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The IP High Court of Japan:Issuance of Enlarged Panel Decisions

掲載紙: Winds from Japan

掲載日: 2006年2月

Jurisdiction in Japan covering intellectual property cases has been reorganized. As reported in previous issues of this newsletter, appeals in intellectual property cases in Japan are now brought before one of two first instance courts; the Tokyo District Court or the Osaka District Court.
Judicial reorganization also extends to appeal courts; and effective from April 1, 2005, decisions on appeals issued by either of the first instance district courts are referred to the newly established Intellectual Property High Court (IP High Court). The IP High Court was created as an exclusive appellate court within the Tokyo High Court.
Since commencing operation, the IP High Court has addressed a large number of appeal cases, both ex parte and inter parte. ex parte cases are appeals made against the Commission of the Japan Patent Office for its administrative decisions; while inter parte cases are appeals made against the decision of the lower courts for infringement and/or remedy claims. For the past 8 months, i.e., from April through November 2005, the IP High Court addressed a total of 280 cases, 246 of which are ex parte cases and 34 inter parte cases. In line with the recently introduced policy of accelerated proceedings, decisions on these cases were issued within around one year from their filing dates at the IP High Court.

Patent v. Other Forms of IP

It is worth looking at the types of appeal cases filed before the IP High Court. Out of the 246 ex parte cases, the number of patent cases was 191, about 78%. The remainder includes claims on other forms of intellectual property such as trademark (13% at 32 cases), design (5% at 13 cases) and utility model (4% at 9 cases).
inter parte cases in particular indicate interesting predictors. While patent cases are dominant (17 cases), unfair competition and copyright are relatively active areas (with 8 cases and 7 cases, respectively). Trademark, design and utility models are relatively inactive, and account for only one case each.

Enlarged Panel Decisions

Under the new system, an enlarged panel of the IP High Court hears important cases. The enlarged panel consists of five judges including Chief Judge Katsumi Shinohara, and four senior judges on behalf of four divisions of the IP High Court.
Since its establishment in the IP High Court, the enlarged panel has been assigned two inter parte cases: KK Just System v. Matsushita Electric Ind. Co., Ltd. ("Ichitaro" case) and Canon v. Recycle Assist KK. ("Ink Cartridge" case); and one ex parte case: Japan Synthetic Chemical Ind. v. Japan Patent Office ("Polarizing Film" case). Judgment of the Ichitaro case and the Polarizing Film case were already announced and are summarized below.

Ichitaro Case

The Ichitaro case generated a lot of interest for several reasons. Firstly, it was the first inter parte case heard by enlarged panel of the IP High Court. Second, the case involved not one but a series of patent disputes between the parties. Third, and more importantly, the Tokyo District Court awarded an injunction against the manufacture and sale of Ichitaro software.
This decision was provocative because the allegedly infringing Ichitaro software had widespread distribution and is commonly used in Japan, while the patent at issue in the dispute in the case both old and unexploited. (For more details on this case, see the "IP News from Japan", WINDS#26, at 5.)
On appeal, the IP High Court was quick to address the issue. In May 2005, one month after its establishment, the Court decided that the enlarged panel should hear the case. After three oral hearings, the enlarged panel decided to cancel the lower court's decision and dismissed the claims made by Matsushita. The issues argued were: (1) whether the Ichitaro software met the requirements of the patent; (2) whether Ichitaro software indirectly infringed the patent; (3) whether the patent was invalid in light of newly submitted prior art; and (4) whether appellant's supplemental evidence constituted a belated filing for dismissal.
In its decision, the enlarged panel essentially supported the findings of the lower court with regard to the issues (1) and (2). With regard to the issue (3), however, the panel adjudicated that the patent could have been invalided by newly filed prior art and was consequently unenforceable. Matsushita argued that the reference material was lately filed and that the filing of the reference ought to have been rejected. However, the panel did not accept this argument.
It is interesting to note that before making a judgment, the enlarged panel called a press conference and provided a brief to press reporters on the legal principles involved in "indirect infringement" under the Japanese patent law. It is reported that since the issue of indirect infringement was not one familiar to the public, Chief Judge Shinohara, wished to provide the press with relevant information to enable a better public understanding of the forthcoming decision. Five days later, the judgment in the Ichitaro case was delivered. This might witness the confidence of the IP High Court in its responsibility as a founder of case law.
The decision of the enlarged panel was finalized as Matsushita later decided against further appeals. For those who are interested in the decision, a summary of the court's decision in English is available at: http://www.ip.courts.go.jp/eng/documents/pdf/g_panel/10040_eng.pdf.

Polarizing Film Case

In this case, the invention in question concerns a "Method for manufacturing of polarizing films." A patent application for this invention was filed in 1993 ("Parameter" invention). A year later, the Patent Act was amended to streamline the requirements of patentability. Subject to the amendment of the Patent Act, the manuals for patent and utility model examiners were revised in 2000 to include specific guidelines for "Parameter" inventions for the first time.
In 2003, a JPO examiner decided to grant a patent for this application, against which an opposition was filed. The JPO, after the review of reasons for opposition, decided that the decision of patent grant had to be cancelled. The JPO reasoned, among other things, that the scope of the claim was overly broad and that it was not necessarily supported by the description in the specification. The applicant appealed against the decision arguing, among others, that JPO retrospectively applied the examination guidelines to the application and that such retrospective application of the revised examination guidelines was erroneous in this case. The applicant asserted that there were no examination guidelines applicable for "Parameter" inventions.
On appeal, the IP High Court assigned this case to the enlarged panel. The panel handed down its decision on November 11, 2005 in which the panel supported the decision of the JPO that found that the invention was not patentable because of insufficient description in the specification. In its decision, the panel put more weight on inadequacy of disclosure than the construction of law regarding the asserted error.

Ink Cartridge Case

In this case, the patent in question concerns an ink cartridge for inkjet printers. Arguments before the courts were whether refilling an ink cartridge amounted to an act of production or repair. If deemed an act of production, patent infringement would take place. While as an act of repair, there would be no infringement.
The defendant in this case imported refilled ink cartridge products from a company in China. The Chinese company refilled empty cartridges originally sold by the patentee. Empty cartridges were collected from North America, Europe and Japan. Then, their ink tanks were washed and cleansed for refill with ink for resale with a new label.
The Patentee sued the importer of the refilled ink cartridges for patent infringement in Japan. In its defense, the importer argued that the patent was unenforceable because the patentee's rights were exhausted when the cartridges were first sold. While distinguishing this case from the cases of repackaging camera films, the Tokyo District Court dismissed the patentee's claim of patent infringement. The court found that the act of refilling did not amount to an act of production irrespective of whether it was carried out by a legitimate user or a recycling business. The court apparently supported the principle of patent exhaustion in this case. The court also noted in its arguments that a use of recycled goods was a contemporary obligation of businesses and consumers in the environment-friendly age.
This case highlighted the ever-lasting issue of "Production v. Repair." In its arguments, the lower court added a new issue of "Recycling v. Exhaustion." It is interesting how the enlarged panel of the IP High Court deals with these issues. Two hearings have already been completed. The enlarged panel is scheduled to deliver its decision on January 31, 2006.

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