TOPICS

“Elastoplastic Hysteretic Damper”

Overview:
The present case upheld a trial decision that a request for a patent invalidation trial was not established, stating that it cannot be said that Corrected Invention 1 of the present case could have been easily invented by a person skilled in the art on the basis of the invention of Plaintiff’s Exhibit 1, the configuration taught in Plaintiff’s Exhibit 2, and optional matters such as those exemplified in Plaintiff’s Exhibit 3, and that there were also no other reasons for revocation.

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

Main Issue:
Whether the skilled person could easily conceive of the configuration according to Corrected Invention 1 of the present case, in which a pair of plate-like shearing parts provided in succession via a connecting part are arranged so as to ensure the orientations of the pair of shearing parts differ from each other, which contrasts with the invention of Plaintiff’s Exhibit 1, in which two metal sheets 2 are provided in series (Difference 1).

Summary:
(3) Conceptual Ease of the Configuration According to Difference 1
a) Technical Significance of Metal Sheet 2 of the Invention of Plaintiff’s Exhibit 1
According to Plaintiff’s Exhibit 1, it is stated that “a load acts on the energy absorbing member of the present invention in the arrow direction shown in FIGs. 1 and 2”…and according to the configuration shown in FIGs. 1 and 2, it is recognized that the energy absorbing member taught in Plaintiff’s Exhibit 1 absorbs energy from earthquakes and the like due to the fact that that the metal sheets are arranged so that loads are applied in an in-plane direction, on the premise that such loads act along a structural frame plane of a building. This understanding is also supported by the fact that these metal sheets 2 are arranged with their in-plane directions aligned in an example of a configuration in which a plurality of metal sheets 2 are provided….

c) Applicability of Invention of Plaintiff’s Exhibit 2 to the Invention of Plaintiff’s Exhibit 1
The shearing panel-type damper 10 of the invention of Plaintiff’s Exhibit 2…can be installed in multiple units so as to differ in orientation from each other in the case of a bridge-bearing structure in which the upper structure of the bridge and the lower structure of the bridge are capable of two-dimensional relative movement when seen from a planar view. In contrast, the energy absorbing member 1 of the invention of Plaintiff’s Exhibit 1 has two of the metal sheets 2 arranged in series so that loads are applied in an in-plane direction, on the premise that such loads act along a structural frame plane of a building from one direction; therefore, there is no motivation to apply the arrangement of the shearing panel-type damper 10 of the invention of Plaintiff’s Exhibit 2 to the invention of Plaintiff’s Exhibit 1.

Furthermore, when the orientations of the two metal sheets 2 of the invention of Plaintiff’s Exhibit 1 are made to differ from each other, at least one of the metal sheets 2 is arranged so that the load is not applied in the in-plane direction; therefore, it can be said that there is teaching away from such a change of configuration in the invention of Plaintiff’s Exhibit 1, which is predicated on the load being applied in the in-plane direction along a structural frame plane of a building.

Consequently, the skilled person could not have easily adopted the configuration of Corrected Invention 1 of the present case, which relates to Difference 1 above, by applying the invention of Plaintiff’s Exhibit 2 to the invention of Plaintiff’s Exhibit 1.

Comments:
The plaintiff (the party that requested the patent invalidation trial) asserted that it is well known conventionally to arrange shearing panel-type dampers, which are used in constructions, in multiple directions, in order to deal with two-dimensional movement of the bridge or the like, and thus it was incorrect to determine that there is no motivation to apply the invention of Plaintiff’s Exhibit 2 to the invention of Plaintiff’s Exhibit 1. Furthermore, the plaintiff asserted that, if the invention of Plaintiff’s Exhibit 2 was applied to the invention of Plaintiff’s Exhibit 1, force in the out-of-plane direction would be applied to one of two metal sheets, but since the invention of Plaintiff’s Exhibit 1 permits out-of-plane deformation, the behavior as an energy absorbing member further stabilizes such that the function of the invention of Plaintiff’s Exhibit 1 is put to good use. The court, however, did not adopt either argument.

The two metal sheets of the invention of Plaintiff’s Exhibit 1 are arranged in series in order to exhibit a damping function on movement in one direction within a vertical frame plane of a building (a vertical flat surface constituted by columns and beams); therefore, the technical significance of the invention of Plaintiff’s Exhibit 1 is lost when their orientation differs from each other, as per the plurality of shearing panel-type dampers of the invention of Plaintiff’s Exhibit 2. As such, there is teaching away from such a change, as per the court’s judgement.

Norifumi KOBAYASHI