اليابان

Main text of the judgment (decision)

1. The final appeal shall be dismissed.

2. The costs of the final appeal shall be borne by the appellant.

Reasons

Reasons for the petition for acceptance of final appeal filed by the counsels for the appeal, SAMEJIMA Masahiro, KOTANI Taizo and YAMAMOTO Mayuko

1. An outline of the facts related to the case which duly became final and binding in the judgment of prior instance and the circumstances leading up to this case as shown in relevant records are as described below:

(1) Patent right

The appellant is the patentee of the patent covering the invention whose title is “Sheet cutter” (Patent No. 5374419, containing one claim; hereinafter this patent is referred to as the “Patent” and the patent right with respect to the Patent as the “Patent Right”).

(2) Circumstances during the first instance

In December 2013, the appellant filed against the appellee, who sold the tools listed in the list of items shown in the exhibit to the judgment of first instance, the present action seeking injunction of such sale and claiming damages and other relief based on the Patent Right.

The appellee asserted a defense under Article 104-3, paragraph (1) of the Patent Act (hereinafter referred to as the “defense of invalidation”) on the grounds that the reason for invalidation listed in Article 123, paragraph (1), item (i) or (iv) exists with regard to the Patent. In October 2014, however, the court of first instance rendered a judgment which rejected the appellee’s defense of invalidation on the above grounds and accepted part of the appellant’s claims.

(3) Circumstances during the prior instance

The appellee appealed against the judgment of first instance and, in the statement of reasons for appeal dated December 26, 2014, asserted a new defense of invalidation on the grounds that the Patent had been obtained in violation of Article 29, paragraph (1), item (iii) or paragraph (2) of the Patent Act and that the reason for invalidation listed in Article 123, paragraph (1), item (ii) of the same act thus exists with regard to the Patent (hereinafter the defense based on these grounds is referred to as the “Defense of Invalidation”).

After a total of four dates for preparatory proceedings, the court of prior instance closed the oral argument on the first date for oral argument in November 2015. The appellant did not, before the close of the oral argument at the court of prior instance, assert a re-defense against the Defense of Invalidation on the grounds that a correction will resolve the reason for invalidation on which the defense of invalidation was based (hereinafter referred to as the “re-defense of correction”).

On December 16, 2015, the court of prior instance rendered a judgment which accepted the Defense of Invalidation, revoked such part of the judgment of first instance as against the appellee, and rejected all of the appellant’s claims, on the grounds that the Patent was obtained in violation of Article 29, paragraph (1), item (iii) of the Patent Act.

(4) Circumstances after the delivery of the judgment of prior instance

The appellant filed a final appeal and a petition for acceptance of final appeal and, on January 6, 2016, requested a trial for correction to correct the scope of claims covered by the Patent (Correction Case No. 2016-390002). In October the same year, the Patent Office made a trial decision to the effect that such correction should be made (hereinafter referred to as the “Trial Decision for Correction”). The Trial Decision for Correction became final and binding around then.

(5) Circumstances, etc. during the trial for patent invalidation

During the pendency of the present case at the court of first instance, the appellee requested a trial for patent invalidation on the grounds of the existence of the reason for invalidation described in (2) above with regard to the Patent (Invalidation Case No. 2014-800004). In July 2014, the Patent Office made a trial decision that the request was unacceptable (hereinafter referred to as the “Other Trial Decision”). In August the same year, the appellee filed an action for revocation of trial decision seeking a revocation of the Other Trial Decision. On December 16, 2015, however, the Intellectual Property High Court rendered a judgment which rejected the appellee’s claims. The judgment became final and binding by January 6, 2016.

As described above, at the time when the Defense of Invalidation was asserted at the court of prior instance, the action for revocation of trial decision was already pending against the Other Trial Decision, which did not subsequently become final and binding until January 6, 2016. For these reasons, the appellant was prevented, before the close of the oral argument at the court of prior instance, from filing a request for a trial for correction or a request for correction in the trial for patent invalidation in order to make corrections intended to resolve the reason for invalidation on which the Defense of Invalidation was based (Article 126, paragraph (2) and Article 134-2, paragraph (1) of the Patent Act).

