2023.05.31 Patent
Introduction to Court Ruling on Requirements for Establishment of “Public Working”
― Whether an invention is considered to be “publicly worked” if it is defined by a special parameter unrecognizable without analysis ―
1. Introduction
This newsletter introduces you to a case demanding an injunction to cease acts of patent right infringement (Case No. 2019 (Wa) 7038) and a case demanding compensation for damages (Case No. 2019 (Wa) 9618), a point at issue of which was requirements for establishment of “publicly worked” as referred to in Article 29(1)(ii) of the Japanese Patent Act. These two cases were jointly tried, and are hereinafter collectively referred to as the present case. In the present case, the Tokyo District Court made a determination on whether an invention is considered to be publicly worked if it is defined by a special parameter that cannot be grasped from the appearance of the product and cannot be recognized without analysis.
2. Outline of Case
In the present case, the Plaintiff, who is the patentee of Japanese Patent No. 5697067 (hereinafter referred to as “Present Patent 1”) and Japanese Patent No. 5688669 (hereinafter referred to as “Present Patent 2”), alleged that the Defendants’ products fall within the technical scope of the inventions of the Present Patents 1 and 2, and demanded an injunction and compensation for damages against the Defendants.
However, the court dismissed the Plaintiff’s demands on the grounds that the Present Patents 1 and 2 should be invalidated due to lack of novelty based on public working.
3. Constituent Features of Present Patents
The invention according to Claim 1 of the Present Patent 1 and the invention according to Claim 1 of the Present Patent 2 are as follows:
■ Present Patent 1
[Claim 1]
A graphite-based carbon material used as a graphene precursor, the graphite-based carbon material comprising a rhombohedral-system graphite layer (3R) and a hexagonal-system graphite layer (2H), wherein a Rate (3R) defined by the following [Equation 1] by the X-ray diffraction method between the rhombohedral-system graphite layer (3R) and the hexagonal-system graphite layer (2H) is 31% or more.
Rate (3R) = P3/(P3+P4) × 100 … [Equation 1]
where P3 is a peak intensity of a (101) plane of the rhombohedral-system graphite layer (3R) by the X-ray diffraction method, and P4 is a peak intensity of a (101) plane of the hexagonal-system graphite layer (2H) by the X-ray diffraction method.
■ Present Patent 2
[Claim 1]
A graphite-based carbon material used as a graphene precursor, the graphite-based carbon material comprising a rhombohedral-system graphite layer (3R) and a hexagonal-system graphite layer (2H), wherein a Rate (3R) defined by the following [Equation 1] by the X-ray diffraction method between the rhombohedral-system graphite layer (3R) and the hexagonal-system graphite layer (2H) is 40% or more.
Rate (3R) = P3/(P3+P4) × 100 … [Equation 1]
where P3 is a peak intensity of a (101) plane of the rhombohedral-system graphite layer (3R) by the X-ray diffraction method, and P4 is a peak intensity of a (101) plane of the hexagonal-system graphite layer (2H) by the X-ray diffraction method.
4. Points at Issue
This case had a lot of points at issue, but we will focus on the following two points:
– Point at issue 2: Success or failure of defense against invalidity
– Point at issue 2-6: Lack of novelty based on public working
<Defendants’ Arguments>
The Defendants argued that they had been manufacturing and selling the products that fall within the technical scope of the inventions of the Present Patents 1 and 2 from before the filing of the Present Patents 1 and 2.
A part of the ruling is reproduced below with a few minor modifications for easier understanding.
The Defendant measured, with SmartLab (automated multipurpose X-ray diffractometer), a sample of the Defendant’s Product A9 manufactured on February 2, 2012, which is prior to the filing of the Present Patents, and a sample of the Defendant’s Product A10 manufactured on September 30, 2013, which is prior to the filing of the Present Patents, and analyzed the results of measurements with PDXL (integrated X-ray powder diffraction software) to calculate the Rate (3R) (the results of calculation are hereinafter referred to as “sample results (1)”).
This shows that, throughout the period before and after the filing of the Present Patents, the Defendant had been continuously manufacturing and selling, by the same manufacturing process and using the same names as those of the Defendant’s Products A, the products that had equivalent values of fixed carbon content, ash content, volatile matter content, moisture content, and particle size and that met the same standards. Further, the sample results (1) show that each Rate (3R) of the samples of the Defendant’s Products A9 and A10 prior to the filing of the Present Patents was 31% or more, or 40% or more. In view of the foregoing, if the Defendant’s Products A fall within the technical scope of the Present Inventions at present, it is reasonable to conclude that the Defendant had been manufacturing and selling the Defendant’s Products A that fall within the technical scope of the Present Inventions from before the filing of the Present Patents.
