We would like to introduce a court’s decision providing a determination method for interpreting the meaning of the wording stated in claims, in the Intellectual Property High Court 2020 (Ne) No. 10044 Appeal Case for Claiming Compensation for Patent Infringement (Original Trial: Tokyo District Court 2017 (Wa) No. 29228).

Although this decision followed the conventional determination method and also was made for an individual and specific case, we believe that the case is helpful in understanding the determination method in Japan.

In this court case, the court indicated that “in the process of interpreting the meaning of the wording of claims, the statements in the description concerning the problems to be solved by the invention and the operation and effect to be achieved by the invention should be taken into consideration, and the meaning should be examined from the viewpoint of what the operation and effect would be achieved by the configuration of the invention, and also what is the intended problem that can be solved by the configuration of the invention”.

 

 

 

The Japanese Patent Act stipulates “The technical scope of a patented invention must be determined based upon the statements in the claims attached to the written application” (Patent Act Article 70(1)).

Herein, “In the case referred to in the preceding paragraph, the meanings of terms used in the claims are to be interpreted in consideration of the statements in the description and drawings attached to the written application” is stipulated (Patent Act Article 70(2) ※).

※“The Clause by Clause Commentary on the Industrial Property Act (22nd Edition) (edited by the JPO)“ provides an explanation of Patent Act Article 70(2) as “stipulating in a confirmative manner that the technical scope of a patented invention is, in principle, to be determined based on statements in the claims and if the detailed description of the invention, or so forth describes the definition or meaning of terms stated in the claim, the technical scope of the patented invention may be determined taking into consideration the detailed description of the invention, or so forth”.

 

 

 

The appellant (first-instance Plaintiff) holding Patent No. 4520670 (Present Patent) demanded an injunction and compensation for damages against the appellee (first-instance Defendant) manufacturing and selling a setting device (Defendant’s oil feeding apparatus) incorporated in the oil feeding apparatus, and the injunction and partial compensation for damages were granted in the first instance (Tokyo District Court, 2017 (wa) No. 29228)).

The present case is an appeal against the decision in the first instance. In the appeal trial, the court granted the first-instance Defendant’s argument (non-infringement argument), and determined “Based on the appeal filed by the first-instance Defendant, the part of the original decision which was against the first-instance Defendant shall be reversed”.

 

 

 

Present Invention 1 stated in Claim 1 of Present Case is segmented into the following constituent features as follows (hereinafter, each of the constituent features is referred to as “Constituent Feature 1A” or “1A,” etc., and 1C1 and 1C2 may be collectively referred to as “1C,” and 1F1 to 1F4 may be collectively referred to as “1F”).

 

(Present Invention 1)

1G:   A fluid feeding apparatus, comprising:

1A:   a storage medium reading and writing device that reads and writes money amount data stored in a storage medium;

1B:   a flow rate measurement device that measures a supply rate of a fluid;

1C1:  &a deposit data processing device that imports, as deposit data, a money amount equal to or less than a money amount indicated by the money amount data in the storage medium read by the storage medium reading and writing device before a supply of the fluid is started and

1C2:  that writes a money amount obtained by deducting the money amount in the deposit data from the money amount data in the storage medium as new money amount data into the storage medium ;

1D:   a supply permission device that allows a supply of the fluid at a flow rate corresponding to the money amount data in the deposit data that is imported by the deposit data processing device;

1E:   a calculation device that calculates a fee to be charged based on a value of the flow rate measured by the flow rate measurement device; and

1F1:  a fee settlement device that makes the calculation device calculate a money amount corresponding to the value of the flow rate measured by the flow rate measurement device,

1F2:  that deducts the calculated fee from the money amount in the deposit data,

1F3:  that adds a money amount in a remaining difference data to the money amount data in the storage medium, and

1F4:  that writes, into the storage medium, the money amount data after the addition.

