TOPICS

“Navigation Device”

Overview:

This case concerns the Intellectual Property High Court upholding, in a trial for correction, a decision that denied a requested correction on the grounds that the correction would, in substance, broaden or alter the scope of the claims.

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

Main Issue:

Whether the correction (Correction Matter 1) to add the “of the candidate point” matter after “position information” in claim 1 would, in substance, broaden or alter the scope of the claims.

Conclusion:

Adding the “of the candidate point” phrase to the invention of claim 1 after correction eliminates the “limitation” regarding the “point” for which position information can be acquired, which renders obscure the range of points for which position information can be acquired and, as a result, the “while the candidate point is displayed as a symbol mark on the map screen of the display means, a point where the position information can be acquired by the position information acquisition means is limited to a position corresponding to the symbol mark” recitation in the claims (Constituent G; from among the recitations of the claims) is rendered meaningless, and can be said to delete part of the matters defining the invention.…

In which case, as the invention according to claim 1 is changed, as a result of Correction Matter 1, from one in which the acquisition of position information for a point is limited to the position corresponding to the symbol mark as recited in claim 1 before correction and position information for other points cannot be acquired, to one in which the “limitation” regarding the point for which position information can be acquired is eliminated, the acquisition range of position information becomes obscure, and part of the matters defining the invention is deleted, which means that this corrective change thus changes the scope of the claims, and is not a change to narrow the scope, nor can it be regarded as a clarification of an unclear recitation, making it clear that it would cause unexpected disadvantages to third parties who rely on the recitation of claim 1 before correction.

Correction Matter 1 should therefore be recognized as not satisfying the requirements of Patent Act Article 126(6) because it changes the scope of the claims in substance. There is no error in the decision to this effect in the present case.

Comments:

Simplifying the finding above as shown in the drawing above reveals that whereas “A information including B information” before correction implied being limited to “B information,” it can be said that Correction Matter 1 results in “B information” consequently remaining as-is after correction because “B information” has no additional limitation.

Although adding the phrase “of the candidate point” to the matter defining the invention that is “position information” might appear, in wording terms, to be a limitation or narrowing of the matters defining the invention, this addition actually renders Constituent G substantively meaningless, when taking the overall context into consideration, and makes it possible to interpret that, far from narrowing the scope of the invention, it actually broadens it.

The plaintiff argued that Correction Matter 1 did not change the substance of the claims before and after the correction, but the court found Correction Matter 1 to have clearly resulted in a change to the scope of claim 1, and thus did not accept this argument.

Yuuji WADA