TOPICS

“Shaft for Golf Club”

Overview:

This case concerns a decision to revoke a patent being upheld on grounds that each of the claimed inventions in this case was not described in the Detailed Description of the Invention.

▶Summary of Judgment and Link to Full Text (in Japanese)

Main Issue:

Whether Configurations 1 to 5 of each of the claimed inventions in this case can be said to described to an extent that would enable those skilled in the art to recognize that the technical problem of the invention could be solved, based on the descriptions of the specification in this case.

Conclusion:

(3) Problem to be Solved by Each of the Claimed Inventions

…It is reasonable to find that the problem to be solved by each of the claimed inventions in this case (the “Technical Problem in this case” hereinafter) is “to provide a fiber-reinforced resin shaft for golf clubs (low-torque fiber-reinforced resin shaft for golf clubs) having high torsional rigidity and swing stability, as well as being superior in both flight distance stability and directional stability irrespective of the swing speed or skill level of the player.”

(4) Grounds 1 for Revocation of the Decision (relating to Configurations 2 to 5)

B. Configuration 3

(i) Regarding 0.5 ≤ B / (B+S):

1. With respect to the effects obtained by adapting the total weight of the bias layer (B(g)) to be 50% or more of the sum of the total weight of the bias layer and the total weight of the straight layer positioned over the entire shaft (B(g) + S(g)), the specification for this case states: “It is important that the shaft for a golf club of the invention in this case satisfies (1) 0.5 ≤ B/(B+S) ≤ 0.8…. (1) Indicates a necessary element for generating the torque Tq (°) required to accommodate highly skilled golfers and golfers with high swing speeds. That is, it states that a shaft for a golf club that does not satisfy (1) may twist excessively or break due to insufficient twisting” and, additionally, it states that (each) B / (B+S) value in Example 1 (where the effect of this case was obtained) and Comparative Example 1 (where the effect was not obtained) are 0.6 and 0.4, respectively. …These descriptions, including the fact that the value 0.5 for B / (B+S) in each of the claimed inventions in this case is intermediate between 0.6 in Example 1 and 0.4 in Comparative Example 1, do not properly explain as to why the Technical Problem in this Case is solved by adapting the total weight of the bias layer to be 50% or more of the sum of the total weight of the bias layer and total weight of the straight layer. …Therefore, with respect to the point from among those of Configuration 3, of adapting the total weight of the bias layer to be 50% or more of the sum of the total weight of the bias layer and total weight of the straight layer, it cannot be said that those skilled in the art would be able to recognize that the Technical Problem in this case can be solved, based on the descriptions in the specification in this case.

Comments:

Not only did the court determine that the descriptions in the specification in this case do not properly explain as to why the Technical Problem in this Case is solved by setting the minimum value of the parameter B / (B+S) relating to Configuration 3 to 0.5, but also found that the statements do not properly explain as to why the Technical Problem in this Case is solved by setting the maximum value of this parameter, as well as setting the minimum value and maximum value of the parameters relating to Configurations 2, 4, and 5 to specific values.

Although each of the claimed inventions in this case came to comprise Configurations 1 to 5 as a result of the allowed correction, the invention according to claim 1 before correction comprised only Configuration 3 from among Configurations 1 to 5. As the specification in this case describes only Example 1 that comprises all Configurations 1 to 5 and is said to exhibit the effect of this case (i.e., a shaft for golf clubs with both superior flight distance stability and directional stability irrespective of the swing speed or skill level of the player) and Comparative Example 1 that comprises Configurations 1 and 5 and is said to not exhibit the effect, it seems clear that the relations between Configuration 3 and the effect of this case is not supported by the descriptions in the specification in this case. To begin with, it is questionable as to why the invention according to claim 1 before correction was granted a patent, and reasonable that the patents for each of the claimed inventions in this case were revoked as a consequence of the filing of the patent opposition, and that the court upheld the decision to revoke the patents.

Norifumi KOBAYASHI