons.
One is just to show
politeness. In Japan, it might be considered unfair or even rude that one sues
another without giving the opponent a chance to resolve the matter without
having recourse to litigation.
The other reason is more
practical. If a warning letter is sent from an experienced litigator
specializing in intellectual property law, it will show the preparedness of the
sending party. Hence, it will have a good chance of success to force the
receiving party to settle the dispute through compromise. This approach is
especially effective when the patentee does not actually wish to compel the
competitor to get out of the market, but it is prepared to grant a license.
1.2 Commencement of Litigation
1.2.1 Preparation and Filing of the Complaint
It should be first noted
that Japanese court practice requires greater effort on the plaintiff's part
than the United States practice. The plaintiff is required to provide in the
complaint detailed statements regarding the grounds of his allegation. In a
patent infringement suit, such statements usually include an analysis of the
patent specification, an analysis of the claims and an analysis of the accused
product, and further show the correspondence between elements recited in the
claims and those found in the accused product.
In order to meet this
requirement, attorneys usually discuss the subject invention (including the
prior art and the accused product) in detail with their client before drafting
the complaint.
For filing a complaint,
a certain percentage of the economic value of the case must be paid to the
court as filing fee. The percentage varies depending on the amount of the
damages to be sought. It also depends on the sales volume of the accused
product when injunction is sought. As the rule of thumb, however, it is about
three thousandths of the economic value at stake assuming that around ten
billion yen is at stake. This only applies to a principal lawsuit, but it does
not apply to a provisional injunction case, where only a nominal fee is
required for initiating the proceedings.
The
economic value of the case is the total of the amount of the damages to be
collected and the amount of the profits to be obtained by the plaintiff through
an injunction. Since it is usually difficult to determine the latter, the court
provides guidelines to calculate it. The plaintiff's attorney usually
calculates it according to the guidelines. The guideline provided by the Tokyo
District Court is as follows:
I = S × R× Y × F,
where I: value of the injunction, S: amount of annual sales to be enjoined R: profit rate or royalty rate Y: remaining term of the patent F: reduction factor, usually 1/8 at the Tokyo District Court
Under Japanese law,
district courts have the jurisdiction to hear both criminal and civil cases in
respect of patent infringement. Generally, an action shall
be filed at the district court which is located in the place where the
defendant is domiciled. In the case where the
defendant is not domiciled in Japan, or the domicile is unknown, the forum
shall be determined by his residence. Depending on the ground
of the litigation and the reliefs to be sought, however, the plaintiff's
domicile may be also a sufficient contact for jurisdiction.
The total number of
district courts is fifty. Each prefecture in
Japan has at least one district court. However, a recent
amendment to the Code of Civil Procedure, which became effective as of April 1,
2004, allows the holder of certain intellectual property rights to file an
infringement action with the Tokyo or Osaka District Court. For such matters, the Tokyo
District Court has an overlapped jurisdiction with other district courts
located in the eastern area of Japan, while the Osaka District Court covers the
western area. In addition, these two
courts now have an exclusive jurisdiction for those areas in connection with
cases relating to patent rights, utility model rights, semiconductor circuit
related rights or copyrights for computer programs. Since they have special civil divisions for intellectual property
matters, and, therefore, have much more expertise than other district courts,
it is believed that concentrating intellectual property cases to them will help
quicker disposition of the disputes.
Moreover, the
Intellectual Property Divisions of the Tokyo High Court now has an exclusive
jurisdiction over all appeals from their judgments relating to intellectual
property rights. As of April 2005, the
Intellectual Property Divisions of the Tokyo High Court will form a new
appellate court which will be called the Intellectual Property High Court. It is expected that we will have more
consistent decisions to form a reliable case law.
