“Grab Bucket for Flat-bottomed Broad Dredger”
This Intellectual Property High Court (IP High Court) upholds a trial decision of an invalidation trial to hold a patent valid.
The main issue is whether a claimed feature reciting that a rubber lid opens upward in accordance with an increase in internal pressure in a case where a shell also grabs a predetermined amount or more of matter, would be easily achieved in view of the prior art.
Summary of Conclusion:
The court considered that the claimed feature of a rubber lid (17) that opens upward in accordance with an increase in internal pressure in a case where a shell also grabs a predetermined amount or more of matter (“Difference 6”), as distinct from the prior art, indicating that the asserted prior art document neither teaches nor suggests this configuration.
The plaintiff asserted that the problem relating to Difference 6 as well as the solution to that problem were well known in the field of sealed grab buckets (with reference to “Evidence 19”), and that the configuration relating to Difference 6 could be achieved based on the prior art document with reference to this well-known technology. However, the IP High Court was unable to find a technical problem and solution as asserted by the plaintiff on the basis of Evidence 19, and held that the plaintiff’s assertion was unfounded, rejecting the position that the configuration relating to Difference 6 could be easily conceived of by applying the well-known technology to the prior art document.
Although four trial decisions and three court decisions were decided on in single sittings for this patent over a period of approximately seven years and six months, the defendant argued that the facts and evidence submitted for this invalidation trial were substantially identical to those submitted for the other invalidation trials, and that the request for this trial was therefore unacceptable in that it violated the provision of Article 167 of the Japanese Patent Law. Article 167 stipulates: “[w]hen a…decision has been made final and binding in a trial for patent invalidation…, no party may file a request for a trial on the basis of the same facts…”. When the main prior art reference differs in regards to the grounds for lack of an inventive step, then this would not constitute “the same facts”. In the present case, the main reference in the other invalidation trials was listed as “Evidence 8” and the like, while the main reference for the present case was not submitted in the other invalidation trials. Consequently, the court held that the defendant’s assertion was unfounded.