<Plaintiff’s Arguments>
In response to the Defendants’ arguments, the Plaintiff argued back that “since the details of the inventions could not be known unless the sold products are measured and analyzed, public working is not established”.
A part of the ruling is reproduced below with a few minor modifications for easier understanding.
Even when a business partner of the Defendants obtains the graphite products from the Defendants, the business partner could not know the details of the inventions of the Present Patents including the Rate (3R) as a feature unless measurements by the X-ray diffraction method and analysis are performed. Thus, in order for public working to be established, the business partner must be a person capable of performing measurements by the X-ray diffraction method and analysis.
However, in order for a company to outsource measurements and analysis to an external specialized institution even at the cost of expenses, efforts, and time, it is necessary to obtain reasonable approval within the company based on reasonable explanations of its necessity. It is unthinkable that such outsourcing is done without going through such procedures, and thus, it should be concluded that there was no concrete possibility of outsourcing measurements by the X-ray diffraction method and analysis to a specialized institution.
Accordingly, even if a third party had obtained the products manufactured by working the Present Inventions from the Defendants, such a third party could not know the feature or composition of the Present Inventions, and thus, it cannot be concluded that the Present Inventions had been publicly worked.
5. Court’s Determination
For the above-mentioned points at issue, the court made determinations as below. The following is a reproduction of a part of the ruling.
“Publicly worked” as referred to in Article 29(1)(ii) of the Patent Act means that an invention is worked in a situation where the details of the invention could be known to a large number of unspecified persons. In the case of the invention of a product as in the Present Inventions, it is reasonable to interpret that an invention corresponds to a publicly worked invention not just in a case where the product is sold to a large number of unspecified persons and a person skilled in the art could know the details of the invention merely by observing the product from the outside, but also in a case where a person skilled in the art could know the details of the invention by disassembling and/or analyzing the product in a normal way even though the details of the invention could not be known from the outside.
(An omission)
At the time of the filing of the Present Patents, it was possible for a person skilled in the art to calculate a peak area (integral intensity) by performing measurements by the X-ray diffraction method and analyzing the resulting diffraction profile in order to figure out the crystal structure of a substance. Thus, it is reasonable to recognize that a person skilled in the art who purchased the above-described products could know the details of the Present Inventions by performing analysis and analytical research. Accordingly, since the Present Inventions were publicly worked in Japan prior to the filing of the Present Patents, both of the Present Inventions should be concluded to be invalid under Article 104-3 and Article 29(1)(ii) of the Patent Act.
6. Consideration
In the present case, the court held that, even when it is impossible to determine whether a product that has already been manufactured and/or sold prior to filing of a patent application falls within the technical scope of a patented invention without analyzing the product using analytical equipment or the like, such patented invention corresponds to a publicly worked invention if the product can be determined to fall within the technical scope of the patented invention as a result of such analysis.
Here, in the present case, since the Defendants had appropriately kept the materials that could serve as evidence that they had been working the patented inventions, the Defendants were able to prove that the patented inventions were publicly worked inventions.
We believe that, based on the lessons learned from the present case, the following points should be considered in practice.
<<On the Part of Patentee (Plaintiff)>>
In a case where the matters specifying the invention of a patented invention to be exercised include numerical limitations, other company’s product prior to filing of a patent application may accidentally fall within the technical scope of the patented invention. We believe that we should keep in mind that, in such a case, the risk of the patent being invalidated may increase.
<<On the Part of Seller of Patented Product (Defendant)>>
We believe it preferred to regularly store materials, such as product samples, design drawings, specifications, that could serve as evidence in court, in a manner that the dates can be verified, so that you can be prepared to defend against a claim of infringement of rights.
It is also to be noted that product samples may not be adopted as evidential materials if there are variations in ingredients and such variations are significant.
7. Concluding Remarks
If you have any questions concerning the present case, please feel free to contact us.
We have a vast amount of experience and actual achievement in contentious cases. If you have any questions about contentious cases in Japan, please also feel free to contact us.
Edited by Makoto Iwata