In addition to permanent
injunction to be granted after regular proceedings of a civil lawsuit,
provisional injunction is also available in Japan. Provisional injunction proceedings
against patent and trademark infringements should be taken, in principle, at
the district court which would have jurisdiction over the principal lawsuit
seeking permanent injunction. Where an action seeking
monetary relief is already pending before the district court, provisional
injunction proceedings may take place before the same court.
Decisions by the court
given after regular proceedings of a civil lawsuit are highly dependable
because examinations are made deliberately based upon reliable evidence and
without haste. As explained later, it
usually takes about a year and a half or two years to get the decision of the
court of first instance. Although it may be quick enough for many litigants,
injunction will not become executable unless the decision is made final. Since
an appeal from the injunction can prevent it from becoming final, and the
appeal could take another year or two, the patentee should consider filing a
petition for provisional injunction.
Provisional proceedings
are less formal and more intensive in order to reach an early conclusion of the
matter. It may also lead to a court-assisted settlement. Therefore, the filing
of a petition for provisional (or preliminary) injunction is often preferred.
Although theoretically it is preliminary, it often leads the parties to a final
settlement of the dispute. Hearings for preliminary injunction are more
frequently held and less formal than those for regular civil cases. Therefore,
the decision is sometimes given within a year from the filing with less than
ten hearings.
When the court decides
to grant an injunction, since the decision is preliminary, the petitioner is
required to make a security deposit sufficient to cover the damages that may be
incurred by the accused infringer if the injunction be found to be erroneous.
The amount of the deposit is determined by the judge at his discretion after
considering various factors, including the petitioner's probability of success
in the final decision of the case. The deposited security money is to be
returned to the plaintiff when the defendant has exhausted or waived all
measures to have the provisional injunction reversed, for example, when a
permanent injunction is granted and becomes final.
In Japan, the most
typical fee arrangement is on an initial/success fee basis. The initial fee is
usually determined as a certain percentage of the claimed amount and the value
of injunction, and the success fee is usually determined as a certain
percentage of the collected amount and the value of injunction. To determine
these fees, the most difficult part is how to value the injunction. Hence, it
is often the case that the client and the attorney agree on an certain amount.
Another way of fee
arrangement is on an hourly basis. The
average hourly rate for an experienced attorney is around forty to fifty
thousand yen, and it takes one or two hundred hours to prepare and file a
complaint or a petition for preliminary injunction. Preparing for a hearing, whether a formal hearing or a
preliminary hearing, requires twenty to forty hours. Therefore, assuming that five to ten hearings are held, the total
attorney fees would range from about 7,000,000 yen to about 28,000,000
yen. Of course, these figures are only
a rough estimate and would depend on the complexity of the case.
1.3 Progress of Litigation
Once the complaint is
filed, the case is assigned to a panel of three judges. Depending on the
availability of the panel, the court decides to hold the first hearing within
one or two months after the filing. Then, the court serves the complaint and
the summons upon the defendant and instructs it to file an answer to the
complaint about a week or ten days prior to the first hearing.
Subsequent hearings are usually held at one or two-month intervals over a period of one year or one and a half years. Those hearings may satisfy different formalities depending on the complexity of the case. If the case is not very complex, and it has few actual issues, a relatively small number of hearings are held in a large courtroom with the whole panel present. In contrast, if the case is complex, less formal hearings are held with only part of the panel present. These less formal hearings are called “preliminary hearings,” and their purpose is to sort out actual issues to be decided by the whole panel. In many cases, an objective description of the accused product/process is agreed upon between the parties. If the claim requires that a recited element should have a “round” corner, the description of the accused product/process should avoid use of the term “round.” Instead, it should have a description that it has a corner finished to have a radius of 0.5 mm, because it would be subjective to say it is either round or sharp.
For each hearing, either
voluntarily or upon the request of the presiding judge, either or both of the parties
usually submit a brief rebutting the opponent's allegations.
