Japanese Patent Case Summary: 2023 (Gyo-Ke) No. 10101 – Intellectual Property High Court (April 25, 2024)
“Authentication Certification System”
Overview:
This case concerns a trial decision that “the claim in this trial is groundless” in a trial for invalidation being upheld.
Summary of Judgment and Link to Full Text (in Japanese)
Main Issue:
Whether the descriptions in the detailed description of the invention in the specification of the present case satisfy the enablement requirement.
Conclusion:
The enablement requirement provided for in Patent Act Article 36(4)(i) should entail examining whether the detailed description of the invention in the specification is stated clearly and sufficiently such that a person skilled in the art can carry out the invention as claimed, based on the description and common technical knowledge at the time the application was filed, without requiring undue experimentation.
The detailed description of the invention in the present specification states that “using application [B], the user can utilize the private key α₁ assigned to the product to be authenticated 1 and the private key β₁ assigned to the guarantee card, in order to read the product information and transaction information of the product to be authenticated 1, which are input to the blockchain data of the dedicated platform.” Additionally, in view of the effect yielded by each invention of the present case that “only the true user who possesses both the product to be authenticated 1 and the guarantee card can easily achieve highly reliable authentication certification,” it can be said that the detailed description of the invention in the present specification also describes that “after authenticating that the user 4 is the true user possessing the product to be authenticated 1 and the guarantee card, only the authenticated user can read the product information and transaction information of the product to be authenticated 1, which are input to the blockchain data of the dedicated platform.”
Further, it is recognized that in the field of cryptographic technology to which each of the present inventions belong, digital signature technology based on public key cryptography whereby personal authentication is performed by encryption via a private key then decryption via a public key paired with said private key was common technical knowledge at the time the present patent application was filed.
In which case, as a person skilled in the art who was exposed to the detailed description of the invention in the present specification would understand, based on the common technical knowledge at the time the application was filed above, that the private key α₁ assigned to the product to be authenticated 1 and the private key β₁ assigned to the guarantee card, along with their corresponding public keys, would naturally be used for user authentication to verify that the user is the true owner of both the product to be authenticated 1 and the guarantee card, it can thus be understood that the detailed description of the invention in the present specification describes that authentication is performed by encrypting with the private key α₁ assigned to the product to be authenticated 1 and the private key β₁ assigned to the guarantee card, and decrypting with the public keys corresponding to the private keys α₁ and β₁, as the means for personal authentication to obtain permission to use application [B], thereby authenticating that the user is the true owner of both the product to be authenticated 1 and the guarantee card, and that only the authenticated user can read the product information and transaction information of the product to be authenticated 1, which are written to the blockchain data of the dedicated platform.
The detailed description of the invention in the present specification is therefore recognized as satisfying the enablement requirement.
Comments:
The plaintiff argued that the enablement requirement is not satisfied because the detailed description of the invention in the present specification does not describe functions and the like for realizing the constituent elements E and F, and is obscure, and a person skilled in the art would not be able to understand the functions to be realized even based on common technical knowledge at the time the application was filed. The decision rendered, however, did not accept the plaintiff’s argument, finding that the detailed description of the invention in the present specification can be recognized as describing each of the present inventions clearly and sufficiently such that a person skilled in the art could carry them out as recited in the claims, without requiring undue experimentation based on common technical knowledge.