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This is an informal case summary prepared for the purposes of facilitating exchange during the 2025 WIPO IP Judges Forum.

Session 4: Evidence

Intellectual Property High Court of Japan [2016]: IPCOM GMBH & CO. KG v NTT DOCOMO, INC., Case No. 2015 (Ne) 10029

Date of judgment: March 28, 2016

Issuing authority: Intellectual Property High Court of Japan

Level of the issuing authority: Appellate Instance

Type of procedure: Judicial (Civil)

Subject matter: Undisclosed Information (Trade Secrets); Patents (Inventions); Other

Plaintiff: NTT DOCOMO, INC. (Appellee)

Defendant: IPCOM GMBH & CO. KG (Appellant)

Keywords: Order to submit documents, In-camera trial

Basic facts: The appellee, who provides mobile phone communication services (the “Appellee’s Services”), filed this action against the appellant, who holds the patent right in question (the “Patent Right”). The appellee sought a declaratory judgment on the non-existence of the obligation to compensate for damages based on tort and the obligation to return unjust enrichment, alleging that the act of having provided said services, etc. using the Appellee’s Services’ communication network operating method does not infringe the Patent Right.

In the first instance, the court dismissed the appellant’s claim for an order to submit documents, finding that there was no need for the examination of evidence, and upholding the appellee’s claim by holding that the method, etc. in question does not fall under the technical scope of the patented invention.

Article 181, paragraph (1) of the Civil Procedure Code provides that the court is not required to examine evidence offered by a party which the court considers to be unnecessary.

Article 105 of the Patent Act provides that, in litigation involving the infringement of a patent, the court may order a party to submit documents that are needed to prove the infringement or to calculate the damage caused by the infringement. However, this does not apply if the person in possession of those documents has legitimate grounds for refusing to submit them (Article 105, paragraph (1)).

If the court finds it to be necessary to determine whether a document that is subject to a motion constitutes a document as referred to in the above paragraph, or in order to determine whether a person has legitimate grounds for refusing its submission, the court may have the person in possession present that document. In this case, no person is entitled to seek the disclosure of the document presented (Article 105, paragraph (2) of the Patent Act).

Held: The IP High Court dismissed the appeal.

Relevant holdings in relation to evidence (specifically, orders to submit documents):

1. Necessity for the examination of evidence

The IP High Court held that, since an order to submit documents is used as a means to gather evidence necessary for proving an act of infringement for which a person bears the burden of proof, said person is not required to make a prima facie showing of said act of infringement itself when seeking an order to submit documents. Rather, it is found to be sufficient if said person makes a prima facie showing of reasonable doubt for the existence of said act of infringement, to an extent that the doubt for an abusive or exploratory claim is eliminated. It is understood that the scope of said prima facie showing should be determined individually for each case, bearing in mind various factors, including whether it is necessary to examine the document in question and the significance of such necessity, the difficulty of proving the matter in question, whether there is any alternative evidence, and the status of otherwise establishing proof.

The court concluded that the necessity for the examination of evidence could not be denied.

2. Legitimate reason to refuse the submission of documents

The IP High Court held as follows:

-        The existence of a legitimate reason is determined by comparing and balancing the disadvantage that the owner suffers by disclosing the documents (the level of protection that the documents require as a secret) and the disadvantage that the party seeking an order to submit documents suffers due to the non-provision of the documents (necessity for the documents as evidence).

-        The level of protection as a secret should be decided bearing in mind whether there was any protective order issued and the scope of such order, and whether there was any non-disclosure agreement concluded, the scope of the parties to such agreement, its validity, etc., in addition to the content and nature of the trade secret, and the significance of expected disadvantages caused by the disclosure.

Based on these grounds, the court adopted an in-camera trial and examined whether there was any legitimate reason to refuse the submission of documents. These documents were presented to the court in the presence of the counsel for the appellee and its employees. As a result, the court confirmed that the content of the documents falls under the appellee’s trade secret, while it did not find any description that underlines the effectiveness of the documents as evidence for proving an act of infringement through the disclosure.

In light of the fact that the parties concluded a non-disclosure agreement, in addition to the findings above, the court determined that the level of protection that these documents require as a trade secret surpasses the necessity for these documents as evidence. On the other hand, the court encouraged the appellee to voluntarily submit a part of the presented documents to the court, since information contained therein was already included in the appellee’s allegations in the written brief, and it was considered possible for the appellee to submit them without disclosing any new trade secrets. Subsequently, the appellee submitted said documents.

Relevant legislation: Japan Code of Civil Procedure; Patent Act