1.3.2 Evidence, Witnesses and Experts
The parties are allowed
to submit exhibits, such as a sample of the accused product or the written
opinion of an expert. Furthermore, witnesses may be examined at a hearing to
support their allegations contained in the briefs. The court may issue a
summons to examine a witness. Court orders compelling the opponent or a third
party to produce documents are also available under certain conditions. The recent
amendment of the Civil Procedure Code has expanded such availability.
1.3.3 Court-Assisted Settlement
Under Japanese law, the
judge may recommend settlement at any time that he/she considers it
appropriate. In many cases, when the judge has obtained a certain impression as
to the merits of the case, he/she often suggests settlement even when the case
still needs continuation of proceedings for him/her to render a judgment based
on formally presented evidence.
If the parties accept
the recommendation of the judge, a settlement conference is usually held in the
courthouse to discuss the terms and conditions of the settlement. When the
parties agree on the terms and conditions of the settlement, they will be
recorded in an official court record and will have the same effect as a final
judgment rendered by the court. This kind of settlement is usually called
"court-assisted settlement," which is probably comparable to the
consent decree in the U.S.
If the attempt to reach a
settlement fails, the judge resumes the usual process holding a series of
hearings.
Since we only have a series of hearings instead of a trial, we do not really have a concept to be called “bifurcation." However, our court practice adopts a similar concept. In most intellectual property infringement cases, two phases can be distinguished in the series of hearings.
The first phase is the
liability phase, in which the court would not instruct the parties to submit
detailed argument about the damages. Until it has understood the issues
relating to the liability, the arguments of the parties should be concentrated
on the question of liability.
Once the court reaches a
conclusion that there is no infringement, it simply declares conclusion of the
procedure, and it schedules the date for pronouncement of judgment. In such
cases, the defendant would not be harassed by the plaintiff’s persistent
request for production of financial documents.
On the other hand, if
the court, at least tentatively, reaches a conclusion that there is
infringement, it will request the defendant to submit its position about the
sales volume of the accused product and the reasonable royalty rate. When the
defendant submits its position, the court asks the plaintiff whether it accepts
the defendant’s position.
If the position taken by
the defendant is absurd, the plaintiff may choose to prove what it believes is
the truth. For that purpose, it may move for a court order compelling the
defendant to produce certain financial documents. Because of such a weapon
given to the plaintiff, the defendant usually submits reasonably correct
numbers about their sales volume. Therefore, the plaintiff is often satisfied
with them.
Once the parties agree
on the sales volume, the issue to be decided by the court is narrowed down to
the decision whether the damages may be based on the lost profit, and the
decision of the profit rate or the reasonable royalty rate, whichever
applicable. Therefore, the court allows the parties to submit arguments and
evidence only on those issues. This practice helps achieve a relatively quick
disposition of disputes.
1.4 Judgment and Appeals
When the presiding judge considers that the case is ready for decision,
he declares the conclusion of the hearing procedure and schedules the date for
pronouncement of the judgment, which is usually given two or three months after
the conclusion of the hearing procedure.
According to a report
published by the Administrative Bureau of the Supreme Court several years ago,
the average time for the first instance of a patent infringement case was about
fifteen months at the Tokyo District Court, while it was about eighteen months
at the Osaka District Court, and twenty-six months at other district
courts. Now, all patent cases are filed
with either the Tokyo District Court or the Osaka District Court and only a
part of the intellectual property cases, for example, a trademark infringement
case involving a locally known trademark, are filed with a district court other
than them. Therefore, the average time
should be even shorter. Although
complicated cases take a longer time, we could say that most cases are decided
within a year and a half.
In civil proceedings, appeals to a High Court from first instance
judgments are always available in Japan although the appeal must be lodged
within a certain period of time. Since the facts found by the first instance
court do not bind the appellate court, review can be made with respect to not
only legal issues but also factual issues. In certain cases, even a new witness
may be examined at the appellate court. However, the time before the appeal
jurisdiction is usually much shorter than that in the court of first instance,
generally about one year.
