“Server Apparatus, Method of Controlling the Same, Program, and Game System

Overview:

The Intellectual Property High Court (IP High Court) overrules a prior decision to invalidate a patent for lack of an inventive step.

Main Issue:

Determination of “ease of conception” for resolving a difference with the prior art.

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Summary of Conclusion:

It was established that the replenished card in the prior art differs from that of the subject invention not only in terms of the destination of the card giving rise to replenishment, but also in terms of the type and function of the card being moved, and held that there is nothing insignificant about a “Difference 6” which relates to the occurrence of an additional character card being shown to be replenished in the first field. The court indicated that Difference 6 may be considered as distinguishing the subject invention from the prior art quite considerably in terms of the “flavor” of each game. Consequently, the court held it improper to determine that the configuration according to Difference 6 could have been easily conceived as “merely a game-related arrangement” without presenting a reasonable rationale based on publicly-known art or the like.
The defendant asserted that deciding on whether or not to replenish the number of cards by feeling the number being held is merely a matter of design to be decided by the creator of the game when setting the rules, and so modifying the prior art so that the held cards in the eleventh region are replenished even if placed in the third region (attack zone) would have presented no technical difficulty, and is really nothing more than a game-related arrangement in accordance with a gameplay to be provided. However, the court held that Difference 6 is a significant distinction relating to the flavor of the game, and cannot constitute grounds for determining a lack of ease of conception for merely requiring a game-related arrangement.

Comments:

This decision appears to acknowledge a game-related arrangement as possible grounds for determining inventive step. However, the Examination Guidelines do not seem to specify ease of conceiving of an artificial arrangement relating to games or the like, as a reason for lack of inventive step. It appears to be unsettled whether inventive step can be determined based on difficulty of conceiving of an artificial arrangement. This trial decision may indicate an attempt to raise this debate.