2. The appellant argues that the ground for retrial listed in Article 338, paragraph (1), item (viii) exists since the administrative disposition based on which the judgment of prior instance was made has been modified by a subsequent administrative disposition as a result of the Trial Decision for Correction having become final and binding during the pendency of the present case at the final appellate court and the scope of claims covered by the Patent having been restricted, and that the judgment of prior instance thus contains a violation of law that obviously affects the judgment.

3. (1) In a patent infringement suit, the adverse party may assert a defense of invalidation, whereas the patentee may assert a re-defense of correction. It is understood that the intention of Article 104-3, paragraph (1) of the Patent Act, which allows a defense of invalidation to be asserted without waiting for a trial decision for invalidation rendered in patent invalidation trial proceedings to become final and binding, is to resolve any dispute involving patent right infringement as promptly as possible within the proceedings of a patent infringement suit. It is then understood that the intention of paragraph (2) of the same article, which authorizes the court to dismiss a defense of invalidation if the court considers that the defense is asserted for the purpose of unreasonably delaying the proceedings, is to prevent the occurrence of delays in the proceedings caused by hearing and judging on the defense of invalidation. These understandings should be the same for a re-defense of correction (see Supreme Court, 2006 (Ju) 1772, Judgment of the First Petty bench of April 24, 2008, Minshu Vol. 62, No. 5, p. 1262).

In addition, the intention of Article 104-4 of the Patent Act, which, if a trial decision to the effect that the scope of claims should be corrected, among others, as listed in item (iii) of the same article (hereinafter simply referred to as a “trial decision for correction, etc.”) becomes final and binding after the final judgment on a patent infringement suit has become final and binding, precludes the parties to the patent infringement suit from asserting the fact that the trial decision for correction, etc. became final and binding in any action for retrial against such final judgment, is to ensure that any dispute involving patent right infringement is resolved at one time based on the fact that, as described above, a re-defense of correction is allowed to be asserted against a defense of invalidation in a patent infringement suit.

Even if the final judgment on a patent infringement suit has not become final and binding, if the patentee, despite his failure to assert a re-defense of correction before the close of the oral argument at the trial court, is permitted to contest the trial court’s ruling on the grounds that a trial decision for correction, etc. subsequently became final and binding, this would have the same effect as permitting the hearing and judgment made at the trial court to be repeated all over again, as is the case with permitting the parties to a patent infringement suit to assert, in an action for retrial against the final judgment on their patent infringement suit, that a trial decision for correction, etc. became final and binding.

It should then be considered that, unless there were convincingly compelling, and exceptional, circumstances that prevented him from asserting a re-defense of correction, a patentee who failed to assert a re-defense of correction before the close of the oral argument at the trial court is not permitted to contest the trial court’s ruling on the grounds that a trial decision for correction, etc. subsequently became final and binding, in light of the intent of the provisions of Articles 104-3 and 104-4 of the Patent Act since permitting this would unreasonably delay a resolution of the dispute involving patent right infringement.

(2) Let us apply the above discussion to this case. According to the facts related to the case described above, the appellant did not, before the close of the oral argument at the court of prior instance, assert a defense of correction against the Defense of Invalidation asserted at the court of prior instance. Up to the close of the oral argument at the court of prior instance, the appellant had been prevented by law from filing a request for a trial for correction or a request for correction in order to make corrections intended to resolve the reason for invalidation on which the Defense of Invalidation was based. However, under the circumstances described in 1.(5) above, such as that the Other Trial Decision had not become final and binding because an action for revocation of trial decision, which involved reasons for invalidation other than the reason for invalidation on which the Defense of Invalidation was based and which was newly asserted at the court of prior instance, was already pending against the Other Trial Decision, it should be considered that it was not necessary for the appellant to have actually filed these requests in order to assert a re-defense of correction against the Defense of Invalidation. It thus cannot be considered that these circumstances prevented the appellant from asserting a re-defense of correction against the Defense of Invalidation at the court of prior instance. No other convincingly compelling, and exceptional, circumstances are found that would have prevented the appellant from asserting a re-defense of correction.

4. For the above reasons, the judgment of prior instance does not contain the violation of law asserted by the appellant, and the appellant’s reasons for the petition are unacceptable. Accordingly, the Court unanimously decides as set forth in the main text.

(This translation is provisional and subject to revision.)