1.4.3 Appeals to the Supreme Court
We can appeal judgments rendered by High Courts to the Supreme
Court. However, review by the Supreme Court is limited to legal questions. It
does not review factual issues. Hence, the appellant must state a question of
law in an appeal brief to be submitted to the Supreme Court.
2 Substantive Issues in a Patent Infringement Case
2.1 Infringement
2.1.1 Literal Infringement
Only
when the accused product/process satisfies all the limitations recited in the claim,
infringement of the patent by that product/process is found. However, it is
often difficult to determine whether a certain element in the accused
product/process satisfies a certain limitation recited in the claim of the
patent. For example, let’s assume that the claim recites a “continuous metal
layer." If the accused product has a layer made of metal but with a lot of
small holes, is it a continuous layer? This is a question of claim
interpretation.
To determine whether the layer found in
the accused product is a “continuous metal layer," we should first analyze
the claim in the light of the specification. If the purpose of the layer is to
conduct electricity, holes may not count. However, if it is to block leakage or
seepage of gas, a layer with holes is no longer a continuous layer. If the term
to be interpreted has a lexicographical definition, we should follow it unless
the specification gives a different meaning to it. For this kind of analysis,
we should look into the specification, prosecution history and the prior art
references.
2.1.2 The Doctrine of Equivalents
In
certain cases, the accused product/process does not literally satisfies all the
limitations recited in the claim, but it may still be found to infringe the
patent. For example, a product having a “continuous carbon layer" may be
found to infringe a patent that requires presence of a “continuous metal
layer" if the former is considered as an equivalent of the latter. The
doctrine to be applied to this kind of situation is called the doctrine of
equivalents.
According to the
decision rendered by the Supreme Court on February 24, 1998, we should follow a
set of guidelines to determine whether patent infringement should be found
under the doctrine of equivalents. Applying the guidelines, the Supreme Court
reversed a controversial Tokyo High Court decision that had found patent
infringement under the doctrine. In its decision, it first confirmed the
generally-accepted principle that no infringement should be found if there is
an element that is recited in the claim, but is not found in the accused
product. Then, it further stated as follows:
Even if an element found
in the accused product is different from the one recited in the claim, the
accused product is equivalent to the claimed invention and within the scope of
protection of the patent when all the following conditions are met:
(1) the element does not relate to the core concept of the claimed
invention;
(2) replacement of the recited element with the one found in the accused
product achieves the purpose of the invention; that is, they perform the same
effect;
(3) those skilled in the art would have no difficulty in
conceiving the replacement at the time of manufacture of the accused product;
(4) the accused product would not have been the same as, or
obvious from, the prior art at the time of filing of the patent application;
and
(5) there is no special circumstance that indicates or implies
that the accused product was intentionally excluded from the scope of the claim
during the prosecution of the patent application.
The Supreme Court
reversed the Tokyo High Court decision on the ground that the lower court had
failed to consider condition (4) above, that is, whether the accused product
was obvious from the prior art. The case was remanded to the Tokyo High Court.
2.2 Validity of the Patent
2.2.1 Invalidation of a Patent
Under Japanese law, the court does not have the jurisdiction to
assess the validity of a patent, while it does have the power to rule on the
infringement of a patent. In contrast, the Patent Office has the jurisdiction
to assess the validity of a patent, while it cannot rule on an infringement
case. Following this rule, it was said until April 11, 2000 that invalidity of
the patent in suit would not be a formal defense in an infringement case.
Therefore, when the alleged infringer would like to raise the question of
validity in an infringement case before a district court, it was usually
advisable to initiate invalidation proceedings before the Board of Appeals of
the Patent Office. It would give the court measures to avoid a situation where
a court must enforce a patent which would later be invalidated.
If the validity of the
patent in a suit is seriously questioned, the court could narrowly interpret its
claims to avoid an unreasonable result. In addition, when there is a serious
question of validity, but no narrow interpretation of the claims would avoid
enforcement of a substantially invalid patent, the court may stay the
proceedings of the suit during the pendency of the invalidation proceedings.