 

 

 

In Constituent Feature 1C1 of Present Invention 1, “imports as deposit data” comprises in a sequential order “1) reading the money amount data, 2) importing the deposit data, 3) setting a fee for oil feeding, and 4) feeding oil”. In the Defendant’s oil feeding apparatus, the “amount equal to or less than a money amount indicated by the money amount data in an electronic money medium” is set by a customer every time of use, and 2) and 3) are performed in reverse order. Accordingly, the Defendant’s oil feeding apparatus does not fulfill Constituent Feature 1C1.

 

 

 

The technical scope of a patented invention should be determined based upon the statements in the claims, and should not be interpreted as limited to a specific configuration of the Example described in the specification. The statements in the claims of Present Invention 1 do not include any limitation to who sets a specific amount as long as the amount in the deposit data to be imported is “equal to or less than” the remaining amount, or any limitation to the sequential order of 2) and 3). Accordingly, the above-described Defendant’s argument fails to influence the determination that the Defendant’s oil feeding apparatus fulfills Constituent Feature 1C1.

 

 

 

The Intellectual Property High Court determined as follows (underlined by the writer of this article):

 

 

In Constituent Feature 1C1 of Present Invention 1, the “amount equal to or less than a money amount indicated by the money amount data in the storage medium” deemed as an “amount to be withdrawn in advance” should be understood to mean an amount preset by a system of the setting device. The “amount to be withdrawn in advance” itself is determined not as an actual amount of payment for oil feeding, but as security for an amount to be paid later for oil feeding. Accordingly, when determining the amount to be withdrawn in advance, it is sufficient for gas-station managers to set an appropriate amount based on the needs to surely receive the payment or on the other viewpoints, and thus it is not necessary to reflect a customer’s intention for such determination. Therefore, it is interpreted that Present Invention 1 does not assume a configuration in which a customer determines the “amount to be withdrawn in advance”.

On the other hand, in the Defendant’s oil feeding apparatus, the “amount equal to or less than a money amount indicated by the money amount data in an electronic money medium” deemed as an “amount to be withdrawn in advance” is an amount to be paid by a customer corresponding to the volume of oil to be fed specified by the customer when using the oil feeding. Accordingly, the amount to be withdrawn in advance by the Defendant’s oil feeding apparatus is not security but payment for oil feeding itself, and it is thus never determined regardless of the customer’s intention.

In light of the above, the meaning of the amount to be withdrawn in advance is completely different between Present Invention 1 and the Defendant’s oil feeding apparatus. Reflecting such difference, the amount to be withdrawn in advance in the Defendant’s oil feeding apparatus is to be determined by a customer, which is not assumed in Constituent Feature 1C1 of Present Invention 1. Therefore, the Defendant’s oil feeding apparatus does not fulfill Constituent Feature 1C1 of Present Invention 1.

 

 

 

Since an invention is a technical idea serving as a means for solving a problem, when interpreting the meaning of the wording of claims stated as the configuration of an invention, the descriptions in the specification concerning the problems to be solved by the invention and the operation and effect to be achieved by the invention should be taken into consideration, and the meaning should be examined from the viewpoint of what the operation and effect would be achieved by the configuration of the invention, and also what is the intended problem that can be solved by the configuration of the invention. However, the above-described first-instance Plaintiff’s argument interprets the meaning of the wording only literally without examining from such viewpoint, and thus is unreasonable.

 

 

 

According to the case above, the court showed again that it is not sufficient to simply interpret the wording stated in the claim as a configuration of the invention by the literal meaning when determining whether or not a product in question falls within the technical scope of the patent right. In this regard, the court followed the conventional determination method, and it was not new.

Based on that, the court interpreted the meanings of terms stated in the claims individually and specifically, not limiting to the specific embodiments but also taking into consideration the problems to be solved by the invention and the operation and effect described in the specification. This can be regarded as a case which again clearly showed that the descriptions in the problems to be solved by the invention and the operation and effect affect the interpretation of the scope of the patent right, thus showing the significance of such descriptions.

If you receive a warning of patent infringement, it is important, when interpreting the meaning of the wording in the claims, not to interpret the meaning of the wording only literally, but to consider what can achieve the operation and effect and thus solve the problems, taking into consideration the descriptions in the specification.

 

 

Edited by Hiroki Ando