“Video Distribution System that Distributes Video Including Animation of a Character Object Generated Based on the Movement of an Actor, Video Distribution Method and Video Distribution Program”
In this case, the Intellectual Property High Court (IP High Court) upheld a trial decision rendered by the Japanese Patent Office (JPO) on an appeal of a final rejection, which held the claimed subject matter of a patent application as lacking an inventive step.
Whether the JPO was correct to determine that it would have been easy to conceive of the claim feature D1 in which a display request is directed to a “decorative object”, based on a main prior art reference in which the subject of the display request is a “character video” responding in real time (Difference 1).
Summary of Conclusion:
The IP High Court determined that it would have been easy to conceive of the claimed invention, by applying the technology taught in a reference identified as “Evidence 2” to the main reference, with respect to Difference 1. In view of the defendant’s arguments, the court interpreted “applying” to mean “adding” rather than “substituting”, and reasoned as follows based on that premise.
The plaintiff asserted that Evidence 2 is directed to sending a gift from a viewer to a distributor (user gifting) without mentioning that this is performed during video distribution, and that therefore even if the technology of Evidence 2 was added to the main prior art reference, one would not arrive at the configuration of the claimed feature of “displaying a decorative object in response to a display request performed during video distribution”. However, the court held that although Evidence 2 does not explicitly describe user gifting with respect to a CG character during video distribution, it also does not exclude this, and considered it to be an operation-based arrangement that could be set by the distributor in accordance with the distribution time length, the preparation for gift wearing, the number of gifts anticipated, and so on. Accordingly, the court held that the period for sending an item to be worn by the CG character in the user gifting function of Evidence 2 is not necessarily limited to be prior to starting distribution. The court concluded that adding the user gifting function to the main reference would make it possible to achieve the configuration by which “a first display request by a user viewing the video is performed so as to request displaying of a decorative object on the screen during video distribution” so as to overcome Difference 1.
Although the JPO trial decision appears to identify Difference 1 as relating to the subject of the display request, the plaintiff and the court decision both seem to recognize Difference 1 as the timing of a display request with respect to claim feature D1. Accordingly, the identification of Difference 1 in the court decision seems to have deviated from the JPO trial decision. This court decision also appears to be an example demonstrating the challenges in assessing inventive step in subject matter pertaining to an artificial arrangement.