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2022.07.01 Patent

Introduction of judicial precedent: limited interpretation of meaning of term in claims

1. Introduction

We would like to introduce a judicial precedent (2019 (Ne) No. 10015) in which the meaning of a term in claims is limitedly interpreted in consideration of the specification and common technical knowledge.
 
The judgment is merely one case study, but will be very helpful as a way of interpreting claims faithful to the basics in Japanese practice.
Although this case is an appeal court decision, the same decision was made by the court of the prior instance (Tokyo District Court, January 24, 2019).
 
 
 

2. Outline of Subject Patent

This Patent (Patent No. 5946489) is a patent for a divisional application (Japanese Patent Application No. 2014-83507) partly divided from the original application (Japanese Patent Application No. 2012-149675).
Of the inventions of this Patent, the constituent features in the inventions according to claims 1 and 3 (hereinafter referred to as the Present Inventions 1 and 3, respectively) that became the issue will be separately described as follows.
 
[Present Invention 1]
1-A: Fermented soybean hypocotyl product
1-B: containing ornithine
1-C: and equol.
 
[Present Invention 3]
3-A: Food, food for specified health use, dietary supplement, functional food, or food for the sick containing
3-B: a fermented soybean hypocotyl product,
3-C: the fermented soybean hypocotyl product containing ornithine and equol, wherein
3-D: ornitine, which is a fermentation product, is contained in an amount of 8 mg or more per 1 g of dry weight of the fermented soybean hypocotyl,
3-E: equol, which is a fermentation product, is contained in an amount of 1 mg or more per 1 g of dry weight of the fermented soybean hypocotyl, and
3-F: a total content of genisteins in the fermented soybean hypocotyl product is 12% by weight or less per total amount of isoflavone in the fermented soybean hypocotyl product.
 
 
 

3. Appellee’s product (defendant’s product)

The appellee’s product is an oral ingestion-type supplement that uses EQ-5 (*) as a raw material, which is mixed with beer yeast, lactobionic acid-containing lactose fermented product, etc. and encapsulated.
 
*Raw material EQ-5 is a fermented product obtained by adding seed bacteria to isoflavone, which is a soybean hypocotyl extract extracted from soybean hypocotyl, and fermenting it. EQ-5 has the following characteristics:
– equol content is about 10 mg per 1.32 g (3 capsules);
– ornitine content is about 24.29 mg per 1.32 g (3 capsules); and
– the total content of genisteins in isoflavone is 0.6% by weight per total amount of isoflavone.
 
 
 

4. Issues

The following became issues.
(a): Whether the defendant’s product satisfies the constituent features of the Present Invention 1 (as to interpretation of the meaning of the term “fermented soybean hypocotyl product”)
(b): Whether defendant’s product satisfies the constituent features of the Present Invention 3 (as to interpretation of the meaning of the term “fermented soybean hypocotyl product”)
(c): Equal theory
(d): Success or failure of the defense against invalidation of the patent of the Present Invention 1
(e): Success or failure of the defense against invalidation of the patent of the Present Invention 3
 
Here, we will focus on issues (a) and (b). No judgments were provided on issues (d) and (e) in the decision.
 
 
 

5. Court decision

(1) Key points

In consideration of the present specification, the court has limitedly interpreted that the “fermented soybean hypocotyl product” (constituent feature 1-A) in the claims does not include a fermented product using the soybean hypocotyl extract as a raw material for fermentation, and ruled that the defendant’s product (which uses the fermented product “EQ-5” including the soybean hypocotyl extract as a raw material) does not fall under the Present Inventions 1 and 3.
 
 
 

(2) Issue (a)

Meaning of “fermented soybean hypocotyl product” of the Present Invention 1
The court found the meaning of the “fermented soybean hypocotyl product” (constituent feature 1-A) of the Present Invention 1 as follows.
 
 
 
(i) Claims
The “fermented soybean hypocotyl product” of the Present Invention 1 can be understood to be a “fermented product” of the “soybean hypocotyl” based on the wording itself, and the raw material for fermentation thereof can be understood to be the “soybean hypocotyl”. The “soybean hypocotyl” is a columnar portion that becomes the embryo axis during soybean germination, and is known to have a higher content of saponin and isoflavone than the cotyledon portion of soybean.
 
There is neither a statement defining “fermented soybean hypocotyl product” in the claims (claim 1) of the Present Invention 1, nor a statement limiting a “soybean hypocotyl”, which is a raw material for fermentation thereof, to a specific component.
In addition, some products (food materials) on the market are labeled with “soy hypocotyl” and “soy hypocotyl extract” separately as raw material labels.
 
 
 
(ii) Specification
There are no statements in the present specification that define the “fermented soybean hypocotyl product” of the Present Invention 1.
 
Next, the present specification has the following statement regarding “soybean hypocotyl extract”.
(*To help understanding, the expressions are revised as appropriate.)
 