Hence, there has been no case in which a patent right which is materially null
has been enforced by a court.
2.2.2 Appeals from Patent Office Decisions
The losing party in the invalidation proceedings before the Appeal
Board of the Patent Office may lodge an appeal from the decision by the Board,
seeking its revocation. Since the Tokyo High Court has the exclusive
jurisdiction over this kind of appeal, the appeal notice must be filed with it.
Once an appeal is lodged, the Court appoints a judge to preside preliminary conferences, which are usually held several times at intervals of about two months. When the judge is convinced that the argument by the plaintiff and the rebuttal by the defendant have been sufficiently presented for a decision to be made by a panel of three judges, he/she declares conclusion of the preliminary proceedings, and the case is formally presented to the panel of three judges in a courtroom. The judgment of the Court is usually rendered in two or three months from the formal presentation of the case. The judgment either dismisses the complaint or revokes the decision by the Board of Appeals of the Patent Office. When the Patent Office decision is revoked, the case is automatically remanded to the Board of Appeals.
2.2.3 Invalidity as a Defense in an
Infringement Case
On April 11, 2000, the Supreme Court rendered a judgment affirming
a Tokyo High Court judgment that had found the patent in suit invalid in an
infringement case.
Originally, the
complaint was filed by Fujitsu against TI seeking a declaratory judgment of
non-infringement. At the first instance, the Tokyo District Court found no
infringement because an element recited in the claim was missing in the accused
device. The appellate court, that is, the Tokyo High Court, found no
infringement, either, but on different grounds. After it said that another
element was missing in the accused device, it added that TI could not enforce
the patent against Fujitsu because it was invalid.
In the appeal filed by
TI, the Supreme Court ruled that a court deciding the question of patent
infringement may find the patent in suit invalid even if there is no decision
by the Patent Office invalidating it.
Under the Japanese
Patent Law, only the Patent Office has authority to declare a patent invalid,
and an accused infringer believing that the patent in suit is invalid usually
files a petition for invalidation with it. When such a petition is filed, the
court deciding the question of infringement may stay the proceedings at its
discretion. In the past, it was the practice that the defendant should not
directly use the invalidity defense before the court.
However, the Supreme
Court ruled that a party that was interested only in defending him/herself, but
not in absolutely invalidating the patent, should be allowed to raise the
question of invalidity before the court without filing a petition for
invalidation with the Patent Office. When such a question is raised, the court
must examine whether there is a clear reason why the patent should be
invalidated. If it is convinced that any reasonable appeal board examiner of
the Patent Office should find it invalid, it may dismiss the patentee's claim
based on the doctrine of abuse of right.
After this ruling by the
Supreme Court, lower courts are quite positive in taking up the question of
invalidity in infringement cases. Because of this new trend, the author expects
that claim interpretation by the courts will be more and more liberal. The Japanese
courts' narrow claim interpretations that foreign practitioners criticized much
in the past were largely a result of avoiding declaring them invalid.
Finally, the Diet, the
legislative body of the Japanese government, has amended the Patent Law to make
the invalidity of a patent a statutory defense against a charge of
infringement. The amendment says that a
patentee cannot enforce his right if the patent has a reason for invalidation
that would be found by the invalidation action at the Patent Office.
2.3 Damages
Under Japanese law, a patentee is entitled to compensation of
damages calculated based on the lost profit or the reasonable royalty when
his/her patent is infringed. However, it is usually difficult to prove the lost
profit. Therefore, the law presumes that the profit obtained by the infringer
is the same as the profit that would have been obtained by the patentee but for
the infringement. The 1998 amendment of the Patent Law added another way of
presumption. When the patentee is capable of supplying products competing the
infringing product, he/she may presume that his/her lost profit is equal to the
amount calculated by multiplying his/her unit profit with the number of units
sold by the infringer. Thanks to this amendment, the patentee will be no longer
required to prove the profit of his/her opponent.
