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“Lighting Device”

Overview:

This case pertains to a patent invalidation trial in which a decision (“the Trial Decision”) was reached to invalidate the patent relating to the invention recited in claim 1 (“Present Invention 1”) for which a request had been filed to correct the claims (“the Correction”) during the time period designated by a preliminary notice of a trial decision (“the Preliminary Notice of the Trial Decision”) prescribed under Patent Act Article 164^bis(1), and the Correction had been allowed without a further preliminary notice of a trial decision being issued. A dispute subsequently arose over the procedural illegality leading to the Trial Decision.

Both the Preliminary Notice of the Trial Decision and the Trial Decision identified the invention recited in Plaintiff’s Trial Exhibit 1 (“the Invention of Plaintiff’s Exhibit 1”) during the trial procedures, finding a difference (“Difference 1”) between the Invention of Plaintiff’s Exhibit 1 and Present Invention 1, and determining that Present Invention 1 could have easily been invented by a person skilled in the art on the basis of the Invention of Plaintiff’s Exhibit 1, the matters described in Plaintiff’s Exhibit 1, the common technical knowledge, and the well-known technology. In view of this, the plaintiff (“the respondent in the JPO trial”) asserted that, since Difference 1 found in the Trial Decision differed from Difference 1 found in the Preliminary Notice of the Trial Decision, the Trial Decision, which had been arrived at without issuing a further preliminary notice of the trial decision, in addition to the Preliminary Notice of the Trial Decision, concerning claim 1 that had undergone the Correction, was procedurally illegal.

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

Main Issue:

Procedural violation (whether or not a further preliminary notice of the trial decision was necessary)

Summary:

The court, with respect to the above issue, summarized its judgment as follows and dismissed the plaintiff’s claim.

“Concerning the phrase ‘when provided by ordinance of the Ministry of Economy, Trade and Industry’ in Patent Act Article 164^bis(1), Patent Act Enforcement Regulations Article 50^sexies bis stipulates that ‘when provided by ordinance of the Ministry of Economy, Trade and Industry in Patent Act Article 164^bis(1) shall be when the respondent has not declared that they do not wish for a preliminary notice of the trial decision, and when any of the following applies’ (main paragraph). It then sets forth items (i) through (iii), and item (iii) provides: ‘if, after a preliminary notice of the trial decision has been issued in any of the cases listed in the preceding two items, the case has become ready for a trial decision, and if, by the time of the preliminary notice, a party or intervenor has asserted a reason, or a reason has been notified as a result of the examination pursuant to Patent Act Article 153(2) (limited to cases where a preliminary notice of a trial decision finding the request for trial to be well-founded has not been issued for such reason), and the panel of administrative judges recognizes that the request for trial is well-founded on the basis of such reason.’”

“… When comparing the content of the Preliminary Notice of the Trial Decision with the content of the reasoning in the Trial Decision, the invention identified as described in Plaintiff’s Trial Exhibit 1 (the Invention of Plaintiff’s Exhibit 1) is the same in both. … In both the Preliminary Notice of the Trial Decision and the Trial Decision, the findings regarding the matters described in Plaintiff’s Trial Exhibit 1, as well as the findings regarding the common general knowledge and Well-known Technology 1 to be combined with the Invention of Plaintiff’s Exhibit 1, are the same, and the explanation regarding the determination that the invention according to claim 1, that is, Present Invention 1, could have easily been conceived by a person skilled in the art based on the Invention of Plaintiff’s Exhibit 1, the matters described in Plaintiff’s Trial Exhibit 1, common general knowledge, and Well-known Technology 1, is also substantially the same.

Accordingly, since the reasoning in the Trial Decision is the same as the reasoning indicated in the Preliminary Notice of the Trial Decision, it does not fall under the parenthetical provision of Patent Act Enforcement Regulations Article 50^sexies bis(iii), ‘cases where a preliminary notice of a trial decision finding the request for trial to be well-founded has not been issued for such reason,’ and therefore, under Patent Act Article 164^bis(1) and Patent Act Enforcement Regulations Article 50^sexies bis, it cannot be recognized that it was necessary to issue, in addition to the Preliminary Notice of the Trial Decision, a further preliminary notice of the trial decision prior to the Trial Decision.

… Although, as a result of the Correction, Difference 1 between the Invention of Plaintiff’s Exhibit 1 and the invention according to claim 1 (which, after the Correction, is Present Invention 1) is slightly different between the Preliminary Notice of the Trial Decision and the Trial Decision, this alone does not mean that the reasoning in the Trial Decision falls under ‘cases where a preliminary notice of a trial decision finding the request for trial to be well-founded has not been issued for such reason’ as set forth in the parenthetical provision of Patent Act Enforcement Regulations Article 50^sexies bis(iii)…”

Comments:

Patent Act Article 164^bis(1) provides that, in a patent invalidation trial, when the case is ready for a trial decision, a preliminary notice of the trial decision must be issued “when specified by ordinance.” In the present case, the issue in dispute was, in the event that the case again becomes ready for a trial decision after a preliminary notice of the trial decision has already been issued, under what circumstances a further preliminary notice of the trial decision must be issued; i.e., whether the above ordinance (Patent Act Enforcement Regulations Article 50^sexies bis(iii)) applies. The judgment held that, when comparing the Trial Decision and the Preliminary Notice of the Trial Decision, if, for example, the cited invention identified as the main cited reference (the Invention of Plaintiff’s Exhibit 1) is the same, and the framework of the determination is also the same in both (that is, the finding that the invention according to claim 1, or Present Invention 1, could have easily been invented by a person skilled in the art based on the Invention of Plaintiff’s Exhibit 1, the matters described in Plaintiff’s Trial Exhibit 1, common technical knowledge, and Well-known Technology 1), then even if the differences between the Invention of Plaintiff’s Exhibit 1 and the invention according to claim 1 differ slightly between the two, it is not necessary to issue, in addition to the Preliminary Notice of the Trial Decision, a further preliminary notice of the trial decision prior to the Trial Decision. This holding is likely to serve as a useful reference for future practice.

In addition, in Judgment 2018 (Gyo-Ke) No. 10034 (IP High Court, March 20, 2019), which addressed a similar issue, the court interpreted that “where a substantive opportunity for correction has been provided, as in cases where a decision to invalidate a patent is made for substantially the same reasons as those in the previously issued preliminary notice of the trial decision, the presiding administrative judge is not required to issue a further preliminary notice of the trial decision.” The court further indicated that this interpretation is consistent with the purpose of the preliminary notice system, which was established, together with the prohibition on filing a correction trial after the filing of a suit to rescind a trial decision in a patent invalidation trial, in order to eliminate delays in proceedings and the finalization of trial decisions caused by the back-and-forth of cases between the Japan Patent Office and the courts due to requests for correction trials after the filing of a suit to rescind a trial decision, while at the same time ensuring the advantage of providing an opportunity for correction based on the determination of patent validity indicated by the panel of administrative judges in the trial decision. This point is also likely to serve as a practical guideline.

Yasuhiro SUTO