“Various uses have been developed for the extract of the soybean hypocotyl portion. However, the soybean hypocotyl extract itself is disadvantageously expensive. (Omitted) The soybean hypocotyl extract cannot be currently used as a raw material for industrially producing equol. “([0007])
 
“Since the soybean hypocotyl itself has a characteristic bitterness, there is a trend to avoid using the substance itself as it is, and most of the soybean hypocotyls are currently discarded.” ([0008])
 
“The fermented soybean hypocotyl product of the present invention is made from soybean hypocotyls that are discarded during soybean food processing, and therefore has high industrial potential in terms of effective use of resources.” ([0014])
 
Next, the present specification has the following statement regarding “soybean hypocotyl”.
(*To help understanding, the expressions are revised as appropriate.)
 
“In the present invention, soybean hypocotyls are used as a raw material for fermentation. (Omitted) From the viewpoint of more efficiently producing equol, it is preferable to use powdered soybean hypocotyls.” ([0019])
 
Further, in the present specification, “Examples 1 to 12” show examples in which “powdered soybean hypocotyls” are selected as a raw material for fermentation, then mixed with arginine and water to prepare soybean hypocotyl solutions (raw material), thereby obtaining powdered “fermented soybean hypocotyls” containing “equol” and “ornithin”. ([0048] to [0057], Tables 1 to 4).
As above, the present specification describes the fermentation process and examples when “soybean hypocotyl” is used as a “raw material for fermentation”, but there is no description of the fermentation process and examples when “soybean hypocotyl extract” is used as a “raw material for fermentation”.
 
 
 
(iii) Examination
Considering on the premise of the claims (claim 1) and the specification of the Present Invention 1 above, the claims (claim 1) of the Present Invention 1 include neither a statement defining a “fermented soybean hypocotyl” (1-A) of the Present Invention 1, nor a statement limiting a “soybean hypocotyl”, which is a raw material for fermentation thereof, to a specific component.
On the other hand, the present specification clearly distinguishes “soybean hypocotyl extract” and “soybean hypocotyl” as a raw material for fermentation for producing the “fermented soybean hypocotyl product”, and discloses that the “soybean hypocotyl extract” is not suitable for a raw material for fermentation. Then, it is reasonable to understand that the fermented product using the “soybean hypocotyl extract” as a raw material for fermentation does not fall under the “fermented soybean hypocotyl product” of the Present Invention 1.
It is acknowledged that it was common technical knowledge at the time of the priority date of this patent that, in order to obtain a “soybean hypocotyl extract” containing a high concentration of isoflavone from a soybean hypocotyl, it is necessary to carry out a purification process such as a concentration operation using a synthetic adsorption resin, in addition to a prescribed extraction process.
Further, it is obvious that the “soy hypocotyl extract” containing a high concentration of isoflavone requires a high cost and another nutrient for fermentation by equol-producing bacteria. Thus, it is reasonable to acknowledge that a fermented product using the “soybean hypocotyl extract” as a raw material for fermentation does not fall under the “fermented soybean hypocotyl product” of the Present Invention 1.
 
 
 

(3) Whether or not the defendant’s product satisfies the constituent feature

Since “EQ-5” is a fermented product using “soybean hypocotyl extract” as a raw material for fermentation, which requires a high cost and another nutrient for fermentation, it is acknowledged that EQ-5 does not fall under the “fermented soybean hypocotyl product” of the Present Invention 1.
As above, since it is not acknowledged that the defendant’s product satisfies the constituent features 1-A of the Present Invention 1, it cannot be acknowledged that the defendant’s product falls within the technical scope of the Present Invention 1, without going so far as to the other points.
 
 
 

(4) Issue (b)

For the same reason, since it is not acknowledged that the defendant’s product has a configuration corresponding to the “fermented soybean hypocotyl product” having the constituent features 3-B to 3-F of the Present Invention 3, it is not acknowledged that the defendant’s product satisfies any of these constituent features.
Therefore, it cannot be acknowledged that the defendant’s product falls within the technical scope of the Present Invention 3, without going so far as to the other points.
 
 
 

6. Our comments

In this case, there was no definition of “fermented soybean hypocotyl product” in the claims, and it was not possible to confirm whether the defendant’s product using “soybean hypocotyl extract” as a raw material for fermentation falls within the technical scope of the Present Invention 1 only by the recitation in the claims.
In this case, the definition of “fermented soybean hypocotyl product” was not given in the specification, and it was also not possible to confirm its meaning by the specific definition in the specification.
Since there was no definition of the term in the claims or in the specification, the detailed description of the invention in the specification was taken into consideration. In particular, the court noted that in the specification, the problems in the case of “soybean hypocotyl extract” and “soybean hypocotyl” were described separately as a raw material for fermentation. In other words, the relationship between the problems to be solved and the present invention was examined and taken into consideration.
In addition, the court takes into consideration the examples in the specification and common technical knowledge on or before the priority date.
This judgment method is considered to be in line with the purpose of the Patent Act Article 70.
 
We hope that this case study will be helpful to you in interpreting the meanings of terms in claims.
 
 
Edited by Makoto Iwata
名古屋国際特許業務法人

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