Before the 1998 amendment of the Patent Law, the "Reasonable
Royalty" was defined as the royalty that the patentee would have normally
received." Because of the adverb "normally," the courts had some
difficulty to find a royalty rate as reasonable if it was higher than those
which they found in actually negotiated agreements. However, if the royalty
rate applied to the infringer is lower than or the same as the ones agreed upon
without litigation, honest licensees make a fool of themselves. Therefore, the
conservative approach taken by the courts was a target of criticism. To
encourage the courts to find higher royalty rates as reasonable, the amendment
has deleted the adverb "normally."
2.3.3 Use of an Expert to Calculate Damages
The 1999 amendment of the Patent Law authorizes the court to
appoint an expert calculating the damages when a party files a request for such
appointment. When such an expert is appointed, the parties are required to give
relevant information to him/her. Although it is often the case that the parties
are reluctant to disclose financial information to each other, they are
expected to disclose such information more cooperative to the expert. When it
is difficult to calculate the amount of damages, the amendment allows the court
to decide it at its discretion with the best available information. Therefore,
acting cooperatively with the expert would be usually recommended.
2.4 Other Defenses
The defendant in a patent
infringement case may raise certain other issues as defense against the charge
of infringement. One example is the prior user right. If the defendant was
preparing for or doing business working the same invention as the patented one
before the filing date of the patent, it has a statutory royalty-free license.
This right is called “prior user right."
Another issue that may
be raised by the defendant is the research and development exception. Under the
Patent Law of Japan, working a patented invention in research and development
activities is not regarded as infringement of the patent. However, in certain
cases, it can be an issue whether a certain activity should be considered as
research and development. In this regard, it should be noted that the Supreme
Court ruled on April 16, 1999 that clinical testing for administrative approval
should be considered as research and development.
3 Case Study
3.1 The Claim
A method of production of a polymer composite of monovinyl aromatic compounds which has raised anti-shock strength because of polymerization of monovinyl monomer in the presence of 1, 4 polybutadien in the amount of 1 through 20% of the total weight of the polymer,
which is characterized by the fact that :
said 1, 4 polybutadien contains at least 25% but not exceeding 90%
of cis isomer content and 10% or less of vinyl content.
3.2 The Issue
Whether the polybutadien used in the accused process contains 10% or less of vinyl content.
3.3 Plaintiff’s Position
The term 10% used in the claims must be interpreted in the absolute sense; that is 10% means one out of ten. To prove that the polybutadien used in the accused process contains 10% or less of vinyl content, it is necessary and permissible to use the most reliable method at the time of proof. At the time of litigation, the most reliable method is the NMR method or the infra-red method with the photo-absorption coefficient determined through measurement using a standard sample.
3.4 Defendant’s Position
The term 10% used in the claims must be interpreted as a measured value; that is, it depends on the method of measurement. However, the only practical method that was available at the time of the filing of the patent application was the infra-red method with the photo-absorption coefficient borrowed from reported measurements. Hence, the polybutadien’s vinyl content must be measured through the infra-red method using the photo-absorption coefficient that was available at the time of the filing.
The District Court dismissed the complaint finding that the infra-red method with the photo-absorption coefficient borrowed from reported measurements had been the standard measuring method at the time of filing of the patent. The value obtained by this method was out of the scope of the claim. (The Tokyo District Court, November 16, 1979)
The High Court affirmed the district court’s conclusion, but on a different ground. It said that no standard measurement method had been established at the time of filing the patent, and, therefore, those skilled in the art would not understand the meaning of the claim without ambiguity. The court dismissed the appeal and affirmed the lower court’s decision on the ground that the patentee would no way show infringement because no specific measurement method was defined in the patent specification. (The Tokyo High Court, July 17, 1984)
(End)
