Date of
Judgment: June 30, 1981
Issuing
Authority: Supreme Court
Level of
the Issuing Authority: Final Instance
Type of
Procedure: Judicial
(Civil)
Subject
Matter: Patent (Inventions)
Main
text of the judgment (decision):
1. Jokoku appeal shall be
dismissed.
2. Appellant shall cover the
costs of the Jokoku appeal
Reasons:
Concerning
the First ground of jokoku appeal represented by:
MURABAYASHI Ryuichi, IMANAKA Toshiaki, YOSHIMURA Hiroshi, KAKU Genzo, FUKAI Kiyoshi, KOIZUMI Tetsuji,
IHARA Noriaki:
According
to the record, there is no proof of there being unlawfulness in the proceedings
of the first instance court here argued upon. In the argument, there is
insufficiency of reasoning in presupposing that the facts are against the law.
Thus, this line of argument cannot be accepted.
Concerning
the Second ground made by the previous attorneys :
According
to the record of the background leading to the present litigation, there is no
proof that there is any error either in the decision of the first instance
court or on the proceedings. Thus, such line of argument cannot be accepted.
Concerning
the Third ground made by the previous attorneys and the First ground of jokoku appeal by representatives: HARA Masuji,
SAKAI Masayuki, and SATO Tsuneo:
Whether
or not the appellant’s Nageshi (a horizontal piece of
timber in the frame of Japanese-style of house) is covered by the technical
scope of utility models, the original instance court decided as follows:
(1)
In the section for the scope of the utility model in the specification of the
item in question, “Nageshi, the particularity of
which is that plywood 3 and 3´ are glued to the face and the back of core
material 2 respectively, the back which plywood 3´ is glued is mounted by
backing material 4, at the same time, the face where plywood 3 is glued, upper
side of core material 2, and the bottom of foundation material 2 and backing
material 4 are glued with quality material 5, is so described. (2) In the section
for detailed description the item in question of the same specification, the Nageshi conventionally used is “made by glued laminated
timber consisting of thin sheets of wood glued together, and three sides
(front, top, bottom) of which is covered by a sheet of quality wood” so that it
tends to be bent and thus fractured easily depending on the temperature and
humidity. On the other hand, Nageshi, the item in
question, is “made by gluing plywood to the face and the back of the core
material, the back side of plywood is mounted by backing material, and the face
side of plywood is covered by a sheet of quality wood while it covers upper and
bottom sides as well” so that it will not get bent or fractured even if the
temperature or humidity changes; also it will remain esthetic without
disfigurement. After the determination of the above-mentioned facts, since the
pith of the item in question is that gluing plywood to the face and back of the
core material, which results in preventing the item from bending or cracking
depending on the temperature and humidity, the core of Nageshi,
the item in question, differs from the plywood itself, it provides the
resistance against the temperature and humidity, or rather it should be
construed that the core of the item in question is a different material that
does not have such resistance. The jokoku appellee’s Nageshi, use a type of plywood which itself provides the
resistance to the heat and humidity as a core material. Moreover, Nageshi, the item in question, is made by gluing plywood to
both sides of the core material whereas the jokoku
appellee’s Nageshi is made of ready-made plywood;
therefore, it is apparent from the original judgment that it was determined
that both parties differed in the creation of technical ideas.
According
to the above-mentioned facts ascertained by the original instance court, “the
specification at issue only states that there was no resistance to the
temperature or humidity in the traditional Nageshi
made of glued laminated timber but there is resistance to the temperature and
humidity in the Nageshi at issue, which is described
in the specification of this utility model registration.” However, there is no
description regarding “core material 2” of the item in question in the
specification; therefore, it is difficult to limit that the core of Nageshi, the item in question, which differs from plywood
that provides the resistance to the temperature and humidity is made of a
different material which does not provide such resistance. Furthermore, the
invention is defined by the Law on Utility Models in the form of the item, its
structure, or its combination (see Article 1 and 3 of the Law of Utility
Models), but not its method of production. The technical scope of the invention
should be determined in the form of the item, and, therefore, it is not
possible to take its method of production into consideration when deciding whether or not the jokoku
appellee’s Nageshi falls within the technical scope
of the item in question.
Thus,
based on the interpretation as concluded by the original instance court rested
on the above-mentioned facts ascertained by the same court, it has to be said that it is unable to conclude that jokoku appellee’s Nageshi falls
within the technical scope of the item in question.
However,
according to the above-mentioned facts as ascertained by the original instance
court, it is obvious that, in the item in question, plywood itself is deemed to
be one element of its structure. By comparing the item in question to the jokoku appellee’s Nageshi, the
body of the item in question is composed using plywood only for the face, back,
and for the core material while the jokoku appellee’s
Nageshi is composed only of plywood, and it does not
have the structure of the item in question where “gluing the plywood 3 and 3´
to face and back of the core material respectively.” The creation of technical
ideas in the structure of the jokoku appellee’s Nageshi is different from that of the item in question, it
does not fall within the scope of the item in question, and, therefore, the
ruling of the original instance court, which is in line with the above, is
justifiable. There is no illegality in the original judgment that was claimed
by the argument and, therefore, said line of argument cannot be accepted.
Concerning
the Second ground of jokoku appeal by
representatives: HARA Masuji, SAKAI Masayuki and SATO
Tsuneo:
In light of the original judgment,
it is apparent the evidence in the line of argument was not accepted. It is not
necessary to explain why the evidence was accepted or rejected. Accordingly,
even though the original instance court did not explain why they rejected the
evidence in the judgment, it does not constitute an illegality. The judgment of
the original instance court is not unlawful as argued. In the end, the line of
argument cannot be accepted.
Thus, in accordance with Articles 401,
95, and 89 of the Code of Administrative Procedure, the justices unanimously
ruled as the main text of judgment.
(This translation is
provisional and subject to revision.)
(The copyright for this
English material was assigned to the Supreme Court of Japan by Institute of
Intellectual Property.)