TOPICS

“Wood-based Board”

Overview:
This case pertains to a case in which a patent opposition decision to revoke the patent for Subject Invention 1 was upheld on the grounds that Subject 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.
▶Summary of Japanese and Link to Full Text (Japanese)

Main Issue:
Finding of differences.

Summary:
2. Finding of Differences between the Invention of Plaintiff’s Exhibit 1 and the Subject Invention

According to the evidence…and the overall purport of the arguments, the decision on the subject case concerning Differences 1 and 2 between the details of the invention of Plaintiff’s Exhibit 1 and the subject invention…it is recognized that the opposition decision’s findings regarding Differences 1 and 2 are correct.

3. Mistakes in the Finding of Differences 1 and 2

(1) The plaintiff asserts that each of the configurations of Subject Invention 1 (“configuration relating to dimensions” and “configuration relating to shape”; together, “configurations relating to dimensions, shape, etc.”), the “configuration relating to density” and the “configuration relating to orientation”, which relate to Differences 1 and 2 that were individually found, function together as a related group of means to solve the technical problem of the invention, and achieve a synergistic effect; therefore, they must be determined together as a single difference.

(2) However, the specification includes each description of item 1 above, and as the means of solving the technical problem of the invention of a “wood-based board with high strength and superior dimensional stability and surface smoothness/properties that is simple to manufacture”…, discloses: (i) a wood-based board of a “first invention”, in which the configuration of value ranges for thickness, length and width of a wood flake (thin piece), including the “configuration of size”, is substantially identical to those of Subject Invention 1…, and the effect achieved thereby…; (ii) a wood-based board of a “second invention” in which the wood-based board of the “first invention” has a configuration of value ranges for thickness, length and width of Subject Invention 2…, and the effect achieved thereby…”; (iii) a wood-based board of a “third invention” in which the wood-based board of the “first invention” or the “second invention” has a “configuration relating to density”…, and the effect achieved thereby…”; and (iv) a wood-based board A having a configuration of value ranges for thickness, length and width of the wood flakes (thin pieces) of Subject Invention 1, including the “configuration relating to density” and the “configurations relating to dimensions, shape, etc.”, but concerning the “configuration relating to orientation”, in which orientation in a direction of fibers is not essential, and the direction of fibers may be randomly oriented…, and the effect achieved thereby…”. However, the effect of the “configuration relating to orientation” is not demonstrated as an effect of the Subject Invention. There are neither descriptions demonstrating that the “configuration relating to density”, “configuration relating to dimensions, shape, etc.” and “configuration relating to orientation”, respectively, exceed the effect achieved individually, and function together in concert, nor descriptions demonstrating that a synergistic effect was achieved. Nor is it recognized that there are any descriptions of the mechanism of action or the like that could be construed as such functioning.

(3) Furthermore, setting aside whether certificates of experimental results prepared after filing this lawsuit should be considered, the certificate merely presents the experimental results. In a case where the comparison allowed for differences in the length of the wood flakes (thin pieces), the density of the wood-based board or the orientation of the wood flakes (thin pieces), according to such experimental results, these elements would be understood to have an impact on strength, dimensional stability or smoothness; however, the “configuration relating to density”, “configuration relating to dimensions, shape, etc.” and “configuration relating to orientation” are not recognized producing an effect beyond the sum/overlap of their respective individual effects by functioning together; no synergistic effect of the combination is shown. Even in view of the details described as “Experimental Conclusion (Discussion)”, the effect described as being achieved by each configuration, and the reasons thereof, are mentioned, but there is no explanation of how each configuration acts together to achieve a synergistic effect.

(4) As mentioned earlier, even upon referring to the certificate of experimental results (Plaintiff’s Exhibit 17) in addition to the descriptions of the specification for the present case, it is not recognized that each of the configurations of Subject Invention 1, relating to Differences 1 and 2, achieves a synergistic effect, functioning together in concert with the “configuration relating to density” and the “configuration relating to orientation”.

Consequently, the plaintiff’s assertion cannot be adopted because its premise is not recognized, and the finding on differences in the decision for this case cannot be said to be incorrect.

Comments:
In order to determine one difference by combining a plurality of configurations, the court judged it to be necessary that the plurality of configurations exceeds the effects that can be achieved by each individually to function together in concert and achieve a synergistic effect. It appears that this is useful in determining to what extent the differences between a subject invention and a cited invention in terms of configuration should be combined to find one difference

Norifumi KOBAYASHI